Image from dullhunk* (via Flickr) under Creative Commons (click for licence)

Dragon’s Den returned to our screens last night and this therefore seemed like the perfect time to summarise one of the talks given at Fieldfisher’s recent Patent Experts Seminar on 10th July in their fabulous new offices overlooking the Thames.

In the opening session of the seminar David Knight looked over the recent Trunki decision (PMS’s Kiddee case versus Magmatic’s Community Registered Design (CRD) for the Trunki – see image below). While reviewing a design case in the context of a patent seminar seemed a little strange at first it ultimately proved to be an interesting take on the Trunki story and made us look at the position, assumed by one of the Dragons, that the product was not patentable.

Setting the scene David noted that designs protect how “it” looks whereas patents will protect how “it” works. When the Trunki design was originally presented to the Dragons back in 2006 they all decided against investing in the product after Theo Paphitis managed to break the strap on one of the suitcases. During the course of the grilling that inventor Rob Law received he was told by Peter Jones (the tall dragon) that “This type of product is not patentable…..I could have a competing product on the market within 7 days”. But how accurate was this patentability assessment? 

The Dragons and the Design Background

Anyone wanting to view Peter Jones’ withering assessment of the Trunki can watch again at the bottom of this post via the wonders of YouTube. Anyone wanting to read about the £7 million per year company that resulted from this “Dragon’s reject” can read here.

The Trunki CRD is on the left, the Trunki product in the middle and the Kiddee case is on the right)

IPcopy has previously covered the outcome of the Trunki appeal case (see post). As previously noted the design drawings in the Trunki Community Registered Design were not black and white line drawings but CAD greyscale images. On Appeal, The  Rt. Hon. Lord Justice Kitchin noted that the lack of surface ornamentation in the CRD compared to the presence of surface ornamentation on the Kiddee Case did affect the overall impression of the case. Against this background, the Appeal Court re-assessed the overall impressions of the Kiddee Case and the Trunki CRD and found that the Kiddee Case created a different overall impression to the CRD, and so did not infringe.

The Patent Position

Essentially Magmatic had tried to use its CRD to protect a whole product genre rather than what the product actually looked like. Protecting a product in this way would have been something that a patent might be able to achieve. So, could Magmatic have tried to protect the Trunki via a patent application? Or was Peter Jones right and was the Trunki something that just couldn’t be patented?

David reminded us briefly that patents are available for inventions capable of industrial application that are new and inventive. So, what might the prior art have been? Standard style suitcases with “towing” straps were known at the time the Trunki came onto the market. Based on such prior art David suggested that there may, contrary to Peter Jones’ assessment, have been a number of features that might have been patentable, namely:

– the oversized wheels of the Trunki (compared to a standard suitcase). These larger wheels allowed a Trunki user to scoot along;

– the bumper feature;

– reinforced components such as walls, axles etc. to allow a user to ride on the case;

– the saddle feature formed by the depression in the top surface of the case;

– the positioning of the tow handle which facilitated towing by an adult while allowing the case to remain horizontal.

So, contrary to the position suggested in “the Den” the Trunki appears as though it could have been potentially patentable.

The only possible fly in the ointment here would have been the existence of the “Rodeo” luggage system which appeared in a design competition in 1998. The Rodeo luggage system was actually designed by Rob Law as well and was assessed at some length during the original design case in the High Court. The Rodeo design was considered to create a different overall impression than the CRD and so the design was found to be valid.

The test for validity in patent cases is however different to the validity assessment in design cases and it appears that a lot of the technical features that are present on the Trunki case are also to be found in the Rodeo product. So, the Rodeo disclosure may have prevented a patent application to the Trunki features from succeeding.

However, the point to take home here is that the Trunki case comprised technical features that were inherently patentable and it was only the prior art that may have prevented a patent from granting.

Lessons

Following this session a number of lessons may be gleaned from the Trunki cases:

1. Although the Dragon’s Den programme may highlight where the intellectual property issues are, it won’t necessarily get them correct!

2. Peter Jones suggested in his analysis that he could have a similar product on the market within a very short timespan. In reality it took 8 years for a competing product to make its way onto the scene.

3. Magmatic has, subsequent to Trunki, applied for a number of patent applications to booster seats and lockable containers.

Mark Richardson 21 July 2014

Here’s the view from the conference room level at the new Fieldfisher offices. The weather was a little below par but the view was still impressive!

*Link to Dragon’s Den Image