You would have been hard pressed to miss the excitement that ensued last week when it emerged that M&S had commenced an intellectual property claim against Aldi alleging that Aldi’s caterpillar shaped cake named ‘Cuthbert’ infringes the M&S Colin the Caterpillar trademark and amounts to ‘passing off’.
In the immediate aftermath of the announcement, you could be forgiven for forgetting that there is a genuine legal question at the heart of the current dispute – the opening rounds have arguably been a battle of each supermarkets social media team. So far, it would appear to be 1-0 to Aldi with ‘#freecuthbert’ prompting a variety of hysterical memes omnipresent online. However, underneath the amusing social media coverage is a very real High Court case.
M&S’ Colin the Caterpillar was the original caterpillar cake available in British supermarkets, it has been on shelves since the 90s and has retained its now signature appearance since 2004. M&S has multiple trademarks registered with the UK Intellectual Property Office in respect of the cake including Colin’s name and appearance (the latter being in issue presently).
Fast-forward to today and in addition to Cuthbert, caterpillar cakes of varying prices in one form or another are available in most major British supermarkets. There is Cecil from Waitrose , Wiggles from Sainsburys, Clyde originates from Asda, Tesco has Curly, and Morrison’s has a chocolate caterpillar celebration cake called Morris. Many have openly queried why M&S have chosen to pursue Cuthbert specifically; presumably M&S have determined Cuthbert to be the offering by a competitor that is the most similar to Colin.
At the heart of M&S’ position is an allegation that the similarity between Colin and Cuthbert is so pronounced that consumers may be misled to believe that the two products are of the same standard. M&S have framed this as Cuthbert “[riding] on the coat tails” of M&S’ reputation.
The trademark infringement element of M&S’ claim will be matter of evidence. It will be for M&S to prove that Colin’s shape/appearance is sufficiently distinctive.
In order to succeed in its claim that Aldi is ‘passing off’ Cuthbert, M&S will need to establish:-
- as a product, Colin the Caterpillar, has its own goodwill – meaning that it would be recognised by consumers as an M&S product without any external prompt;
- Aldi’s Cuthbert cake is similar to Colin to the point that it effectively mispresents to consumers that it is in some respect affiliated with M&S’ product; and
- as a consequence of the confusion between products, M&S has suffered a form of evidencable damage.
Trademark claims based on shape are typically not straightforward, and as for the ‘passing off’ element of M&S’ claim, the core question will be whether Aldi has benefitted from M&S’ goodwill by putting a confusingly similar product on the market. We will observe the case with interest.
In the interim, perhaps the most pragmatic approach for Aldi at this point would be to evolve Cuthbert the Caterpillar and start a new trend of selling butterfly shaped cakes…
If you would like to let us know if you are #Team Colin or #Team Cuthbert or would like some advice regarding the protection of your intellectual property rights, please contact Will Bainbridge or Tammy Evans at Ignition Law.