Joanne Lesley Malone, popularly known as Jo Malone, a British perfumer is the founder of the brand Jo Malone London. Malone sold her perfume brand, which incorporates her personal name and associated trademark rights to Estée Lauder in 1999. As per the agreement, she was restricted from using the name ‘Jo Malone’ in certain commercial contexts, particularly in fragrance brandings. The agreement also had a non‑compete clause that prevented her from working in the fragrance industry for several years.

After the end of non‑compete restriction, Jo Malone established the fragrance company and brand ‘Jo Loves’ in 2011, offering perfumes, and other cosmetic products.

In 2019, Zara’s UK division collaborating with Jo Malone, introduced a perfume collection titled Zara Emotions by Jo Malone, with packaging and marketing materials indicating “Creation by Jo Malone CBE, founder of Jo Loves”. This was the starting point of the legal battle between Estée Lauder and Jo Malone initiated in 2026, alleging trademark infringement, breach of contract, and passing off.

This poses questions :

  • The risks of adopting a personal name as a brand, and the importance of safeguarding intellectual property rights in brands that incorporate a personal name.
  • Are founders who have commercialized their name or likeness required to exercise caution when pursuing new business ventures?
  • Would a personal name, once assigned as a trademark, no longer remain fully within the individual’s control in commercial settings?

 

Scenario in Indian Trademark Law

Section 35 of the Trademarks Act, 1999 permits bona fide use of one’s own name, provided that it is not misleading, does not cause confusion or deception and relate to genuine commercial use. The Indian courts place also strong emphasis on consumer confusion, bonafide use and goodwill while interpreting Section 35. In a significant ruling clarifying the scope of Section 35 of the Trade Marks Act, 1999, the Delhi High Court dismissed the appeal filed by Vasundhra Jewellers Pvt. Ltd. against Vasundhara Fashion Jewellery LLP & Anr., reiterating the principle that no one can be restrained from bona fide use of their own name in business.

The dispute concerns the trademarks VASUNDHRA and VASUNDHRA JEWELLERS. The appellant asserted continuous and extensive use of these marks since 1999 and had registrations in class 14 for jewellery products. The Respondent argued that the Trademark is derived from one of the Partner’s name – VASUNDHRA MANTRI, who started using the name in 2001 and have Trademark registration for the name in class 14 as well. Later it was assigned to a Limited Liability Partnership, the Respondent in this case. Documents to show the bonafide use were also submitted.

One of the issues that arose before the Honourable court was, whether Section 35 applies at all? The Appellant, argued that Section 35 did not apply-

  • as the provision applies only to natural persons and not corporate entities
  • it protects the use of a person’s full name, not merely a first name.

The Respondent argued that the Appellant’s argument on the applicability of the Section 35 to a corporate entity had no merit, as the business had originally been started by an individual in her own name. They further rejected the contention that Section 35 applies only where a person’s full name is used.

The Court accepted the Respondent’s argument that questioning the applicability of Section 35 to corporate entities was unnecessary, since the company had been established by an individual under her own name and the provision under Section 35 is intended to safeguard. It further rejected the argument that Section 35 protects only full names, relying on Precious Jewels and Anr. v. Varun Gems (Supreme Court, 2014), where even a surname was held to fall within its scope, and held that:

20…………“proposition of law that the benefit of Section 35 of the Act would be available only in respect of full name. There is nothing in the language of section 35 of the Act to suggest that the defence is available only in respect of the full name.

  1. From the facts noted above, it is evident that Ms. Vasundhara Mantri has been trading in her own name ‘VASUNDHARA’ since 2001 in a bona fide manner. It is only in the year 2018 that an LLP, the defendant no.1, was incorporated by her, but the fact remains she holds 99.09% share in the defendant no.1 LLP. Accordingly, the defendant no.1 is nothing but an extension or an alter ego of Ms. Vasundhara Mantri. Therefore, in my prima facie view, the defendant no.1 will be entitled to the benefit of defence under Section 35 of the Act.

The Court noted that the statutory requirement under Section 35 is bona fide use, a principle already affirmed in Vasundhara Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani and Anr. (Delhi High Court, 2022), another matter involving the respondent. On this basis, the Court determined that Section 35 would provide a strong defence to the Respondents, even in the event that a case of passing off were otherwise established.

The Jo Malone case on hand raises an important question- can a person be prevented from using their own name after assigning the trademark to another company? This is a critical point to ponder for any entrepreneur who builds a brand around their personal name and later transfers ownership of that brand. If Jo Malone is able to substantiate the genuine and bonafide use, would Section 35 be applicable?

While we do not have access to the agreement signed between Jo Malone and Estée Lauder, this case highlights the need for proper drafting of trademark assignment agreements, particularly when a personal name is involved. The language and scope of such agreements must be thoroughly reviewed to prevent costly legal disputes. The matter is currently before the UK courts, and the outcome will depend on how the contractual terms agreed in 1999 are interpreted.

This dispute whether viewed through the perspective of the UK or Indian law, the underlying principles are similar i.e. while an individual has a natural right to their own name, that right can be contractually limited and commercially transferred and must be treated with the same diligence as any other valuable business property. Under Indian law, Section 35 relies on bonafide use, so founders should document this clearly in agreements by providing carve outs for personal name use, non‑misleading branding, and clear territorial or nature of use limits.

Written by
Srilakshmi G.A