John Coldham: Hello, my name is John Coldham and I am a director in the Intellectual Property team. I am joined by Rob Law, so-called Trunki Daddy, Founder of Trunki. Rob, thank you for joining us. This is a session about design law and protection and the more commercial considerations as well. Please start with telling me a little bit about Trunki.
Rob Law: Sure. We have been trading for almost ten years now with our hero product which is a ride-on suitcase that hopefully has become a familiar sight in many international airports now. We have now developed a whole range of travel solutions that pioneer this new category of children and family travel from car seats that turn into backpacks, through to fully waterproof kid swimming bags that look like fish and we have really found a lot of opportunity within the children's travel sector for innovation. A lot of parents just are not happy with solutions that are out there so we are forging new territory in this new category.
John Coldham: What types of design protection have you found most successful?
Rob Law: I think it is quite a mixed bag. You get success at different levels with different protection but, essentially, you are looking at unregistered design. That is primarily a UK rule, but as we mostly trade globally in this environment and economy then it has a limited impact.
European design registration has worked really well for me. You can never underestimate the power of a piece of paper, just waving a legal document can actually have significant effects whatever the power of that actual legal status of that design is. Then you have internationally, you can rely on copyright and 3D form so actually coming back to the registered piece of paper can then actually, even though European design registrations are not recognised in, say, Hong Kong, you can apply for copyright based on that certificate and use then a new document to try and take down offenders in Hong Kong and China, being primarily where a lot of these global trade shows happen and where a lot of the counterfeits pop up. And then, finally, you probably have passing off but that is a very difficult thing to prove.
John Coldham: That's very interesting. There are two different types of thing I would like to ask you about. You have made the headlines for battling one particular copycat for many years, and that is ongoing, isn't it? Can you tell me a bit about your experience of that case and the IP courts?
Rob Law: Sure. I suppose I should start with the story of how it all happened. We were at the Spring fair in 2003 around February time and discovered this lookalike, very similar product. So we gave them the 'cease and desist' and asked them to remove the product from the show. They refused. Having then talked to my lawyers, they have been to court with them before and they are prolific offenders of intellectual property, so they supply a lot of bargain shops and pound shops and things like that. So my legal advice from very early on was, if you want to take this forward, you are going to have to go the whole way.
I had no idea the whole way was going to be at least three years and a huge amount of money but I am very passionate about protecting design and what you have created as intellectual property. So we sought to get a European-wide injunction against them selling their product based on my European registered design, which we were successful in getting. We went to the Supreme Court in the summer of that year, which was an expedited case because we made a case that it was really vital to get its products off the market quickly and we won at the High Court, which was great.
However, the other side appealed that decision and the Appeal Court overturned the ruling that my registered design was valid – well not valid but because it was registered in grayscale and not line drawings which the legal professional normally registered line drawings, but actually the general populous – about a third of registered designs are line drawings, a third are grayscale and a third are photography, photographs. So, we were gobsmacked to have that overturned and we are going to the Supreme Court on 3 November 2015 to have that judgment hopefully overruled.
John Coldham: And I think it is the first design case that has gone to the Supreme Court for decades as far as I am aware. You may know better than me – you have probably looked into it – but we will be watching that one with interest.
Rob Law: I would note that we did win on a few things in the High Court that still stand and they were based on unregistered design and they were some small details and we would argue that there was a lot more in registered design that we should have won on but because we won the big one with the European design registration which banned them from selling the product across the whole of Europe, I was happy to just go with that. So for that to be overturned at the Appeal Court was devastating.
John Coldham: I can imagine. And, obviously, you as a business are a very different business to the one that filed those registrations all those years ago. You were mentioned how the legal industry file designs as line drawings. I do not know that that's necessarily entirely right but you are right that line drawings are a popular way of registering designs because they are considered to be broader. Would you have any advice on that for designers who are just starting out now, who perhaps cannot afford the legal advice that you now can afford, on what they should be doing? If you like, the lessons you have learned from your experiences?
