Philip Formosa
In the luxury sector, a name is more than a signature; it is often also a valuable commercial asset. But when a founder sells a brand bearing their own name, a delicate question arises: where does the business end and the individual begin?
This tension is now at the heart of a high-profile dispute before the UK High Court that could inform the future of personal branding.
Estée Lauder has reportedly initiated proceedings against renowned perfumer Jo Malone, her current brand Jo Loves, and retail giant Zara. The claim, said to exceed £200,000 in damages, raises a complex and emotionally charged issue: can a brand founder reclaim meaningful use of their own name after selling it as part of a business?
Central to the dispute is a phrase being used in marketing and on product packaging:
“A creation by Jo Malone CBE, founder of Jo Loves.”
While Malone argues this is a factual statement, Estée Lauder contends it is an attempt to capitalise on the reputation and goodwill of Jo Malone London – a brand she sold to them in 1999.
After a five-year non-compete period, Malone returned to the industry in 2011 with Jo Loves, with both brands being present in the market since then. That balance now appears to have been disrupted by the Zara collaboration and, more particularly, this attribution statement.
From Estée Lauder’s perspective, the phrase risks misleading consumers and constitutes trade mark infringement, breach of contract, and passing off. Malone’s reaction is rooted in a clear sentiment: “I sold a company, I did not sell myself.”
This also invokes what is commonly referred to as the “own name” defence. Under the UK Trade Marks Act 1994, there is a narrow defence permitting the use of one’s own name in trade. A similar provision exists across Europe under the EU Trade Mark Regulation and the EU Trade Marks Directive (implemented in Malta under article 16 of the Trademarks Act).
This defence operates as a limitation to the exclusive rights of a trade mark, but it is also conditional on the use being in accordance with honest commercial practices.
Even then, it may still be weakened where there is a contractual agreement transferring or otherwise restricting the use of the name, with the operative terms of the agreement typically being key.
Malone’s situation is not an isolated one. Several high-profile founders have faced comparable constraints after selling their eponymous brands.
Karen Millen, for example, was involved in litigation over her right to continue using her name for new fashion ventures following the sale of her company. Others, such as Elizabeth Emanuel, Bobbi Brown, and Kate Spade, have also found themselves embroiled in similar, prolonged legal battles.
Building a brand around one’s own name can foster authenticity and customer trust, but it may also create long-term constraints once that name is sold or even licensed.
This case, therefore, also engages broader questions about the boundary between personal identity and commercial ownership. The developments in this case, as it unfolds, will be interesting to follow, as they may ultimately test whether a person can truly divest themselves of their personal identity.
Philip Formosa is a senior associate within the IP and TMT practice group at Ganado Advocates. The content of this article is provided for information purposes only and does not constitute legal advice.
