Eau no! The legal reality of putting your name on the label

What you need to know

• Estée Lauder has filed a lawsuit in the UK against Jo Malone (personally, as well as against her company, Jo Loves) and Zara with claims relating to breach of contract, trade mark infringement, and passing off, due to Malone using her own name in a recent fragrance collaboration with Zara.
• In the wake of the recent Katie Perry High Court decision, the dispute is a reminder to understand the value of protecting your intellectual property and the implications to future business activities when selling your brand assets.

In the fashion and beauty industry, names go a long way and many companies use their founder's name as a brand, in and of itself. However some recent cases have highlighted the risks associated with using a personal name as a brand asset, and the importance of protecting the intellectual property rights in brands that feature a personal name.

Jo Malone & Estée Lauder

Estée Lauder, a cosmetics giant, has filed a lawsuit in the UK courts against British perfumer and entrepreneur, Jo Malone, for the use of her own name in a recent collaboration with the UK arm of the clothing retailer Zara. The case alleges breach of contract, trade mark infringement, and passing off.

In 1999, Malone sold her perfume brand, the eponymous Jo Malone London, to Estée Lauder. As part of the deal, Estée Lauder was granted exclusive rights to the "Jo Malone" name, which in turn prevented Malone from using her name in certain commercial contexts, including the marketing of fragrance.

Malone established the Jo Loves company and brand in 2011, following the end of a non-compete clause. Jo Loves is a fragrance brand that sells perfumes, candles, and other bath and body products.

In 2019, Zara's UK arm launched a collection of perfumes called "Zara Emotions by Jo Malone", with packaging and marketing materials which made clear that the fragrances were created by Malone. It is this product line that has prompted legal action from Estée Lauder, which has filed proceedings against Malone personally, her company Jo Loves, and ITX Limited (trading as Zara).

As yet, there are no court documents accessible to the public for review in this matter, and it remains to be seen how Malone and Zara will handle the claims. Regardless, the dispute is a reminder to understand the long-term impact of obligations contained within commercial agreements. Jo Malone has expressed her regret in interviews regarding the sale of rights in her name, even going so far as to state that she feels "the law needs to change".

Katie Perry

The Australian High Court recently heard a dispute between Australian fashion designer Katie Taylor (formerly Katie Perry) (Taylor) and American pop star Katy Perry (Katheryn Hudson)¹. This decision offers important lessons in relation to brands using personal names. On 29 September 2008, Taylor applied to register a trade mark for the word "Katie Perry" covering clothing and had been building a small, self-funded loungewear business under her name since that time. In 2009, Hudson applied to register the word "Katy Perry" in Australia for other goods and services, including for clothing, but ultimately amended her application to exclude clothing. However Hudson continued to sell Katy Perry branded clothing in Australia over subsequent years, leading Taylor to commence infringement proceedings against Hudson. While the primary judge found in Taylor's favour, the Full Federal Court overturned that decision and cancelled Taylor's Katy Perry mark. Finally on appeal, the High Court allowed Taylor's appeal and set aside the cancellation order.

The High Court's reasoning turned on three principles of direct relevance to eponymous brands. First, the Court drew a critical distinction between the reputation of a trade mark and the personal reputation of the individual whose name it bears. The High Court found that the Full Court had erred by conflating the two, treating Hudson's "Katy Perry" mark as having a "reputation in clothes" in Australia in 2009 by virtue of Hudson's fame as a pop star, despite the fact that not a single item of KATY PERRY branded clothing had been sold by Hudson in Australia at that time. The High Court confirmed that Hudson's reputation in Katy Perry at that time was confined to entertainment and recording discs. The High Court also rejected the Full Court's reliance on the "common practice" of pop stars selling branded merchandise, finding that a general industry tendency cannot establish trade mark reputation in goods that were not actually sold under the mark. This is a significant clarification, which makes clear that a globally recognised personal name will not establish trade mark reputation in relation to particular goods without evidence that the mark has been actually used on those goods.

Second, the High Court affirmed that the law will not reward the "assiduous efforts of an infringer". Here, Steward J characterised Hudson as a persistent infringer who had sold Katy Perry branded clothing in Australia through concert merchandise, pop-up stores, and major retailers, all in full knowledge of Taylor's registered Katie Perry mark. The High Court held that any confusion generated by Hudson's own infringing conduct could not be relied upon as a basis to cancel Taylor's registered mark. This principle is a powerful safeguard for registered trade mark owners – it clarifies that a party with greater commercial reach cannot overwhelm a registered mark through persistent infringement and then leverage the resulting market confusion to cancel that mark.

Third, the High Court placed significant weight on the absence of any evidence of actual confusion despite both marks coexisting in Australia for over a decade. As Jagot J observed, "ten years is a long time for two deceptively similar trade marks to be on the market in Australia with no evidence of any confusion". In this case, the fame of the Katy Perry name actually worked to reduce rather than increase the likelihood of confusion, as consumers familiar with this well-known mark when confronted with the "Katie Perry" trade mark on clothing, after a "moment's reflection" would conclude that the goods were not from or connected with "Katy Perry".

Other Australian examples

Issues with commercialising one's own name have come about in more cases than just the recent Jo Malone and Katie Perry disputes. Many fashion and beauty entrepreneurs have sold the rights to their own name – Bobbi Brown, founder of the Bobbi Brown makeup brand, also sold her name to Estée Lauder in 1995. She agreed to a similar non-compete obligation, which only ended in October 2020, 25 years after the brand was sold. Following this, Brown launched a new beauty brand, called Jones Road.

Australian fashion designer Peter Morrissey sold a majority share in the rights to his name, and it took 14 years – during which time the Peter Morrissey business changed hands several times, and the 'Peter Morrissey' trade marks were embroiled in various legal proceedings – for him to regain the rights to the Morrissey trade marks by purchasing them back from M Webster Holdings.

Fellow Australian designer Alannah Hill left her eponymous fashion label in 2013, and in doing so, transferred the trade marks of her own name to Factory X. Alannah Hill has forfeited rights to the Alannah Hill brand, and will have to continue to be cautious in future business ventures so as to not infringe the ALANNAH HILL trade marks owned by Factory X.

Key takeaways

The evolving dispute over the Jo Malone name, whilst clearly not isolated in the fashion and beauty space, is a key reminder of the importance of recognising brand power and the lengths that rightsholders will take to safeguard the value of intellectual property assets that are integral to their business. As stated by a spokesperson for Estée Lauder:

"…the Estée Lauder Companies has invested significantly in building Jo Malone London. Today it stands as an iconic global brand, with extraordinary brand equity and a distinct identity that is beloved around the world."

The Jo Malone name and brand have serious commercial power and stature, so it is understandable that Estée Lauder would seek to protect the goodwill and reputation it has built in this brand.

When selling a business or engaging in any agreement that sells or assigns intellectual property and branding rights, particularly in the case of one's own name, it is critical to what rights stand to be forfeited, and to be prepared to negotiate terms that do not leave you exposed to unwanted consequences in the pursuit of new business opportunities.

The Katie Perry/Katy Perry decision highlights that where a personal name is being used as a brand, it pays to secure a trade mark registration early. Taylor, a self-funded local small business owner, prevailed against a global celebrity brand because she had taken the proper steps to register and use her Katie Perry mark. It also affirms that the law will not reward bad behaviour; it did not allow Hudson to cancel a mark on the basis of confusion caused by Hudson's own infringing conduct.

Authors: Maria Sun, Partner and Lily Sommer, Lawyer.