Kicking up a stink! When Founders and Brand Owners collide

This is not the first court case where a reputed individual and the third-party owner of the eponymic trade mark have disputed the effect of the contract(s) between them, and it is unlikely to be the last.

Each of these cases is, of course, fact-specific, but the degree to which the individual has lost control over the marketing of their own name is a common theme.

Elizabeth Emmanuel – 2006

It is now twenty years since the highest court in the EU confirmed that use of a trade mark corresponding to a reputed individual’s name was not liable to deceive the public simply because the ties between the individual in question and the actual trade mark owner had been severed.

This case concerned the designer Elizabeth Emmanuel, who is perhaps best known for designing, with her former husband David Emanuel, the wedding dress worn by Lady Diana in 1981. After the husband and wife team went their separate ways, a failed business venture saw Elizabeth Emmanuel’s business and the trade mark she registered in her own name sold to a company called Frostprint Limited, which immediately changed its name to Elizabeth Emanuel International Limited (EEI). EEI employed Elizabeth Emanuel, but she left after one month and took the view that the registered trade mark and any subsequent trade marks featuring her name would be deceptive in nature now that she no longer had any connection to the trade mark owner.

The Judges in Luxembourg didn’t share this view and made clear that the mere severance of the link between the designer and the trade mark owner did not, by itself, render the relevant trade mark(s) deceptive, as the average consumer is aware that not all goods bearing the designer’s name have necessarily been created under the designer’s remit.  This was especially so when the goodwill associated with the original trade mark has been assigned together with the business making the goods to which the mark relates.

Karen Millen – 2016

Fast forward ten years and Karen Denise Millen is seeking declaratory relief from the High Court that, amongst other actions, use of her own name in the USA and China would not breach a 2004 Share Purchase Agreement (SPA) made under English law.

The High Court, in finding that the SPA barred the designer from using KAREN MILLEN or any other “confusingly similar” name in connection with any business that is “similar to or competes with” the Karen Millen business, considered that “…for the Claimant to use a confusingly similar name so as to make a misrepresentation that her new business was, or was associated, with the KAREN MILLEN business that she sold, would (mis)use its goodwill.”.

Jo Malone – 2026

Back in the present day, Estee Lauder’s claim, which alleges trade mark infringement, passing off and breach of contract, centres on Zara’s product packaging, including the line “A creation by Jo Malone CBE, founder of Jo Loves”. The role of the Court will be to assess whether the average consumer, who is aware that the goods bearing a designer’s name may not have been created by the designer themself, nonetheless believes Zara’s fragrances are made by or with the consent of Estee Lauder. Yet, even if the Court find that the consumer knows the Zara product to be a collaboration with the JO LOVES brand, the contractual terms that bind Jo Malone personally, which apparently include her not using her full name “in certain commercial contexts, including the marketing of fragrances,” may still bite.

What do these cases teach us?

Some commentators may point to the recent Court of Appeal decision in Zaha Hadid Ltd v The Zaha Hadid Foundation, which allowed the Estate of the world-renowned architect Dame Zaha Hadid to terminate a TM licence with the architectural firm she founded, and query why brand founders do not retain ownership of and license their eponymic trade mark(s). This, however, would be reductive (in the Elizabeth Emanuel and Karen Millen cases, both designers experienced financial difficulties and the assignment of their good names as part of a rescue package was likely non-negotiable) and ignore the commercial reality of scaling up a brand for worldwide sales. The founder wants access to R&D and new markets and the buyer, in return, wants control over the emerging brand.

It’s where this control begins and where it ends (temporally, geographically and commercially) that an exiting founder should focus on before putting pen to paper because, when you’ve built an eponymous brand, little will be more enduring than the emotional attachment you have to your own name!