Colin the Caterpillar, nigh-on a British institution, has become the centre of a trade mark dispute between Marks and Spencer (M&S) and Aldi. The chocolate sponge cake, covered in chocolate and shaped to resemble a caterpillar was launched by M&S in the 90s and has been the centrepiece of many a children’s party, work leaving do (or for the writer pretty much any social occasion) ever since.
Over the years Colin has faced competition with rival caterpillar cakes sold under names like Clive, Cecil and Charlie (amongst many others). Recently Aldi, the discount supermarket, released a similar cake under the name Cuthbert the Caterpillar and like a blackbird to a (ahem) caterpillar, M&S have swooped in with legal proceedings.
M&S trade mark dispute
M&S appear to be claiming that Cuthbert infringes various of its trade marks and also amounts to a passing off of its rights. The claim relies on trade marks for the word COLIN THE CATERPILLAR (and, we suspect, a similar registration for Colin’s girlfriend CONNIE THE CATERPILLAR) but also a registration for the packaging that Colin comes in, as well as the shape of the cake itself. To succeed M&S will need to demonstrate that Cuthbert causes confusion amongst consumers (i.e. that consumers buy Cuthbert thinking its an M&S product or is otherwise authorised by M&S) or that Cuthbert is free-riding on Colin’s reputation and thus results in an unfair advantage for Aldi.
Aldi previous 'lookalike' cases
Aldi are however no stranger to such ‘lookalike’ cases and their reputation for selling ‘lookalike’ products plays into their hands in cases such as this. Indeed Aldi were able to see off a claim 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.
But, Aldi don’t always come out on top. In another 2014 case The Saucy Fish Co succeeded in obtaining a preliminary injunction against Aldi relating to the use of the term SAUCY on distinctive packaging for fresh fish. In that case The Saucy Fish Co (as with M&S) had registered trade marks for the design of their packaging and, ultimately, that proved decisive.
Reputation is key in trade mark case
Ultimately, where the battle of the caterpillars is likely to turn is the issue of reputation, specifically the significant reputation that M&S have built up in Colin and the extent to which Aldi can be shown to be free-riding on the same. In considering this angle the court will look at how similar are the trade marks involved (both names and packaging), how big is Colin's reputation, how similar are the products and ultimately, what were Aldi trying to achieve with Cuthbert? Were they trying to free-ride off of Colin's reputation or is it simply a coincidence?
How will it be resolved?
We will have to wait to see how the case pans out but wouldn’t be surprised if it is resolved out of court. Last year Brewdog had a spat with Aldi about their Punk IPA. Brewdog felt that Aldi had copied their beer and, instead of going to court, created their own ALDIPA (copying Aldi’s branding) resulting in much media attention and, ultimately, Brewdog supplied Aldi with ALDIPA. Who knows, maybe Cuthbert could end up joining Colin and Connie in the M&S caterpillar family…..
What does the M&S trade mark dispute mean for you?
If you have any doubts about what the case might mean for your intellectual property or you wish to register a trade mark, please get in touch with our specialist trade mark lawyers.
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