Cosmetic giant, Estée Lauder has launched legal proceedings in the High Court against perfumer Jo Malone, her fragrance company Jo Loves, and high street retailer, Zara, for trade mark infringement, passing off, and breach of contract.

Jo Malone launched her eponymous fragrance brand back in 1990, though sold the brand, including the rights to her name, to Estée Lauder in 1999. Malone remained on board as a creative director until 2006, and later launched a new fragrance brand, Jo Loves, in 2011.

The present claim relates to a fragrance collaboration between Zara and Malone’s brand, Jo Loves. Estée Lauder have taken issue with the packaging and online product descriptions of the fragrances which include the phrase “Created by Jo Malone CBE, founder of Jo Loves”. Estée Lauder allege that the use of Malone’s name amounts to trade mark infringement, passing off and breach of contract (as at the time of the sale, Malone apparently agreed to clear contractual terms that prevent her from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances).

Whilst Section 11(2)(a) of the Trade Marks Act 1994 provides a defence to trade mark infringement where an individual uses his/her own name in the course of trade, this defence does not extend to companies, and so is likely to be of little use to Jo Loves or Zara. Moreover, the fact that Malone sold the rights in her name will likely preclude her from relying on this defence.

Ultimately, the precise wording of the contract between Estée Lauder and Jo Malone will be central to the outcome of this case, though it is worth noting that where individuals have assigned/sold the rights to their names, the Courts have typically upheld any contractual clauses relating to the on-going use of their name.

Malone isn’t the first business founder to run into legal difficulties as a result of selling the rights to her name to a third party. Previous legal disputes have arisen involving the rights to the fashion designer, Elizabeth Emanuel’s name, and designer Karen Millen previously lost a trade mark battle relating to the use of her name on goods that fell outside of the scope of her original business as a result of contractual clauses preventing her using her name in any future business ventures.

These cases serve as a useful warning to business owners/founders who use their own names as their brand. Whilst the use of one’s own name is common in certain business sectors, including fashion and beauty, individuals should think carefully when choosing to name their brand after themselves, as they may find themselves in a position where they face the prospect of losing their rights in their own name, should they wish to sell their business/brand further down the line.