Trunki - am I the only one to feel sorry for him?
Discussion
Supreme Court has today ruled against Trunki maker in long running IP case
example of reporting of the story
http://www.cityam.com/236324/trunki-maker-magmatic...
Must have costs thousands and thousands of pounds in legals and massive amount of time / emotional input
If you want to read the whole judgment, or watch the case / judgment summary videos, it is all here
https://www.supremecourt.uk/cases/uksc-2014-0147.h...
example of reporting of the story
http://www.cityam.com/236324/trunki-maker-magmatic...
Must have costs thousands and thousands of pounds in legals and massive amount of time / emotional input
If you want to read the whole judgment, or watch the case / judgment summary videos, it is all here
https://www.supremecourt.uk/cases/uksc-2014-0147.h...
Edited by anonymous-user on Wednesday 9th March 17:20
Edited by anonymous-user on Wednesday 9th March 17:21
Yes very odd, I thought a trademark was down to an interpretation of would a consumer be confused/mislead.
Given that the products are virtually identical size shape and dimensions. It seems very odd that his Design wasn't upheld. The article I read seemed to imply it was because when he first registered it, he put the wheels as uncovered on teh drawings and hence the large chunky whaeels were part of the inherent design, but he argued they weren't. The copycat company had the wheels covered up. Hence the court ruled that the covered up wheels meant the overall design silhouette wasn't infringed.
(I haven't read the ruling itself, only a press article)
Given that the products are virtually identical size shape and dimensions. It seems very odd that his Design wasn't upheld. The article I read seemed to imply it was because when he first registered it, he put the wheels as uncovered on teh drawings and hence the large chunky whaeels were part of the inherent design, but he argued they weren't. The copycat company had the wheels covered up. Hence the court ruled that the covered up wheels meant the overall design silhouette wasn't infringed.
(I haven't read the ruling itself, only a press article)
Feel sorry but right from the start there was very little chance he was going to win this on the Registered Community Design infingement issue IMO.
For those getting mixed up with what was at issue, this is a good summary:
https://gowlingwlg.com/en/united-kingdom/insights-...
For those getting mixed up with what was at issue, this is a good summary:
https://gowlingwlg.com/en/united-kingdom/insights-...
Edited by Katzenjammer on Thursday 10th March 09:57
It's a bizarre judgement and one that has ramifications not just for small businesses, but for any organisation wishing to register CAD drawings as their IP. Conversely, line drawings are afforded greater protection, which just seems backward.
Is this yet another example of the highest decision makers in the land being out of touch with reality?
Is this yet another example of the highest decision makers in the land being out of touch with reality?
JPJPJP said:
Bank employee taxation?
yep. Our case was significant too for anyone who believed they could rely on what a statute said for the purpose of interpreting it. I am not suggesting the employees who participated will get much sympathy but the expansion of the Ramsay principle in the judgment is significant.williaa68 said:
yep. Our case was significant too for anyone who believed they could rely on what a statute said for the purpose of interpreting it. I am not suggesting the employees who participated will get much sympathy but the expansion of the Ramsay principle in the judgment is significant.
Yes. I think GAAR has pretty much kyboshed Ramsay in such matters anyway hasn't it?That construct - where the only reason that the offshore companies existed was to reduce the tax burden - was also going to be viewed with suspicion and HMRC was bound to chase it (imo). Even if it had survived, it would always have been regarded as close to the edge.
But I am no expert on such matters.
In my understanding, the Trunki case was eventually lost over a technicality, which I'd expect in the US but not in the UK. This isn't the way to encourage innovation IMO, it just sends all the wrong messages to potential designers and entrepreneurs. When I see how business is taught in UK universities (currently a student myself), I assume start-ups must not be very high on the national priority list. They basically teach us to play safe, be conservative, not make any 'waves' and be afraid of failure. Great for accountants and actuaries, less of a benefit for budding entrepreneurs... Coming from a country known for its start-up culture it seems pretty backwards to me, and this case just drives another nail in the coffin.
