Copy-caterpillar or not?

Aldi’s “Cuthbert the Caterpillar” cake - from their website

M&S launch legal action against Aldi over popular “Colin The Caterpillar” cake

Marks & Spencer have begun a claim in the High Court against supermarket giant Aldi in relation to M&S’s intellectual property rights in its popular “Colin the Caterpillar” cake.

Aldi (who were famous for their “like brands, only cheaper” campaign a few years ago) are selling what they call a “Cuthbert the Caterpillar” cake which has attracted the attention of M&S and its lawyers.

M&S says that its “Colin the Caterpillar” cakes enjoy a particular distinctiveness and reputation, and that the store chain has three registered trade marks relating to Colin the Caterpillar. They allege that the Aldi product is “riding on the coat-tails” of the quality and distinctive reputation of the M&S product.

Having acted against Aldi for a client in a similar case several years ago (which was ultimately settled before trial) we were interested to note that (like our own client in that case) one of the registrations belonging to Marks & Spencer appears be for the entire appearance of their product in its packaging.

It was registrations of this sort which were instrumental to our own client in pursuing their case, beyond the more commonplace registrations consisting of a brand name or logo, and which were particularly useful to us in relying in that case upon section 10(3) of the Trade Marks Act 1994 which says:

“A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which (a) is identical with or similar to the trade mark, (b) where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

Crucially, unlike section 10(2) which requires proof of a “likelihood of confusion” between two similar marks for the same goods or services, there is no such requirement for section 10(3) where the important factor is the pre-existing reputation of the claimant’s mark.

Interestingly, a quick bit of Google searching reveals numerous other supermarket chains with their own “caterpillar cakes” going by various names and with different variations of packaging and appearances of the product. However, it may well be the case that M&S’s advisers believe that the Aldi product “sails closer to the wind” than others, or there may be other tactical or commercial reasons why they have chosen to pursue Aldi in particular.

At the moment we don’t know all the details of M&S’s claim beyond what has been reported in the press. We don’t know the precise basis on which they are alleging infringement against Aldi, or indeed what Aldi’s defence may be, but these cases (which unfortunately rarely reach Court and therefore any published judicial determination) are always interesting for illustrating the points at which brand owners choose to take action against alleged “copycats” - often from rival retailers and especially in recent years from discount retailers.

If this “Colin versus Cuthbert” dispute is not resolved, it will certainly be one worth following for brand owners and those who advise them.

Presumably any retailers planning to launch bags of “Parsifal Pig” sweets have put their plans on hold pending the outcome…

Posted on: 20/04/2021

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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