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

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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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Please bear in mind that the authors of many Legal Cheek Journal pieces are at the beginning of their career. We'd be grateful if you could keep your comments constructive.

19 Comments

Sam

One of the best journal articles I’ve read on here

FlourPour

These cakes are a microcosm of class in the UK.

Anon

Explains Brexit and COVID protesters.

Anonymous

This is nothing but a meretricious deceit, for my solemn is nothing but fathomable and ostentatious. This is true to the extend of ontologism and Kiergegaardism, thereby through all of certainty. You shall be of verboten and censured into utter dissension, for your imbroglio is nothing but a unilateral anathema, antithesis; recherche. This is to the periphery of abomination, to the brink of Existentialism and ethical egoism. For thou must be interdicted in all of certainty. Though it may seem a concomitant, let be a contumacious individual. This shall not avail, such defamatory and garrulous desultory shall not prevail. Thus, it shall be obliterated fecklessly with no lachrymose, for it shall never be remembered.

Anonymous

“This learned constable is too cunning to be understood”. Much Ado About Nothing, W.Shakespeare.

Sister Gristock

“This learned constable is too cunning to be understood”. Much Ado About Nothing, W.Shakespeare.

Dentons 3PQ

Thank god this case is in the safe hands of Dentons

A

If you have ever bought one of these for your children then you are a bad parent.

BBS

Absolutely! 46% sugar.

Anonymous

With M&S registering Colin as a trademark then Aldi need to be very careful. The playful banter off their social media had lead to lots of abuse on M&S social media page on posts unrelated to Colin/cuthbert. Aldi have a responsibility to ensure their words don’t equate to silly actions by their followers . This is real world would be harassment & distress. Not only are Aldi known for passing off their brands as closely to the branded product as possible , now by announcing they are going to be donating profits to teenage cancer trust & McMillan is playing the charity card. Aldi need to do a Kevin the carrot cake – how would Aldi feel if M&S made a Kevin the carrot cake? Trust me there would be court cases from Aldi.

Winston

The cakes are dry I don’t see the hype

SARAH

First world problem if ever I heard one !

Did you find this link on Facebook?

Clearly not a LC regular.

Carol

Perhaps Cuthbert should turn into a butterfly to gain his freedom

Allyco

I could swear we were having these from Tesco a long time before M&S introduced them!

Jeg

Even further evidence of confusion due to a representation.

Fiona

Despite there being similarities between the two (especially compared to the other retailers caterpillar cakes), I am not sure how successful M&S will be with their passing off claim. It would be difficult to dispute their goodwill that is for sure. However, the case of Moroccanoil Israel Ltd v Aldi Stores Ltd [2014]- Aldi got away with copying nearly identical packaging to Moroccanoil (turquoise top and brown bottle). The courts stating that although there was initial confusion and there was some social media to response that cited the confusion, no one bought the Aldi version believing it to be the Moroccanoil brand. This case showing that Aldi get away with their ridiculous packaging which is clearly trying to copy the bigger brands. In the case of the caterpillar’s, no one is going into Aldi thinking they are going to buy M&S’s infamous Colin. They are nearly identical and going into Aldi you may initially look at the cake and think it is Colin, this confusion gets dispersed before any purchase. So – no real damage done in my opinion. Having said that- I have been wanting a landmark case, in regards to Aldi and their blatant rip-off packaging, and I hope M&S is successful, I’m just not sure if they will be.

TheManWithTheHat

I remember A CHILDRENS STORY about ‘Colin The CATERPILLAR’. It was not ‘The Very Hungry Caterpillar’ story. This memory was over thirty years ago and long before M&S branded their cake as ‘Colin The Caterpillar’ . Try as I might I have not been able to find the book online. I will have to revert to the library of childens books in storage to see if I can find the book. If I can , then M&S have ‘taken the name’.
IT IS MY PERSONAL OPINION THAT, more imortantly, in the last few years, I do not know what M&S have done to the recipe BUT ‘Colin’ now seems to not have the rainbow collection of candied chocolate buttons that he used to (sometimes there seems to be just two colours), the cake has shrunk in size in both diametre and in length. Most importantly, the cake itself is drier and does not taste as nice as it did when I first tasted a ‘Colin’. Colin’s face also has undergone a downgrade and is not as distinctive as it once was. The same can be said of his booted feet.PERHAPS THIS IS THE REAL REASON SALES OF ‘COLIN’ ARE DOWN and not due to dear young ‘Cuthbert’s’ popuarity.
Following the announcement of the legal case, I visited Aldi to see if I could buy and taste a Cuthbert in the hope that it would taste as nice as Colin originally did. Aldi staff didn’t know Cuthbert existed. I left dissappopinted. Indeed if M&S are indeed contributing £2.00 from each sale to the charity, let’s see this clearly indicated on the box.
One last point. I have stopped buying the M&S ‘Colin’ cake as it is no longer of the standard it once was- particulrly taste. Perhaps M&S should focus a little less on the profit and more on the quality. I used to make the effort to go to M&S to get ‘Colin’ as their cake tasted the best even though it was more expensive. They were, after all, for special occasions. Who minds paying a little extra for little bit of luxury ( almost decadence) if it really tatstes so good?! That is what M&S used to represent – Quality British Made Products – Marks and Spencer, ‘St. Michael’ – a name you could trust. (I do not think their current shirts now last as long as they used to. Some of my St. Michael shirts lasted thirty years and were in almost constant use ( wearing and washing).)…. Ah , when I was younger………

Stephen

Brilliant article – well written. Easy to understand and humours. Get the feeling this legal case has legs and is set to run an run!

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