M&S sues Aldi over Colin the Caterpillar Cake

All over the news yesterday has the story that Marks and Spencer have filed court papers suing Aldi for trademark infringement and passing off over M&S’s Colin and Connie the Caterpillar. It was very widely reported and went viral on social media. Here’s the BBC News report.

Aldi haven’t yet (as at 16th April 2021) publicly commented, except with this tweet:

The witty joke is in parody to TV adverts food retailer M&S used to run which would say: “This isn’t just food, this is M&S food”

The Times reports:

Lawyers will argue that the similarity of the products leads consumers to believe they are of the same standard and that Aldi’s cake is riding “on the coat-tails” of M&S’s reputation.

The British store will ask a High Court judge to force its German counterpart to remove the product from sale and agree not to sell anything similar in future. A spokeswoman for Aldi said that Cuthbert had already been withdrawn from its shelves.

M&S sues Aldi over of Colin the Caterpillar cake ‘lookalike’ | News | The Times

And there’s been some really good responses from other businesses, social media brands and indeed some firms. The best I’ve seen is this one on Linkedin:

All japery aside, what is the legal position and why do I (as an intellectual property solicitor) think that M&S do have a tough uphill battle?

The starting point here is to note that I have not presently seen M&S’s filed particulars of claim, and I so I am using my expert lawyer skills to deduce what their claim would be.

A quick search of the Intellectual Property Office website shows that M&S have registered a number of trademarks.

They have trademarked the words “Colin The Caterpillar” and also (last year) registered the box style as a registered trademark.

In trademark law, there are a number of claims that can be made:

  1. An identical mark being used on identical goods (section 10(1) Trade Mark Act)
  2. An identical mark being used on similar goods, or a similar mark being used on identical goods (section 10(2) TMA)
  3. The sign used by the infringer is identical with or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3), TMA)

In addition to the trademark claims, one normally adds in a claim of “passing off” which is a similar test to 3 above but without the need for there to be a registered trademark.

For M&S, its claim will be most likely based on 2 and 3 above, with Aldi using a similar mark (Cuthbert the Caterpillar) and a similar design and look, and M&S will argue that they have a reputation in the UK which Aldi are taking unfair advantage off. We know the latter because they’ve argued that Aldi are “riding on the coat tails” of Colin’s success, and that quote is from a legal case and has become well known for IP Lawyers.

In order to succeed, then, it is necessary for M&S to prove a likelihood of confusion.

Aldi have been here before – many times. Indeed, they make a habit of selling different brands same quality. Although there are a number of reported court cases featuring Aldi, one recent one was in respect of Moroccan Oil Miracle Oil (Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014) (bailii.org). Aldi “live dangerously” in copying brands and selling their own.

Confusion needs to be demonstrated, often by surveys, complaints, customer feedback etc. But Aldi will say that no one going in to an Aldi thinks that Cuthbert is in fact Colin. Aldi shoppers know Aldi sells its own brand products and knows that they aren’t the original products, and therefore there is no actual or likelihood of confusion.

Judge Hacon in the above case concluded as follows:

  1. Taking all the foregoing into account, in my judgment, the evidence does not lead to the conclusion that members of the public are likely to assume either that Miracle Oil and Moroccanoil are the same thing or that they come from the same manufacturer or are otherwise linked in trade, such as by a licence. Even if there were any such members of the public, they would be too few in number to cause damage to MIL’s goodwill.
  2. I think that Aldi intended to make the public think of Moroccanoil when they saw Miracle Oil in its packaging and I think Aldi succeeded. But purchases of Miracle Oil have not been and are not likely to be made with any relevant false assumption in the mind of the purchasers. There is not even likely to be any initial interest confusion. There is no likelihood of an actionable misrepresentation.

In my view, the same hurdle for M&S is in this case. Can they show that people buying a Caterpillar cake from Aldi were confused, that they were really wanting an M&S Colin cake and mistakely purchased a Cutherbert cake instead in Aldi? And I think the answer has to be no.

People know the difference between Aldi and M&S.

What is fascinating to me though is the free (yet worth multi-millions) publicity that both stores will get out of going to Court. We’re always taught that out of court settlements is a way to ensure ones “dirty laundry” is not out in public, but perhaps in today’s age, publicity is publicity is publicity?

Personally, now that it has such high publicity, I don’t think Aldi will let it go to Court in case they lose. Their whole business is based on similar looking products that are cheaper but as nice, and if they lose a case that’s so high profile, then it will make it difficult to do it again. For now, they can remain cheeky and keep trying it on.

So here’s my view, if the case does go to Court (which I think is unlikely) I think M&S will lose.

What are your thoughts? Let me know below.

If you’ve got any questions relating to trademarks, or you’re Aldi looking for a great lawyer to assist, get in touch.

Leave a Reply

Your email address will not be published. Required fields are marked *