Robert Kay, Litigation and Dispute Resolution Partner
M&S’s Colin the Caterpillar cake is one of the retailer’s most recognisable brands. In April 2021, M&S launched legal action against Aldi for trademark infringement concerning the discounter’s version of Cuthbert the Caterpillar Cake which is essentially identical to Colin.
Other supermarkets also have their own version of a caterpillar cake: Sainsbury’s sells Wiggles, Tesco features Curly, and Asda has their version dubbed Clyde. So far, M&S has only filed a claim against Aldi.
Aldi had removed Cuthbert from its shelves in February, but he has recently escaped from confinement and reappeared on the low-cost supermarket’s shelves with sales benefitting the Teenage Cancer Trust and Macmillan Cancer Support.
Unveiling the idea on social media, Aldi said:
“Hey Marks and Spencer we’re taking a stand against caterpillar cruelty. Can Colin and Cuthbert be besties?
“We’re bringing back a limited edition Cuthbert next month and want to donate all profits to cancer charities including your partners Macmillan Cancer Support and ours Teenage Cancer Trust.”
M&S replied:
Hey @AldiUK we love a charity idea (Colin’s been a BIG fundraiser for years). We just want you to use your own character.
“How about #kevinthecarrotcake? That idea’s on us… and we promise we won’t do Keith.”
Although the matter has provided plenty of fodder for social media humour, the issue of trademark infringement is a serious one. Launched 30 years ago, Colin is protected by three registered trademarks. But are they robust enough to see M&S prevail in this cake-based legal challenge?
A quick guide to trademarks
A trademark is a form of intellectual property, providing a badge of origin to allow consumers to distinguish the products and services of one trader from another. A mark can derive from several forms such as words, slogans, logos, shapes, colours, and sounds.
Trademarks are registered under different classes. Most jurisdictions adhere to the 45 product classes of the International Classification of Goods and Services under the Nice Agreement. Classes 1 to 34 are used for goods and classes 35 to 45 for services.
To be successfully registered, a trademark must be unique and not merely descriptive. To remain valid, the mark must continue to be in commercial use and avoid becoming generic (examples of trademark genericisation include aspirin, escalator, and kerosine).
A valid registration confers on its proprietor the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered. Any person or business using an identical or similar mark in connection with identical, similar or (in some circumstances) dissimilar goods or services without authorisation can expect to face legal action by the trademark owner. To succeed in a trademark infringement case, the proprietor needs to prove that the competitor’s use of the mark has caused or is likely to cause consumer confusion. However, consumer confusion is not required if the competitor uses an identical trademark as the one registered by the proprietor or where the trademark has a reputation in the UK and the use of the mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the protected mark.
Will Colin prevail over Cuthbert?
The question must be asked – “why bring this case now and why only against Aldi”? The cynical might say this is all a PR stunt but given the legal fees involved in a trademark dispute, one would imagine there are less expensive ways for M&S to raise its profile.
The fact M&S failed to take a zero-tolerance approach to the other aforementioned supermarkets who have also developed similar cakes may make winning a trademark claim tricky as it may be difficult to establish Colin’s distinctiveness and reputation; arguably the presence of caterpillar shaped cakes in the market (together with the individual names of them) means that consumers are accustomed to seeing caterpillar cakes at different retailers.
However, Aldi’s dominant strategy is to mimic popular brands and sell them at a cheaper price. Many feel that it is time its copycatting was brought to heel. Celebrity makeup creator and artist, Charlotte Tilbury won a legal challenge against Aldi in 2019 after she argued that their £6.99 ‘Broadway Shape and Glow’ palette was too similar to her flagship ‘Filmstar Bronze & Glow’ palette, which she retails for £49. However, Ms Tilbury won her case under copyright law, not trademark.
Aldi is likely to contend that it is known for copying common brands and that customers are sophisticated enough not to confuse its products with the original. M&S could argue that Cuthbert is an inferior cake when compared with Colin and therefore Aldi’s product damages M&S’s reputation. However, if customers believe Cuthbert is less tasty or attractive compared with Colin, it could be said that the former actually enhances the latter’s status.
In summary
Should this case reach trial the decision will be highly anticipated as it will provide an insight into how the Courts interpret trademark disputes relating to food products.
Will Colin and Cuthbert be allowed to peacefully co-exist in British supermarkets? Or will Colin be triumphant in seeing off a competitor?
We will have to wait and see but, until then, it is likely that both M&S and Aldi will have butterflies.
To find out more about how we can advise and represent you in a dispute, or how to prevent someone taking advantage of your reputation or the goodwill you have built up then please contact our dispute resolution team on 020 7908 2525.
Please note – this article does not constitute legal advice.
