By Helen Reid
LONDON, May 8 (Reuters) - Fashion retailer Zara has denied infringing Estee Lauder's Jo Malone trademark, saying in UK High Court filings that it uses the perfumer's name on fragrances it sells in collaboration with her in line with principles the cosmetics giant set out in 2020.
Estee Lauder bought Malone's eponymous perfume brand and the rights to use her name in 1999. Malone left the company in 2006 and launched a new fragrance label, "Jo Loves", in 2011, before starting a perfume collaboration
with Zara in 2019.
Although the Zara perfume bottles only feature its own branding, the lawsuit brought by Estee Lauder against Malone, "Jo Loves", and Zara's UK business is based on the words "Jo Malone" being included in the product descriptions on Zara's website and "Created by Jo Malone CBE, founder of Jo Loves" on the back of the packaging.
A spokesperson for The Estée Lauder Companies declined to comment on the defence filing by ITX, the UK subsidiary of Zara owner Inditex, which was seen by Reuters.
The spokesperson referred to the company's statement when the suit was filed in March, saying Malone agreed in 1999 to "refraining from using the Jo Malone name in certain commercial contexts, including the marketing of fragrances".
PREVIOUS NAMING GUIDANCE
ITX said in its defence filing that Estee Lauder complained in August 2020 about "Jo Malone" being used in a post on Zara's official Weibo social media account in China, but that the U.S. company's lawyers had said in October of that year that this was within the permitted scope of use.
The ITX filing said Estee Lauder's lawyers at the same time set out principles for Zara's use of the name, saying Zara should use "Jo Malone CBE," "Ms Jo Malone," "Ms Malone" or "Jo" to differentiate between the individual and the brand, and not refer to her as founder of the fragrance brand Jo Malone.
The wording on the perfume packaging and on Zara's website is in accordance with those principles, ITX said in the filing.
QUESTION OF HOW MALONE CAN REFER TO HERSELF
ITX said the case triggers the broader question of how Malone "can fairly and legitimately refer to herself" in light of Estee Lauder's trademark.
The Zara perfume descriptions now read: "In collaboration with perfumer Ms. Jo Malone CBE, founder of Jo Loves."
Malone, who did not immediately respond to an emailed request for comment, posted a video statement on her personal Instagram account last month about the use of her name.
"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," she said in the statement.
ITX also denied Estee Lauder's claim of "passing off" - the practice of misleading consumers into thinking goods or services are those of another company - and denied the lawsuit's characterisation of its perfumes as "budget".
On Zara's UK website the perfumes, including "Energetically New York," "Elegantly Tokyo," and "Fashionably London" are priced at 35.99 pounds ($48.82) per 100ml bottle. Jo Malone perfumes sell for 122 pounds and above for the same volume.
Inditex declined to comment on the ITX filing.
($1 = 0.7372 pound)
(Reporting by Helen Reid in London; Editing by Matthew Lewis and Alexander Smith)
