Jo Malone, British perfumer and founder of Jo Malone London, has recently found herself embroiled in a legal battle with Estee Lauder in relation to a historic agreement she entered into with the cosmetics company in 1999 for the sale of her company, associated marks and branding.
The dispute in question has arisen from a later venture Malone has entered into with Spanish clothes retailer, Zara, for the release of a perfume collaboration called “Jo Loves”.
Hannah Flowers, an associate solicitor in our commercial services team who specialises in intellectual property, shares some insight into the dispute.
Background: The 1999 sale agreement
To understand the dispute, we need to go back to 1999 when Malone sold her company, Jo Malone London, to Estee Lauder in a deal that was reportedly worth millions. As part of the deal, Estee Lauder acquired the registered trade mark rights in the “Jo Malone” name. As part of this transaction, Malone was prohibited from using her name in certain commercial contexts, such as creating and marketing new fragrance lines.
The “Jo Loves” and Zara collaboration
Fast forward to 2019, Malone went on to create a perfume collaboration with Zara called “Jo Loves”. The perfume collaboration was sold and labelled with statements such as, “A creation by Jo Malone CBE”, “Created by Jo Malone CBE” and “Jo Loves created by Jo Malone”.
In its claim, Estee Lauder argue that the use of these statements crosses a line in that they are a violation of the original sale agreement and there is a risk that the products will confuse and mislead consumers to believe that the products are linked to the Jo Malone brand.
Estee Lauder has also argued that the products in question “undermine” the reputation of Jo Malone as being a brand that is synonymous with luxury, given Zara’s much lower price point. Estee Lauder claim that, since 1999, they have built up significant goodwill in the Jo Malone name which they believe Malone and Zara are directly benefiting from through their collaboration.
Estee Lauder has therefore launched High Court proceedings for breach of contract, trade mark infringement and passing off. In its claim, Estee Lauder is seeking more than £200,000 in damages from Malone.
Identity vs trade marks
The dispute serves as a stark reminder that while personal names can be registered and used as a trade mark, what we call an eponymous brand, a registered trade mark is ultimately an asset that can be assigned, licensed and dealt with separate to the individual.
When founders of eponymous brands sell the IP rights in a name, they often give up more than just ownership of a trade mark; they may also give up elements of their identity in a commercial context. This is not the first case we have seen whereby a founder of an eponymous brand has sold the rights in their name and ultimately ended up losing control over their identity.
Karen Millen and Kate Spade are both examples of brand names that have been sold and have resulted in the designers having to rebrand under a different brand name. It will be interesting to see the outcome of the Malone v Estee Lauder saga. While Malone hopes “sense will prevail”, the courts have historically upheld legal agreements.
Mincoffs’ intellectual property solicitors have experience in dealing with all aspects of intellectual property including patents, copyright, design rights and trade marks.
For specialist advice on any of the subjects covered in this blog – or any other intellectual property matter – contact our commercial services team by emailing enquiries@mincoffs.co.uk or calling the office on 0191 281 6151.
