Rob Law MBE is one of the United Kingdom’s best-known product designers. He is the founder and director of Magmatic Ltd., the company behind children’s suitcase and luggage brand Trunki, best known for its ride-on suitcases. Famously turned down for investment on the BBC TV series Dragons’ Den (equivalent to ABC’s Shark Tank), Rob has gone on to enjoy global success. Trunki products are available in 97 countries, have received over 100 awards, and have sold in the millions. Rob has long known the importance of intellectual property (IP), and Magmatic has gained a reputation for vigorously defending its IP rights. A registered Community design covering the Trunki ride-on suitcase has been the subject of litigation as far as the U.K. Supreme Court. In this interview, Rob shares some of his thoughts and experiences of intellectual property.
July 01, 2018 Landslide
Profiles in IP Law—An Interview with Rob Law, Founder of Magmatic Ltd.
By Rupert Knights
I do not remember the last time I visited an airport without seeing a Trunki product. How did the idea for the Trunki ride-on suitcase first come about?
It was way back about 20 years ago now, studying product design at university. It was the same course as Jonathan Ive of Apple fame, but I was quite a few years behind him. As a second-year student, I entered a luggage design competition. I was in a local department store looking for inspiration, and I noted that hard-molded suitcases were all the rage. Back then, you may remember, injection-molded black suitcases were quite fashionable. I couldn’t really find much more inspiration than that, so I drifted off into the kids’ toy department. I was there looking at the ride-on toys, which were manufactured using a technique called rotational molding that wastes a lot of space, and thought why not marry the two concepts together, using the injection molding technology for the adult suitcases but making a really functional ride-on toy at the same time. So that was when the idea was born.
Intellectual property needs to be an early consideration for startups at a time when funds are often limited and there are numerous other important considerations. What steps did you take early on, and what advice would you give to a new startup regarding intellectual property?
My personal experience was that I was touting around the concept of this ride-on suitcase, and luggage companies weren’t sure it was a piece of luggage, they thought it was more of a toy, and toy companies thought it more a piece of luggage than a toy, so I was really struggling to find anyone to take it on. And then I had an opportunity to talk to a very big player. I thought I needed a bit more security before I started showing a more refined design, so I filed a U.K. design registration, or design patent as they are called in the United States, to protect the shape. That was all I could do at the time, or afford. I did investigate a patent, i.e., a utility patent as they are called in the United States, but really what I wanted to invest in protection-wise with a patent was the concept of a ride-on suitcase, which obviously wasn’t patentable. Any technical area that I’d solved to create the product could easily be gotten around if I did secure a patent. So I went down the route of initially trying to get the design off the ground, and then later it became more about the brand.
On advice for startups, if they’ve got quite a uniquely shaped product, then a registered design is certainly a low-cost solution to give a degree of protection. In this global marketplace, it is more about brand than people copying products, and I think it is most important to secure trademarks to protect your brand. If there is a level of technical innovation, then they can always investigate the patent route. The challenge of patents, as I see it, is even if I could have patented the concept of a ride-on suitcase back in 2002, or even 1998, I had no money, so all I would have been able to do was get a U.K. patent. Patents are only really valuable in the markets that you are going to be selling in, and in the global marketplace that is pretty much every market. So patents can be extortionately expensive. Being practical, we have a rule of thumb that we will always apply for a patent in the United Kingdom, the United States, and China, and then different European countries and possibly Japan, depending on the type of product we’ve developed. You can’t go for a full global patent unless you are seriously thinking you will be turning over billions of dollars.
You have expanded your business with sales across the globe. Given cost constraints and differences between IP systems in different countries, has this required any creative IP strategies?
We try and put the balance of our investment in intellectual property into trademarks, so the word TRUNKI is now trademarked in 56 countries around the world. We have developed our range of other products, which all have pretty much granted patents now, with a focus on the United Kingdom, the United States because there is a big potential consumer market, and China because there is also now a big consumer market and because that is where a lot of copies come from. The lowest cost for obtaining protection for us is around registered Community designs. We actually have 70 of those protecting different product lines in various guises and different shapes and characters.
Trunki has been copied a lot over the years. The frontline used to be going around foreign trade shows with lawyers and trying to find counterfeits and copies, but now it’s all online. Global trade websites by the Alibaba Group and Taobao really are the trenches with copy warfare. Although it is mainly the Chinese websites, you get ones popping up all the time in Indonesia and all over the place, so it is something that is just too difficult for us to manage. We outsource to an online brand protection agency that has the software algorithms in place to identify these counterfeits and copy products and get them removed. We’ve had about 5,000 infringing products removed from various global websites over the last, probably, four years. So it’s a very effective tool, but it’s like “whack-a-mole.” I was just looking at a report the other day, and last year one particular product on Taobao, our children’s reins, had been copied by one company. It had been removed 700 times because they kept relisting it under a different company name or different client name, as if they had nothing better to do. So it pops up and you whack it, it pops it gets wacked, pops up it gets whacked, and eventually they get bored and they will move on and start copying someone else. We’ve really noticed a big sea change now. A few years ago, we were getting an awful lot of different kinds of copies, and now that’s really dropped off and I don’t see any copies at European trade shows now. I think that word has got out that we vigorously protect our intellectual property.
