Colin v Cuthbert: The Case of Caterpillar Cakes

16 April 2021

You may have seen in the news over the past 24 hours that two Cakey Caterpillars, Colin and Cuthbert, have found themselves at the centre of a legal battle.
Marks and Spencer’s have initiated legal proceedings against Aldi, the German supermarket chain, alleging that Cuthbert the Caterpillar and their likeness infringes upon M&S’ intellectual property rights built up and registered for their Colin the Caterpillar cake.
M&S have a number of trademarks to protect Colin’s brand, including for the name ‘Colin the Caterpillar’ as well as for the image of the Colin in his packaging (as pictured below)

UK Trademark 3509740 registered by Marks and Spencer plc during 2020.

What are the next steps? From a legal perspective the next phase will be M&S working to establish their trademark infringement case. The key elements of this are:

  1. The sign/ image/ name used by the infringer (Aldi) is identical to the registered mark which M&S has and is using in relation to the goods which are identical to those which M&S uses the mark for; or
  2. The sign/ image/ name used by the infringer (Aldi) is:
    • Identical to the registered mark which M&S has and is using in relation to goods which are similar to those which M&S uses the mark for; or
    • Similar to the registered mark which M&S has and is using in relation to the goods which are identical to those which M&S uses the mark for; and
    • In the case of both of the above, M&S will also have to prove that there is a likelihood of confusion on the part of the public which includes a likelihood of association.
  3. Lastly M&S could make the case that the mark used by Aldi (being the name or the image of Cuthbert) is identical or similar to M&S’ mark, the particular mark has a reputation within the UK and the use of the identical or similar mark by Aldi takes unfair advantage of or is detrimental to the distinctive character or repute of M&S’ mark.

Given the above types of a trademark infringement it is likely that M&S would be looking at bringing a case for both 2(b) and 3.

The next steps will be for M&S to establish the key requirements of each of these cases. First and foremost this will include setting out that Cuthbert the Caterpillar is similar to the registered marks that relate to Colin the Caterpillar. Below is an image showing the eight supermarket caterpillar cakes side-by-side created by twitter user @PrimaryCoHead; see their tweet here.

The argument for bringing the case against Aldi, despite there being an array supermarket cake caterpillars, arises from the similarities of the two cakes in this image. The eyes, shape of their faces, smarties on top of the caterpillar and packaging style are all, arguably, similar. But this will be for the High Court to decide after both parties make their cases.

In both cases M&S will also need to establish either a degree of confusion between Colin and Cuthbert or, alternatively, that Cuthbert is either taking advantage of Colin’s reputation or damaging it. Confusion is proven, typically, by getting evidence that the general public either associate the two or would confuse the two were they provided with them side by side.

For more information on the reporting of the Colin v Cuthbert case please see here.

Alternatively if you have been facing a similar situation to M&S where you think that there is another party or company taking advantage of your brand and reputation, is using similar marks to that which your business uses or are trying to pass themselves off as you please get in touch with us direct. Whether you have a trademark already, as with M&S, or if you do not there may be options which you can take to prevent the other party from getting rich off your hard work.

Finally if you have spent a considerable amount of time and effort building your brand and stories like Colin’s have you thinking about how to protect your brand we would recommend getting in touch with us to see the best ways to protect your intellectual property. You can get in touch by emailing [email protected] or [email protected] or by calling 01273 447 065.

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