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Kao vs Henkel re non-aerosol foam-type hair colorants
FOCUS Chemicals (aka Changzhou North American Chemicals) group, which produces 60,000 tonnes/y of azo and phthalocyanine pigments at its plant in the Xinbei district of Changzhou (Jiangsu province). Changzhou Longyu’s subsidiary, Union Colours (based in Stockport, UK) maintains inventories to assure rapid delivery of pigments to distributors and endusers in Europe. Sochim also sells pearlescent pigments manufactured by Pritty Pigments at Suqian (also in Jiangsu province) and marketed under the brandnames Iridecium and Nacreum (industrial grades) and Clareium (cosmetic grades). Original Source: Pitture e Vernici - European Coatings, Sep/Oct 2012, 88 (5), 101 (Website: http://www.pittureevernici.it/) © CREI 2012
Ukrainian Government plans to privatise the country’s TiO2 industry The Ukrainian Government has announced plans to sell off its shareholdings in the country’s two TiO2 pigment producers, Krym Titan (with a 120,000 tonnes/y plant at Armyansk) and Sumy Khimprom (with a 40,000 tonnes/y plant at Sumy). At present, the Government owns all the shares in Sumy Khimprom and it owns the majority stake (50% of the total plus one share) in Krym Titan. The minority stake (50% of the total minus one share) is currently owned by Group DF, which is in turn controlled by the Ukrainian billionaire, Mr Dmitry Firtash. Group DF is expected to be the strongest bidder for the Ukrainian Government’s shares. As far back as 2004, Mr Firtash first tabled his plan for an integrated private sector combine that would own both the Armyansk and Sumy pigment plants, as well as the Irshansk and Volnogorsk titanium mineral mines and the titanium metal complex at Zaporozhye, housing an ilmenite smelter and a titanium sponge metal plant. Mr Firtash recently said: “Government is not necessarily the perfect business and asset manager. This is true not only for Ukraine; it is true right across the world. A private business owner is a more efficient manager. I have no doubts whatsoever that the sooner we create the vertically integrated titanium combine, the better it will be for
DECEMBER 2012
ON
PIGMENTS
Ukraine. It will make it possible to put substantial investment into the whole titanium value-chain.” Original Source: Nachrichten fuer Aussenhandel, 26 Jul 2012, (Website: http://www.maerkte-weltweit.de) (in German) © MBM Martin Brueckner Medien GmbH 2012
LITIGATION Kao vs Henkel re non-aerosol foamtype hair colorants Kao Corp (of Tokyo, Japan) and Henkel AG (of Dusseldorf, Germany) have reached an out-of-Court settlement regarding two-agent foamtype hair colorants contained in a nonaerosol vessel. Towards the end of February 2011, Kao had filed lawsuits for patent infringement by Henkel and sought injunctions to prevent Henkel from selling products based on stolen intellectual property. The relevant Henkel products had been launched in September 2010 under the brandnames Schwarzkopf Perfect Mousse and Schwarzkopf Fresh Light Foam. The original research and an outline of the manufacturing process details had been outlined by Dr Takashi Kanda at the Berlin Conference on Cosmetic Colorants. (See ‘Focus on Pigments’, Jan 2012, 1-3 & Feb 2012, 7). Under the settlement, Henkel will pay a proper licence fee to Kao, while Kao will withdraw its litigation in Germany and Japan. Mr Michitaka Sawada (President & CEO) said: “Kao values its intellectual properties, including patents as a core critical management asset. In the case of Kao recognising that its patents are being infringed, the company will continue to take a firm position on enforcing its rights.” Original Source: Kao Corp, 14-10 Nihonbashi Kayabacho 1-chome, Chuo-ku, Tokyo 103-8210 Japan, website: http://www.kao.com (3 Oct 2012) © Kao Corp, 2012
Louboutin vs Yves Saint Laurent re trademark red soles It was established under the 1994 World Trade Organisation (WTO) Agreement on Trade-related Aspects of Intellectual Property Rights that “any sign” capable of making goods or services provided by one particular
enterprise distinguishable from those provided by a competitor can be protected by trademark registration. “Any sign” can include a specific colour. In the UK, there are several legal precedents for trademarking colours. The most recent case involved the trademark protection granted last year to Cadbury’s (now part of the Kraft Foods Inc group) for the use of its distinctive purple colour – Pantone 2865c – in packaging wrappers for chocolate products. (See also ‘Focus on Pigments’, Feb 2012, 7). Thirteen years ago, HJ Heinz & Co was granted trademark protection for the use of its distinctive turquoise colour on canned food products. (See also ‘Focus on Pigments’, Jan 2000, 7). In the US, one of the landmark precedents was established in 1995, when Qualitex (of Chicago) – the world’s largest supplier of drycleaning pads for garments and apparel – was granted trademark protection for the use of its distinctive green-gold colour. Christian Louboutin SA (headquartered in Paris) is a footwear retailer with a worldwide chain of boutiques. It has become famous for selling shoes designed by Mr Louboutin, which always have distinctive vivid red lacquered soles. These shoes typically sell for $6254000 per pair. Yves Saint Laurent (YSL, a rival designer and retailer of clothes, footwear and other consumer products, also headquartered in Paris) had been selling monochromatic red shoes, with red soles, red heels and red uppers onwards from the 1970s. In April 2011, Louboutin filed a lawsuit against the US subsidiary of YSL, arguing that it had an exclusive US rights on the use of “the colour red” for the soles of high-fashion footwear, thanks to a trademark registration dating back to 2008. Louboutin was seeking an injunction against YSL selling footwear with red soles and it was seeking up to $1 M in compensatory damages. Louboutin was particularly aggrieved about the success of YSL’s monochromatic red Tribtoo and Tribute suede platform pumps, featured in YSL’s Spring 2011 collection. This collection also featured monochromatic purple, navy blue and green shoes of a similar design. The case was heard in a US District Court in August 2011. Judge Victor Marrero refused to grant an injunction, stating:
