Jo Malone – When You Are Sued For Using Your Own Name

In March 2026, Estée Lauder launched court action in the UK Courts against Ms. Jo Malone, Jo Loves and ITX Limited, a company which trades as Zara. The proceedings relate to the use of the name “Jo Malone” by Jo Malone.

Background

Jo Malone is a well-known perfumer and entrepreneur who established a very successful perfume brand under the name and trade mark “Jo Malone”.

In 1999 Jo Malone sold her “Jo Malone London” brand and company to Estée Lauder. The sale included the rights to her name, “Jo Malone”. This prevented Jo Malone from using her name in certain commercial contexts, which included the marketing of fragrances.

In 2011, Jo Malone launched new brand, “Jo Loves”, a luxury fragrance brand. The Jo Loves brand and business has been co-existing with Estée Lauder since 2011.

Legal proceedings

The basis of the court action is the use of “Jo Malone” on the packaging of the “Jo Loves” fragrances sold by Zara following a recent collaboration between Zara and Jo Malone. The packaging bore the following tagline: "A creation by Jo Malone CBE, founder of Jo Loves".

The court action is based on the various grounds, namely:

• breach of contract;
• trade mark infringement and
• passing off.

A key question in the case will be whether the use of the tagline amounts to use of “Jo Malone” for marketing purposes and whether it breaches the terms of the agreement between the parties. Estée Lauder takes the view that this use “goes beyond that legal agreement and undermines Jo Malone London’s unique brand equity”.

Terms of the agreement

Estée Lauder has stated that “she agreed to clear contractual terms that included refraining from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances” and that Jo Malone “was compensated as part of this agreement, and for many years she abided by its terms”.

Estée Lauder further stated that “We respect Ms Malone’s right to pursue new opportunities. But legally binding contractual obligations cannot be discarded, and when those terms are breached, we will protect the brand that we have invested in and built over decades”

Jo Malone has reportedly in the past indicated that she regrets selling the rights to use her name for commercial purposes.

Closing thoughts

This case has similarities with a number of international cases dealing with individuals losing the rights to use their names commercially following the sale of brands featuring the individual’s name.

This case reminds of a local dispute involving the well-known fashion designer Jenni Button. In 1997 Jenni Button sold 70% of her company, including the goodwill in the brand name “Jenni Button” to The Platinum Group.

Jenni Button later launched a new clothing line called "Philosophy" and marketed it as being "by Jenni Button". The Platinum Group thereafter instituted proceedings against her to stop the use of “Jenni Button”.

The Court found that the goodwill in the “Jenni Button” brand was validly transferred and her use of “Jenni Button” amounted to passing-off. Jenni Button tried to rely on the “own name” defence in terms of the South African Trade Marks Act and that she therefore cannot be prevented from using her own name in respect of her business.

This was however rejected on the ground that this defence requires use of a person’s own name in a bona fide manner and that it should not be used in a manner that will take advantage of the goodwill of another. In addition, this defence could not apply in this case as it only applies where a trade mark is registered and in this case it was not.

These cases underline the importance of obtaining legal and advice before selling rights to a personal name or likeness to ensure that the contractual terms take into account the needs of an individual to pursue a new business where they may need to use their own name and that undue restrictions do not apply.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.