The war over the Caterpillars
On 15 April 2021, Marks & Spencer (M&S) has taken legal action against Aldi, arguing the latter’s Cuthbert the Caterpillar cake infringes the former’s Colin the Caterpillar trademark (TM). It wants Aldi to remove Cuthbert from its shelves and agree not to sell anything similar in the future.
Colin – the Caterpillar: Who are you?
Colin the Caterpillar made his first appearance in public 31 years ago in 1990 and since then 15m cakes have been sold under his name. Colin’s look has been substantially unchanged since around 2004 apart from some special adaptations for events such as Halloween and Christmas.
It is not an exaggeration to say that Colin is a muse of M&S. He has his own website (see here) and the company does not hesitate to claim that “We were the first to retailer to sell a caterpillar, with many supermarkets since trying to emulate this crowd-pleasing cake.” Colin even has his own girlfriend, Connie
On 10 April 2009, M&S was granted a TM for “Colin the Caterpillar” under Class 30 which relates to various types of food.
On 16 October 2020, the company was granted another TM, this time with the name “M&S Colin the Caterpillar”.
It is hard to figure out why M&S decided to file a lawsuit against Aldi only because similar caterpillar cakes are available in other rival retailers, for example, Morris the Caterpillar at Morrisons, Charlie the Caterpillar at the Co-Op, Cecil the Caterpillar at Waitrose, Clyde the Caterpillar at Asda, Wiggles the Caterpillar at Sainsbury’s and Curly the Caterpillar at Tesco.
In its complaint, M&Sclaimed that Aldi’s Cuthbert the Caterpillar was too similar to the Colin the Caterpillar, which could lead consumers to believe that they are of the same standard. Such similarity further allows Cuthbert to “ride on the coat-tails” of the M&S cake’s reputation. This argument is reminiscent of those in L’Oréal v Bellure, a high profile case relating to the interpretation of “unfair advantage”.
Although the detail of M&S’s IP claim is not made public, based on the description reported by the media, it seems to me that M&S is triggering Section 10.3 of the UK Trade Mark Act of 1994 where the three following tests will be considered:
- Whether the earlier mark has a reputation (in this case the Colin the caterpillar, or M&S Colin the Caterpillar). M&S can argue that this criterion is met, given that the fact that Colin the Caterpillar cake is dubbed as the “national tasty treasure”. However, there is a high degree of similarity between all the Caterpillar cakes, Aldi can counterargue that M&S’s TM is very descriptive. If being successful, such a counterargument can evoke the validity of Colin the Caterpillar.
- Whether M&S’s trademark and Aldi’s mark are similar or identical. There is no doubt that both are highly similar.
- Whether the use of Aldi’s mark is taking unfair advantage of M&S’s earlier mark, as claimed by M&S. I really doubt that this test will be successful because of many similar caterpillar cakes of other rivalries. In addition to protecting the exclusive rights of the trademark owner, TM law also needs to ensure that such exclusivity will not stifle competition. Furthermore, it would be extremely difficult to design or create a caterpillar cake that should not look like a caterpillar!
Although only time will tell about the outcome of the case, the public has, nevertheless, a good laugh over this culinary IP case.
