It was the intellectual property case that caught the public’s attention last month. By now we have all heard about, or seen on Twitter, the debacle between Marks & Spencer (M&S) and Aldi over the perceived similarities between Colin the Caterpillar and Cuthbert the Caterpillar leading to M&S filing an intellectual property infringement claim with the High Court.
The caterpillar cake has long been a staple at children’s parties across the UK with M&S selling their first version of Colin the Caterpillar back in 1990. In the time since then, M&S have launched multiple variations of Colin including Connie the Caterpillar, FrankenColin and Christmas Colin, not forgetting, Giant Colin.
Both Colin the Caterpillar and Connie the Caterpillar are UK registered trade marks as of 2008 and 2016 respectively, allowing M&S to bring infringement action to anyone who attempts to use this trademark. More recently, in October 2020, M&S registered a UK trade mark for the image of the packaging under class 30, relating to foodstuffs.
While there are many versions of caterpillar cakes on the market, it appears as though Aldi’s Cuthbert the Caterpillar was one step too far for M&S, who have claimed that Aldi’s sales for Cuthbert “rides on the coat-tails” of Colin’s reputation and ultimately infringes on their rights. As part of the remedies sought, M&S want Aldi to stop using their marks.
What is the claim based on?
The basis for M&S’s claim has not been formally reported as yet but it is widely considered that it will be made of two areas:
- That Aldi infringes on M&S’s registered trade marks by being confusing similar, or taking unfair advantage or being detrimental to their marks.
- That Aldi’s Cuthbert the Caterpillar amounts to “passing off”, which is a common law offence that can protect any goodwill M&S may have in the product (including its name, packaging and appearance) against confusing and deceptive misrepresentation.
It is possible that M&S will also seek to argue that it owns copyright in the Colin the Caterpillar or elements of it (such as Colin’s face) and that Aldi have copied the whole or a substantial part of their work(s).
Why Aldi?
As noted above, Aldi is not the first nor the only supermarket to launch its own version of the infamous caterpillar cake. Some of the most similar “copycats” sold by the UK’s biggest supermarkets are Asda’s Clyde the Caterpillar, Waitrose’s Cecil the Caterpillar and Tesco’s Curly the Caterpillar. The likes of Sainsbury’s and Morrison’s have sought more distinctive names, referring to their versions as Wiggles the Caterpillar and Morris the Caterpillar, respectively.
While there are a multitude of similar caterpillar cakes on the market, it may be the fact that M&S consider Aldi were the first company to bring out their version of the caterpillar cake after M&S registered their figurative trade mark in 2020. It is possible that M&S filed the mark believing that registration would help them achieve a successful claim against copycat cakes and prevent future copycats.
It is also worth noting that at £4.99, Aldi’s pricing point is significantly lower (relatively speaking) than both M&S (£7) and other supermarkets (£6 or £7), and may therefore be more likely to cause consumers to purchase their product rather than the original.
Chances of Success?
If M&S seek to rely on their registered trade marks, the descriptive element of the marks, i.e. the words “the caterpillar”, are likely to be largely disregarded as descriptive elements and as such are incapable of being perceived as trademarks on their own. When considering the case, the High Court may choose to focus on the comparison between the prefixes of the marks (“Colin” vs “Cuthbert”). There is also a question mark as to whether the image of the packaging constitutes a valid trade mark or if this has been infringed or even used by Aldi in the course of trade.
On the face of it, it could be considered that the differences between these distinctive elements is enough to ensure that there is no consumer confusion. The existence of other caterpillar cakes on the market may also be disadvantageous to M&S as it supports the notion that the average consumer regularly sees similar cakes in other stores without associating it with M&S’s product.
With regard to the potential claim for passing off, in order to be successful M&S must prove that Colin the Caterpillar’s appearance is so well-known that any consumer would identify the caterpillar as an M&S product, resulting in a misrepresentation and confusion in the marketplace. When determining the passing off case, M&S will be required to show goodwill in their product and if Aldi has misrepresented this goodwill to confuse and deceive customers, i.e. shoppers think that Cuthbert is Colin, or is associated or connected to him.
Aldi will argue that customers will not be confused or conceived and that there is no misrepresentation as it is obvious that their product is an Aldi product and not an M&S product particularly at the point of sale, not least because the channels of trade (i.e. the products are not sold in the same shop but only in Aldi and M&S separate shops respectively). Aldi will also argue that trade marks and passing off should not be used to unfairly extend any monopoly Aldi might have had in the design of the product. Aldi will argue that it is the nature of a free market and fair competition that they are allowed to sell a caterpillar cake (and it is inevitable that any two caterpillar cakes will look similar but this should not constitute an infringement). Previously, Nestlé have failed in its attempts to trade mark and enforce its rights in the shape of a Kit-Kat.
However, M&S may seek to rely on recent case law where it was found that passing off could apply to post-sale confusion and in relation to the design and aesthetic of products rather than just branding. It is considered that the owner of goodwill in a product is entitled to protection of such goodwill for the lifetime of the product, not just at the point of sale. If the High Court considers takes into consideration the issue of post-sale passing off, it will need to consider whether, following sale of the copycat cake and once removed from the context and branding (i.e. the different branded boxes and names of the cake), it would be distinguishable from M&S’s Colin the Caterpillar. If not, M&S have the potential to lose sales and suffer devaluation of the brand (e.g. if the general public saw an unpackaged Cuthbert the Caterpillar cake at a party assumed it was a Colin the Caterpillar, and if the product was considered to be inferior, this might cause damage to M&S).
In relation to the copyright claim, there is the potential for Aldi to argue an exception to copyright that permits third parties to use copyright material without the owner’s permission for the purpose of parody, caricature or pastiche (Aldi might point to their social media posts as evidence of the humour in their use). However, this exception only permits such use to the extent that it is fair dealing (which is not defined and would be a matter for legal argument, with a key question being whether Aldi’s use affects the market for the original work and causes M&S to lose revenue).
Given the social media flurry and the attention that this case has already received, it will be interesting to see how M&S drive the case forward and the basis upon which the claim has been put forward. In the event that the High Court does find in M&S’s favour, a precedent will be set and supermarkets selling similar caterpillar cakes may suffer. It would be no surprise if this matter is settled out-of-court depriving the public of the cake fight it wants. It remains to be seen which party will have its cake and eat it.
If you have any queries about trade mark infringement, or other issues relating to intellectual property, or want to know what our Colin (Bell, Head of Intellectual Property), Hayley Morgan (Associate and Trade Mark Attorney and Colin the Caterpillar aficionada) and Samantha Thompson (the writer and one of Brabner’s in-house bakers) think about the case, please get in touch with a member of our IP team.
