Trade mark disputes: Can you use your own name?

Overview

There is a fascinating paradox when a name functions both as a person’s personal identity, and as a commercial asset that can be bought, sold, and controlled by others.

It forces an uncomfortable question: where does the boundary lie between who you are and what you represent to the market?

A recent case brings this dispute to light. Estée Lauder Companies is currently suing Jo Malone, the renowned fragrance entrepreneur, for using her own name in a perfume collaboration with Zara. The lawsuit claims breach of contract, trademark infringement, and passing off. It argues that using “Jo Malone” may confuse buyers and weaken the “Jo Malone London” brand.

Jo Malone lawsuit

At first glance, the claim appears counterintuitive. How can someone infringe third-party rights when using their own name?

The answer is deceptively simple: Jo Malone no longer owns the relevant trademark rights. Once she assigned those rights, someone else owned her name as commercial property. Under the Trade Marks Act 1994 (TMA), use of an identical or similar sign in the course of trade can amount to infringement, potentially leading to damages or injunctive relief.

When Jo Malone sold her eponymous brand to Estée Lauder in 1999, she reportedly agreed to restrictions on the commercial use of her name. Following the expiry of her non-compete obligations in 2011, she launched a new fragrance brand, Jo Loves, and it is this brand that has collaborated with Zara.

The labels on the products in question read: “CREATION BY: Jo Malone CBE, founder of Jo Loves”. Estée Lauder argues that this credit breaks the contract terms they agreed to, and wrongly uses the goodwill of the ‘Jo Malone London’ brand. Yet, the statement merely identifies Jo Malone as the creator of the perfume, a factual claim.

This raises a difficult question: where does the boundary lie between referring to an individual’s genuine expertise, and impermissibly leveraging the brand value associated with their name? In the context of luxury branding, are these concepts truly inseparable?

Other trade mark assignment disputes examples

Millen vs Karen Millen Fashions Ltd

A notable parallel arose in 2016, when Karen Millen faced legal barriers when attempting to use her own name after selling her fashion label.

Despite trying to re-enter the market under ‘Karen’ for fashion and ‘Karen Millen’ for homeware, she faced contractual restrictions tied to the sale of her business, which blocked both attempts.

The message was clear: once someone assigns name rights, personal identity offers limited protection.

Brooklyn vs the Beckhams

This issue extends beyond brand founders and into family dynamics.

Much-publicised reports of the Beckham family tensions recently highlighted similar issues, after Brooklyn Beckham disclosed pressure to assign the commercial rights to his own name. Victoria Beckham currently owns the ‘Brooklyn Beckham’ trademark, which she filed in 2016 in both the UK and EU in her capacity as his parent and guardian.

These examples raise a broader question: to what extent can an individual fully express, or monetise, their identity after they assign someone else the commercial rights to their own name?

Is there any way to protect my name?

UK law attempts to address this tension.

The TMA provides an ‘own name defence’, allowing individuals to use their own name in business, provided they do so in accordance with honest practices. However, courts have historically applied this defence very narrowly, particularly where the use risks consumer confusion, or appears to exploit existing goodwill.

Ultimately, building a brand around personal identity can be incredibly powerful, offering authenticity, narrative, and trust. But it also creates legal and commercial complications; especially if you plan to scale, collaborate, or eventually sell your business.

Key considerations in commercial contracts and trade mark assignments

Understand what you are giving up when you sell an eponymous brand.

Assigning trade mark rights in your name can significantly restrict how you use that name commercially in the future, even in factual or biographical contexts. Review sale agreements carefully with long‑term personal branding in mind.

Negotiate express carve‑outs for future use of your name.

Clear carve‑outs for attribution, collaborations or new ventures can help avoid disputes over whether you are referring to yourself or trading on transferred goodwill.

Do not rely on the ‘own name defence’ as a fallback.

UK courts apply this defence narrowly; if use of your name risks consumer confusion or echoes existing goodwill, it is unlikely to succeed. Trade mark clearance and legal advice should precede any collaboration or re‑entry into the market.

Need help with branding disputes?

If you are navigating branding decisions, trade marks, or the commercial use of personal identity, our commercial team is here to help you protect both your commercial interests and your name.