Selling your name: lessons from the Jo Malone v Estée Lauder trade mark dispute

The much-reported recent case of Estée Lauder filing a claim against Jo Malone, personally, for using her own name has caused many to scratch their heads. How can someone be prevented from using their own name?

According to Estée Lauder (the owner of the luxury 'Jo Malone London' brand), Jo Malone's use of her own name in relation to her separate 'Jo Loves' perfumery business is a breach of various rights acquired when Estée Lauder purchased the Jo Malone London business from her in 1999.

The dispute shows how messy matters can become when a public personality or business founder sells rights in a namesake brand to a third party, and who subsequently re-enters the market with new commercial ventures.

At the root of the conflict is a question about how far the law should prohibit restrictions that prevent individuals from trading using their own names. It is unsurprising that name-related disputes often capture the public eye. These cases can be easily construed as a battle between a faceless corporate entity and a human being for control of a core part of the heir identity.

The reality is perhaps more nuanced. With namesake brands, the founder has already intertwined their identity with a business. If they choose to sell that business, rights in the name are often a highly valuable part of what they are selling. The natural desire to keep using one's own name post-sale makes this area ripe for dispute if not managed carefully, as this case has shown.

What claims has Estée Lauder brought?

Estée Lauder's claims centre on the use of wording such as 'A creation by Jo Malone CBE' on fragrance bottles and related materials released by Jo Loves as part of a collaboration with Zara.

The action is brought not just against Jo Malone personally, but also Jo Loves Limited, Jo Loves (Wholesale) and Zara (ITX UK).

Estée Lauder is advancing a number of claims, including:

(a) trade mark infringement: infringement of Estée Lauder's registered 'JO MALONE' trade mark;

(b) passing off: misrepresenting Jo Loves' products as being connected with, or originating from, Jo Malone London in a way that amounts to passing off; and

(c) breach of contract: breach of the 1999 share purchase agreement (under which Estée Lauder acquired the Jo Malone London business), which it says restricted Jo Malone’s ability to use the 'Jo Malone' name in certain commercial contexts.

Trade mark infringement and the 'own name defence'

Estée Lauder points to its 'JO MALONE' mark, registered in respect of the same types of goods (fragrances), to argue that phrases like 'A creation by Jo Malone CBE' used by the defendants amount to infringement.

The most common ground for trade mark infringement is that a third party has, in the course of trade, used a similar or identical mark for the same or similar goods or services. Where the goods and/or marks are merely similar, rather than (which Jo Malone may argue is the case where 'CBE' or 'founder of Jo Loves' elements have been used alongside the 'Jo Malone' name on the Zara products), that use must also be likely to cause confusion among consumers as to the trade origin of the goods.

Jo Malone may try to deploy the so-called 'own name' defence to trade mark infringement. This permits natural persons to use their own name in business – even where that name overlaps with an existing trade mark – provided the use is in accordance with 'honest practices in industrial or commercial matters'. Alternatively, but relatedly, Jo Malone might argue the name was only used descriptively, almost like a credit, to identify the creator of the fragrance in her personal capacity, rather than as a brand signifier. That defence is also subject to an honest practices requirement.

'Honest commercial practices' is a high bar. The court in Samuel Smith Old Brewery v Lee set out a long list of relevant factors that the court could consider when assessing honesty, including:

• whether the use interferes with the trade mark owner’s ability to exploit its mark;
• whether the defendant knew of the mark, or should reasonably have discovered it; and
• whether the defendant appreciated, or ought to have appreciated, the likelihood of confusion.

In Céline SARL v Céline SA (an EU case), the court suggested that honest practice may, at a minimum, require reasonably diligent search for prior conflicting marks and, if any were found, contacting the trade mark owner and respecting any reasonable objection raised in response.

In a case like Jo Malone's, these may present challenging hurdles. Where a defendant is the individual who founded and sold the brand to the claimant, it is hard to argue they did not have a reasonable awareness of the existence of the claimant's marks and their commercial significance.

It is also worth noting that the 'own name' provision operates only as a defence to infringement. While that means it is relevant to the Jo Malone proceedings, it also means it would not be relevant where an individual seeks to register a trade mark comprising their name despite the existence of a similar or identical third-party mark.

