Key legal considerations in the battle of Colin V Cuthbert

Perhaps it’s the inescapably comical image of two chocolate caterpillar cakes going head-to-head in a Courtroom, or the fact that Aldi’s PR team have wholeheartedly embraced this opportunity and gone full tilt with their social media response, but M&S’s recent legal action against Aldi has certainly captured the public’s attention.

Originally launched by M&S in the 90’s, “Colin the Caterpillar” has been the centrepiece of many a children’s birthday party over the years, with more than 15 million caterpillar cakes manufactured and sold.  Due to his undeniable popularity, M&S filed an application for a Trade Mark to protect Colin in 2008 and the application was registered in 2009, meaning that “Colin the Caterpillar” is a protected intellectual property right.

M&S now claims that Aldi’s own brand of caterpillar confectionary, “Cuthbert the Caterpillar”, is an infringement of its “Colin the Caterpillar” Trade Mark and has asked Aldi to remove the product from sale and agree not to sell anything similar in future.

So, as we all sit glued to the reports, awaiting news of Cuthbert’s fate, lets take a moment to recap on the basics of Trade Mark enforcement, and consider some of the key legal issues which will need to be explored in the battle of the caterpillars.

What is a Trade Mark?

A Trade Mark can be any recognisable symbol, sign or expression that represents a specific company or product and legally differentiates it from all others of its kind.  Once registered, a Trade Mark will provide statutory protection against anyone who seeks to use an identical or similar Mark in the future. 

In the case of Colin, M&S now have a number of registered Trade Marks in place to protect the brand, including one for the name “Colin the Caterpillar” and also one for the image of Colin in his packaging (to prevent anyone from making a cake that fails to create a “different overall impression” on a consumer).

What constitutes Trade Mark infringement?

A UK or EU registered Trade Mark will be infringed by the use of an identical or similar Mark where there is a likelihood of confusion as to the origin of the goods or services and/or an association being made between the two.  It is important to note that a Mark will be deemed identical, even where minor modifications have been made, since such changes would be likely to go unnoticed by the average consumer. 

It is also possible to infringe a Trade Mark if an identical or similar Mark is used in relation to dissimilar products in cases where the original Trade Mark has reputation and the defendant’s use is detrimental to, or takes unfair advantage of, the original Trade Mark. 

Crucially, the defendant’s use of the Trade Mark must be in the course of trade, for example by:-

  • affixing the Trade Mark to goods or packaging;
  • offering goods for sale or supplying services under the Trade Mark;
  • importing or exporting goods under the Trade Mark;
  • using the Trade Mark on promotional material

What are the grounds of M&S’s claim?

Whilst we cannot profess to have read M&S’s pleadings in detail, the press coverage tells us that M&S believes Cuthbert “rides on the coat-tails” of the success and reputation of Colin and that the similarity between the two products could lead consumers to believe that they are of the same standard. 

We also know that M&S considers Colin to have a distinctive character and reputation on the supermarket cake scene, presumably due to the fact that he has graced the shelves of M&S for nearly 30 years now and his appearance has been substantially unchanged since 2004.  It is therefore possible that M&S intends to argue that the sale of Cuthbert by Aldi amounts to “passing off”.  “Passing off” is a UK common law offence which seeks to protect any goodwill associated with unregistered rights, including the appearance of a product. To be successful in this argument, M&S would need to prove that Cuthbert has damaged, or has the potential to damage, Colin’s goodwill – for example, by impacting on M&S’s sale figures if consumers opt for the more affordable version or by damaging M&S’s reputation as a premium food retailer if consumers infer a certain quality standard in Cuthbert and are left disappointed.

However, given the number of IP rights which M&S have put in place to protect Colin, it seems more likely that M&S will seek to enforce these rights by way of a Trade Mark infringement claim, rather than relying on common law.  The central issue here will be whether the similarities between Colin and Cuthbert (both in name and appearance) are close enough that there is a likelihood of confusion or association in the mind of consumers.  Given that M&S have previously launched a female counterpart, “Connie the Caterpillar” – as well as various other one-off editions for Halloween and Christmas – it is certainly possible that the public might reasonably associate the name of Cuthbert with the M&S family of cakes.  As for whether the appearance of the two cakes is sufficiently similar to cause confusion, it will be for M&S to prove that the general public would either associate the two cakes, or confuse them, if they were presented with them side by side.

Which takes us on to our final question…

What does this mean for Curly and co?

It might surprise some of you to know that Colin and Cuthbert aren’t the only caterpillar cakes on the block.  We also have Tesco’s Curly, Sainsbury’s Wiggles, Waitrose’s Cecil, Asda’s Clyde, Morrisons’ Morris and Co-op’s Charlie.  All are chocolate Swiss roll cakes with a cheery caterpillar face and decorative sprinkles on top.  So why have M&S chosen to single out Aldi’s Cuthbert in their High Court claim? 

The most obvious differentiator between Cuthbert and the other Colin-competitors is just how closely he resembles Colin.  From the specific details of his face and feet to the coloured decorations on top – as well as the style of packaging – Cuthbert definitely seems to bear the closest likeness to Colin of all the caterpillars on the market today.

Arguably, however, the more interesting question is whether the presence of so many other caterpillar cakes in the market could actually weaken M&S’s case.  With so many similar cakes on offer, is there an argument that consumers are far less likely to automatically associate a chocolate caterpillar cake with M&S or assume that it is the “Colin the Caterpillar” just because it bears some aesthetic similarities?  Indeed, could this argument be part of the motivation behind Aldi’s attention-grabbing social media strategy, which has sought to bring all of the other retailers “on side” through its #freecuthbert campaign and, in doing so, highlighted just how many other similar products are actually out there? 

We will await further updates on the case with great interest…and with a wedge of unspecified chocolate caterpillar cake in hand.

Written by Swinburne Maddison

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