Zara has hit back at Estee Lauder in a legal battle over Jo Malone perfume, arguing it has not infringed a trademark over her name.
Estee Lauder Companies is suing British businesswoman Jo Malone, her perfume brand Jo Loves, and the UK arm of Zara, over her range of fragrances with the High Street fashion chain.
Malone, 62, sold her perfume empire to the US cosmetics giant for millions in 1999.
But she has called the sale ‘the worst decision of my life’ because the agreement blocked her from using her name for commercial reasons and stopped her working in the industry for years.
She then launched her own business, Jo Loves, after her non-compete clause expired in 2011. It sells £35 perfumes and began a collaboration with Zara in 2019.
Estee Lauder’s lawsuit concerns the words ‘Jo Malone’ being used in descriptions of the fragrances on Zara’s website, and the perfume packaging stating they are ‘created by Jo Malone CBE, founder of Jo Loves’.
The US giant – which owns brands Estee Lauder, M.A.C and Bobbi Brown – says this is a breach of contract, trademark infringement and ‘passing off’ – which refers to misleading shoppers into thinking that products are connected to another business.
Jo Malone previously called the sale of her perfume business ‘the worst decision of my life’.
But in the latest twist, Inditex, the Spanish fashion giant which owns Zara, said in a legal filing that there has not been a contract breach.
The businesswoman ‘retains the absolute right to use the Jo Malone name in a personal capacity, including use as a description or to identify herself,’ the legal documents said.
In its defence filings, Zara also said that there was ‘no material risk of confusion’ between the two brands.
It said that ‘even if some inattentive consumers would wrongly make a connection with Jo Malone London, that is the consequence of the claimants’ choice to trade for many years under a name shared with a famous perfumer, so does not warrant the court’s intervention and must be tolerated.’
And it argued that Malone is now a well-known figure in her own right, distinct from the businesses she has launched. The filing said that she has a ‘very substantial reputation as a public figure,’ with a personal reputation that is ‘independent of that of Jo Malone London.’
Zara also said that Estee Lauder had said in 2020 that Zara should use ‘Jo Malone CBE,’ ‘Ms Jo Malone,’ ‘Ms Malone’ or ‘Jo’ to make clear the difference between the individual and brand. And they should not refer to Jo Malone as the founder of the brand Jo Malone.
It then argued that the wording it uses on its packaging and website stick to these principles.
Malone, who lives in Dubai, responded to the legal action in a video on her personal Instagram last month.
She said: ‘Seven years ago, I started to work with Zara, they approached me, they didn’t approach a company, they didn’t approach a brand, they didn’t approach a logo, they approached me, Jo Malone, the person… we have gone above and beyond to make sure everyone understands this has nothing to do with Jo Malone London the company.’
She said: ‘I sold a company, I did not sell myself … those collections were created by me, the person.’
In March a spokesman for Estee Lauder said that Malone had agreed ‘to clear contractual terms that included refraining from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances’ in the 1999 sale.
They said she was compensated in the sale and ‘for many years, she abided by its terms’ but her use of the name recently ‘goes beyond that legal agreement and undermines Jo Malone London’s unique brand equity.’
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