Author Paul Whittingham

Issue October 09

Pub EADT

More than just an eye-catching headline, these two terms have been the subject of a recent court application involving Stella McCartney’s company. Nude Brands Limited (“NBL”) owns a trade mark in the word “NUDE” which is registered in certain categories, including perfumes. Stella McCartney (in collaboration with a famous cosmetics firms) wanted to sell a new range of perfumes to be branded “NUDE”.  They asked NBL for permission to use the word ”NUDE” but NBL refused.

Stella McCartney’s side decided to launch the perfumes under the name “STELLANUDE”. NBL became aware of the intended worldwide launch of the range and sought an injunction to stop the use of the new name because it incorporated the word “NUDE”.  If successful, this would have stopped the launch in its tracks, which would have been expensive and embarrassing for the Stella McCartney team.

NBL argued that the proposed brand clearly included their trade mark and that they were planning to launch a range of perfumes under the name “NUDE” themselves.

On the other hand, the “STELLA” part of the name gave distinctiveness to the name reducing the risk of confusion.  Also, it was found that NBL were not proposing to launch their perfume range for a long time.   NBL had also granted a licence to a fashion company to use the name “NUDE” to sell fashion products so they could not really argue that they were concerned to protect the exclusive reputation of the brand purely for their own use.

Given these factors and the enormous cost to the “STELLANUDE” team if the injunction were granted, the judge refused to give an injunction.

The case shows the importance of giving careful thought to, and taking advice on, trade mark issues in the context of brand development.

Paul Whittingham, Partner

Head of Corporate Department

Tel: 01473 261334

Email: paul.whittingham@ashtonkcj.co.uk

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