Copycat designs coast on the sales of a household name

The sad case of an animal-themed suitcase provides an object lesson in how to avoid design infringement.

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If you have children, chances are Trunki is a household name – literally one that you will have in your house, as an estimated 20 per cent of Britain’s three to six-year-olds own one of their ride-on suitcases.

Stocked by Amazon and Argos, there are 22 animal-themed designs of the now ubiquitous cases. Inventor Rob Law was awarded an MBE in 2011 for services to business after selling more than two million of them in 97 countries. And all this after being rejected by the Dragons in the BBC's Den.

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However, as of last month you can find remarkably similar cases in Lidl for £19.99 – £20 less than a Trunki. And for some time Hong Kong company Kiddee have been selling their own version online with impunity, after the UK company behind Trunki lost its battle against them in the Supreme Court, which in March last year dismissed its appeal over Kiddee's alleged infringement of its design.

Wendy Crosby

In the wake of the result, Law led a #ProtectYourDesign campaign on Twitter to promote intellectual property protection for British designers. This despite the fact that Trunki took steps to do just that.

Patent attorney Wendy Crosby, director of patents and head of the design group at European patent and trade mark attorneys Murgitroyd, said: “They came up with a great idea, and they did take steps to protect it. They just didn't take enough.”

The makers of Trunki filed a European Design Application (EDA), by which you file images of a design to protect it – a relatively cheap and easy process, taking anything from just a few days to a few months.

Designs protect the appearance of products and protection is based on what's shown in the specifics in the images used – this protection cannot be generalised to cover, for example, any suitcase upon which a child can sit and be pulled along.

Wendy Crosby

Crosby, based in Murgitroyd's Aberdeen office, continues: “I file a lot of design applications – one client is a multinational electronics company, and they'll file 15 different designs for one camera.

“Another example is Apple who have got hundreds of registrations for single products like iPhones. They highlight different combinations of features to protect every little detail. This makes it difficult for competitors to copy individual features of the product without infringing one or other of the registrations.”

In contrast, Trunki's parent company Magmatic filed one set of CAD (Computer Aided Design ) drawings including every feature of the Trunki in combination such as horns on the suitcases and contrasting coloured wheels.

Somewhat surprisingly, names bigger than Trunki have made the same mistakes, as illustrated by a case five years ago involving Dyson, Vax and the design of a cylinder vacuum cleaner. Dyson used photos when registering their design, rather than drawings, which would have allowed them to remove a lot of non essential detail. When Vax brought out a similar design, Dyson sued over it, and lost because the design photographs were so detailed and these details limited the scope of the registration.

The problem, Wendy says, is not with the legislation on offer, but with how effectively companies choose to use it. “EDAs are seen as the bridesmaid to patents because they protect the appearance and not the operation of a product, but they can actually be very useful, particularly with products with a short shelf-life, since EDAs can take only days to register whereas patents can take years. You may be able to get a competitor’s products taken off the market very quickly which is really important for a product that only has a shelf-life of about a year as many electronic devices do.

“Trunki used the right legislation. Patents are all about words, whereas EDAs are about what you can see, which can leave them open to interpretation. Trunki couldn't have filed a patent because the idea behind a patented product has to be an invention, some new form of technology – if they'd come up with a new suitcase hinge, for example, that could be patented.

“So they did the right thing, they just didn't take it far enough. Their position would have been greatly improved by filing line drawings rather than CAD drawings and by protecting different combinations of features of their product. The Trunki case is a sad one, the courts even expressed sympathy for them, but their hands were tied. Unfortunately for Trunki, they've provided a good lesson in what not to do when filing a registered design.”

And even more unfortunately, it seems they've opened the door to more competitors – Lidl among them, evidently – in trying to stave off an existing rival.

Crosby said: “Because this case has been through the courts now, competitors have effectively been provided with a roadmap of how to avoid infringements. The exact scope of intellectual property can be unclear, until it's tested in court. Would-be rivals know exactly what they can and can't get away with now.”

Find out more about design protection for your business, by visiting www.murgitroyd.com/designs