• Nicoletta Komiati

Cake Wars: Colin Vs Cuthbert

In April 2021, Marks and Spencer sued Aldi for trademark infringement regarding their caterpillar chocolate roll cake. M&S’s “Colin the Caterpillar” is a staple children’s birthday cake in the United Kingdom and has been sold by M&S for years. In the latest dispute between the two national supermarket chains, M&S decided to take legal action against Aldi’s “Cuthbert the Caterpillar” cake, arguing that the design and packaging of Aldi’s cake closely resembles that of M&S and, therefore, infringes one of its trademarks.


Establishing trademark infringement


Since their launch in 1990, it is estimated that M&S has sold more than 15 million Colin and Connie cakes; Connie being the female version of the cake. A whole range of products have been created for these two beloved M&S characters, including special Christmas edition cakes, tailored birthday cakes and even Collin-themed fruity-flavoured gummy treats.


Aldi’s Cuthbert the Caterpillar cake closely resembles the M&S’s product, with similarities in the design of the cake and its packaging, featuring similar colours and characters. M&S currently has three trademarks in relation to Colin, but both the distinctive elements of their trademarks and the extent to which they have been breached are contentious points, which may only be determined once a court trial has run its course. For a full explanation of what trademarks are and how they work, click here.


To be successful in their legal action against Aldi, M&S would need to establish the following elements regarding their trademark infringement claim:


1. The images/sign/name used by Aldi is identical and for the same type of product as the registered M&S trademark.
2. The image/sign/name used by Aldi is: 
- Identical to that of M&S and used for a similar category of     products; or
- Similar to registered mark of M&S and used for an identical product; and
- In both the above cases, M&S would also need to prove that there is likelihood of confusion for consumers, which could include a likelihood of association of the products in question.
3. The last element for a trademark infringement case is that this particular mark has a reputation in the UK, hence its use takes unfair advantage or is detrimental to the reputation of the M&S registered trademark. 

A successful trademark infringement ruling would enable M&S to claim damages for any damage that the association between Colin and Cuthbert has caused to its reputation, or it could even seek to get an account of profits from Aldi. An account of profits would essentially require that Aldi pays to M&S any profits it made through the use of the infringing goods, which could be a very significant sum.


Crucially, Aldi would be obliged to stop the use of the infringing products, ending Cuthbert's presence on Aldi's shelves. In addition, a win for M&S would serve as an example that would disincentivize its opponents from copying its products, as they would know that there is a risk of legal action being taken against them.


Passing off


Alternatively to a trademark claim, M&S may also rely on the tort of passing off to prevent Aldi’s use of a similar design to sell its Cuthbert cake. Passing off arises when a business, either deliberately or even inadvertently, sells its products in a way that makes its customers think that they are the products of one of its competitors. The closer the resemblance between the two products, the more likely it is that a passing off has occurred.


To succeed in a passing off case, M&S would need to prove that Collin has so-called ‘goodwill’. Goodwill refers to the brand’s reputation, value, and association with certain products. In essence, they would have to prove that Colin the Caterpillar cake is so well-known that it would cause consumers to recognise it as a product of M&S.


Colin the caterpillar cake is so popular that M&S would most likely be able to establish goodwill. Thus, the case would most likely revolve around the question that remains, namely whether Aldi’s Cuthbert cake is similar enough so as to cause confusion amongst consumers. This would require proof on behalf of M&S that such confusion is possible and it will probably be the most interesting part of the potential trial, as it will entail the admission of evidence of the public's opinion on the two cakes.


Aldi’s past disputes


Aldi is not the only one that produces a caterpillar cake, with supermarket giants like Tesco, Sainsbury’s, and Asda also having their own versions. However, looking closely at the cakes, it seems that the latter three have made enough changes so as to differentiate their products from that of M&S, potentially clarifying why M&S only chose to bring legal proceedings against Aldi.


This is not the first time that Aldi has been faced with such legal action against them. The discount supermarket has previously acknowledged that their products are produced to closely resemble branded ones, in order to trigger purchasing decisions among consumers. A family-owned business described Aldi as a “parasite” in 2018, due to the supermarket imitating their packaging in what seems to be a part of a larger pattern for Aldi. In 2019, popular makeup brand Charlotte Tilbury won a copyright claim against the supermarket’s own makeup powder, which closely resembled that of Tilbury.


More recently, in 2020, Aldi launched a product which was strikingly similar to the IPA beers produced and sold by Brewdog. This did not go unnoticed and Brewdog used social media to highlight the similarities between the two products, going as far as to make a recommendation as to an alternative name for Aldi’s products. Aldi, realising the potential legal dangers entailed in the launch of such a similar product to that of Brewdog, chose to enter into an agreement with Brewdog, under which the brewer would produce “ALD IPA” specifically for Aldi supermarkets. Additionally, the two parties used the publicity that came with social media exchange to raise awareness for their charitable endeavours, and pledged to plant a tree for each case of ALD IPA that was sold.


Conclusion


Following the initiation of legal action, M&S and Aldi have since engaged in a meme war on social media against each other with #savecuthbert trending on various social media platforms in favour of Aldi. Aldi initially removed its Cuthbert cakes from its shelves as a response to the legal action, but it has announced that it will restock its supermarkets with a limited edition of Cuthbert cakes, whose sale proceeds will go to M&S charity partner, Macmillan Cancer Support. This was a smart marketing strategy for Aldi, as it seeks to get the public to join the side of Cuthbert in this cake war.


With legal action seemingly set to go ahead, it remains to be seen whether M&S will win the legal battle against Aldi, or whether a mutually beneficial agreement may be reached so that Colin and Cuthbert can coexist in the cake market.


Interested in reading more: Signs, Logos and Phrases: Trade Marks and their Territorial Limitations in a Global Digital World



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