A bug’s life: M&S brings legal action as regards Aldi’s Cuthbert the Caterpillar

Tom Hailes | May 2021

If you have been consumed by the news surrounding the global battle against Covid-19, then you may have missed the opening shots in what could be a very different battle – the dispute between Marks & Spencer (M&S) and Aldi relating to their respective “Caterpillar” cakes, Colin and Cuthbert.  

M&S have filed a claim at the English High Court, reportedly alleging that Aldi’s “Cuthbert The Caterpillar” infringes certain intellectual property rights relating to M&S’s Colin The Caterpillar.  The proceedings are at an early stage, however, since the action became public, the companies’ social media teams have already started slugging it out online.

M&S own various UK trade mark registrations relating to their Colin The Caterpillar cake, including a registration for the words “COLIN THE CATERPILLAR” and another for an image of Colin in his green packaging.  

[Incidentally, the latter is not itself a 3D “shape” mark.  Whilst it is becoming more common for businesses to try to get a trade mark registration which protects the shape of a product per se,  it can be challenging to persuade the Trade Marks Registries to grant such registrations, as they often require applicants to show that the public relies on the shape of goods alone to determine the trade source of the product.  For example, Mondelez own various shape marks for their Toblerone product, a triangular prism-shaped chocolate bar, but Nestlé have so far been unsuccessful in registering their four-fingered KitKat bar as a shape mark in the UK.]

It has been reported M&S is asserting that Aldi is taking unfair advantage of the reputation of their registered trade marks and/or it causes detriment to the distinctive character or reputation of such marks.  It has been reported also that M&S are pursuing a passing off claim against Aldi (such claims can be pursued in relation to any indicia in a product which ‘points’ to the business behind it in the mind of the public, including its name, shape, packaging, get-up and its look and feel).

To succeed in a claim for trade mark infringement on such grounds, M&S would need to show, amongst other things:

That the registered mark(s) they rely on have a reputation, in other words that they are known by a significant part of the relevant public concerned with the goods.  

On encountering the Cuthbert product, a link between Cuthbert’s name or “get-up” and the registered trade marks M&S rely upon would be formed in the minds of the public.  In other words, when the average consumer sees Cuthbert, is Colin’s name or packaging as represented in the M&s registrations called to mind?
 
Some injury has occurred or may occur.  For example, M&S may argue that their marks have been diluted by the sale of Aldi’s product, or the reputation of their mark has been tarnished.  M&S may also argue that some of their trade marks’ functions have been impaired, such as ability to indicate origin (by confusing the consumer as to the origin of Cuthbert), or ability to indicate quality (by leading consumers to believe that Cuthbert is of the same quality as Colin), for example.

To establish passing off M&S would need to show that (i) they own goodwill in relation to some aspect(s) of their Colin product (such as its name or get-up), (ii) there has been misrepresentation (e.g. by causing confusion as to origin or quality of the Cuthbert cake), and (iii) that there has also been (or is likely to be) damage to M&S’ goodwill as a result of the misrepresentation.  

One of the remedies that M&S will likely be seeking is cessation of Aldi selling their Cuthbert product in its current form.  

This is not the first time where a competitor has brought an action before the High Court against Aldi relating to how a competing product is packaged and named.  In 2014, Moroccanoil launched legal action at the High Court accusing Aldi of infringing their rights and potentially confusing consumers by selling “Miracle oil” in allegedly similar packaging with a similar name.  Moroccanoil were unsuccessful in this case: it was decided that although initially Aldi’s product may have caused some confusion and brought Moroccanoil to mind, upon closer inspection, consumers would not be confused as to origin or any association between the companies, prior to making a purchase.  Aldi may be hoping to be cocooned by the outcome of that case, though it remains to be seen whether the context of the present dispute will lead to a different outcome.

Regardless of the parties’ respective legal positions, the dispute has garnered considerable publicity in the aftermath of it being made public.  It remains to be seen whether it can be resolved before the case goes to trial – either through settlement, or if one of the parties decides it is not worth the palarvar.

Aldi themselves proceeded to address the dispute on Twitter, example Tweets including “This isn’t just any court case, it’s #FreeCuthbert” – a nod to M&S’s advertising slogan, and “Cuthbert has been found GUILTY… of being delicious”.  Aldi’s hashtag #FreeCuthbert went somewhat viral in the UK and a number of memes ensued.

Aldi also joked that they had updated Cuthbert’s packaging, by tweeting a photo of Cuthbert in jail. 

We will be watching this case with keen interest in its metamorphosis.