Marks & Spencer have initiated legal proceedings against their German based competitor Aldi alleging that their Cuthbert the Caterpillar cake is a copy that infringes on their trademark for Colin the Caterpillar.
M&S have been producing Colin the Caterpillar for nearly 30 years and the sight of creepy-crawly cake has become commonplace at many children’s (and adult’s) parties. They have now lodged an intellectual property claim in the High Court against Aldi stating that their imitation “rides on the coat-tails” of the reputation and prestige of Marks & Spencer.
Aldi for their part has taken this mostly within their stride with their social media team making the most of the situation by posting a series of tweets making light of the situation. Indeed, it could even be argued that their promotion of the Cuthbert v Colin the Caterpillar battle will be a huge PR win once this has all played out. The #FreeCuthbert hashtag was trending and the story has certainly captured the nation’s imagination.
Marks & Spencer on the other hand may find themselves facing something akin to the Streisand Effect with the legal battle having the opposite effect of what they actually intended. Whether they can win this battle in court for Colin the Caterpillar is up for debate but the war may well be won by Aldi and Cuthbert.
There are several trademarks registered by Marks & Spencer with the Intellectual Property Office but the one in question for Colin the Caterpillar is likely to be UK00003509740 which was filed last July and entered into the register on 16th October 2020. Part of their claim is that Marks & Spencer believe that Colin the Caterpillar has acquired a distinctive character and a reputation for being a high quality but fun cake.
There is no doubt that Cuthbert bears more than a passing resemblance to Colin the Caterpillar but Aldi are far from the only competitor to have a chocolate caterpillar cake. Tesco have Curly, Asda have Clyde, Sainbury’s have Wiggles, Waitrose have Cecil and Co-op even have Charlie. So why is Cuthbert the target of the legal action? A spokesperson for M&S called it “a targeted approach to protect our brand assets”.
The allegation is that presented without the packaging somebody may confuse the cake for the Marks & Spencer version and the inferred lack of quality could damage their reputation. This ‘passing off’ is what any legal arguments will centre around and the M&S spokesperson added, “We know the M&S brand is special to our customers and they expect only the very best from us, love and care goes into every M&S product on our shelves. So we want to protect Colin, Connie and our reputation for freshness, quality, innovation and value.”
Aldi are no strangers to imitation products and have captured the imagination of their customers. Perhaps the most famous example was the very friendly competition they had with Brewdog. Aldi released Anti-Establishment IPA which was a similar looking and tasting version of Punk IPA. Instead of protecting the brand like M&S did with Colin the Caterpillar, Brewdog saw the funny side and released a rebuttal product called ALD IPA which Aldi enjoyed so much that they stocked it on their shelves. It was such a success for both brands that the limited edition cans flew off the shelf before most had the chance to sample it.
So whilst Marks & Spencer may ultimately win their battle in the courts it may turn out to be a Pyrrhic victory as the court of public opinion may decide they have overstepped the mark by targeting Aldi alone.
Enjoyed reading the article on Marks & Spencer starting legal action to protect the trademark of Colin the Caterpillar? If you have a case that you need help with, Alston Asquith has offices in London and Hertfordshire and can arrange a call to provide some initial advice on the steps to take.
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