The American cosmetics corporation Estée Lauder has filed a lawsuit against British perfumer Jo Malone, her brand Jo Loves, and the British division of the fashion retailer Zara. The dispute arose from the use of the wording “A creation by Jo Malone CBE, founder of Jo Loves” on perfume packaging, which appeared in a collection of fragrances with Zara.

Background of the dispute

Jo Malone founded the brand Jo Malone London in the 1990s. In 1999, she sold the business and the rights to use her name to Estée Lauder. Under the terms of the agreement, she undertook not to use her name in the commercial promotion of perfumes, in exchange for financial compensation.

After the expiration of non-compete restrictions in 2011, she launched a new brand — Jo Loves. This brand later collaborated with Zara, releasing a collection of fragrances available at a mass-market price point.

Claims

According to Estée Lauder, the use of the name “Jo Malone” on packaging or in fragrance descriptions constitutes a breach of:

• the terms of the 1999 agreement;

• trademark rights;

• the rules against “passing off,” i.e., misleading consumers as to the origin of goods.

The company argues that such labeling may create the impression of a connection between the new Zara fragrances and the Jo Malone London brand, which it owns and has developed for over 25 years.

Significance of the case

The dispute has become illustrative for the fashion and cosmetics industry. It demonstrates the risks associated with selling rights to one’s own name as a trademark, as well as the complexity of balancing a founder’s personal brand with the rights of the corporation that has acquired it.

It is expected that the court’s decision may influence similar situations in the fashion and beauty sectors, where a founder’s personal name often serves as a key element of the brand.

Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.