Zara Strikes Back in Estée Lauder Trademark Dispute: Use of Perfumer's Name Adheres to Established Principles

According to Reuters, the British retail subsidiary of fast fashion giant Zara, ITX, has formally denied the trademark infringement allegations brought against it by US cosmetics giant Estée Lauder in a defence document recently filed with the High Court of England and Wales. The core of the dispute lies in the right to use the name of Zara and renowned perfumer Jo Malone herself.

As early as 1999, Estée Lauder acquired the eponymous perfume brand founded by British perfumer Jo Malone and bought out the commercial rights to her name. Malone left the company in 2006 and, after the expiration of her non-compete clause in 2011, launched her own new perfume brand, "Jo Loves". She subsequently began a collaboration with Zara on a fragrance collection in 2019.

In March of this year, Estée Lauder sued Malone herself, Jo Loves, and Zara's UK business jointly. Estée Lauder alleged that Zara's use of the name "Jo Malone" on its official website and the promotional statement "Created by Jo Malone CBE, founder of Jo Loves" on the packaging of the collaborative perfumes violated contractual terms and constituted trademark infringement. Estée Lauder argued that such wording could easily cause consumer confusion, leading them to mistakenly believe that the affordable perfume line is associated with Estée Lauder's premium "Jo Malone London" brand.

In response to the allegations, Zara has shown strong confidence. In its court defence document, Zara presented a key fact as a counter-argument: as early as August 2020, Estée Lauder had objected to Zara's use of the name "Jo Malone" on its official Chinese Weibo account. However, in October of the same year, Estée Lauder's legal counsel confirmed in writing that Zara's use of the name was "entirely within the scope of the licence".

In its defence, Zara further argued that the current wording on product packaging and its official website (such as the use of "Jo Malone CBE", "Ms Jo Malone", etc.) strictly follows the guiding principles established at the time by Estée Lauder's lawyers to distinguish the perfumer as an individual from the brand. Zara firmly denied Estée Lauder's allegations of "passing off/misleading consumers", emphasising that the collaboration was purely an artistic cross-border partnership with Malone as an individual, not with any company or brand.

The perfumer Malone herself has not yet filed a formal written response to the litigation, but she has commented on her personal social media, stressing that Zara had only approached "Jo Malone the person", which has no connection whatsoever to the Jo Malone London company. This cross-border dispute, concerning the right of publicity, the boundaries of trademarks, and the spirit of commercial contract, is still under further hearing.