An Interview with Rob Law
Author | Rupert Knights |
Position | Rupert Knights is a partner at Dolleymores in Hertfordshire, England. He may be reached at rupertknights@dolleymores.com. |
Pages | 7-63 |
Published in Landslide® magazine, Volume 10, Number 6, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
PROFILES IN IP LAW
rened design, so I led 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 investi-
gate 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 solu-
tion 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 inves-
tigate 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 devel-
oped. 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 dif-
ferent 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 trade-
marked in 56 countries around the world. We have developed our
range of other products, which all have pretty much granted pat-
ents 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 obtain-
ing protection for us is around registered Community designs. We
actually have 70 of those protecting different product lines in vari-
ous guises and different shapes and characters.
Rob Law MBE is one of the United Kingdom’s best-known prod-
uct 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 (equiv-
alent 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.
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 rst 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 sec-
ond-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 fashion-
able. I couldn’t really nd 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 nd 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
An Interview with Rob Law
Founder of Magmatic Ltd.
By Rupert Knights
Rupert Knights is a partner at Dolleymores in Hertfordshire,
England. He may be reached at rupertknights@dolleymores.com.
Published in Landslide® magazine, Volume 10, Number 6 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Trunki has been copied a lot over the years. The frontline used
to be going around foreign trade shows with lawyers and trying to
nd 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 difcult for us to man-
age. 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 briey 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 differ-
ent 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 predomi-
nantly 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 effec-
tive 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 regis-
tered 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 ofcial document that states it was
an original artistic work from its ling date. We can use various
afdavits 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. Out-
side where we actually have ofcial documentation, we often nd
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
Continued on page 61
Trixie and Terrance Trunkis
Published in Landslide® magazine, Volume 10, Number 6, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Image: iStockPhoto
By Natalie Alfaro Gonzales
and Steve Maule
Jeff Bezos, founder of Amazon, has
described his organization’s position
on innovation as “stubborn on vision
... exible on details.”1 It seems
intuitive that a successful strategy for start-
ups includes exible business solutions
and innovation, but it is just as impor-
tant for legal practitioners counseling
startups to be “exible on details.” In
dealing with startups, the rapid pace of
development and frequent changes in
market conditions typically demand
more exibility than when deal-
ing with a more mature company.
Intellectual property (IP) prac-
titioners counseling startups
should be prepared to adapt to
these frequent changes and
deal with IP issues beyond
prosecution of intellec-
tual property and litigation.
To best serve startups, IP
practitioners should be
stubborn in their pursuit of solu-
tions for startups, yet exible and holistic
in assessing the specic legal strategies and solutions
suitable for each company. That is, an IP practitioner should
be prepared to leverage all IP types—patents, copyrights, trade
and service marks, and trade secrets—when advising startups.
Further, an IP practitioner should shift his or her focus to meet
the demands of the startup’s market, product, nancial posi-
tion, and legal circumstances. The key to dealing with startups
is recognizing there is never a one-size-ts-all solution.
The IP Practitioner’s
Guide to Working
with Startups
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