Rob Law: I would say I probably would not do anything differently. I mean I registered in 2002 a UK registered design because the European system did not exist then. A year later, it came into force and I registered a more up to date design. I was actually freelancing for Martin at Tangerine at the time and had then a legal document that I could go off and licence to a manufacturer and that worked pretty well. I then was successful in getting a global licence for the product. Sadly, that did not work out and I started Trunki in 2006. But, looking back, I think I did all I could at the time and it was just a huge disappointment that the Appeal Court overturned the ruling and hopefully that will be reversed and back to the status quo.
John Coldham: I think there is a lot riding on your case. Nobody likes to be the guy going in with the case that everybody is watching but it will have an effect on probably the filing of registrations in the UK, the guidance that the IPO gives and everything will depend on what happens in your case. My view is that there is a lot to be said for the guidance that is on these websites as to how designers should file these designs in the first place. You read the guidance, you did exactly what it said and your argument, presumably, would be that you should not be criticised for that now that you have got through to the other end. So I think there will be a lot that may change as a result of your judgment.
Rob Law: The guidelines give you no indication that registering a photograph, line drawing or grayscale gives you any different forms of protection. It just says you can at these levels and actually questioning OHIM, who are the body who organise the design registrations, still think that is the case as well.
It is ridiculous that the Appeal Court overturned the ruling because the wheels were darker than the body and therefore I intended the wheels to be darker so therefore they took that as surface decoration and therefore if you register a grayscale design, you can therefore apply surface decoration to get round it. So any design, shape that is registered as grayscale with a pattern on it, and you have passed through and can now copy that product. So it is just insane. Which hopefully, is the reason why we have permission to go the Supreme Court.
John Coldham: It is definitely an issue of interest to a lot of us and, as I say, we will be watching the case with interest. Now, I said I would like to talk about two things. One is about the copycat that you have fighting for years. But you say that you have waved your paper around and presumably had success. So is your experience of IP law as we are standing here today before the Supreme Court all negative? Or do you feel that actually you have had some experience of IP being a good thing for you that has worked?
Rob Law: This is the only case that we have not won and the only case we have actually taken to court. Everything else we have managed to succeed in the product being removed, destroyed or we have been granted award in the form of payments for copying, that is internationally. So it is absolutely gutting to lose on your home soil. But, yes, we have taken hundreds of copies across Europe down with our European design registration primarily at retail.
Online is the real frontier for copycats and counterfeits. The Alibaba group with all its other subsidiary websites are the culprits for promoting a lot of that product. They do have reasonably decent ways of being able to upload your IP and remove that product but they are so focused on counterfeits and trademark infringement that copycats and lookalikes are quite hard to take down because it is a judgement call and their IP office is in China and the way the guys think is fairly black and white and not grey.
So it is a bit of a challenge. It became such a big challenge that we were spending a lot of time doing so we have now outsourced to an online brand protection agency who just deal with it. We get reports and in the year to date we have taken 3,000 listings off of the Alibaba Group websites and a few others in Europe.
John Coldham: Wow. So, if people read the headlines in the UK about you and your battles with IP, they might be put off. The young designers might be put off from thinking there is any point in registering designs or using intellectual property to help them protect their business. Would that be your message? Presumably not.
Rob Law: No. if the read the actual paperwork from the court then they may well be put off but, no, I think as Richard alluded to before, I think registering new designs – and it is not that expensive to register a European design that covers the whole of Europe – is a very good use of money. It is something like £300 and you can do yourself quite easily. I did it myself and we have had a huge success. It is only this one case where we have not.
So, I think that the real challenge is that it is incredibly complicated. Each country is different, even within Europe. Basically, as a designer you will never fully understand the legal system and you have to rely on the legal profession to help guide you through that. And it is big frustration that you have to spend your time and money on these things rather than on product development, which we are also passionate about, but we are in a global marketplace, we can sell internationally so easily now and as a result it is very easy for the copycats to sell their products over here. I would say that, in countries like France and Germany, it is very easy to win cases and have things removed because they take design law more seriously.
John Coldham: I hope you found this podcast useful. We have produced a guide aimed at the non-lawyer, all about the designs, lifecycle and the different considerations at different points. Please contact us if you would like a copy. Thanks for listening.