No Malone? Naming rights and eponymous brands

What's in a name? Quite a lot, as it turns out. British perfumer Jo Malone, founder of the eponymous fragrance brand, was recently subject of a legal claim by cosmetics giant The Estée Lauder Companies ('Estée Lauder') in the courts of England in what may prove to be the latest cautionary tale for creatives who have built—or are building—a brand around their own name and identity. While building a brand based on your own name is a common feature of many creative industries, the legal consequences of that decision can be far‑reaching. The name of a retail business is often both its most valuable asset and can sometimes be its most legally challenging, particularly where relationships start to unravel. And, in this case, the Jo Malone dispute brings back into sharp focus a more fundamental question: what happens when something so personal as a name becomes a key business asset?

Jo Malone built a well-known eponymous perfume brand in the UK during the 1990s. In 1999, she sold that brand and the registered trade marks, together with the exclusive right to the 'Jo Malone' name to Estée Lauder. This prevented Jo Malone - the individual - from using her name in certain commercial contexts, including in relation to fragrance. She exited the company in 2006 and agreed to a five year non-compete clause.

In 2011, upon the expiration of the non-compete clause, Malone founded a new company under the brand 'Jo Loves'. 'Jo Loves' sells perfumes, candles and other bath and body products, similar to Estee Lauder's 'Jo Malone' product range. Since 2019, Malone has collaborated with Zara on various fragrance ranges through this 'Jo Loves' brand. The marketing on the some of the packaging includes the phrase 'Creation By: Jo Malone, CBE, founder of Jo Loves.' Similar slogans can be found on online websites.

It is this collaboration that has drawn criticism and legal action from Estée Lauder. In March 2026, Estée Lauder filed proceedings against Malone personally, Jo Loves and ITX Limited (trading as 'Zara'). Estée Lauder is alleging (i) breach of contract, (ii) trade mark infringement, and (iii) passing off (a form of unregistered trade mark infringement). Estée Lauder is seeking more than £200,000 in damages for Jo Malone using her name in connection with the Zara fragrances..

Familiar territory?

This is certainly not the first time that issues with eponymous trade marks have arisen before the English courts. For example, in 2016, a dispute arose between Karen Millen and the brand Karen Millen Fashions Ltd ('KMF'), which Karen Millen had founded but sold to a third party in 2004. As part of the sale, Karen Millen agreed to restrictive covenants that limited her ability to commercialise her name in future enterprises and assigned all trade marks (and associated goodwill) in the Karen Millen name to the purchaser.

KMF commenced litigation against Karen Millen after she alluded to the creation of a new fashion brand under the name 'Karen', claiming that such a brand would breach the restrictive covenants in the sale and purchase agreement executed between the parties. The sale and purchase agreement restricted her from using the names 'Karen Millen', 'K Millen', or any other confusingly similar name in the context of selling clothing or similar goods. The parties ultimately entered into a settlement agreement in respect of use in the UK and Europe. However, Karen Millen subsequently sought negative declaratory relief from the English courts, in respect of usage in the US and China, seeking confirmation that the use of her name would not infringe the sale and purchase agreement. KMF counterclaimed, seeking an injunction and alleging breach of the share and purchase agreement. In determining whether the proposed competing business with the name 'Karen' would create consumer confusion detrimental to the KMF marks, the court considered together the similarity of the competing business and whether the name 'Karen' was confusingly similar to KMF's trade marks. The court decided that the proposed business would infringe (i) the KMF trade marks registered and assigned to KMF on the date of the sale, and (ii) the goodwill built up in those trade marks both before and after the date of the sale. Therefore, the courts interpreted the restriction on Karen Millen's future commercial use of her own name broadly, and specifically restricting her from using any variation of her name in future fashion brands.

For the founder of an eponymous business, seeking external investment to support their growth or selling up is often seen a natural step in the business lifecycle. However, in return, the investor or acquirer will usually seek to ensure that the company retains control of brand identity and associated goodwill to protect the value of their investment. This is of particular importance for luxury goods businesses, owners of which are keen to prevent their brand and its value from being diluted. The Karen Millen case is another example that reveals an important nuance that some eponymous creatives may struggle with if seeking to assert rights over their natural names after a taking a major investment or selling their business, particularly if they subsequently decide to leave: goodwill is not frozen in time and may hinder future exploitation of personal identity in unexpected ways.

