The High Court has refused to grant an interim injunction to Nude Brands Limited (NBL), the owner of the Community trade mark (CTM) NUDE, to prevent Stella McCartney Limited (SML) from launching an eau de toilette under the name STELLANUDE.

NBL owns a CTM for the word NUDE, which is registered for a large range of goods and services, including cosmetics and perfumery. NBL sell a range of skincare products under the NUDE brand which it markets as being free of synthetic ingredients. NBL has not marketed a NUDE perfume however. In court, NBL claimed that it intended to do so but this launch was not imminent and had gone no further than the production of some free sampler products.

SML, together with the second defendant, YSL Beaute Limited, sold perfume products under the brand name STELLA and SHEER STELLA and cosmetic products under the name CARE. SML and L'Oreal (UK) Limited, the third defendant, were proposing to sell an eau de toilette and a scented linen spray under the name STELLANUDE.

NBL applied for an interim injunction to prevent the defendants from infringing its CTM by using the word NUDE for its perfume.

The judge considered that NBL's case of trade mark infringement was plainly arguable. There was no difficulty in seeing the NUDE mark in STELLANUDE, especially as the respective elements "Stella" and "Nude", although merged into a single word, performed different functions. The goods, which were to be sold under the STELLANUDE brand, were identical to goods in respect of which NBL's CTM was registered. The judge also considered that SML's defence, that there was not much use of NUDE by NBL and none in relation to perfume, was arguable.

The judge considered that the risk of irreparable harm occurring to NBL's business or brand in the period until the trial for trade mark infringement was fairly small. This was based on the fact that the likelihood of actual confusion between the parties' respective products was minimal. The buyer would know that she was buying an SML perfume and there was no real basis for supposing that a customer would be confused into thinking that there was some form of association between NBL and SML. Further, the risk of harm to NBL's business or brand was small because NBL did not enjoy exclusivity under its CTM. The mark NUDE alone did not guarantee that the product came from NBL or was free of synthetic ingredients; some form of identifier such as NBL's graphic device appeared to be necessary.

The court also considered the fact that NBL had granted a licence to Christian Dior to market a limited range of products under the NUDE mark as part of a settlement of oppositions to trade mark applications. This indicated that NBL was not able to or concerned to protect the exclusive repute of its brand or prevent dilution, as NBL's agreement with Dior contained no quality control provisions and the Dior product contained synthetic ingredients. Further, the Dior licence was for products which were much closer to NBL's core skincare products than SML's perfume range.

The judge reasoned that if an interim injunction were granted against SML, this would lead to the loss of the 2009/10 Christmas selling period and probably cause it to abandon use of the STELLANUDE brand altogether. The judge therefore concluded that on the balance of convenience the likely damage to SML and L'Oreal if an interim injunction were granted outweighed the damage to NBL if it were refused. While NBL might ultimately prevail at the trial, an injunction and damages at that stage were more likely to be able to restore them to their rightful position than an award of damages under the cross-undertaking to SML.

This decision illustrates the difficulty of obtaining an interim injunction in an infringement action to prevent use of a trade mark until the trial for trade mark infringement, where there is no evidence that confusion between the two products or services will occur in the market place. It also provides a warning to trade mark owners that by licensing their trade marks without quality control provisions they run a serious risk that they will be seen as being unconcerned as to the repute of their marks.