Jo Malone and own name disputes

It is common practice for designers to include the rights to their name as part of a sale of their brand, given that the strength of the brand is (in part) the strength of their name. The designer Karen Millen entered into a share purchase agreement for the sale of the “Karen Millen” business to a banking consortium in 2004, which included a clause which prohibited the use of “Karen Millen or another confusingly similar name” in connection with any competitor business. When Ms Millen returned to the fashion industry in 2011, the contractual restrictions contained in the share purchase agreement prevented her from trading under the name Karen Millen, including in the US and China. [1]

Similarly, Estée Lauder’s claim relies heavily on the terms of the SPA entered into with Ms Malone, which it argues restrict her from using, or authorising the use of, intellectual property associated with the Jo Malone business. In particular, the SPA is said to prohibit any use of a name consisting of, or including, the words “Jo Malone” in specified commercial contexts.

Estée Lauder contends that Ms Malone has breached these contractual obligations by using, authorising, encouraging or assisting the use of the Jo Malone trade marks and the wording “Jo Malone” and/or “Jo Malone CBE” in connection with the Jo Loves and Zara product range. It is alleged that the deployment of Ms Malone’s name in marketing, advertising and promotional materials is either intended, or at least likely, to give rise to consumer confusion with Estée Lauder’s Jo Malone London brand.

In addition, Estée Lauder asserts that Ms Malone assigned to its subsidiary, Jo Malone Limited, her rights to her name in connection with certain defined business activities. Estée Lauder argues that, as part of this assignment, Ms Malone agreed to take steps to protect, perfect and enforce the assigned rights to her name. By allegedly failing to comply with requests from Jo Malone Limited to withdraw permissions and require Zara to cease using the “Jo Malone” name in connection with their product collaboration, Ms Malone is said to have breached the terms of the assignment.

Claims of trade mark infringement involving personal names are surprisingly common, particularly where an individual has built a strong commercial identity and secured trade mark protection for their name.

The American singer Katy Perry has been embroiled in proceedings with Australian fashion designer Katie Taylor (née Perry) since 2019 concerning ownership and use of the “Katy Perry” name. The High Court of Australia has recently set aside a decision to cancel Ms Taylor’s Katie Perry trade mark (which she registered for clothing in 2006) and remitted the matter to the Full Federal Court to determine whether the singer has in fact infringed the Katie Perry mark. [2]

In the case of Jo Malone, Estée Lauder has advanced three claims for trade mark infringement on the following grounds.

• Estée Lauder’s subsidiary, Jo Malone Inc, owns the registered word trade mark “Jo Malone” for products including colognes and perfumes. Estée Lauder claims that by using the wording “by Jo Malone CBE” (and similar wording), the Defendants have used a sign identical to the “Jo Malone” mark.
• Alternatively, Estée Lauder argues that if the addition of the letters “CBE” makes the Defendants’ wording technically different from the “Jo Malone” trade mark, it is still highly similar. Given the similarity of the products being sold, Estée Lauder says that a significant number of consumers are likely to believe that the products are part of a collaboration with Estée Lauder or that the Defendants and Estée Lauder are commercially linked
• Alternatively, the Defendants are ‘free riding’ on the reputation of the Jo Malone trade mark which is recognised as a premium and luxury brand. They also argue that, because the Zara brand is known for being more affordable and budget‑friendly, this is detrimental to the Jo Malone trade mark.

Unlike trade mark infringement, passing off does not require the existence of a registered trade mark, providing a valuable alternative cause of action where a party’s trading activities generally have built up protectable goodwill in a name or wider brand.

In this case, Estée Lauder argues that the Defendants’ acts amount to a misrepresentation to consumers leading them to believe that the Defendants’ products are either Estée Lauder products, authorised by Estée Lauder or produced as part of a collaboration with Estée Lauder.

At its core, passing off is designed to prevent one trader from misrepresenting their goods or services as those of another. It protects businesses against competitors who seek to appropriate their hard‑won goodwill by “passing off” their products as those of the genuine brand owner.

While passing off offers flexibility in the absence of registered rights, it can also be difficult to prove. Establishing goodwill, particularly where a brand is young or geographically limited, can be challenging, and misrepresentation is often vigorously contested. You can read more about the requirements a business must satisfy to bring a successful passing off claim here.

Defendants in own‑name disputes will often seek to rely on the own name defence in response to allegations of trade mark infringement.[3] The defence operates to prevent a trade mark proprietor from restraining a natural person from using their own name or address in the course of trade, provided that such use is in accordance with honest practices in industrial or commercial matters. It therefore represents a narrow but potentially powerful shield where an individual can genuinely demonstrate that they are simply using their personal name (assuming there are no contractual restrictions preventing them from doing so), rather than seeking to capitalise on another’s goodwill.

This defence was relied on in Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Limited and others.[4] The operators of the London restaurant “Cipriani London” sought to invoke the own‑name defence after being sued by the owners of the world‑famous Hotel Cipriani in Venice. The defendants argued that their use of the name constituted the honest use of their own family name in business. However, the High Court disagreed and held that the sign “Cipriani” was being used not as a personal identifier, but as a commercial brand deliberately positioned to benefit from the significant reputation associated with the Hotel Cipriani. As such, the own‑name defence failed.

It is expected that Ms Malone will rely on this defence.  In fact, Estée Lauder’s court pleadings state that in correspondence with Estée Lauder, the Defendants have asserted that

“…all use of Jo’s name are, and have always been clearly a reference to her in her personal capacity either as the founder of the Jo Loves business or as the creative director of fragrances for Jo Loves and that such use is expressly permitted under clause 8 of the SPA”.