Leave me Malone – the scent of a name dispute

Estée Lauder Europe LLC, Jo Malone Inc., and Jo Malone Limited have issued proceedings in the UK against Zara’s UK entity, ITX UK Ltd, as well as Joanna Lesley Willcox (née Malone) personally, and her companies Jo Loves Limited and Jo Loves (Wholesale) Limited. The claims allege trade mark infringement, passing off and breach of contract arising from the sale of fragrances by Zara bearing the wording: “CREATION BY: Jo Malone CBE, founder of Jo Loves.”

Estée Lauder acquired the Jo Malone brand in 1999. Under that agreement, Jo Malone reportedly agreed not to use her name in certain commercial contexts, including fragrance marketing, a restriction Estée Lauder says remains binding.

Although Jo Malone left the original brand in 2006 and launched Jo Loves in 2011 after her non‑compete expired, Estée Lauder claims the Zara collaboration improperly uses the Jo Malone name in a way that may mislead consumers into believing the products are connected with the Jo Malone brand.

The disputed wording appears on Zara’s website and reportedly also on product packaging, forming the basis of the action.

Comment

This case underscores the legal complexities that arise when a founder sells an eponymous brand but later returns to the same sector. Estée Lauder’s position is that it purchased not only the Jo Malone business but also the goodwill and exclusive rights to the Jo Malone name in commercial fragrance contexts back in 1999. On that view, any later use of the name in a way that signals origin, endorsement or brand affiliation would sit squarely within the territory governed by the original contractual restrictions.

The dispute centres on whether the phrase used in the Zara collaboration: “CREATION BY: Jo Malone CBE, founder of Jo Loves” functions merely as an attribution to the individual perfumer or whether it operates in a way that could suggest an association with the Jo Malone brand. This underpins both the trade mark infringement and passing off claims, which depend on whether consumers are likely to be misled about the origin or endorsement of the products. Anecdotally, a colleague who viewed the fragrances in store noted that it was difficult to identify which products formed part of the collaboration.

Contracts involving eponymous brands frequently include limitations intended to safeguard the transferred goodwill. Estée Lauder’s position is that the Zara wording constitutes precisely the type of commercial use the 1999 agreement sought to restrict. Whether that wording functions as an indicator of commercial origin, rather than a reference to the individual, will be a key issue for the court. Unfortunately, we cannot see the terms of the 1999 contract, which are likely to be pivotal, particularly if questions arise about whether the relevant obligations remain in force.

On the other hand, Jo Malone has operated Jo Loves as a distinct brand since 2011, after the expiry of her non‑compete period. The use of her full name, her honorific “CBE,” and the explicit reference to “Jo Loves” all appear designed to signal that the attribution relates to her as an individual and her current business identity, not the prior brand. The legal question is therefore not whether she may trade in the sector, but whether the specific phrasing used in this collaboration crosses the boundary of what is permissible under the contractual and trademark framework.