Battle of the Caterpillars

Battle of the Caterpillars

Key Contact: Cordelia Payne

Author: Ffion Morgan

Who gets your vote? Are you #SaveColin or #FreeCuthbert?

The battle of the caterpillars has certainly taken social media by storm. No doubt, Aldi has won the court of public opinion if Twitter is anything to go by, but how all of this will play out in a court of law could be a completely different story.

Legal Action Against Aldi

On 15 April 2021, Marks & Spencer’s (M&S) announced that it was launching legal action against Aldi, claiming Aldi’s ‘copycat’ version of its trademarked ‘Colin the Caterpillar’ cake, ‘Cuthbert the Caterpillar’ is an infringement of its intellectual property rights

M&S is said to sell over 450,000 Colin the Caterpillar cakes every year and since the cake was first sold back in 1990, Colin has attended over 15 million birthday celebrations worldwide. At 30 years of age, Colin could be dubbed a pretty tasty national treasure. It comes as no surprise then that M&S filed for a trademark of Colin in 2009 and later, his wife, Connie, in 2016.

Despite Colin being a protected trademark, thereby giving M&S the authority to bring an action for infringement against anyone else who causes confusion with, or takes advantage of it, there are a number of caterpillar cakes already on the market including, Curly (Tesco), Clyde (Asda), Wiggles (Sainsbury’s) – so what makes Aldi different and can M&S stop them?

The Concept of Passing Off

M&S argue that Cuthbert ‘rides on the coat-tails’ of Colin’s honourable reputation and therefore infringes its registered trade mark. Furthermore, they are claiming that Cuthbert the Caterpillar amounts to ‘passing off’ which is the act of misrepresenting goods as that of another trade. The issue at play in court will be whether Aldi’s Cuthbert so closely resembles Colin so as to mislead or confuse consumers into thinking that both products come from the same manufacturer or are otherwise linked in trade, for example, by a licence. I guess, for some, it doesn’t bear thinking about the possibility of tucking into slices of Cuthbert, the rival con-man, mistaking him for Colin, the real OG?

Aldi is no stranger to allegations of IP infringement. In 2014, ‘Moroccanoil’ hair oil sued Aldi for its sale of its knock-off product ‘Miracle Oil.’ Crucially, the court found that Aldi’s cheap alternative, did not pass off ‘Moroccanoil.’ The court said that Aldi had intended to make the public think of Moroccanoil when they saw Miracle Oil in its packaging and had succeeded. However, the purchases of Miracle Oil had not been, and were not likely to be made, with any relevant false assumption in the mind of the consumers. The outcome of this case may be fundamental to Cuthbert’s destiny in his battle for survival.

To name but a few other examples; Aldi sells ‘Norpak’ instead of ‘Lurpak’ and ‘Luxury Candles at Affordable Prices,’ which bear a strong resemblance in appearance and smell, to the high-end Jo Malone luxury branded candles. However – and this is extremely important – the courts are yet to find that consumers are confused between branded items and supermarket copycats and the difference in price definitely supports the view that shoppers are unlikely to confuse the two. The existence of other similar caterpillar cakes on the market could also affect M&S’s case showing that customers are familiar with seeing caterpillar cakes without necessarily making the connection to M&S making it hard for M&S to prove its case.

#CaterpillarsForCancer

As mentioned, Aldi is no stranger to claims of intellectual property right infringement and has taken M&S’s allegations entirely in its stride.  Indeed,   their subsequent marketing strategy has been commended and labelled ‘genius’ as Aldi seeks further limelight and is now calling on other supermarkets to join its fundraising campaign under the strapline, ‘Caterpillars clubbing together to raise money for charity, not lawyers. #caterpillarsforcancer.’ M&S have responded suggesting Aldi raise money for charity using their own character #kevinthecarrotcake. The response has received a great deal of criticism so far but it remains to be seen if M&S will be up for round 2…

It will be fascinating to see how this dispute plays out as once again Aldi sails close to the wind of intellectual property rights infringement and, whichever way it goes, the supermarket chain has attracted huge media attention for its £4.99 chocolate cake which everyone now knows.  This copycat row once again highlights the importance of knowing your rights and handling the PR around them as even if Aldi lose at Court, some could say they’ve already won. 

If you would like some expert advice about how to protect your business’s trademark portfolio, please contact Cordelia Payne at [email protected].

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