Introduction
In March 2026, it was reported that British perfumier Jo Malone is the subject of litigation by Estée Lauder, relating to the use of her own name.
The proceedings raise interesting questions about what can happen when a brand owner sells the commercial and legal rights to their own name.
Background
Estée Lauder bought Malone’s perfume business, Jo Malone Limited, in 1999, including all associated trademarks and the right to use the words "Jo Malone" for specified commercial purposes. As part of the sale agreement, Ms Malone agreed to refrain from using her own name, "Jo Malone", in certain commercial contexts, including in connection with the marketing of fragrances.
The dispute places focus on how that contractual restriction should be interpreted. High Court proceedings were issued on 11 March 2026 by Estée Lauder Europe and Jo Malone Limited against Malone personally, Jo Loves (a brand launched by Malone in 2011) and ITX Limited (which trades as Zara), with whom Jo Loves has a fragrance collaboration.
The wording used by Zara on its packaging to describe the fragrances within its collection is: “Creation By: Jo Malone CBE, founder of Jo Loves”. One of the issues in the case is whether this wording constitutes commercial use of the “Jo Malone” name for the marketing of new fragrance products and whether this violates the original sale agreement.
Sale of rights to own name
A similar situation arose between Karen Millen and her brand Karen Millen Fashions Ltd (KMF) in 2016, which she had sold to a third party in 2004. Millen sold the brand under a Share Purchase Agreement (SPA), which contained restrictive covenants that put limitations on the use she could make of her own name for business purposes in the future.
After alluding to launching a new brand under the name “Karen”, the new owners of KMF commenced litigation, asserting that the contemplated branding would breach contractual restrictions in the SPA governing her use of the name. A settlement resolved the UK and European position, but not those in the US or China.
Millen subsequently brought her own proceedings, seeking negative declarations that specific actions would not breach the SPA. KMF brought a counterclaim, alleging breach of the SPA.
The main take away from the case is that the restriction on using the name “Karen Millen” was interpreted broadly, thereby preventing Millen from using the name or any “confusingly similar name” in relation to clothing or similar goods. Therefore, the contemplated commercial use of “Karen” would have breached the SPA and encroached upon the protected brand identity.
Such matters consistently attract significant media attention, as often the individuals involved have a prominent public or business profile. We saw a glimpse of that again a few weeks ago when there was publicity about an apparent dispute between Brooklyn Beckham and the rest of the Beckham family, and it was revealed that Victoria Beckham owns registered trademarks in the "Brooklyn Beckham" name. It remains to be seen whether this reported family dispute will develop into a trademark dispute.
How is the Jo Malone case likely to play out?
Estée Lauder has alleged trademark infringement, passing off and breach of contract. The proceedings have only just commenced, but one can infer from the Courts' previous consideration of similar issues, that the interpretation of the meaning and effect of the precise contractual terms will be of key importance to how the case is ultimately decided.
The dispute underscores the legal risks that founders and designers face when they sell the commercial rights to their own name, even years after the deal.
Equally, we have seen a number of cases in recent years where businesses have understood themselves to have acquired exclusive use of a brand name which, because it features an individual's actual name, has ultimately led to costly and expensive litigation. Therefore, it is crucial that both parties to any sort of transaction which involves the transfer or licensing of rights to an individual's name fully understand the rights that they are acquiring or giving up.
To find out more about how DWF can support clients in respect of their intellectual property, please contact Imogen Francis (non-contentious) or James Griffiths (contentious).
