Inditex and perfumer Jo Malone reject The Estée Lauder's brand infringement allegations

Madrid – Late last week, new information emerged about the legal battle initiated by the US-based The Estée Lauder Companies against British perfumer Jo Malone and Spanish fashion giant, the Inditex Group. The company accuses the perfumer and the fashion group of infringing the rights of the Jo Malone London brand, which has been owned by Estée Lauder since 1999. This is in the context of the long-term collaboration between Zara, the group's main chain, and British perfumer Jo Malone and her new perfume house, Jo Loves.

To provide some context, and following details previously reported by FashionUnited at the time of the lawsuit's filing in early March, Malone founded her eponymous perfume house around 1990. After achieving considerable name recognition, fame and reputation, she reached an agreement with the US beauty multinational The Estée Lauder Companies to sell it in 1999. The deal was closed for an undisclosed amount, estimated to be around 100 million dollars. Its terms included the founder remaining with the company as creative director. However, Malone left this role in 2006 under a non-compete clause that restricted her from returning to the perfume and beauty sector for a period of five years.

Once that period had passed, Malone decided to return to her passion for the world of scents by founding her new fragrance house, Jo Loves, in 2011. With this new label, she quickly regained popularity, as was natural given the name she had built in the industry. She began to compete directly with her former fragrance brand. Her new olfactory creations are sold for between 120 and 150 pounds for 100 ml bottles, compared to the 150 to 200 euros price range for Jo Malone London's offerings. This price difference is minor. It becomes even more favourable for Jo Loves when considering that its creations are sold as perfumes, while Jo Malone London's are sold as cologne and intense cologne. This implies a lower proportion of the essences that provide longevity to the fragrances.

The Inditex Group (Inditex) played a decisive role in this particular and then-incipient war in the perfume world. In 2019, it established a long-term collaboration agreement between Zara, its main fashion chain, and the British perfumer's new fragrance house, Jo Loves. The collaboration focuses on the development and commercialisation of various scented products, including scented candles, room diffusers and, of course, fragrances and perfumes. All these products feature original scents. The fragrances, with collections for both men and women, are sold at prices ranging from 29.95 to 35.95 euros.

With these, Zara and Inditex have not only enriched their beauty universe but also helped to give visibility to Malone's new business venture, separate from the Jo Malone London house, which, as a brand, remains in the hands of Estée Lauder. Inditex has tried to safeguard this action by consistently presenting it as a collaborative initiative between Zara, Malone and her brand Jo Loves. Each product, both physically and online, is labelled as “created by Jo Malone CBE, founder of Jo Loves”.

Inditex rejects allegations

Despite this clarification, The Estée Lauder Companies maintains that the long-term collaboration has infringed upon the rights of the Jo Malone London brand, which the US beauty multinational acquired in 1999. For this reason, as was revealed in early March, the company decided to file a lawsuit in the UK against Malone for breach of contract, registered trademark infringement, passing off and consumer deception. The lawsuit was extended to include Jo Loves, her new commercial brand, and the British subsidiary of Inditex. Both parties have now responded, denying the alleged illicit behaviour attributed to them by the US company.

The Spanish company has modified the note on some items from the Jo Loves collaboration, which is the main argument in The Estée Lauder Companies' lawsuit. The text has been changed from “created by Jo Malone CBE, founder of Jo Loves” to “in collaboration with the perfumer Ms. Jo Malone CBE, founder of Jo Loves”. In its defence filed with the UK High Court and reported by Reuters, Inditex alleges that it has never infringed upon the rights of Estée Lauder or its Jo Malone London brand. This was an expected argument. Inditex also maintains that the company has always adhered to the exact terms recommended by the US group for mentioning the perfumer in their collaboration. On this matter, the Spanish company states that in August 2020, they received a complaint from Estée Lauder regarding the use of Jo Malone's name in a post on Zara's official account on the Chinese social network Weibo.

The Spanish company's defence states that Estée Lauder's own legal team later acknowledged that this claim was within legally permissible limits. They recommended that Zara should in any case be careful to specify that its collaboration was not with the Jo Malone London brand, but with the perfumer Jo Malone. She could be identified under the terms “Jo Malone CBE”, “Ms Jo Malone”, “Ms Malone” or “Jo”, but never as the founder of the Jo Malone brand. Inditex maintains that these terms have been complied with at all times, both in the marketing of the collaboration's products in brick and mortar stores and online. They therefore deny the accusations of brand rights infringement and unfair competition. As an additional note, they also reject the "cheap" label that Estée Lauder used to describe their perfumes in its lawsuit.

Perfumer Jo Malone hits back at The Estée Lauder

Meanwhile, the British perfumer responded a month ago via her Instagram account, where she regularly promotes the olfactory creations she develops for Zara, regarding the lawsuit filed against her and Inditex by Estée Lauder. She rejected the legal implications of the complaint at the time, stressing that both parties had done everything possible to ensure it was understood that the collaboration had nothing to do with the Jo Malone London company. She continues to maintain this defence. Now, as she has pointed out through the same channel, she also accuses Estée Lauder of trying to prevent her from using her own name, thereby violating the terms of the 1999 sale of Jo Malone London.

“Estée Lauder cannot stop me from being Jo Malone, the renowned perfumer and personality with my own prestige and reputation,” Malone stated in a statement released on her social media channels. “While I sold the company called Jo Malone London Limited and the Jo Malone trademark to Estée Lauder 27 years ago, I obviously did not sell my name.” In this regard, she details, “the contract with Estée Lauder allows me to use my own name in a personal capacity, which I have been doing for Jo Loves for 15 years.”

Following the same dynamic, “the collaboration with Zara has been ongoing for seven years” under the same terms, “and its packaging does nothing more than identify me, Jo Malone CBE and founder of Jo Loves, as the perfumer.” With this lawsuit, the British perfumer adds, “Estée Lauder is trying to prevent me from identifying myself as Jo Malone even in circumstances where I am clearly doing so in a personal capacity,” and “for that reason, I am defending myself in the High Court.”

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