A tale of how protecting your name via trademarks can be a pitfall too far.
What do you regret? It’s a question that may tumble around one’s mind like poignant leaves of lettuce in a salad spinner – often striking on lonely Sunday evenings when you’re already feeling pretty crummy.
Ask around at a care home and your Bettys, Dorises and Mabels may provide you with the trenchant reminder that time waits for no man – a lost love they never reconnected with, or maybe their eyes glaze over when they confess to their involvement in a crime syndicate during the sixties.
For me, I regret getting into Lego in 2008, instead of shorting the housing market, and getting into Minecraft in 2012, instead of investing in cryptocurrency.
And for Jo Malone CBE? The fragrance mogul and founder of perfume empire Jo Malone London said that she only had one regret in life: selling herself to the beauty conglomerate Estée Lauder. On first read that may have sounded like some kind of floral-scented Faustian bargain – had the chaps in the Estée Lauder R&D department cooked up an oil of Olay so good it was worth selling your soul for. Not quite, but in 1999, Malone sold her brand Jo Malone London to Estée Lauder for an undisclosed fee – effectively signing away the rights to use her own name in business ever again.
Buying Jo Malone London meant that Estée Lauder had purchased any registered trademarks that incorporated that name and acquired any goodwill which it had come to represent. For high-end brands, it’s common to find companies that are built around the founder’s name (Tom Ford, Micheal Kors, Ben & Jerry’s, Jimmy Choo, etc.). When that brand is sold, the trademark owner will often have contractual protection to prevent the founder of the same name from using it commercially in any competing industries – as the use of the name could cause consumer confusion, bringing grounds for infringement or passing off.
For diligent readers of Scintilla blogs, you may recall an article of similar substance regarding the James Martin vs James Martin’s trademark dispute. For those who didn’t, such a case may sound like the TV chef was at legal loggerheads with a possessive antagonist of the same name. The Saturday morning with James Martin host had actually just fallen foul of sections 5(1) and 5(2)(a) of the Trademarks Act 1994, attempting to trademark his name in Class 33 without realizing a whisky company had already done so, highlighting that a personal name is not exempt from Trademark conflict.
In Malone’s case, she had partnered her new venture, Jo Loves, with fashion brand Zara for a new line of perfumes. Problem? Not with the products themselves, they were a pretty solid range of abstract-scented fragrances inspired by cities – a concept that invites the wearer to interpret the smell for themselves and could easily apply to any theme. A series of IP-themed aftershaves? Sure, try Hague System Pour L’homme or WIPO EDT (World Intellectual Property Office Eau De Toilette) to give off a technical and pragmatic musk in the workplace. No, it was the use of the words ‘by Jo Malone’ on the perfumes packaging that set off legal alarm bells for Estée Lauder. The company said that the restriction of Malone’s name in certain commercial settings had been contractually enforced following the sale of Jo Malone London to them back in 1999, and to use it within a competing commercial sector through the collaboration with Zara was to invite a genuine legal smackdown.
Spare any regrets and approach Scintilla today for any IP needs if you are considering launching a business using your own name (or otherwise). As the saying goes, a stitch in time saves nine.
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