Estee Lauder Companies Inc has filed a claim against the perfume company, Jo Loves, as well as Jo Malone and the fashion retailer, Zara, for breach of contract, trade mark infringement and passing off.
This follows a recent fragrance collaboration between Jo Loves and Zara in the UK, the packaging for which reportedly contained the words “Created by Jo Malone CBE, founder of Jo Loves”. The issue at hand is that Jo Malone sold her fragrance brand ‘Jo Malone London’ to Estee Lauder in 1999 and part of the sale agreement was that Malone could not use her name in connection to any fragrance marketing. Estee Lauder allege that the marketing of the Jo Loves x Zara campaign is trading on the reputation of the Jo Malone London brand, leading consumers to believe that the products sold are associated with Jo Malone London.
Estee Lauder has said that Malone’s recent ventures, implying her Jo Loves’ collaboration with Zara, have gone beyond what was contractually agreed when the Jo Malone London brand was bought by Estee Lauder, and that the use of her name in this way undermines Jo Malone London’s unique brand identity. They have therefore alleged breach of contract in addition to trade mark infringement and passing off on this basis.
Jo Malone London is what is known as an ‘eponymous brand’ which is one that is named after its founder, and the founder is therefore the brand. Malone’s creation of the brand ‘Jo Loves’ following the sale of Jo Malone London and the associated commercial rights in her name, is not uncommon. Makeup artist Bobbi Brown sold the Bobbi Brown makeup brand to Estee Lauder in 1995, then set up her own company called Jones Road.
It will be interesting to see how this case pans out, it adds to the growing discourse around personal identity and trade marks and the use of one’s own name in a commercial context. Similarly, though in a different context, McDaniels Law reported on the ongoing trade mark dispute between signer Katy Perry and the Australian Fashion designer ‘Katie Perry’ last week, to read more please click here.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
