On 15 April 2021, Marks & Spencer (M&S) launched legal action against Aldi, claiming that Aldi’s ‘Cuthbert the Caterpillar’ cake infringes on its trademarked ‘Colin the Caterpillar’ cake.
M&S’ trade mark for Colin was registered in the United Kingdom and European Union in April 2009, protecting its intellectual property right. This means that M&S is able bring an action for infringement to anyone who attempts to use this trade mark.
Since M&S began selling Colin the Caterpillar cakes over 30 years ago, other retailers have followed suit, with the likes of Curly, Wiggles and Clyde all coming to market. So why has M&S lodged a claim with the High Court specifically against Aldi?
There are two believed reasons why legal proceedings have commenced against Aldi, rather than the other supermarkets. Aldi’s Cuthbert has a striking resemblance to Colin, with an almost identical face. This is a key area for identifying it as being M&S’ Colin, rather than just a generic caterpillar cake.
Secondly, it is possible that M&S believed that Aldi selling a similar cake at a lower price point was liable to damage the pricing model. Aldi’s lookalike was on sale for just £4.99, whereas Colin retails at £7.
There is a clear argument that Cuthbert is so similar that once it is out of the Aldi-branded box, it could pass for being Colin. However, the odds are stacked against M&S on the basis that consumers might not know that Colin’s face is unique and trade marked, especially as it has never been part of its marketing. If M&S’ argument is that it is the market leader, and rival supermarkets are taking advantage, then the retailer may find it an uphill battle.
It is important to note that, from reports of the contents of the claim, M&S’ case does not refer to copyright at all. This is somewhat strange, as the law of passing-off, which prevents one trader from misrepresenting goods and services as those of another, is unlikely to offer M&S a full solution, and there is a good argument that M&S had copyright in the shape of the overall cake, and in particular the face of Colin. The key similarity between the cakes is the face, and that is the aspect which turns this from a mere “genre” case into a case of copying.
In a case like this, M&S’s strategy was always going to be damage limitation as there were a number of other lookalike products on the market, and given the very close similarity of the face, copying seems inevitable. The particulars are not available and, of course, we cannot know what grounds were left out – and why.
The right thing to do?
The Colin cake is a key driver of value for the brand, meaning M&S was right to take action against Aldi in order to protect its trade mark and retain both profits and customer retention.
It is likely that the two retailers would have been in correspondence before the High Court claim was commenced, and if Aldi was not willing to back down, or at least change some aspects of the cake, then it left M&S in a difficult position. The only choices M&S had was to let Aldi continue selling Cuthbert the Caterpillar, or to take legal action.
Aldi’s social media campaign
Following the news of the court case breaking in mainstream media, Aldi launched a social media campaign to make light of the situation and to strengthen consumer support. Although witty and well conducted, Aldi’s campaign has left many legal commentators concerned that it has removed the possibility of finding a settlement.
Often, running a PR campaign alongside a court case can simply fan the flames and turn a difference of opinion on a legal point into a large point of principle. By way of Aldi’s campaign, it has made settlement difficult. If M&S settle for Cuthbert being on the market, then the retailer could appear weak. However, if Aldi concedes, other companies that the supermarket takes inspiration from will conclude that Aldi will stop if put under enough pressure.
As entertaining as Aldi’s ‘trolling’ approach has been, it has created an even harder situation for both parties, as if either party concedes, it will appear weak in the eyes of the public.
Both sides have a lot to lose from going to court, but it are now somewhat locked in unless the two can settle on a creative solution. This seems unlikely, especially as Aldi has already suggesting a charity cake, though M&S has rejected the offer as it still means selling the copied cake.
The key takeaways for retailers
Retailers observing the case have seen the importance of protecting key aspects of its copyrighted products in order to defend itself against third parties. Whilst M&S has some trade marks, and has also alleged passing-off, the brand’s case would have been much stronger if it had the correct rights.
For those that are copying or “taking inspiration”, it shows that some steps to get close to the market leader are more problematic than others. There are already a number of competing caterpillar cakes on the market and it would have been unsurprising if Aldi had not have launched its own: the issue is that Aldi got too close, which is always a risk when you use third parties as inspiration. The way to remove or reduce the risk is to undertake product clearance work, which is something some intellectual property firms can offer.
Companies should take care to avoid such legal proceedings when launching a new product that could infringe on a trade mark, and should always seek legal advice before taking action. If you would like further information on the contents of this article, or on trade marking in general, please contact Aaron Wood on 01494 478 676 or at firstname.lastname@example.org