Injunction refused by High Court to prevent launch of STELLANUDE perfume

In August last year, the High Court refused to grant an injunction to Nude Brands Limited (NBL) to prevent Stella McCartney Limited (SML) from launching a perfume under the name STELLANUDE. The Court also refused permission for a fast trial.

NBL was the owner of the Community trade mark for the word NUDE, which was registered for a large range of goods including cosmetics and perfumery. Its products were sold in the mid to high end of the market, at retail outlets such as Harvey Nichols, Selfridges and Space NK. NBL’s products were marketed as being free of synthetic ingredients, although this was not always so. It had not marketed a NUDE perfume, but said that it intended to do so. The evidence suggested that the launch was not imminent and NBL had not gone beyond producing some free sampler products.

SML, the well known fashion company, made and sold the women’s clothing designs of Stella McCartney. It had, together with YSL Beauté Ltd, also sold perfumes under the brand name STELLA and SHEER STELLA. SML and L’Oréal Limited were proposing to sell a perfume under the name STELLANUDE. The launch was part of an overall commercial strategy to increase awareness of the Stella McCartney brand in the perfume sector and beyond.

NBL applied for an injunction to prevent SML from infringing its trade mark by launching the perfume. The High Court refused to grant the injunction. Although it considered that NBL’s case of trade mark infringement was plainly arguable, it decided that the likely damage to SML if an injunction was wrongly granted outweighed the damage to NBL if it were refused. Mr Justice Floyd said “The effect of an injunction wrongly granted against SML would be to cause a massive disruption to their business, and probably cause them to abandon use of the brand altogether.” In particular, the Judge observed that an injunction would lead to the loss of the 2009/10 selling period. NBL had already licensed its trade mark for a range of products that were closer to its core skincare product than SML’s perfume product. There was only small risk of confusion between the parties’ respective products. The Judge also considered that the launch of NBL’s proposed NUDE perfume product was far in the future. If it had succeeded in obtaining an injunction, it would have removed SML from the market long before its own perfume was launched.

Although the full trial of the matter is yet to be heard, the case highlights the difficulty in obtaining an injunction in a trade mark infringement action where there is no evidence that confusion will occur in the market place.