Regardless, the knock-off company should have been slammed with fines for lack of creativity, if nothing else. You'd think there were enough animals in the world for them to model the design after, but they clearly went 1:1 with Trunki's choices. That's a lame way of conducting business, which I'd expect the UK authorities and public to frown upon rather than encourage. I also don't get the parents who'd buy an uglier, lower quality knock-off just to save a tenner - the original isn't that expensive. Perhaps it's due to the fact Trunkis weren't being sold in Tescos, which allowed competitors to fill in the vacuum.
Anyway, I'm not worried for Trunki, although some money's probably been lost. They're still doing well, have a whole portfolio of successful products, and are about to release a carry-on suitcase that's already in high demand on Indiegogo. Unpleasant, but that's life.
Regardless, the knock-off company should have been slammed with fines for lack of creativity, if nothing else. You'd think there were enough animals in the world for them to model the design after, but they clearly went 1:1 with Trunki's choices. That's a lame way of conducting business, which I'd expect the UK authorities and public to frown upon rather than encourage. I also don't get the parents who'd buy an uglier, lower quality knock-off just to save a tenner - the original isn't that expensive. Perhaps it's due to the fact Trunkis weren't being sold in Tescos, which allowed competitors to fill in the vacuum.
Anyway, I'm not worried for Trunki, although some money's probably been lost. They're still doing well, have a whole portfolio of successful products, and are about to release a carry-on suitcase that's already in high demand on Indiegogo. Unpleasant, but that's life.
Pennyroyal Tea said:
It's a bizarre judgement and one that has ramifications not just for small businesses, but for any organisation wishing to register CAD drawings as their IP. Conversely, line drawings are afforded greater protection, which just seems backward.
Is this yet another example of the highest decision makers in the land being out of touch with reality?
I think it's more Trunki's advisors not advising them properly on how to get the broadest scope. If this was a patent, it would be similar to the main claim having an unnecessarily narrow limitation. The court won't interpret the claim more broadly just because the patent owner could have got better advice, they will assume there was a reason for it.Is this yet another example of the highest decision makers in the land being out of touch with reality?
With registered designs, the use of line drawings and dashing out parts that are not being claimed as the design has been common practice throughout the EU for many years. Trunki had the opportunity to represent their suitcase as a line drawing, and perhaps even dash out the wheels, dash out the horns etc in one application, and then file another with everything but the horns or wheels dashed out.
But they didn't, and oddly the render even had highly contrasting shades between the wheels and the case, for example. It's only fair to assume that they did this for a reason, and in this case an informed user (the designs equivalent to the reasonable person) would assume that an element of the claimed design is contrasting colours.
Being a patent attorney myself, it's easy to let preparing the representations for a registered design become what I call a Friday afternoon job: something simple, requiring little thought and effectively money for old rope - you can just file the image the client gives you and send a bill. But if you do that then you could end up in Trunki's situation - they could have numerous registrations giving very broad, effective protection and the outcome of the case would have been very different.
Where does this leave Trunki now then? PMS are free to sell their copies and Trunki will lose market share? I do feel sorry for him, PMS are notorious copy cat professionals. I've lost count of the amount of times I've had legal letters through our door telling us to stop selling certain PMS products because it infringes a design and i just kick it back to PMS. They have their own legal department...
For someone who has fought so hard to get the product made and marketed its beyond comprehension that the design and IP was not protected to the ultimate degree.
I accept that cash was tight initially however from 2005 on they could have spent more on it and the copy cat company only jumped on from 2012 - madness.
I also guess this is moulded in China and the tool made in China as such I would have counted the maker lucky it wasn't ripped off before the tool was finished.
I think they have had a great run, its a great success and have many more products to continue the established route to market however in this case they are the architect of their own downfall.
I accept that cash was tight initially however from 2005 on they could have spent more on it and the copy cat company only jumped on from 2012 - madness.
I also guess this is moulded in China and the tool made in China as such I would have counted the maker lucky it wasn't ripped off before the tool was finished.
