A recent UK High Court dispute between Estée Lauder Companies, luxury fragrance founder Jo Malone and fashion retailer Zara is drawing renewed attention to the limits of the so-called “own-name defence”. Both South African and UK law generally permit individuals to use their own names in good faith as trade marks, but, as with most things in law, there are exceptions, and the defence can be overridden entirely by a single clause in a well-drafted agreement.

The Jo Malone dispute

British entrepreneur Jo Malone built Jo Malone London into a cult fragrance brand in the 1990s before selling it, along with the rights to her name, to Estée Lauder in 1999. The sale granted Estée Lauder full commercial rights to use her name in connection with fragrances. Malone remained with the company as creative director until 2006 but has since described the decision to sell those rights as the biggest mistake of her life.

After a non-compete clause expired in 2011, Malone launched a new venture, Jo Loves, selling fragrances, candles, and toiletries. The brand initially traded without reference to her personal name. But when Jo Loves partnered with Zara in 2019, the packaging and online descriptions began crediting Malone by name: “Created by Jo Malone CBE, founder of Jo Loves.”

Estée Lauder has now initiated legal proceedings in the UK High Court against Malone, her fragrance house Jo Loves, and Zara’s UK parent company. The cosmetic group alleges that the use of “Jo Malone” infringes its registered JO MALONE trade mark, amounts to passing off and breaches the 1999 sale restrictions. Malone and Zara have both denied the allegations. Estée Lauder is seeking damages exceeding £200,000.

Central to the dispute is what Estée Lauder actually bought in 1999: not formulations or customer lists, but a name that had become shorthand for understated luxury. In the years since, Estée Lauder has invested heavily in building that brand – the retail presence, the packaging, the positioning. When consumers see “Jo Malone” on a candle or cologne today, they think of Jo Malone London, an Estée Lauder brand.

In personal-name brand transactions, buyers are effectively paying for control over how that name is used in future. The goodwill in a name like “Jo Malone” is difficult to separate from the person, particularly when it is the brand. From Estée Lauder’s perspective, any subsequent use of that name by the original founder risks undermining the substantial investment made in building and maintaining its value. This concern lies at the heart of Estée Lauder’s trade mark infringement claim: that the use of “Jo Malone” on fragrance packaging and product listings amounts to the use of an identical or similar trade mark for identical goods, creating a likelihood of confusion. The defendants, however, argue that the reference is purely descriptive, identifying the individual behind the product and her new company, Jo Loves, rather than serving as a badge of origin.

Estée Lauder’s passing off claim centres on the allegation that the Zara collaboration creates a misleading impression of a connection with Jo Malone London. The company argues that the partnership risks diluting the brand’s luxury positioning. The defendants, however, argue that the pricing and presentation target a distinct market segment without creating consumer confusion.

RELATED: Katy Perry vs Katie Perry – The Killer Queen and the Australian dreamer

Personal vs brand social media accounts

Social media sharpens this tension. Malone’s personal Instagram account is “Jo Malone CBE”; the Estée Lauder-owned brand account is “Jo Malone London”. Malone ostensibly has permission from Estée Lauder to use her own name as her account handle, though the boundaries of that permission, particularly when promoting competing products, are less clear. When a founder posts about fragrance from a personal account bearing words identical to a trade mark owned by someone else, does that constitute trade mark use? If the post promotes products or directs followers to a business, it may well do. Social media blurs the line between personal identity and commercial exploitation.

The same tension arose in the high-profile dispute between wedding-dress designer Hayley Paige Gutman and JLM Couture. Gutman signed an employment agreement with JLM in 2011 under which she designed luxury bridal gowns for the “Hayley Paige” brand, but the relationship broke down and JLM her sued in 2020. The parties disputed control of Gutman’s @misshayleypaige Instagram account, which had over one million followers. JLM argued that the account was a business asset built using the brand’s resources; Gutman argued it was personal. A US federal court granted JLM a preliminary interdict awarding it sole control of the account and enforcing a five-year restrictive covenant. The message: a social-media account can be a contested asset the moment a founder walks out the door.

