NUDE owner fails to stop launch of StellaNude perfume

United Kingdom
In Nude Brands Limited v Stella McCartney Limited ([2009] EWHC 2154 (Ch), August 20 2009), the Chancery Division of the High Court of England and Wales has refused an application for an interim injunction to stop the launch of a new perfume range onto the market in a case involving allegations of trademark infringement.

Nude Brands Limited produces a range of skincare products. It is the owner of the Community trademark (CTM) NUDE, which is registered for goods in a number of classes, including perfume. Nude Brands does not currently produce or sell a range of perfume, but intends to do so in the future.  

The defendants, headed by Stella McCartney Limited, produce an existing range of perfume under the brand names Stella and Sheer Stella. Their latest perfume, StellaNude, was due to be launched on August 22 2009. Nude Brands became aware of the proposed launch of StellaNude and issued an application for an interim injunction on the basis of an infringement of its NUDE mark, with an expedited trial to follow. The case came before the High Court on August 17 and 18 2009.

The defendants made it clear that they intended to attack the validity of Nude Brands’ CTM at trial on the grounds that:
  • it was descriptive; and
  • it was incapable of distinguishing the goods of one manufacturer from those of others.
The defendants also pointed out that:
After hearing arguments from both sides, the court ruled that the case for the validity of the mark was clearly arguable.

Moving on to the matter of infringement, the court was of the opinion that the addition of the word 'Stella' to the defendants’ branding meant that the STELLANUDE mark was not identical to Nude Brands' CTM. Therefore, there was no infringement under Article 9(1)(a) of the EU Trademarks Directive (2008/95/EC). However, the court believed that the marks NUDE and STELLANUDE were arguably similar.

Nude Brands alleged that there would be a likelihood of confusion in the mind of the consumers, as they would perceive the STELLANUDE mark as being made of two parts – 'Stella' and 'Nude' - and reach the conclusion that there was some association between the product and Nude Brands. The court felt that there was a danger that this could happen and, consequently, there was an arguable case for infringement.

The last issues to consider were:
  • the harm that would be done to each party should an interim injunction be ordered; and
  • who the balance of convenience favoured. 
The court ruled that the risk of irreparable harm occurring to Nude Brands between the hearing and a trial was fairly small. In its provisional view, the risk of confusion was small. Nude Brands did not enjoy exclusivity under its mark and its Nude perfume would not be on the market until some way into the future. On this basis, the court did not think that an expedited trial was necessary in order to protect the business and CTM of Nude Brands.

In contrast, all of the arrangements for the launch of StellaNude were already in place at the time of the hearing - 26,000 units of the product were already in retail shops, which had allocated specific slots for in-store promotion. The defendants argued that if the launch could not go ahead as planned, it would most likely have to be cancelled permanently, at a cost of millions of pounds and incalculable loss to their goodwill and reputation.

The court concluded that the likely damage to the defendants if an injunction were wrongly granted outweighed the damage to Nude Brands if it were refused. As a result, the application for an interim injunction and expedited trial were refused.

Edmund Wilkie, Field Fisher Waterhouse, London

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