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

rened 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 difcult 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 briey 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 ofcial document that states it was

an original artistic work from its ling date. We can use various

afdavits 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 ofcial 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 specic 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