#SaveColin or #FreeCuthbert? The case of the caterpillar cakes

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By Sammy Hacklett on

Southampton University law graduate Sammy Hacklett unpicks Thursday’s tasty IP claim brought by M&S against Aldi

Colin the Caterpillar (image via M&S) and Cuthbert the Caterpillar (image via Aldi)

On 15 April 2021 Marks & Spencer (M&S) launched legal action against Aldi, claiming that its ‘Cuthbert the Caterpillar’ cake infringes its trademarked ‘Colin the Caterpillar’ cake.

Everyone knows M&S’ Colin the Caterpillar cake — the so-called “national tasty treasure” was originally launched 30 years ago and has not significantly changed in design since 2004. Colin the Caterpillar is a popular, fun and favourite cake for any event, even weddings — my brother was in charge of choosing the cake for his wedding, and he chose two of M&S’ famous insect replicas. Yes, really.

Due to Colin’s popularity, M&S filed an application for a trademark for ‘Colin the Caterpillar’ in the United Kingdom and European Union on 8 October 2008, under class 30, which relates to various types of food. The application was later registered as a trademark in April 2009. This means that Colin the Caterpillar is a protected intellectual property right and M&S can bring an action for infringement to anyone else who attempts to use this trademark. Since M&S began selling Colin the Caterpillar cakes, other retailers have followed suit and sold similar caterpillar cakes, including all of the ‘big four’ supermarkets, Asda, Morrisons, Sainsbury’s and Tesco, using names such as ‘Curly the Caterpillar’ (Tesco), ‘Clyde the Caterpillar’ (Asda) and ‘Wiggles the Caterpillar Cake’ (Sainsbury’s). So, why has M&S lodged a claim with the High Court specifically against Aldi?

M&S has argued that the close similarity of Aldi’s Cuthbert the Caterpillar cake “rides on the coat-tails” of Colin’s honourable reputation (a classic trademark infringement phrase — remember L’Oréal v Bellure?). Therefore, M&S have stated that this amounts to passing off; the law of passing off prevents traders from misrepresenting their goods or services as that of another trader. M&S believes that Colin has a distinctive character and reputation, especially due to the fact that Colin is a central piece (or slice, if you will) of the company’s partnership with Macmillan Cancer charity. As a result, M&S believes that Aldi’s duplicate cake may be unfairly benefitting from the well-known strong reputation that Colin holds.

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The central issue is whether Aldi’s product is close enough to cause confusion among customers and that incorrect assumptions could be made that it originates from, or is connected to, M&S. For example, if the product is purchased from an Aldi store, the packaging branded ‘Cuthbert the Caterpillar’ is removed and the primary school party staple is laid out on a table — this could confuse or mislead guests of its origins. Aesthetically speaking, both are choco-covered log cakes with decorative sweets adorned on top. Further, if consumers are to be disappointed with Cuthbert, this could detriment Colin’s reputation that M&S has worked so hard to build over the years, due to the similarity of the products. As an upmarket store, perhaps M&S is concerned about the fact that Aldi is clearly producing a more affordable version of the product and the implications that this may have on M&S’ glowing reputation as a business overall. Would you go with Cuthbert to save that £2?

Aldi’s Cuthbert cake is still available on its website (renamed ‘Holly Lane Caterpillar Cake’) and has been on sale in Aldi stores since 2019. If M&S’ case is successful, Aldi will have to remove their version of the caterpillar cake from sale permanently and agree not to sell any similar products in the future. Ever. However, this seems to imply that Aldi would get off lightly, as M&S has not specifically divulged that they will be seeking monetary reimbursement or compensation for losses — i.e. any Colin sales lost by virtue of customers purchasing Cuthbert instead.

On the flip side, Aldi appear to be making light of the situation, taking to social media with jokes and puns… possibly implying that they don’t believe M&S will be successful in their claim. Or perhaps just trying to not damage their reputation by making the public laugh and gaining support that way. I must admit I’ve had a chuckle at some of their recent Twitter activity and seen many re-tweets claiming that Aldi’s social media manager deserves a pay rise. Some examples of their recent tweets include “Cuthbert has been found GUILTY… of being delicious”, “This is not just any court case, this is… #FreeCuthbert” and “Marks & Snitches more like”.

Sammy Hacklett graduated in law from the University of Southampton in 2018. She currently works as a paralegal at Eversheds Sutherland.

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