COMMERCIAL UPDATE 43 COLIN V CUTHBERT

Marks & Spencer’s (M&S) Colin the Caterpillar cake emerged from its cocoon and chrysalis in 1990 and has now become a staple product of the company.

It was so popular with children and adults alike that M&S has since introduced sister products including Connie the Caterpillar and associated sweets and chocolate to excite the ever growing following.

Other supermarkets have introduced similar cakes: Morris the Caterpillar (Morrisons), Clyde the Caterpillar (Asda), Curly the Caterpillar (Tesco), Wiggles the Caterpillar (Sainsbury’s) and Cecil the Caterpillar (Waitrose).

However, it is the ‘invention’ of Cuthbert the Caterpillar from Aldi which M&S have entered a legal fight with.

M&S launched a legal claim against Aldi on 15 April 2021 claiming that Cuthbert the Caterpillar infringes the trademark registered by M&S to protect Colin the Caterpillar. M&S claims that the similarity between Colin and Cuthbert is such that Cuthbert rides on the coat-tails of the more expensive Colin and therefore M&S’s reputation. As a result M&S has made a claim in the High Court against Aldi for passing off which means that M&S believe Aldi are misrepresenting goods or services as that of another, due to the close physical resemblance.

For a claim of passing off to be successful, it must be determined by the High Court that Cuthbert is close enough to Colin to cause confusion amongst the public so that Cuthbert may be considered to derive from M&S. As a result Aldi benefits from the reputation of the higher end product, supermarket and price tag, resulting in Aldi profiting at M&S’s expense. In essence, the outcome of claim will hinge on whether the High Court thinks Aldi is aiming to benefit by selling a confusingly similar product.

Removing the caterpillars from their packaging, the cakes are very similar aesthetically. When looking at all the caterpillar relations offered by the supermarkets together it is clear that Cuthbert is the closest match to Colin.

A remedy M&S are seeking is to prevent Aldi from continuing to infringe the trademark and if the High Court grants this remedy Aldi will be required to remove Cuthbert from sale. There has been lively (and somewhat lighthearted) twitter exchanges between the two supermarket giants since the story emerged at the end of last week. Aldi appear to have responded to the claim in a jovial way – this may be because they feel the claim does not have legs (no pun intended!) but businesses have all had a difficult year with Covid-19 so M&S are doing all they can to protect their brand, for now and for the future.

In the past chocolate shapes have had mixed success when searching for trademark protection. Lindt defeated a legal challenge from Haribo, which sought to prevent it making its gold-covered chocolate bears, but Nestle were unsuccessful in attempts to trademark the four-finger shape of a Kit Kat.

Interestingly, the cake bears the name of my late grandfather who as a veteran navigator in the fleet air arm and staunch military man would have added his naval mindset wisdom to the debate and commented in his regimental fashion that everyone should act properly, precisely and to the law. If the two cakes were lined up together in a military line, would the two be confused as being the same?

This is one for the courts to ultimately decide and the litigators to lay their arguments out on a plate, but sentimentally with legal arguments aside my vote goes to Colin…

If you have any concerns over your own intellectual property or would like to discuss about how you can protect it, please do not hesitate to contact me.