Estée Lauder sues Jo Malone for trade mark infringement

A new UK dispute between Estée Lauder, Jo Malone and Zara over the “Jo Malone” name underlines a familiar challenge in the fashion and beauty sector. When trade mark rights in a designer’s personal name are sold, tensions can arise over how that name is used going forward. Our Intellectual Property team examines the latest UK development.

Introduction

Following our article reporting on a Court of Justice of the European Union (CJEU) decision about whether a trade mark made up of a designer’s surname can be revoked, there has been another recent development in this area. The issue in the CJEU case was whether revocation is possible where the trade mark is used in a way that misleads consumers into thinking the designer is still involved when they are not. That dispute involved the surname of the fashion designer, Jean-Charles de Castelbajac.

In similar circumstances in the UK, Estée Lauder sued perfumer Jo Malone in March 2026. Estée Lauder also sued her new fragrance brand and Zara’s UK business for using the “Jo Malone” name.

Sale of use of name

This case is similar to the Karen Millen case from 2016. Karen Millen sold the majority stake in the Karen Millen brand to a third-party company, including all goodwill in her name. Jo Malone also sold her well-known perfume brand and trade mark to Estée Lauder in 1999. She then resigned as creative director for the company in 2006. In accordance with Estée Lauder’s acquisition documents, Jo Malone was bound by a restrictive non-compete clause for five years. She was also prohibited from using her name “Jo Malone” for commercial reasons in the future.

Trade mark infringement

When her non-compete restrictions expired in 2011, Jo Malone set up a new perfume brand called Jo Loves. Subsequently, in 2025, and in collaboration with the UK high street retailer Zara, Jo Loves launched a new affordable perfume collaboration. The new product packaging includes the wording “A creation by Jo Malone CBE, founder of Jo Loves”. It is the use of the name “Jo Malone” on Zara’s new product packaging which has formed the basis of Estée Lauder’s legal action against Jo Malone and Zara. Estée Lauder’s claims against both Jo Malone and Zara are for:

1. Breach of contract
2. Trade mark infringement, and
3. Passing off

Comment

The UK case against Jo Malone and Zara is in its infancy. There is a long way to go before a trial on the matter. However, the bringing of proceedings here serves as a reminder of the trade mark issues which frequently arise for companies acquiring rights to fashion brands. It highlights the considerations for designers who wish to sell their rights to the use of their name. The key takeaway for all parties is that trade marks containing and/or consisting of personal names may continue to be valid even when the named person is no longer involved in the design of the products bearing those trade marks.

However, designers and brand owners need to pay close attention to how products are marketed. They must ensure the marketing does not cause consumers to believe that the named person is actively involved in the creation or design of those products, if that is not the case.

For further information and expert legal advice on how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.

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