That was illustrated when celebrity chef James Martin sought to register his name in relation to a range of beverages in 2022, as part of a plan to extend his brand into the drinks market. The UK Intellectual Property Office refused the registration, noting the likelihood of confusion with existing JAMES MARTIN whisky marks, which had been registered for decades, remained in use and had been used on an unregistered basis for more than 100 years.

Passing off

Estée Lauder also alleges passing off. Unlike trade mark infringement, passing off does not depend on registered rights. Instead, it arises automatically where, in broad terms, a business has developed a reputation (or 'goodwill') reflected in its name, logos or get-up, and a third party misleads the public into believing its own goods are connected with the claimant (eg by using similar trading names, logos or get-up).

Passing off can be evidentially complex to establish. Although the own name defence does not formally apply to passing off, similar considerations may surface indirectly. For example, if the use of the name would naturally be understood by consumers as a genuine identifier of Jo Malone as a person, this may weaken the allegation of a misrepresentation that is misleading consumers.

Breach of contract and 'unreasonable restraint of trade' considerations

A central claim for Estée Lauder is for breach of contract. It argues that Jo Malone has breached provisions in the 1999 share purchase agreement which expressly restrict her from using the name 'Jo Malone' in certain commercial contexts.

Unlike trade mark law, English contract law does not recognise an equivalent to the 'own name defence'. Where a party freely enters into a contract restricting the use of their name in certain commercial contexts, the courts will generally honour that agreement.

One example was the judgment in Millen v Karen Millen Fashions, a legal battle centred on designer Karen Millen's attempts to trade using her own name after selling her Karen Millen fashion brand. Under a 2004 sale agreement, Karen Millen was purportedly restricted from using "the name 'Karen Millen' or any other name confusingly similar thereto" in certain contexts. The court upheld the restrictions.

That said, defendants in own-name disputes have sometimes argued that clauses of this sort amount to an unreasonable restraint on trade. Under English law, restraint of trade clauses are void unless they:

• seek protect a legitimate business interest;
• go no further than reasonably necessary to protect that interest; and
• are not contrary to the public interest.

The doctrine has had some success in own-name disputes. In Hepworth Manufacturing Co Ltd v Ryott, the court struck down a restriction preventing a film actor from using his well-known stage name, finding it "tyrannous and oppressive", harmful to his ability to earn a living and not reasonably required to protect the producers seeking to enforce it.

Whether the argument succeeds will turn on the facts of the given case. In the Karen Millen dispute, unreasonable restraint of trade was not pleaded by the designer (or rather, was put forward late and accordingly not considered by the court). The judge did, however, note that similar considerations about reasonableness and the protection of legitimate interests were already engaged by other clauses in the contract – suggesting that express invocation of a restraint on trade argument may not have materially affected the outcome.

Key implications for founders and buyers

For founders, public personalities and high-net-worth individuals, the lesson from the Jo Malone dispute is clear: think carefully, at the point of sale, about future creative and commercial ambitions.

Contractual carve-outs for specific types of permitted uses, with future ventures in mind, should be considered explicitly and drafted with precision. What may seem like a distant hypothetical at the time of sale can become a live constraint years later.

It is also wise for the founder to register their name as a trade mark across multiple classes to cover potential future ventures prior to sale to bolster its position and make clearer what uses of the name are and aren't included in the sale.

Another tool for the founder to consider is a reversion clause, so that rights in the name will revert to the founder in certain circumstances, for example if the business is sold, to protect the name from ending up in the wrong hands. Founders might alternatively consider licensing rights in their own-name brand to third parties, rather than an outright sale of the business and associated rights, to retain greater control and ownership of the rights in their name. All these points are a matter of negotiation and ultimately may affect sale price.

Once founders have set up the new venture, the key question becomes ensuring proposed uses of their own name are reviewed before launch to assess the level of legal risk.

For companies and organisations acquiring namesake brands, it is important to ensure that the rights acquired, including over the name, are robust and aligned with commercial expectations. However, buyers should also be alive to the limits of those rights, whether arising from trade mark doctrines such as the 'own name defence' or from the possibility (albeit narrow) of restraint of trade challenges.

There is also a reputational dimension to bear in mind for rights holders seeking to enforce restrictions on individuals using their own names. Disputes of this kind are easily framed as a corporate attempt to control an individual, and claimants should be careful not to undermine the reputation of the very brand they are seeking to protect through what could be viewed as aggressive legal challenges.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, May 2026