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Ukrainian Government plans to privatise the country’s TiO2 industry The Ukrainian Government has announced plans to sell off its shareholdings in the country’s two TiO2 pigment producers, Krym Titan (with a 120,000 tonnes/y plant at Armyansk) and Sumy Khimprom (with a 40,000 tonnes/y plant at Sumy). At present, the Government owns all the shares in Sumy Khimprom and it owns the majority stake (50% of the total plus one share) in Krym Titan. The minority stake (50% of the total minus one share) is currently owned by Group DF, which is in turn controlled by the Ukrainian billionaire, Mr Dmitry Firtash. Group DF is expected to be the strongest bidder for the Ukrainian Government’s shares. As far back as 2004, Mr Firtash first tabled his plan for an integrated private sector combine that would own both the Armyansk and Sumy pigment plants, as well as the Irshansk and Volnogorsk titanium mineral mines and the titanium metal complex at Zaporozhye, housing an ilmenite smelter and a titanium sponge metal plant. Mr Firtash recently said: “Government is not necessarily the perfect business and asset manager. This is true not only for Ukraine; it is true right across the world. A private business owner is a more efficient manager. I have no doubts whatsoever that the sooner we create the vertically integrated titanium combine, the better it will be for
DECEMBER 2012
ON
PIGMENTS
Ukraine. It will make it possible to put substantial investment into the whole titanium value-chain.” Original Source: Nachrichten fuer Aussenhandel, 26 Jul 2012, (Website: http://www.maerkte-weltweit.de) (in German) © MBM Martin Brueckner Medien GmbH 2012
LITIGATION Kao vs Henkel re non-aerosol foamtype hair colorants Kao Corp (of Tokyo, Japan) and Henkel AG (of Dusseldorf, Germany) have reached an out-of-Court settlement regarding two-agent foamtype hair colorants contained in a nonaerosol vessel. Towards the end of February 2011, Kao had filed lawsuits for patent infringement by Henkel and sought injunctions to prevent Henkel from selling products based on stolen intellectual property. The relevant Henkel products had been launched in September 2010 under the brandnames Schwarzkopf Perfect Mousse and Schwarzkopf Fresh Light Foam. The original research and an outline of the manufacturing process details had been outlined by Dr Takashi Kanda at the Berlin Conference on Cosmetic Colorants. (See ‘Focus on Pigments’, Jan 2012, 1-3 & Feb 2012, 7). Under the settlement, Henkel will pay a proper licence fee to Kao, while Kao will withdraw its litigation in Germany and Japan. Mr Michitaka Sawada (President & CEO) said: “Kao values its intellectual properties, including patents as a core critical management asset. In the case of Kao recognising that its patents are being infringed, the company will continue to take a firm position on enforcing its rights.” Original Source: Kao Corp, 14-10 Nihonbashi Kayabacho 1-chome, Chuo-ku, Tokyo 103-8210 Japan, website: http://www.kao.com (3 Oct 2012) © Kao Corp, 2012
Louboutin vs Yves Saint Laurent re trademark red soles It was established under the 1994 World Trade Organisation (WTO) Agreement on Trade-related Aspects of Intellectual Property Rights that “any sign” capable of making goods or services provided by one particular
enterprise distinguishable from those provided by a competitor can be protected by trademark registration. “Any sign” can include a specific colour. In the UK, there are several legal precedents for trademarking colours. The most recent case involved the trademark protection granted last year to Cadbury’s (now part of the Kraft Foods Inc group) for the use of its distinctive purple colour – Pantone 2865c – in packaging wrappers for chocolate products. (See also ‘Focus on Pigments’, Feb 2012, 7). Thirteen years ago, HJ Heinz & Co was granted trademark protection for the use of its distinctive turquoise colour on canned food products. (See also ‘Focus on Pigments’, Jan 2000, 7). In the US, one of the landmark precedents was established in 1995, when Qualitex (of Chicago) – the world’s largest supplier of drycleaning pads for garments and apparel – was granted trademark protection for the use of its distinctive green-gold colour. Christian Louboutin SA (headquartered in Paris) is a footwear retailer with a worldwide chain of boutiques. It has become famous for selling shoes designed by Mr Louboutin, which always have distinctive vivid red lacquered soles. These shoes typically sell for $6254000 per pair. Yves Saint Laurent (YSL, a rival designer and retailer of clothes, footwear and other consumer products, also headquartered in Paris) had been selling monochromatic red shoes, with red soles, red heels and red uppers onwards from the 1970s. In April 2011, Louboutin filed a lawsuit against the US subsidiary of YSL, arguing that it had an exclusive US rights on the use of “the colour red” for the soles of high-fashion footwear, thanks to a trademark registration dating back to 2008. Louboutin was seeking an injunction against YSL selling footwear with red soles and it was seeking up to $1 M in compensatory damages. Louboutin was particularly aggrieved about the success of YSL’s monochromatic red Tribtoo and Tribute suede platform pumps, featured in YSL’s Spring 2011 collection. This collection also featured monochromatic purple, navy blue and green shoes of a similar design. The case was heard in a US District Court in August 2011. Judge Victor Marrero refused to grant an injunction, stating:
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