Paris Appeal Court - BOURJOIS & al v/ L’OREAL & al
Appeal Court of Paris
BOURJOIS - GEORG KARL GEKA-BRUSH v/ L’OREAL - LANCOME - GEMEY
The companies L’OREAL, LANCOME and GEMEY were represented by Pierre Véron, Lawyer, Isabelle Romet, Lawyer, assisted by Axel Casalonga, Patent Attorney. The Court recognizes that the L’OREAL invention was sufficiently disclosed in the patent and that the design duly covers the aesthetic aspect of the products. The decision obtained is entirely favourable to L’OREAL on patent and design infringement.
L’OREAL holds a French patent No. 86 16626 for "brush for applying mascara on the eyelashes" and a French registered design consisting of a makeup brush for eyelashes.
Arguing that marketed Bourjois makeup brushes for eyelashes were infringing its design and claims 1 and 2 of its patent L’OREAL proceeded with an inspection at the premises of Bourjois (saisie-contrefaçon) and then sued for infringement before the high Court of PARIS, the company Bourjois and its suppliers.
On Patent No. 86 16626
The patent proposes a double change in the characteristics of the classic fitted eyelashes brushes:
- On the one hand, using bristles of larger diameter (average of the order of twice the diameter of the conventional bristles), thus harder,
- Secondly, by ensuring that the bristles are spaced further apart from each other, or more sparse, using fewer than 35 to about 80 % that of a conventional mascara brush bristles.
Due to the hardness of the bristles, a perfect separation of the eyelashes from one another is obtained, while combing and brushing is easy.
Due to the smaller number of bristles per coil, the disadvantage of the "coating" of a coil by the preceding coil is removed; Indeed, at the time of passage at the wiper lip of the tube containing the mascara, the bristles of a coil bowing, cannot cause the inclination of the bristles of the next coil, since they interlock between the bristles thereof.
The Court noted that the invention must be disclosed in the patent in a manner sufficiently clear and complete for it to be carried out by a skilled person; that the patent should not contain ambiguous terminology and technical inaccuracies able to divert a skilled person, or include in the parameters it provides values for which the existence of a result would not be consistent with the invention.
The skilled person is, in this case, specialized in brushes and more specifically specialized in the cosmetics industry and knows the prior art relating to the manufacture of mascara brushes. Therefore, the error in the sequence of the traditional manufacturing process of the mascara brush mentioned in the patent - moreover not impossible, but industrially less practical - could easily be rectified by the skilled person.
Indeed, it is not stated in the patent, that the product covered by the patent should be manufactured according to a new manufacturing process, but according to the traditional manufacturing process.
On insufficiency of disclosure relating to the absence of a definition of the “coils”, L’OREAL rightly observed that the term "coil" is commonly used in the field of brushes and is understood as "step", that is to say, as the space corresponding to a movement of 180° and not 360°.
The skilled person has always had the habit of counting the coils of brushes by counting the number of peaks separated from each other by valleys that can be seen beyond the top and bottom when looking at the brush profile.
Finally, the Court notes that it cannot be validly argued that the patent should provide additional parameters to enable the manufacture of the brushes claimed; that as rightly pointed out by the patentee, the skilled person wishing to implement the patent knows the result to be achieved; he is able to make the necessary adjustments by routine tests, such as those usually performed to meet the specifications of a client and to adapt the various parameters.
Accordingly, the judgment of 1st instance is reformed in that it had cancelled claims 1 and 2 for insufficient disclosure
On lack of novelty:
Bourjois also argues that the claim lacks novelty, a mascara brush with the same characteristics having been allegedly manufactured and offered for sale at the latest in 1983.
But the documents relied on by Bourjois do not show, because of their ambiguity and imprecision that a mascara brush according to the patent had been made available to the public before the filing of the patent application.
The request for revocation for lack of novelty is rejected.
Mascara brushes distributed under the names "Volume Glamour" and "Aqua Volume" exhibit, according to infringement-seizure report and the non-contradictory report by the National Testing Laboratory, the features of claims 1 and 2 of the patent.
Accordingly, Geka and YOJIN manufacturing the products and Bourjois marketing said products have committed acts of infringement.
On the validity of the registered design:
The mascara brush invoked is characterized by a concave middle portion, and on each side a convex portion tapering to the end and slightly curved towards the handle.
The court notes that the curvature of the concave portion provides the following useful results:
• the diameter of the middle portion being close to the collar diameter the reservoir outlet, the bristles in that part are only slightly drained, so that the user is not forced to plunge again the brush in the reservoir to apply the maximum makeup product to the eyelashes
• the curvature matches the curvature of the eyelids edges and therefore the shape of the eyelashes.
The Court considers, however, that a utilitarian object always has one or more technical effects and, consequently, the technical effects described above are not sufficient to conclude that the registered design is not valid; the features of the design, apart from their functional aspect confer to said design independent aesthetic aspect reflecting a creative effect conferring to the design an individual and new appearance.
The judgment of 1st instance is therefore confirmed in that it rejected the application for revocation of the design.