The smell of success? Jo Malone’s dispute with Estée Lauder

Fragrance magnate Jo Malone is locked in a dispute with Estée Lauder Companies (ELC) over the use of her own name.

Having sold 100% of her company to the beauty giant in or around 1999, Jo Malone agreed not to use her name for commercial purposes. Fast forward to 2026 and Jo Malone’s new company, ‘Jo Loves’ has signed a fragrance deal with Zara, prompting ELC to launch multiple lawsuits.

With Christmas around the corner when sales of perfumes usually soar, it seemed a fitting time for Pippa Garden, solicitor in the dispute resolution team to consider the dispute and to explain what lessons other businesses can learn from it.

The background

When Jo Malone sold her company and the rights to her name, she also signed a non-compete agreement preventing her from launching any new fragrance or skincare brand for a period of time.

After the non-compete period had expired, she launched her new business venture, ‘Jo Loves’, a luxury fragrance brand. In the same year, ‘Jo Loves’ began a collaboration with Zara, selling luxury inspired fragrances at an affordable price point.

Who are Estée Lauder Companies suing and why?

It has been reported that ELC have sued Jo Malone herself, Jo Loves and Zara’s UK entity, stating that the “use of ‘Jo Malone’ in connection with recent commercial ventures goes beyond that legal agreement and undermines Jo Malone London’s unique brand equity”.

We understand that ELC’s claim includes:

• Breach of contract
• Passing off
• Trade mark infringement

So, is this a breach of a legal agreement as claimed by ELC, or should ‘sense prevail’ as argued by Jo Malone? Jo Malone claims that both Jo Loves and Zara have gone ‘above and beyond’ to be clear that the collaboration is ‘nothing to do with Jo Malone London, the company’.

What lessons can other companies take from this case?

Claim: ‘Breach of contract’

ELC may try to demonstrate that, by putting her name to the new Jo Loves collection, Jo Malone has breached the terms of the contract of sale.

Typically, long-term restrictions agreed as part of a company sale are documented in the contract effecting the sale.

When signing any legal contract, be sure to consider how it will impact your long-term plans and whether any restrictions could impact your future.

Lesson: consider future implications
 

Claim: ‘Breach of trade mark infringement’

Trade mark infringement occurs when a mark identical or similar to that of a registered trade mark is used in the course of trade without prior authorisation from the owner of the trade mark.   

As ELC owns the rights to the trade mark “Jo Malone”, they will likely try to assert that the defendants are infringing their rights in the ‘Jo Malone’ mark.

Lesson: Be sure to consider your proposed branding – is it the same or similar to another business’s branding, logos or marks?

Claim: ‘Passing off’ 

‘Passing off’ is a legal claim available to the owner of unregistered trade marks where a business misrepresents their goods/services as those of another.  

In order to be successful in a claim for passing off, ELC would need to prove that:

1.     Jo Malone London has an established reputation as a brand

2.     there has been a misrepresentation leading to customer confusion

3.     the customer confusion has caused damage to ELC

Lesson: If you seek to benefit from the reputation of another business, you are at risk of a claim in passing off.   

The ‘own name’ defence?

UK law provides an “own name defence” allowing individuals, in certain circumstances, to use their name in business without it infringing a registered trade mark.

The defence is fairly limited in scope and only applies where the use is both:

1. by a natural person (i.e. not a company); and
2. in line with honest commercial practices.

This is a defence to trade mark infringement claims, rather than claims for passing off or breach of contract.

In conclusion

Ultimately the outcome of this case will depend on a number of issues including how the claim is put, the details of the original contract, what rights were sold, what restrictions were agreed upon and how broadly those restrictions were intended to apply.

If you would like advice on how to protect your IP, please contact Tom Justice, partner in our commercial team at [email protected].

Alternatively, if you have concerns that your IP has been infringed or if you find yourself involved in a dispute relating to IP, please contact George Festing at [email protected], partner in our dedicated IP disputes team.