Can you recognise your favourite caterpillar? They look all pretty similar to me!

Whether you’re in the legal industry, an amateur of Intellectual Property rights, or simply a cake lover, you will have undoubtedly read about the legal dispute currently in progress between Marks & Spencer (M&S) and Aldi over the caterpillar-shaped chocolate roll cake.

Background

On 15 April 2021 M&S issued legal proceedings against Aldi, alleging that Aldi’s caterpillar cake – “Cuthbert”- infringes M&S’s intellectual property rights over its “Colin, the Caterpillar”.

M&S launched Colin over 30 years ago and for almost 20 years its design has remained unchanged.

M&S also have a number of Trade Marks registered to protect its caterpillar, amongst these are:

• Trade mark number UK00002499694 for “Colin the Caterpillar”; and
• Trade Mark number UK00003509740 for “M&S Colin the Caterpillar” and its packaging.

M&S alleged that Cuthbert the caterpillar “rides on the coat-tails” of Colin’s reputation, causing detriment to the repute of their registered caterpillar and confusion in the minds of consumers.

As such, M&S brought a claim against Aldi for passing-off.

Passing-off is a common law cause of action which protects a trade mark regardless of its registration and consists of three elements:

• Goodwill;
• Misrepresentation; and
• Damage

Goodwill

A classic definition of Goodwill is ‘the benefit or advantage which a business has in connection with its customers. It is based on the probability that old customers will continue to resort to the old place of business, or continue to deal with the firm of the same name...”. It is the attractive force which brings in custom. Often the words “Goodwill” and “Reputation” are used interchangeably, which is not entirely correct, but for the purpose of this article we will use them synonymously.

Therefore, M&S must demonstrate that its Colin has a reputation/goodwill capable of creating an association – even only hypothetical - in the minds of the consumers between a caterpillar cake and its business.

Misrepresentation

Once goodwill is established, M&S must demonstrate that Aldi has misrepresented their cake to the public in a way that would lead, or would likely lead, the average consumer to believe that Aldi’s product is connected to M&S’ product; that there is a link between Aldi’s cake and M&S’ cake; that Cuthbert is in fact Colin!
Damage

Finally, once the two elements above have been demonstrated, the Court will look for a likelihood of damage rather than requiring evidence that actual damage has been made.

Comparison

Now, what is not clear is why M&S have only started a caterpillar war against Aldi.

Believe it or not, other retailers including Morrisons, Waitrose, Sainsbury’s, Tesco and Asda, have created their own caterpillars, all of which are pretty similar to Colin.

Let’s compare M&S’s Colin with the caterpillar versions from Sainsbury’s and Waitrose, for example:

• Marks & Spencer

Colin is a caterpillar covered in chocolate, with decorative sweets adorned on top, a white chocolate face, milk chocolate eyes and a pink caterpillar’s tongue. Its current price for 100g is £1.97.

• Sainsbury’s

The cake from Sainsbury’s is a caterpillar covered in chocolate, with decorative sweets and sprinkles adorned on top, a white chocolate face, milk chocolate eyes and no pink tongue. Its current price per 100g is £0.96.

• Waitrose & Partners

Waitrose’s cake is a caterpillar, covered in chocolate, with piped white chocolate stripes, with decorative sweets adorned on top, a white chocolate face, almost-human-like eyes and no pink tongue. Its current price for 100g is circa £1.12.

• ALDI

Aldi’s now infamous cake is a caterpillar, covered in chocolate, with decorative sweets adorned on top, a white chocolate fact, milk chocolate eyes and no pink tongue. It’s current price for 100g is £0.80.

All these caterpillars look pretty similar to me!

Considering the registered trade marks mentioned above, clearly M&S have invested some money to protect Colin which might explain why they have embarked on this legal battle.

However, it is also possible that Aldi will challenge M&S’s rights under trade mark law, maybe arguing that Colin’s shape and packaging have lost their distinctive character.  Surely M&S is aware that distinctiveness can be acquired but it can also be lost. Are we sure that M&S have adequately policed Colin? Are we sure that Colin’s reputation has not been diluted by all the other caterpillars out there? I guess these are answers reserved to the Judge.

In the meantime, I’m happy to sample all the caterpillar cakes on the UK shelves and vote for the best!

These notes have been prepared for the purpose of articles only. They should not be regarded as a substitute for taking legal advice.