It sounds like the copiers can be as creative in their listing techniques as you are in trying to protect your intellectual property. I understand, and you briefly touched upon it, that you registered a number of alternative designs as a means of broadening protection.
Yes, we were interested in something that would still share the Trunki DNA. There are a whole host of different ways you can make a ride-on suitcase, but we wanted to try and push the envelope out a bit further from our iconic shape. We came up with nine different variants that were still Trunkiesque but not like our current shape. We protected these with registered Community designs.
When you are talking about the approach with Alibaba and those sorts of websites, what IP rights were you predominantly relying on? Did you rely on copyright in some places?
We use the trademark if they use the word Trunki in their description. Our European registered design is still quite effective over in China. It is recognized as a form of intellectual property that we can police against; however, that really is if the domestic market is exporting. On AliExpress, the internal website for Alibaba, it is quite hard to use the European registered design, and we have to try and rely on our Chinese design patent, which protects the shape. In other countries, we’ve had success relying on the copyright in 3D form. That would really be quite hard to prove, but again coming back to the European registered design that is an official document that states it was an original artistic work from its filing date. We can use various affidavits and rubber stamping in different countries to have that incorporated as a piece of copyright.
So in some of the places where you rely on copyright, you use the registered Community design as evidence of the copyright?
Yes. In the Middle East it’s worked quite well, as well as in Southeast Asia, Indonesia, Malaysia, and some other places. Outside where we actually have official documentation, we often find we can get something. In all practicality, having a piece of paper to wave around is really useful. Whether that piece of paper has a huge scope of protection is sometimes irrelevant; it’s that you have got the registered document that you can waive and shout and people will take notice. So the practical applications are actually a lot wider than you might think from a technical point of view.
Given your wealth of experience, are there any IP strategies that you would approach differently if you could go back?
If you are getting to the Supreme Court Case we had in the United Kingdom, I would like to think I would because I interpret the guidelines as they were and they haven’t really changed, and there is no mention of different levels of interpretation. The Supreme Court did this whole grayscale thing, which was a red herring. Even if I had produced line drawings, I think they would have ruled against us. They just thought the product looked different.
I think I have been very aware of intellectual property from fairly early on, so a lot of people are surprised how secure our intellectual property is and how much of it we have. We invest quite heavily in it because at the end of the day we’re a brand, and the brand is only as valuable as its reputation and what you can enforce and protect. I would definitely look at trademarks for startups. I would look at any form of other protection that you can get, whether it be about an iconic shape and therefore registered design or design patents, and on the flip side of that is brand building, which is about building a reputation. In this day and age you do that with social media. While we’ve had lots of people copy us, we’ve got 100,000 Facebook fans, and all these copyists have virtually none. So, at the end of the day they can copy the product but they can’t copy the brand, and therefore they only have a limited shelf life and they don’t stick around for very long. On the flip side you cannot get complacent, so you are always pushing the barriers of innovation, and our Trunki is now on its fifth revision. Now made in the United Kingdom for Europe, it is fully re-engineered and has no metal parts in for quick assembly, safety standards, and recyclability. If we weren’t constantly pushing to stay ahead of the competition, we wouldn’t have quite such an advanced refined product, and we probably wouldn’t have launched our customization platform, where you can choose Trunki in a billion different color combinations. The copyists definitely keep you on your toes.
No IP system is perfect. Do you have any thoughts on any particular strengths or weaknesses of any particular IP systems?
They’re all very frustrating, some more so than others! Even within the European system, we got really frustrated because there was a blatant infringement of our registered design and it took us 18 months to get it removed. So it’s a very slow process. China is an evolving system as we know, so there’s lots of frustration there. But you’ve only got to look back at the American system 100 or so years ago when there was no copyright in books and people were printing Charles Dickens and the like. I do believe it is all going to catch up, but it is frustrating at the same time. You quite often find in the markets when there are huge opportunities like China, legislation is slow to catch up. I think the main driver of the Chinese IP system is actually going to be domestically driven where there is a factory A and a factory B, and factory B starts knocking off factory A’s product. They are going to make much louder noise to the local government than we could ever do. Also, a poor IP system will stifle investment in innovation, which is obviously not what the Chinese government will want. So, I think when they start creating a lot more of their own intellectual property and are wanting to protect it, then that is when we are going to see it improve. n