How do you send a caterpillar 100 feet in the air?
Turn it upside down.
The case of Colin the Caterpillar -v- Cuthbert the Caterpillar has caught the media’s attention. In case you have been cocooned away and missed it, on 15th April 2021, Marks and Spencer (M&S) launched high court proceedings in the UK against discount supermarket, Aldi, alleging trade mark infringement and passing off.
The thing everyone wants to know now is whether the case has legs.
At first sight, you might think so. M&S has sold a caterpillar sponge cake since 1990 under the name “Colin the Caterpillar”. Since then, it has sold 15 million cakes and it registered the trade mark “Colin the Caterpillar” in 2008. In contrast, Aldi has only recently started selling its chocolate sponge caterpillar cake and it has called it “Cuthbert the Caterpillar”.
But with so many legs, it is risky to try to run before you can crawl. Many observers are sceptical of the merits of M&S’s case.
M&S claims that Aldi are seeking to ride on Colin’s coat tails and take unfair advantage of the reputation that M&S has acquired in its cake. However, when comparing Colin the Caterpillar with Cuthbert the Caterpillar, the Court will give relatively little weight to words like “the” and “Caterpillar”, which have little distinctiveness, at least for cake made to look like a caterpillar. So, the Court’s comparison is likely to focus most on the words “Colin” and “Cuthbert”, which are not particularly similar. Added to this, the Court is likely to take into account the fact that consumers are accustomed to all the major supermarkets selling caterpillar cakes - Tesco has Curly, Sainsbury has Wiggles, Asda has Clyde, Morrisons has Morris, Waitrose has Cecil and Co-Op has Charlie.
M&S also claims that Aldi are passing off its cake as coming from the same source and being the same quality as M&S’s cake. Ostensibly, Colin and Cuthbert do bear a passing resemblance, but is this enough? Passing off is a complicated area of the law, and, besides proving that it has a reputation and goodwill in its cake, M&S will have to show that Aldi is guilty of making a misrepresentation. As the packaging of the two cakes is not especially similar, and each bears the respective supermarket’s house mark, this means M&S needs to rely principally on the misrepresentation being that, when the Aldi cake is out of its package it so resembles the M&S cake that consumers assume it’s the same cake, or comes from the same manufacturer. M&S then has to show that this will cause it damage, for example because of lost sales. It’s a stretch, even for a caterpillar.
So, are M&S wise to chew on this particular leaf? It seems that the reason M&S has decided to take on Aldi is the close similarity between the appearance of the two cakes, more so than with the caterpillar cakes of the other supermarkets. Furthermore, M&S believes it holds the moral high ground, especially given that “Colin the Caterpillar” is a central piece of the company’s partnership with the Macmillan Cancer charity. A spokesman said “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 … and our reputation for freshness, quality, innovation and value.”
M&S may be right. When deciding to launch court action for intellectual property infringement, it is important to weigh up all the pros and cons. No doubt, M&S has done this and knows what it is doing. As an intellectual property advisor, however, I am usually asked by my clients to keep them out of court, and initiating court action is a last resort. There are often imaginative alternatives. Alternatives that can create something that can fly … like a butterfly.
Aldi has a bit of a reputation for this kind of thing and it is interesting to compare and contrast the approach being taken by M&S with that taken previously by Brewdog. When Aldi launched an “Anti-Establishment IPA” that looked and tasted like Brewdog’s “Punk IPA”, Brewdog responded by launching its own ALD IPA. Aldi liked this response so much, they decided to stock Brewdog’s beer, and it turned out to be a commercial success for both companies.
Sometimes you get the best results by turning something on its head.