Jo Malone sued for using her own name in collaboration with Zara

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Faarea MasudBusiness reporter

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Jo Malone sold her eponymous perfume brand, including the rights to her name, in 1999

British perfumier Jo Malone is being sued by Estée Lauder Companies for using her name in a collaboration with High Street retailer Zara.

The US cosmetics giant bought Malone’s eponymous perfume brand, Jo Malone London, including the rights to her name, in 1999.

Though the Zara collaboration was with Malone’s new brand Jo Loves, Estée Lauder Companies took issue with the use of Malone’s name on the packaging, which read: “A creation by Jo Malone CBE, founder of Jo Loves”.

The group is suing Jo Malone herself, Jo Loves and Zara’s UK arm for trademark infringement and breach of contract. The BBC has approached Jo Malone for a response. Zara UK declined to comment.

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The Zara and Jo Loves collaboration started in 2019.

Malone has previously said she regretted selling the rights to use her own name for commercial purposes.

Under the terms of the 1999 deal, Malone had agreed not to use the “Jo Malone” name forcommercial uses, including marketing fragrances.

As first reported by the FT, Estée Lauder Companies is also taking legal action regarding passing off, which is when customers are misled into thinking a product is from another company.

Jo Malone’s fragrance business was founded in the early 1990s, and became popular for unique fragrances using British nature and blossoms as inspiration for its ingredients. The brand expanded to include scented candles and bath products.

A spokesperson for Estée Lauder Companies said when Malone sold the brand, "she agreed to clear contractual terms that included refraining from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances.

"She was compensated as part of this agreement, and for many years, she abided by its terms.

“We respect Ms Malone’s right to pursue new opportunities. But legally binding contractual obligations cannot be disregarded, and when those terms are breached, we will protect the brand that we have invested in and built over decades.”

One expert told the BBC the case had similarities with previous legal battles involving fashion designers Karen Millen and Elizabeth Emanuel who, along with her then-husband, designed Princess Diana’s wedding dress. After selling their businesses both women lost the rights to use their own names in a commercial context. Many years later Emanuel regained the rights to her name.

“The UK courts have shown a willingness to uphold the terms that sellers agree to, even if they restrict the ability of an individual to use their name commercially,” said Ben Evans, head of trademarks at law firm Harper James.

“The devil will, however, be in the detail of the original agreement: what rights were sold, what restrictions were agreed, and how broadly those restrictions were intended to apply.”

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