Selling Your Name: The Jo Malone v Estée Lauder Dispute

Branding a business with your own name can be a powerful commercial move and can convey authenticity, reputation and personal endorsement, and in some sectors, it is common for founders to trade under their own names, particularly in the skincare, fashion and luxury goods industries.

The recent dispute between Jo Malone and Estée Lauder is a timely reminder that personal branding can come at a price.

When a personal name becomes a trade mark

Once a personal name is registered and used as a trade mark, it becomes a commercial asset capable of being licensed, assigned and enforced independently of the individual themselves. If that asset is later sold, a personal name trade mark can permanently curtail the individual’s ability to use their own name in any manner that might be perceived as indicating commercial origin or endorsement.

Although UK trade mark law recognises a limited defence for use of one’s own name (under section 11 of the Trade Marks Act 1994), that defence does not apply where the use is not in accordance with honest practices, or where contractual restrictions apply. In practice, contractual arrangements entered into on the sale of an eponymous brand are often decisive.

The Jo Malone / Estée Lauder dispute

In 1999, Estée Lauder acquired Jo Malone London, including the trade mark rights associated with the “Jo Malone” name. As part of that transaction, Jo Malone agreed to contractual restrictions limiting her ability to use the “Jo Malone” name for commercial purposes, including in the marketing of fragrances. Estée Lauder’s position is that these restrictions were intended to protect the goodwill it acquired and that the restrictions should continue to apply notwithstanding the passage of time.

More than two decades later, Estée Lauder has brought proceedings in the UK against Jo Malone personally, her later brand Jo Loves, and Zara’s UK arm. The dispute arises from a collaboration between Jo Loves and Zara, where product packaging reportedly included the wording:

“Creation by Jo Malone CBE, founder of Jo Loves.”

Estée Lauder alleges that this use amounts to trade mark infringement, breach of contract, and passing off, on the basis that consumers may believe the products are connected with, or endorsed by, the Estée Lauder‑owned Jo Malone London brand. The key legal issue will be whether this wording is a fair and honest use of a personal name, or whether it functions as a trade mark‑like sign, indicating commercial origin or association.

It remains to be seen how the court will interpret the precise contractual provisions agreed in 1999 and how those contractual obligations interact with trade mark and passing off principles, both of which turn on consumer perception and likelihood of confusion.

Parallels with earlier cases

The Jo Malone dispute is not an isolated example. Karen Millen, Kate Spade, Elizabeth Emanuel, and Bobbi Brown have all found themselves in a similar position. In previous cases the courts have shown a propensity to uphold the legal agreements the parties have agreed to and to tightly restrict the future use of the name by the individual.

We will be watching the Jo Malone litigation with interest, particularly to see how the court balances contractual obligations against trade mark and passing‑off principles.

If you would like advice on intellectual property rights and how best to protect your business, please get in touch with any of the authors.