Bobbi Brown offers a contrasting example. Brown sold Bobbi Brown Cosmetics to Estée Lauder in 1995 and remained as creative director until 2016 but was bound by a 25-year noncompete that prevented her from launching a competing venture until October 2020. When she did re-enter the market, she chose an entirely different brand name, Jones Road Beauty, rather than trading on the “Bobbi Brown” trade mark that Estée Lauder owns. She uses her personal profile and social-media presence to promote the new brand, but the product line itself carries no reference to her former brand. That clean break let her build a second career in beauty without triggering the kind of dispute Malone now faces.

Trade mark law and the own-name defence

At the heart of the dispute lies a deeper issue: “Jo Malone” is both a registered trade mark and the name of a living person. UK trade mark law recognises a narrow own-name defence for 本物の use in accordance with honest practices. That defence addresses trade mark infringement only; it does not excuse a breach of contract. The question whether Malone’s use is honest under trade mark law is therefore separate from whether she agreed in 1999 not to use her name commercially.

Other cases reinforce this point. After the sale of her fashion business in 2004, Karen Millen was bound by terms preventing her from using KAREN MILLEN, her initials KM or anything confusingly similar as a trade mark for a competing venture. The UK High Court held that using a confusingly similar name would misrepresent an association with the business she sold and misuse its goodwill.

Elizabeth Emanuel, famous for designing Princess Diana’s iconic wedding dress, sought to cancel trade mark registrations for her name after selling her business, arguing that the public might believe she remained involved. The CJEU disagreed: registration of a designer’s name as a trade mark is not deceptive merely because the designer is no longer associated with it.

South African trade mark legislation likewise provides an own-name defence, but it is not without limits. The defence applies only where use is 本物の, meaning genuine and in good faith rather than a mere formality. It may fail where use is likely to cause confusion or where the individual knows of the registered mark and seeks to take advantage of it. Importantly, the defence is available only to natural persons: a company that incorporates a founder’s name into its trading style cannot invoke the defence, because a juristic entity has no personal name of its own to rely on.

In a South African case, local designer Jenni Button sold a 70% stake in Jenni Button (Pty) Ltd and later launched a clothing line branded “Philosophy, by Jenni Button”. When sued for trade mark infringement and passing off, she unsuccessfully relied on the own-name defence; the Supreme Court of Appeal held that she could not use her own name in the course of a business operating in the same field.

Contractual restraints

The 1999 sale agreement provides an additional layer of protection for Estée Lauder. Although its terms are confidential, the dispute indicates that Malone was subject to a five-year non-compete provision, which expired in 2011, and a separate indefinite restraint on using her name commercially.

Those contractual restrictions operate alongside trade mark protection: a successful own-name defence to infringement would not answer a claim for breach of the agreement.

The takeaway for buyers and founders

For buyers, the lesson is clear: trade mark law offers robust protection, but a well-drafted sale agreement adds an extra layer of certainty. Agreements should cover not only trade mark rights and restraints, but also social-media accounts, handles, domain names and other elements of online identity. They should spell out what rights are transferred, who controls each account, whether a founder may use personal accounts to promote competing goods or services, the scope and duration of any restraint, and whether attribution is permitted.

For founders and creatives, the message is equally straightforward: after a sale, a name used on social media may no longer be yours to use freely. An account may feel personal, but its handle, followers, content and commercial value may be treated as business assets; especially where it promotes products or trades on the sold brand. The own-name defence will not resolve contractual or goodwill issues when personal branding overlaps with a transferred trade mark.

The Jo Malone dispute is a warning shot. In the age of personal branding and social media, your name is more than an identity: it is an asset. And once you sell an asset, it is no longer yours to use freely, no matter what it says on your birth certificate.

The proceedings in the Estée Lauder v Jo Malone & Zara remain ongoing, and no judgment has been handed down at the date of publication.