Zara's UK arm, ITX, has told the High Court it did not infringe The Estée Lauder Companies' rights to the name "Jo Malone" and that the wording it uses on Zara fragrances complies with parameters the cosmetics group outlined in 2020.
The case centres on the use of the words "Jo Malone" in product descriptions on Zara's website and the inscription "Created by Jo Malone CBE, founder of Jo Loves" on the back of the perfumes' packaging. Estee Lauder acquired the Jo Malone fragrance business and the rights to use Jo Malone's name in 1999. Malone subsequently left the company in 2006 and founded a new fragrance label, "Jo Loves", in 2011, before entering a collaboration with Zara in 2019.
ITX's defence, as set out in filings seen by the court, disputes allegations that the company has overstepped the boundaries of permitted usage of the name. A spokesperson for The Estée Lauder Companies declined to comment directly on the ITX defence filing, referring instead to the company's earlier statement when it commenced the suit in March asserting that Malone agreed in 1999 to "refraining from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances".
Background to the 2020 guidance
ITX's filing recounts communications from August 2020 in which Estee Lauder raised a concern about a post on Zara's official Weibo account in China that used the "Jo Malone" name. According to ITX, lawyers for the US-based cosmetics group responded in October 2020 that the particular use on Weibo fell within the allowed scope.
At that time, ITX says, Estee Lauder's legal advisers also proposed a set of principles to govern Zara's references to Jo Malone. Those principles, ITX states, suggested Zara should use forms such as "Jo Malone CBE," "Ms Jo Malone," "Ms Malone" or "Jo" when mentioning the individual, and should avoid describing her as the founder of the fragrance brand Jo Malone. ITX contends the wording appearing on its perfume packaging and on Zara's website is in accordance with these principles.
ITX raises the question of self-reference
In its defence, ITX frames a broader legal question about how Malone "can fairly and legitimately refer to herself" in commercial contexts given the trademark rights held by Estee Lauder. ITX reports that the current wording used in Zara's product descriptions reads: "In collaboration with perfumer Ms. Jo Malone CBE, founder of Jo Loves."
Malone has addressed the matter publicly on social media. ITX's filing notes that Malone posted a video statement on her personal Instagram account last month asserting that her collaboration with Zara began seven years ago, that Zara approached her personally, and that the project is distinct from Jo Malone London the company. The filing records Malone's comment: "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." Malone did not immediately respond to an emailed request for comment referenced in the filings.
Denial of passing off and pricing details
ITX also rejects Estee Lauder's allegation of "passing off" - that Zara's perfumes mislead consumers into believing they are associated with Jo Malone London. The defence further disputes the lawsuit's characterisation of Zara's fragrances as "budget" products.
On Zara's UK website, the perfumes in the collaboration are listed under names such as "Energetically New York," "Elegantly Tokyo," and "Fashionably London," and are priced at 35.99 pounds for a 100ml bottle. The filings note that Jo Malone perfumes retail at 122 pounds and above for the same volume.
Inditex, Zara's parent company, declined to comment on the ITX filing.
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The case now turns on the extent to which the use of Jo Malone's name in descriptive text and on packaging falls within the scope of rights granted to The Estée Lauder Companies and the allowances, if any, provided at the time of prior communications in 2020. ITX's filing presents both a legal defence and a broader framing of how an individual subject to a trademark arrangement may reference her own identity when engaging in new commercial ventures.