Marks & Spencer is taking Aldi to court to protect its beloved Colin the Caterpillar cake, after the discounter decided it wanted a slice of the action and began selling ‘Cuthbert the Caterpillar’, a very similar product.
M&S claims it infringes its trademark and could lead consumers to incorrectly believe that the two products are sourced to the same standards.
To succeed in passing off, M&S will need to be able to prove that the appearance of its Colin the Caterpillar cake is so well known that it has its own goodwill – that is, consumers would recognise it as being an M&S product without any other cues (such as use of the M&S name or even “Colin the Caterpillar”).
If they succeed in that, they will need to demonstrate that Aldi’s Cuthbert is so similar that it is misrepresenting to consumers that it is in some way associated with the M&S product. Colin is certainly iconic, and it seems highly possible that M&S will be able to show goodwill. So the question will be whether Aldi’s product is close enough to cause confusion in the marketplace.
This will depend on evidence, but the two products are very similar indeed; much closer, it seems, than other caterpillar cakes offered by other retailers. This might be why M&S has taken action here, and why it feels it can succeed. M&S has also relied on trademarks. Trademark cases on shapes of products are notoriously difficult, as most recently seen by Nestle in its attempts to protect the shape of a KitKat, but all these cases turn on the evidence and M&S will presumably be confident that it has sufficient evidence of the shape’s distinctiveness to prevail.
About the author(s)
John Coldham is UK Head of Brands and Designs, and co-heads the global practice. The Team is MIP Designs Firm of the Year 2021, having also won the award in 2019 and 2020. It is the first firm ever to win the award three years in a row.