When Your Name Becomes a Brand: the Jo Malone Trademark Dispute
Most people think of a trademark as a logo. In reality, it can be much more than that.
A trademark can be a name, word, phrase, logo, symbol, colour, shape, sound, or other sign that helps customers recognise the source of goods or services. In simple terms, it is a badge of origin. It tells the public who is responsible for a particular product or service.
That is why trademarks are so valuable. They help customers identify a business, trust a particular level of quality, and distinguish one brand from another.
The recent dispute involving Estée Lauder and the British perfumer Jo Malone is a useful reminder of how powerful trademarks can be, especially where a person’s own name becomes closely connected with a commercial brand.
If you’re experiencing a trademark dispute, understanding your legal rights is essential to securing damages. Do you need help with a trademark dispute? Book a Free Consultation Call by calling 0208 185 0990.
The Jo Malone example
Jo Malone founded the perfume brand that carries her name. She later sold the brand to Estée Lauder Companies in 1999. As part of that deal, she was restricted from using the name “Jo Malone” for certain commercial purposes, including the marketing of fragrance.
After a non-compete period ended, she launched a new fragrance business called Jo Loves. More recently, Jo Loves collaborated with Zara on a fragrance collection. The packaging reportedly referred to the products as “A creation by Jo Malone CBE, founder of Jo Loves.”
Estée Lauder has now taken legal action, arguing that this use of the name “Jo Malone” exceeds the terms of the agreement and undermines the value of the Jo Malone London brand.
Whatever the outcome of the trademark dispute, the situation highlights an important commercial point: a name can become a valuable business asset, and once rights in that name have been sold or registered, the legal position may not be as straightforward as people expect.
What is a trademark?
A trademark is a sign that identifies the goods or services of one business and separates them from those of another.
For example, when a customer sees a brand name on a bottle of perfume, a restaurant sign, a clothing label, or a software product, they usually make assumptions about where the product comes from and the quality they can expect. That is the function of a trademark.
To be protected, a trademark must usually be distinctive. This means the public must be able to recognise it as identifying one business, rather than simply describing the product.
For example, a made-up or unusual brand name is usually easier to protect than a purely descriptive phrase. A business selling candles may find it difficult to protect a name that simply describes the candles as “Luxury Scented Candles”. By contrast, a distinctive brand name is more likely to function as a trademark.
Why do trademarks matter?
A trademark is not just a marketing tool. It is also a property right.
Once registered, it gives the owner exclusive rights to use that mark for particular goods or services. This means the owner may be able to stop another business from using the same due to a trademark dispute, or infringement. Or a similar mark where that use causes, or is likely to cause, confusion.
This is particularly important when a business has invested time and money in building a reputation. The stronger the brand, the more valuable the trademark becomes.
A registered trademark can also be bought, sold, licensed, franchised, or used as part of a wider commercial deal. In that sense, it is an asset that can be carried on a business’s balance sheet.
A trademark is a monopoly right
A registered trademark gives its owner a form of monopoly, but that monopoly is not unlimited.
There are two key parts to a trademark registration.
- The first is the mark itself. This might be the brand name, logo, or other sign.
- The second is the specification of goods or services. This sets out the categories of products or services for which the trademark is protected.
The scope of protection depends on both parts. A trademark owner cannot automatically stop all use of a word in every situation. The question is usually whether another trader is using the same or a similar mark in relation to the same or similar goods or services.
For example, a trademark registered for perfumes may not necessarily provide the same protection for construction or accountancy services. The commercial context matters.
How long does a registered trademark last?
Unlike some other intellectual property rights, a registered trademark can last indefinitely.
In the UK, a registered trademark must be renewed every 10 years. Provided it is renewed and properly maintained, it can continue to protect the brand for decades.
This makes trademarks especially valuable for businesses that are building long-term brand recognition, and businesses would want to protect against trademark disputes.
Why should a business register a trademark?
There are several practical reasons why registration is important.
- Registration gives the owner exclusive rights to the trademark. This makes it much easier to control how the brand is used.
- Enforcing a registered trademark is usually simpler and more cost-effective than relying only on passing off. Passing off can be difficult because the business must usually prove goodwill, misrepresentation, and damage. A registered trademark gives the owner a clearer starting point.
- A business can apply to register a trademark before it has fully launched. This can help protect a brand before competitors have the chance to adopt something similar.
- Trademark registrations are public. This means other businesses can search the register and see that the mark is already protected. A registration can therefore act as a deterrent.
- Registration can help prevent others from registering a mark that your business already uses and avoiding a trademark dispute. Without registration, a business may find itself in a much more difficult position if another party applies first.
The lesson for business owners
The Jo Malone trademark dispute shows that trademarks are not just legal technicalities. They can sit at the heart of a business’s identity, reputation, and commercial value.
For founders, this is especially important. Many businesses are built around personal names, family names, or distinctive brand stories. Those names may feel personal, but once they are used commercially, registered, licensed, or sold, they can become valuable legal assets.
Before launching, selling, licensing, or collaborating under a brand name, business owners should consider:
- whether the name is available to use;
- whether it can be registered as a trademark;
- whether anyone else already owns similar rights;
- what goods or services the registration should cover;
- whether the business may expand into other areas in the future; and
- whether any contract restricts future use of the name or brand.
- Taking advice early can prevent expensive disputes later.
Final thoughts
A trademark is much more than a name or logo. It is a sign of trust, reputation, and commercial origin. For customers, it helps identify the business behind the goods or services. For business owners, it can be one of the most valuable assets they own.
Whether you are launching a new business, rebranding, expanding your product range, or entering into a collaboration, trademark protection should be considered at an early stage to prevent a trademark dispute. A strong brand deserves strong protection.
Contact Us
If you are seeking a trademark disputes lawyer, we can help with your case. To book a Free Consultation Call with Mr Usman Anwar, the Legal Director, or another staff member in the Disputes Department, please complete the Contact Us Form or call 0208 185 0990.
For trademark disputes worth more than £10,000, we offer a number of funding arrangements, which are outlined on the following webpage Fixed Legal Costs Litigation.
Still not convinced? Read some of our business clients’ success stories and testimonials on how they settled their disputes using our legal service.
