Disputes centered on the commercial use of civil names as trademarks, common in a context in which a civil-names-based trademark become widely recognized, demonstrate the potent collision of personality rights an protection of business’ goodwill.
The recent lawsuit filed by Estée Lauder against perfumer Jo Malone, which was significantly amplified by global media coverage and intense public debate, reignited a long-standing legal tension at the intersection of trademark law and personality rights. The dispute, centered on the commercial use of Malone’s own name in fragrance collaborations with Zara, underscores how the commodification of personal identity in brand-building can later collide with proprietary rights acquired by corporations.
Across several jurisdictions, including Brazil, the civil name is protected as a personality right, intrinsically linked to personal dignity and identity. Nevertheless, the global marketplace is filled with trademarks derived from civil names: Ferrari, Gucci, Chanel, and even Jo Malone herself. Harmonizing the inalienable nature of personality rights with the exclusive, transferable character of trademark rights remains a structural challenge in IP law, particularly when the same signifier operates both as personal identity and commercial asset.
Under Brazilian law, the registration of a civil name as a trademark requires authorization from the individual or their successors. Problems arise when a founder permits the registration of their own name as a trademark in favor of a company from which they later exit. The separation between the individual and the commercial entity creates a conflict: the person retains their personality right, but the company retains the trademark, generating enduring tension regarding who may use the name, in what context, and for what commercial purposes.
The tension increases, however, considering that the person whose name achieved sufficient notoriety in their specific commercial areas, may also desire to pursue their own business after some time away from their initial businesses.
In this case, there is a well-accepted doctrinal understanding that, once a civil-name-based trademark becomes widely recognized, the sign transcends its immediate connection to the original individual and begins to embody the goodwill and commercial identity of the company. In other words, the personal signifier evolves into an autonomous commercial symbol, which is a component of the firm’s market equity and brand value, no longer strictly anchored to its original human referent.
A paradigmatic Brazilian example is the Francesca Romana case. The Italian designer, founder of a luxury jewelry brand in Brazil, left the company amid a contentious divorce from her husband, who managed the business. Following her departure, litigation ensued, culminating in a judicial order requiring the company to publicly disclose her disassociation to avoid misleading consumers. The dispute highlighted the complex balance between protecting the public, respecting the designer’s personality rights, and acknowledging the company’s legitimate interest in preserving the economic value of a brand developed over years.
The narratives of Jo Malone and Francesca Romana share notable thematic parallels. Both involve creators whose personal names became powerful commercial symbols, later controlled or contested by business entities. In each scenario, the individual’s identity was heavily commodified, forming part of the company’s brand equity. When the creators distanced themselves from the original business structure, the underlying tension became clear: how far can a company exploit a founder’s name when the founder is no longer involved? And how far can the founder use their own name without infringing trademark rights?
Despite these similarities, the cases diverge significantly in their legal frameworks and procedural contexts.
The Jo Malone dispute unfolds in the United Kingdom, applying UK trademark law and the rights Estée Lauder acquired contractually in 1999, including exclusivity over commercial use of the “Jo Malone” name. By contrast, Francesca Romana’s conflict was litigated in Brazil, where personality rights receive stronger constitutional protection, and consumer protection considerations shaped the judicial remedy. The jurisdictional divergence materially influences both the legal analysis and the available remedies.
Taken together, these cases reveal a persistent structural tension in IP law: the dual nature of personal names as identity markers and commercial assets. As global brands increasingly hinge on founder-driven narratives, disputes over post-exit name usage will likely intensify. The central challenge remains crafting legal solutions that respect personal dignity while preserving legitimate corporate goodwill. Ultimately, the evolution of these cases may shape future standards on how identity, authorship, and commercial exploitation coexist in modern brand governance.
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Author: Mariana de Araújo M. Lima Di Pietro, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados
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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”