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21st April 2021

The caterpillar wars

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Marks & Spencer are suing Aldi to prevent further sales of Aldi’s ‘Cuthbert the Caterpillar’. Full details of the claim are not yet known but M&S will have to show that Aldi have infringed their registered trademarks and/or passed off Cuthbert as M&S’ ‘Colin’.

& Spencer are suing Aldi to prevent further sales of Aldi’s ‘Cuthbert the Caterpillar’. Full details of the claim are not yet known but M&S will have to show that Aldi have infringed their registered trademarks and/or passed off Cuthbert as M&S’ ‘Colin’.

M&S introduced the “Colin” caterpillar cake to the UK in 1990. Around fifteen million cakes have been sold en route to it becoming a children’s birthday party staple. Over the years, M&S has expanded the product range to include ‘Connie’ (Colin’s girlfriend) customisable cakes and more. M&S has trademarked the names ‘Colin the Caterpillar’ and ‘Connie the Caterpillar’ and, more recently, the cake’s packaging.

The usual basis for both trade mark and passing off claims is that customers of the injured brand are likely to mistake the interloper for the original (sometimes called ‘source confusion’) or to believe that it is a licensed product, leading to damage to goodwill and brand value. In this case, that might not be so easy, for a number or reasons.

Firstly, whilst M&S can protect against others using the name ‘Colin’ in relation to similar products, they will have difficulty when it comes to copying the concept of the products themselves. Although it was the originator of the caterpillar cake, other supermarkets have over the years come up with their own offerings, and developed their own markets and brand value in creatures such as Tesco’s Curly, Waitrose’s Cecil or Aldi’s Clyde, all of which look broadly similar and are sold as a retailer badged product. This very British little product is now common in the trade, and M&S is going to have to dig deeper to show that its rights have been infringed, partly because as the originator it has itself allowed the market to develop in this way.

On the face of it  Cuthbert’s packaging appears distinct from Colin’s. The transparent sleeve is positioned differently and stylised balloons festoon Cuthbert’s packaging, whereas Colin’s packaging features leaves. The font used in Cuthbert’s packaging also differs from Colin’s. Like the other supermarket caterpillars, who have not been sued, the products themselves, whilst being recognizably based on the same creature, vary. The Aldi product is also likely to be badged as such, making customer confusion as to the source of the product even less likely. 

The limited press statements made by M&S, that Aldi are attempting to ‘ride on its coat-tails’, suggest that  M&S may argue that one or more of its registered trade marks has a reputation  in the United Kingdom and that Aldi has taken unfair advantage of its distinctive character and repute, in this case by making use of the hard won power and attraction of the registered mark to increase its own sales and acquire a market. This avoids the need to show source confusion but is a tricky case to bring, and it will be interesting to see how such a case is put together.

If M&S are successful, Aldi will likely have to stop selling or, at least, alter Cuthbert and may have to pay damages or account for M&S’ lost profits. However these claims are rarely brought for pure financial recovery reasons. They are inevitably high profile and will no doubt lead to a spike in everyone’s sales. Aldi has mounted a spirited social media defence of Cuthbert, suggesting confidence. In response M&S have supplied endearing quotes to the media emphasizing their desire to protect the much loved Colin from this new rival.

The discount supermarkets have been attacking the customer base of their more expensive UK rivals for some years now and have sometimes been accused of sailing close to the wind previously in the way they badge their products. This may be the beginnings of a fight back, in which case it will be interesting to see just how M&S put their case, when the time comes. ‘The Caterpillar wars’ just may turn into something altogether more comprehensive.