California-based startup Olaplex has now won in two instances against global cosmetics company L'Oréal, in a dispute over patents for hair treatment. It is the first patent case heard by Richard Arnold in his new capacity as a Court of Appeal judge.
27 November 2019 by Amy Sandys
Olaplex launched Bond Multiplier in 2014, a product designed to protect the sensitive keratin hair protein during bleach treatments. The patent B 2 525 793 (UK) concerns the formulation and method for this keratin treatment. In 2015, L’Oréal launched its own version of the product, Smartbond, which resulted in the ongoing Olaplex against L’Oréal litigation.
Olaplex commenced litigation proceedings against the France-based cosmetics producer after accusing L’Oréal of infringing patent UK ‘793.
In 2018, first instance High Court proceedings found an amended version of the patent EP 2 525 793 (UK) valid and infringed by global cosmetics company L’Oréal. Following the handing down of the High Court judgment, the company also requested the addition of futher evidence. However, presiding judge Colin Birss dismissed the request and granted an injunction against L’Oréal, stayed pending appeal.
L’Oréal also tried to clear part of its Smartbond product for limited scope of use. February was the scheduled date for trial, but the company withdrew the case before evidence could be exchanged.
At the Court of Appeal, L’Oréal appealed the first instance decision on the grounds of obviousness. In the second instance new judge Richard Arnold, patent specialist at the Court of Appeal, upheld Birss’ decision. Olaplex against L’Oréal is Arnold’s first patent case since he was sworn into the court. Indeed, according to a London patent solictor, it is notable how fast the decision was upheld. The judgment was released just days after the hearing.
L’Oréal has now requested permission to appeal to the Supreme Court, as well as a stay of injunction pending a further appeal. However the Court of Appeal has not yet issued its final order, which will deal with this permission to appeal. The final order also confirms any continued stay of injunction sought by L’Oreal pending the appeal, or pending application to the Supreme Court for permission to appeal.
According to JUVE Patent information, however, there is speculation that the court has ordered that the injunction cannot be stayed. Sources say the court order was issued prior to the deadline expiry for submissions on the injunction ruling.
It is likely that the Court of Appeal will issue its final order this week. If the court does not stay the injunction against L’Oréal, it is a significant win for innovators in the ongoing battle against large brands. The popularity of the keratin-protecting technology is undisputed – many other brands have launched similar formulas since Olaplex released its product in 2014. Ongoing litigation is underway in the US, including for trade secrets.
For Hogan Lovells, its UK instruction for Olaplex differs from its usual major pharmaceutical and telecommunications cases. The firm is mostly seen acting for clients such as Vodafone in its ongoing case against IPCom, or in the past Eli Lilly against Actavis. Hogan Lovells is no stranger to the Supreme Court, should the case end up there.
Hogan Lovells’ London partner, Stephen Bennett, led the case for Olaplex. On the trademark and design side, Alicante-based Hogan Lovells partner Imogen Fowler had an existing relationship to the Olaplex in-house team.
Another client introduced Olaplex to the team at Hogan Lovells for the validity and infringement aspects of the case. Olaplex then chose Hogan Lovells following a pitch, with the firm working on its litigation from the beginning. L’Oréal retains Baker & McKenzie, a long-standing client for the firm. Last year, Baker & McKenzie represented L’Oréal for its Clarisonic product, as well as on a previous trademark case.
11 South Square: Iain Purvis
3 New Square: Katherine Moggridge
Hogan Lovells (London): Stephen Bennett (lead); Dominic Hoar, Greig Shuter, Ethan Plumb, Cynthia Obare
In-house: Tiffany Walden
8 New Square: Mark Chacksfield
3 New Square: Lindsay Lane
Baker & McKenzie (London): Hiroshi Sheraton (lead); Rachael Boakes, Tanvi Shah, George Khouri
UK Court of Appeal (London)
Richard Arnold (presiding judge), Nigel Davis, Richard McCombe