The High Court has refused to grant an interim injunction to Nude Brands Limited (NBL) to prevent Stella McCartney Limited (SML) from launching an eau de toilette under the name STELLANUDE. NBL owns the registered word mark NUDE for a range of goods including cosmetics and perfumery, The judge, Floyd J considered that the likely damage to SML if an injunction were wrongly granted outweighed the damage to NBL if it were refused. The risk of irreparable harm occurring to NBL’s business or mark in the period until trial was considered fairly small for various reasons, including the fact that there was only a small risk of confusion between the parties’ respective products, and NBL had already licensed its mark for a range of products that were closer to its core skincare product than SML’s perfume product.
In the words of Judge Floyd: “I have come to the conclusion that the balance of injustice in this case requires me to refuse the injunction. It seems to me that, in this particular case, the likely damage to SML and L’Oréal if an injunction is wrongly granted outweighs the damage to NBL if it is refused. Whilst NBL may ultimately prevail at the trial, it seems to me that an injunction and damages at that stage, though far from perfect as remedies, are more likely to be able to restore them to their rightful position than an award of damages under the cross undertaking to SML. 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. Against this I regard the likelihood of actual confusion between the products in the market place in the form in which they are currently presented as minimal. In coming to this conclusion I have not needed to attach any weight to an attack by SML on the ability of NBL to pay. Nevertheless, even though an offer to fortify the cross undertaking in damages by deposit of up to £1 million with NBL’s solicitors was made, I was not persuaded that if an injunction was granted, NBL’s asset position is such that the award of damages on the cross undertaking would provide full protection to SML and L’Oréal”.
The decision illustrates the difficulty of obtaining interim relief in the UK where there is no evidence that confusion will occur in the market place. Case: Nude Brands Limited v Stella McCartney Limited and others, 20 August 2009.
