Trademark Battle Erupts as Estée Lauder Takes Action Against Jo Malone Following Zara Collaboration

Entrepreneurs are free to use their names on brands that they create. However, this is provided that there are no precedents that could result in ugly legal aftermaths. This is what best describes the mess that British perfumer Jo Malone is facing.

After selling the rights to her name to Estée Lauder Companies in 1999, part of the deal was that she could no longer use her name for commercial reasons. However, a collaboration with High Street retailer Zara raised some issues, particularly the 10-word tagline on the packaging that read: 'A creation by Jo Malone CBE, founder of Jo Loves.'

This resulted in a trademark dispute, leading Estée Lauder to take legal action against Malone and Zara's UK arm for trademark infringement and breach of contract. According to Estée Lauder, this goes against their 1999 deal where Malone had agreed not to use the 'Jo Malone' name for commercial purposes, BBC News reported.

'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,' a spokesperson for Estée Lauder Companies said.

Further, it was also pointed out that Malone was compensated as part of the deal. Before the current issue, the British entrepreneur had abided by those terms.
'She was compensated as part of this agreement, and for many years, she abided by its terms,' the spokesperson added.

Regretting 'Too Late'

After admitting that selling her perfume brand in 1999 was something she regretted, Malone apparently overlooked the consequences of her decision. In fact, she openly admitted in multiple interviews that it was one of the biggest mistakes of her life.

Regardless, it left her with no choice but to start anew, this time with the Jo Loves brand, which launched in 2011. Eight years later, new opportunities came following a collaboration agreement with Zara. That was until the issue over the wording used on the packaging of the scents drew attention.

For Estée Lauder, the wording was a form of misleading customers into believing that the products were from another company, the Financial Times reported.

History of Fashion Trademark Battles

The Estée Lauder v Jo Malone legal battle calls to mind similar fashion-related conflicts in the past. Fashion designers Karen Millen and Elizabeth Emanuel, were behind the design of Princess Diana's wedding dress but lost their rights to use their own names commercially after selling their business. However, Emanuel regained her right to use her name years later.

Moreover, there are other cosmetic entrepreneurs who sold their businesses and the rights to their names. Bobbi Brown sold hers to Estée Lauder in 1995 but ended up launching a new brand called Jones Road, The Telegraph reported.

There is also the case of handbag designer Kate Spade. After selling her rights to Liz Claiborne in 2006, she changed her name to Kate Valentine (or Kate Valentine Spade) in 2016. It was meant to distinguish her name and her new brand, Frances Valentine. This allowed her to establish a new identity and separate her personal life from the brand.

It remains to be seen how the legal battle between Jo Malone and Estée Lauder will turn out. Efforts were made to seek comments from Inditex, the owner of Zara and Jo Loves but both have yet to respond.