Olaplex v L’Oréal at a snapshot:

  • Dispute arises between Olaplex and L’Oréal’ regarding L’Oréal’s ‘Smartbond Step 1’, which competes with Olaplex’s patented hair product, ‘No 1 Bond Multiplier’, with Olaplex suing L’Oréal for patent infringement in the English and US courts.
  • The English High Court rules that L’Oréal’s ‘Smartbond Step 1’ infringes Olaplex’s patent and finds Olaplex’s patent to be valid in amended form.
  • In parallel US proceedings, Olaplex is in a battle against L’Oréal for a preliminary injunction based on an equivalent US patent. The English High Court ruling could influence the US court’s assessment of likelihood of success on the merits and tip the balance under the US test for awarding such an injunction.

Earlier this month, the English High Court ruled against cosmetics multinational L’Oréal in favour of US start-up Olaplex on a patent case centred around a hair product that protects hair from damage during the bleaching process. Whilst the decision appears to have shocked a certain number of commentators – notably due to the David versus Goliath nature of the patent battle – the ruling goes to show the importance of a good patent.

Olaplex’s ‘No 1 Bond Multiplier’ was launched in 2014 and was a widely acclaimed success. L’Oréal’s rival product, ‘Smartbond Step 1’, was launched after it attempted to acquire Olaplex. The legal battle then began. Olaplex alleged that L’Oréal was infringing its patent, which L’Oréal denied. L’Oréal filed a counterclaim seeking to invalidate Olaplex’s patent and sought a declaration of non-infringement relating to an alternative formulation of its ‘Smartbond Step 1’.

Olaplex’s patent methods and uses of a formulation containing an ‘active agent’ named ‘maleic acid or a simple salt thereof’ in treatments for bleaching hair. The High Court’s construction of the claims proved to be crucial in Olaplex’s bid to prevail over a number of novelty challenges relied upon by L’Oréal.
In its attempts to invalidate Olaplex’s patent, L’Oréal also notably raised an allegation of prior use based on distribution of Olaplex’s ‘No 1 Bond Multiplier’ to stylists in the US before the priority date. However, Olaplex’s legal team was able to weather this challenge thanks to the testimonies of a number of witnesses, including from its CEO Dean Christal.

In relation to infringement, the relevant ingredients of L’Oréal’s ‘Smartbond Step 1’ are maleic acid and ethanolamine. ‘Smartbond Step 1’ was found to be an essential element of Olaplex’s invention and L’Oréal was therefore found to infringe Olaplex’s patent. The High Court also found that L’Oréal’s alternative ‘Smartbond Step 1’ formulation infringes Olaplex’s patent.

Whilst this is not the end of the matter, with L’Oréal likely to appeal in the UK and with parallel proceedings still ongoing in the United States, the High Court ruling has put Olaplex in a strong position.
This judgment provides an excellent example of why intellectual property is so important for small businesses and start-ups. It is very difficult for a start-up to match the resources of a multinational giant such as L’Oréal, but strong intellectual property provides an excellent way to level the playing field. It is hard to get past a strong, and well-defended, patent.

Author: Bethan Hopewell, partner at IP law firm Powell Gilbert

Court judgment: Liqwd Inc & Anor v L'Oréal (UK) Ltd & Anor [2018] EWHC 1394 (Pat)