Why is Estée Lauder suing Jo Malone and Zara UK?

In March of this year, legal proceedings were initiated before the High Court of Justice of England and Wales by Estée Lauder Europe and Jo Malone Limited against Jo Malone, her brand Jo Loves, and ITX UK Ltd. (Zara UK).

Jo Malone is an individual who founded a fragrance brand in 1990. In 1999, she sold her company to the Estée Lauder group and remained in the position of Creative Director until 2006. As part of the sale, she entered into an agreement that restricted the commercial use of the name ‘Jo Malone’, despite the fact that it is her personal name. Several years later, she founded a new brand, Jo Loves, and in 2019 began collaborating with Zara.

The dispute, which is still at an early stage, concerns the packaging and online descriptions of fragrances that include the wording: ‘Created by Jo Malone CBE, founder of Jo Loves’. In other words, the matter sits at the intersection of trademark law, contractual restrictions, breach of contract, and the common law doctrine known as passing off.

Given that the proceedings are in their early phase, it is not yet appropriate to engage in a more detailed analysis of the specific case. However, it is important to note that disputes of this kind are not new in international legal practice.

What does comparative case law say?

One frequently cited example is Karen Denise Millen v Karen Millen Fashions Ltd & Another ([2016] EWHC 2104 (Ch)). In that case, the court held that provisions of a business sale agreement must be interpreted objectively, in light of the parties’ intentions at the time of conclusion. The court further found that restrictive covenants limiting the use of the name ‘Karen Millen’ extended not only to identical use of the name but also to any use likely to cause confusion, including confusingly similar variations. The court emphasized that the name ‘Karen Millen’, as part of the goodwill (i.e., the commercial value arising from reputation, recognition, and brand association with quality), had been transferred to the purchaser, and that the claimant could not freely use her name for commercial purposes in the same or a related industry following that transfer.

Another significant case is JA Apparel Corp. v. Joseph Abboud (568 F.3d 390, 2d Cir. 2009). In this instance, the court adopted a more nuanced approach, finding that an agreement transferring rights in a name (including the wording ‘names, trademarks, trade names, and service marks’) is not necessarily unambiguous as to the scope of the rights transferred. The court held that the agreement at issue was ambiguous and therefore required consideration of extrinsic evidence to determine the parties’ true intent. As a result, the court confirmed that the sale of a business and associated trademark rights does not automatically preclude all future use of a person’s name in a commercial context; rather, the scope of such restrictions depends on the terms of the agreement and on the nature of the specific use.

The Court of Justice of the European Union (CJEU) addressed a similar issue in Elizabeth Emanuel v. Continental Shelf 128 Ltd (C‑259/04). The Court held that the mere assignment of a trademark incorporating the founder’s personal name, together with the sale of the business, does not render the mark inherently misleading simply because consumers may assume a continuing personal connection between the founder and the products. The Court emphasized that the mere possibility of consumer deception is insufficient; rather, there must be a genuine risk that the trademark misleads consumers as to the nature, quality, or origin of the goods, thereby affecting the essential function of the trademark as an indicator of origin.

In an earlier case, Gucci v. Gucci Shops, Inc. (688 F. Supp. 916, S.D.N.Y. 1988), the United States District Court for the Southern District of New York examined the limits of using a personal name that also functions as a registered trademark. The court held that an individual may not use their name as a designation of source or trade name (trademark or trade name use) where such use creates a likelihood of confusion. However, limited use of one’s name for purposes of personal identification (descriptive use) may be permitted, provided that such use does not function as a trademark and does not suggest an association with the trademark owner.

The boundary between identity and trademark

Comparative case law demonstrates that the legal status of a personal name after its commercialization exists along a spectrum. In Karen Millen, the court reaffirmed the primacy of contractual restrictions (restrictive covenants) over the personal right to use one’s name, effectively excluding its further use within the relevant industry. In contrast, Joseph Abboud reflects a more flexible approach, dependent on contractual interpretation and on the distinction between trademark use and descriptive fair use. The decision in Elizabeth Emanuel confirms that the transfer of a trademark does not in itself render the mark misleading, while Gucci illustrates that even individuals sharing the same surname may only use it in a limited, identification-based manner.

Against this backdrop, the ongoing dispute between Estée Lauder and Jo Malone represents a logical continuation of this line of case law. The central legal question will be whether the specific use of the name crosses the line from legitimate identification into impermissible commercial exploitation of the mark. The common thread across all these cases remains the same: the protection of the trademark’s function as an indicator of origin and the prevention of consumer confusion.

Perhaps the real question is no longer whether a person can use their own name, but whether, once sold, that name has been legally redefined – at least in the realm of commercial exploitation.

Note: This text reflects solely the personal opinion of the author and does not constitute legal advice.