Unless you were sleeping in a cocoon you can't have missed the media storm surrounding the recent battle of the caterpillar cakes: Colin v Cuthbert: Marks and Spencer v Aldi: Big Brand v Discounter.
We’ve previously discussed the battle of the caterpillar cakes here but, in summary, M&S has launched proceedings against Aldi relating to its Cuthbert the Caterpillar cake which M&S claims infringes certain of its trade marks for COLIN THE CATERPILLAR, as well as a registration for the shape of the cake in its packaging, and also that the similarity between the products amounts to a passing off. The proceedings are ongoing and will take some time to come to metamorphose (enough of the puns already) to a decision. In the meantime Aldi’s social media team has worked overtime in attempting to win the court of public opinion, and some would say they have succeeded.
The battle of the caterpillars is far from the first such claim involving discount supermarkets and their penchant for lookalike products. On the whole the discounters have come out on top but there is a feeling that the tide may be changing and the courts may take a different view moving forward.
Until recently these lookalike cases have turned on the concept of confusion and the discounters have relied upon their reputation for selling lookalike products. An example of this was a claim against Aldi by Morroconoil back in 2014, in that case Aldi were selling a lookalike of Morroconoil but whilst the Judge noted the “cheeky” similarities between the products it was deemed that there was no confusion because, ultimately, consumers know that Aldi sell lookalikes and thus are aware they are not buying the genuine article.
However, there is now a greater emphasis on reputation and the extent to which the discounters are free-riding on the big brands reputations. Combined with the concept of post-sale confusion this gives rise to the greater possibilities for brands in taking action against discounters. Indeed, north of the border, in Scotland, William Grant and Sons (who produce Hendricks Gin) have recently obtained an interim interdict (the equivalent of an interim injunction) against Lidl preventing the sale of its Hampstead gin in revised packaging that the Judge felt gave a suggestion of ‘visual and conceptual similarity’. Whilst this is only an interim decision it is nonetheless encouraging for brand owners both sides of the border.
What to do
In the absence of changes to legislation to combat lookalikes, and until there is further supportive case-law, brand owners will still need to be mindful of discounters and put in place effective, and creative, strategies for protecting their brands and products. This is likely to involve a combination of intellectual property rights including suitable trade mark registrations for the business and brand names, trade mark and/or design registrations for the products and their packaging as well as copyright and other unregistered intellectual property rights including unregistered designs.
To discuss strategies for protecting your brands and products please get in touch with our specialist intellectual property lawyers.
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