A celebrity using their own name for commercial interests can become difficult when that brand is purchased. Jo Malone has recently found this out the hard way as Estée Lauder has brought legal proceedings in the High Court against Jo Malone herself, her brand Jo Loves and ITX UK, the retail distributor of Zara, for breach of contract, registered trade mark infringement and a claim for passing off.
The case stems back to 1999 when Jo Malone, sold her eponymous perfume brand to Estée Lauder for an undisclosed fee. From the UK Intellectual Property Office trade mark register, Jo Malone Inc is the registered proprietor of various trade marks for 'Jo Malone' so it is presumed this was the corporate vehicle used by Malone to sell her brand. The claim stems from Malone launching a new collaboration of fragrances with Zara in partnership with her brand Jo Loves. The packaging includes the statement "A creation by Jo Malone CBE, founder of Jo Loves". The Zara and Jo Loves collaboration started in 2019.
As we have previously written regarding celebrities trade marking their own names (see our thoughts on Brooklyn Beckham), commercialising a brand can become very messy if someone sells their brand but still wants to use their name.
Section 11(2)(a) of the Trade Marks Act 1994 provides an “own name defence,” allowing an individual to use their own personal name or address in the course of trade, provided that such use is consistent with honest commercial practices which Malone will likely raise. However, the courts in England and Wales have generally taken a restrictive approach to this defence. A registered trade mark is treated as a form of property capable of commercial exploitation, and the fact that a mark corresponds to a person’s own name does not mean that they retain an unrestricted right to trade under it once they have assigned those rights.
In this case, it appears Malone assigned (i.e. sold) the rights to commercialise her name in 1999. The terms of that agreement will therefore be crucial. The outcome is likely to turn on the specific contractual wording, particularly regarding what Malone is still permitted—or prohibited—from doing under trade mark law.
Great care needs to be taken when using a name as a brand and thought needs to be considered for future exploitation.
For more information, please contact our intellectual property team.