I think they have had a great run, its a great success and have many more products to continue the established route to market however in this case they are the architect of their own downfall.
lostmotel said:
Being a patent attorney myself, it's easy to let preparing the representations for a registered design become what I call a Friday afternoon job: something simple, requiring little thought and effectively money for old rope - you can just file the image the client gives you and send a bill. But if you do that then you could end up in Trunki's situation - they could have numerous registrations giving very broad, effective protection and the outcome of the case would have been very different.
This. Design registration has always been a bit of an orphan IP right, not used enough and not respected enough. (I'm also a patent attorney...)
Trunki lost because the image they used for their Registered Design were of the whole of the suitcase - essentially the easy option when it comes to registering. The Court held that the registration just protects the design, not the concept behind it. So Trunki didn't own the idea of making a roller case for kids that you could ride on and was the shape of a cute animal. All they owned was the specific design shown in the registration, and ones quite similar to it (the "produce the same overall impression").
What this means is that people are going to have to be a lot smarter when filing an application for a design registration. Not all patent attorneys treat it as a "Friday afternoon" job, some of us try to explore what is new about the design and suggest filing a range of smaller designs picking out the important bits, but budgets are the enemy of this process as the Patent Office fee is £60 plus £40 per extra design... add on our very modest additional service charges so that we can buy nice cars err I mean run our office and it soon mounts up. Fortunately, the Patent Office has just had a consultation on changing the fee structure so that multiple designs are much, much cheaper - £50 for one, £70 for ten, £90 for twenty etc. That will positively encourage people to file lots of designs for every last little clever bit of the product - which is the way to cope with the Trunki decision.
Blaming designers and young, inexperienced entrepreneurs of being, um... young and inexperienced, isn't going to help anyone. Educating them on the importance and intricacies of patenting would be a better strategy. That is how it's done in countries that put start-ups on their national agenda, and in fact some relevant action is being taken in the UK as well by the IP Office.
Like I said - the case was lost over a technicality, one you've explained in detail and I assume we all agree with it. It's also clear that courts are there to uphold the law and not seek justice, and that life's a b
h and then you die. Still, looking at the bigger picture - this was a stupid ruling that probably did more harm than good in the long term. Surely the market is big enough for both companies and a smarter solution could have been found, had only anyone been looking for it.
Like I said - the case was lost over a technicality, one you've explained in detail and I assume we all agree with it. It's also clear that courts are there to uphold the law and not seek justice, and that life's a b
h and then you die. Still, looking at the bigger picture - this was a stupid ruling that probably did more harm than good in the long term. Surely the market is big enough for both companies and a smarter solution could have been found, had only anyone been looking for it.Unlucky for Trunki, were they on Dragon's Den but didn't take/get investment? I imagine a Dragon would have been all over IP. As said above, they were probably too small to pay for proper protection. If it were me I'd be constantly waiting for someone to copy the idea.
That said, all smartphones look basically the same now and although all companies sue each other continually over details, the reality is that they are all essentaily the same in terms of 99% of the design (exc OS).
That said, all smartphones look basically the same now and although all companies sue each other continually over details, the reality is that they are all essentaily the same in terms of 99% of the design (exc OS).
Magic919 said:
It's a surprising result and quite disappointing.
I thought so really, at face value, although the devil being in the detail, as others here say, it is possibly down to the way the original IP was drafted and applied. Having previously registered two patents, I do er toward the strategy of being the best and trying to keep ahead of competitors as being the cheaper and more effective means of survival.Another firm in our industry has spent years battling "a big, multi-national construction manufacturer" over design infringement and, although they won, I don't wonder whether they came very close to not being able to stay the course at times.
To manage expectations and to avoid disappointment later on, it's got to the stage (well since around P&G v. Reckitt Benckiser ) where it's probably safest to consider a Design Registration as only covering the product as shown exactly in the design registration and nothing more.
Lots of people think filing registered designs is a handy, but as a patent attorney I find they can be as complex and time consuming as patents to get 100% right, which makes life difficult as they're frequently thought of as a cheap form of protection.
Lots of people think filing registered designs is a handy, but as a patent attorney I find they can be as complex and time consuming as patents to get 100% right, which makes life difficult as they're frequently thought of as a cheap form of protection.
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