Intellectual property is often one of a business’s most valuable assets, but as a recent high-profile dispute shows, it can also become one of the most complex. The ongoing legal battle involving British perfumer Jo Malone and Estée Lauder highlights a fundamental issue in modern brand law: what happens when a personal name becomes a protected trade mark?

The Background: From Founder to Defendant

Jo Malone built her reputation in the 1990s with a distinctive fragrance brand that quickly gained a loyal following. In 1999, she sold her business, including the rights to the “Jo Malone” name, to Estée Lauder. As part of that agreement, she accepted contractual restrictions on how her name could be used commercially, particularly in connection with fragrance products.

Years later, Malone launched a new brand, Jo Loves, and entered into a collaboration with high street retailer Zara. The issue arose from product packaging that described the fragrances as: “A creation by Jo Malone CBE, founder of Jo Loves.”

Estée Lauder has now brought proceedings against Jo Malone, Jo Loves, and Zara’s UK arm. The claims include trade mark infringement, breach of contract, and passing off, arguing that the use of her name risks confusing consumers and breaches the original sale agreement.

The “Own Name” Defence

UK law does provide what is known as the “own name defence,” which allows individuals to use their own names in business. However, this defence is limited.

It only applies where the use is:

· By a natural person (not a company), and

· In line with honest commercial practices

Courts in England and Wales have historically taken a narrow view of this defence. Importantly, it does not automatically override contractual obligations. If a founder has agreed not to use their name commercially in certain ways, that agreement will usually take priority.

This means that even truthful statements, such as identifying a founder on product packaging, can become legally problematic if they cross into trade mark use or create a risk of confusion.

Trade Mark Infringement and Passing Off

Estée Lauder’s claims also rely on two core legal principles:

· Trade Mark Infringement- This occurs when a sign identical or similar to a registered trade mark is used in the course of trade in a way that is likely to confuse consumers.

· Passing Off- This protects the goodwill of a business. To succeed, a claimant must show established reputation in the brand, a misrepresentation leading to consumer confusion, and damage resulting from that confusion

Even if Jo Malone’s use of her name was not intended to mislead, the key question will be whether consumers could believe the Zara collaboration is connected to the original Jo Malone brand.

Lessons for Businesses and Founders

· Protect your brand early- Registering a trade mark from the outset ensures you control how your name is used and gives you stronger legal protection if disputes arise.

· Understand your contracts- Always review the terms of any agreement involving your brand, especially when collaborating, licensing, or selling. These terms can restrict how you use your name in the future.

· Consider licensing instead of selling- Licensing your brand can allow you to retain ownership while still benefiting commercially, rather than giving up rights entirely.

· Stay aligned from the start- Your branding, trade mark protection, and contractual agreements should all work together to avoid issues later on.

Berry Smith’s Bottom Line

The Jo Malone dispute is a powerful reminder that intellectual property, particularly trade marks, can shape the future of a business long after a deal is signed.

At Berry Smith, we understand that trade marks are more than just legal formalities; they are the foundation of your brand’s identity and value. Whether you are launching a new business, protecting an existing brand, or negotiating the sale of a company, getting your trade mark strategy right from the outset is essential.

If you are interested in ,registering a trade mark, reviewing your existing IP strategy or renewing or enforcing your rights, please do not hesitate to contact us at commercial@berrysmith.com or on 029 2034 5511.