Own name trade mark defence

Section 11(2)(a) of the Trade Mark Act 1994 provides that a registered trade mark is not infringed by an individual's use of their own name or address, provided that the use is in accordance with honest practices in commercial and industrial practices. This is a defence to an existing infringement claim, not an inalienable right to trade freely under a natural name. Furthermore, this defence has been interpreted in a limited manner by the courts of England and Wales to allow individuals to use their natural name in the course of trade so long as the use is fair and does not take advantage of a registered trade mark's reputation. 'Honest practices' is an objective standard. The use of a natural name must not mislead or confuse consumers as to the origin of the goods. Where a registered name mark has been transferred to a bona fide acquirer who has accumulated significant reputation and goodwill, it may be very difficult to legitimately defend use of a natural name in the sale of similar goods.

The use of 'CBE' and 'founder of Jo Loves' possibly attempted to create a distinction between personal attribution and brand identity. Whether that wording amounts to honest use of an individual’s own name to merely describe the personal history the individual who developed a product, or still creates confusion about the origin of the goods, would depend on the context. For investors or purchasers spending significant amounts on their investment, it's very unlikely they will see any such difference..

Devil is in contractual details

In any event, in disputes concerning founder-led brands, the decisive factor is often not found in trade mark law, but in contractual drafting. Restrictive covenants and intellectual property assignments are standard features of brand investments or acquisitions, as purchasers want to ensure that sellers cannot set up competing businesses as soon as they leave.

English courts have consistently held that freely negotiated contractual restrictions cannot be overridden by narrow statutory trade mark defences. As the Karen Millen litigation illustrates, where an individual has freely agreed to limit the future use of their name commercially on the sale of a business, that bargain will typically be upheld and enforced in accordance with the regular construction of contract law principles to restrict not only use of their own name, but confusingly similar variants that could damage the goodwill built up in the acquired brand.

If the Jo Malone dispute proceeds to a judgment, the contractual terms governing use of her name may be central to its resolution. A key question would be whether, and to what extent, the sale documents restrict use of the 'Jo Malone' name in the fragrance industry, including use presented as biographical attribution. The distinction matters: an own name defence to trade mark infringement would not, of itself, answer a separate claim for breach of those contractual restrictions.

Name marks – broader implications

These cases touch upon risks that extend beyond founder‑led fashion, beauty and creative brands, and are relevant to celebrities and other high‑profile individuals who seek registered trade mark protection for their personal names for commercial purposes. Earlier this year, it emerged that Victoria Beckham registered a trade mark in the name of her son 'Brooklyn Beckham' in 2016. She is listed as the registered owner of the trade mark, as Brooklyn Beckham was a minor at the time of filing. All registered trade marks entitle owners to exploit the registered marks exclusively in connection with the relevant classes, and to restrict third party use in respect of those marks. However, while trade marks can be powerful tools in shaping commercial identity, they can also constrain future activity. In theory, Brooklyn Beckham, who is not the owner of the registered name mark, may be restricted from trading commercially under his own name. That risk is amplified in this example owing to the scale and breadth of the existing 'Beckham' brand and trade mark portfolio, potentially leading to consumer confusion in respect of the parameters of the different brands. The Brooklyn Beckham trade mark will expire in December 2026, and so questions about renewal and ownership may arise this year, underscoring how registered protection of personal names can both help and hinder commercial autonomy.

Whatever the outcome of the Jo Malone dispute, it illustrates a tension that we have frequently seen arising when founders sell or lose control of their eponymous brands and subsequently want to spread their wings into new commercial ventures. For founders seeking significant investment or selling a controlling stake in their business, retaining control of their name may not be commercially realistic. The practical focus should therefore be on defining the scope of any restrictions and, where possible, negotiating specific carve-outs, such as agreed wording for references to their role in founding the original business or narrowly defined permitted use of their name in a future venture. Those provisions should be considered at the outset in the transaction documents.

If you are considering investment in, or the sale or acquisition of, an eponymous or founder-led brand, our intellectual property and corporate teams can help you protect the value of the brand while carefully defining the founder’s future rights. Talk to us about your ambitions or challenges and how we can help you navigate these issues.