On 15 April 2021, M&S lodged an intellectual property claim for trade mark infringement and passing off in the High Court against Aldi alleging infringement of their “Colin the Caterpillar” trade mark as Aldi introduced “Cuthbert the Caterpillar”.
M&S claims Aldi seeks to “take the fruits of [their] labour through imitation and without incurring any costs” and that Aldi are “riding on the coat-tails” [24d(iii)] of the Colin brand and affecting M&S’s overall good reputation for quality.
Colin the Caterpillar made its debut in 1990 and there has been more than 15 million sold since its inception. The Colin design has not changed much over the decades, except for various special editions made for Halloween, Christmas and weddings.
M&S has a number of registered marks to protect the Colin brand and overall design, which includes the following trade marks:
- COLIN THE CATERPILLAR – M&S is the registered proprietor of the word mark with effect from 8 October 2008 for a number of goods in class 30 [17a].
- CONNIE THE CATERPILLAR – M&S is the registered proprietor of the word mark with effect from 2 June 2016 [17b].
- Packaging mark – this is the packaging of Colin (green leafy rectangular box with a transparent middle section). This mark was registered with effect from 8 July 2020 in respect of goods within class 30 [17c].
Whilst other supermarkets are selling similar chocolate cakes, for example Tesco’s Calli cake and Asda’s Clyde cake, M&S have targeted Aldi given the glaring similarities between the two products.
- Similarity in name
M&S claim that the similarities in names of the product, Colin and Cuthbert, are very high causing the average consumer to confuse the products. As the Connie, the female version of Cloin, word mark is registered and associated with Colin, Cuthbert could be viewed by the consumer to be part of the Colin family brand through association.
- Similarity in packaging
Cuthbert’s packaging is a long rectangular box with a transparent section in the middle. It has a green colour scheme and has the words “Cuthbert the Caterpillar” on the side and on top. This is very similar to the Colin packaging with the size, colour scheme and transparent section.
- Similarity in body parts
Cuthbert’s face, body and feet are near identical copies of Colin. Cuthbert has a white face with two brown eyes, a stick-out tongue as well as white feet and a long rectangular chocolate covered body with a sprinkle of small chocolates on top.
The claim is regarding alleged passing off and trade mark infringement by Aldi:
M&S have claimed that Aldi has committed the following trade mark infringements:
- Section 10(2) of the Trade Mark Act 1994
Under section 10(2) of the Trade Marks Act 1994, M&S claims there is a likelihood of confusion due to the use of the Cuthbert sign without the consent of M&S. This is as a result of the Cuthbert sign being used in relation to goods which are identical to those for which the Colin mark is registered. M&S will need to prove there is likelihood of confusion to the general public, this includes likelihood of association [24c].
- Section 10(3) of the Trade Mark Act 1994
Under section 10(3) of the Trade Marks Act 1994, M&S claim that by using the Cuthbert sign in the course of trade without M&S’s consent, the Cuthbert sign is identical or similar to each of the Colin trade marks. As the Colin mark has a reputation within the United Kingdom, M&S allege the use of the Cuthbert sign takes unfair advantage of the distinctive character of the Colin mark [24d].
Due to the similarities between Colin and Cuthbert, like name, face, body shape and packaging, M&S will have to prove that Aldi is taking unfair advantage or that Cuthbert is detrimental to the distinctive Colin mark. M&S will also need to show Cuthbert is taking advantage of Colin’s reputation and/or damaging the Colin brand.
M&S may have to produce evidence in court regarding actual confusion or association from the average consumer. An example would be complaints to M&S that indicate the consumer got confused and brought a Cuthbert cake, thinking it was part of the Colin brand.
One of M&S’s main arguments is that consumers are likely to be confused about the cake and associate it with the Colin brand. On application of the trade marks themselves, this appears to be a strong argument under Section 10(2), however, there are many chocolate roll-shaped cakes within the confectionary industry that use the word “caterpillar”. This could be an issue for M&S as this could be seen by the courts as too descriptive. The courts are likely to place an emphasis on “Colin” and “Cuthbert”, which aren’t confusingly similar.
M&S have also launched a claim for passing off. This protects the goodwill associated with unregistered rights for when an individual attempts to pass off their particular goods or services as belonging to another. In order for M&S to successfully establish passing off, they will need to show the following:
Within the claim, M&S states that it is reasonable to infer that Aldi was aware of the significant goodwill and reputation of the 30 year old Colin brand as well as its associated products. M&S will need to prove that the name and/or shape of Colin obtain goodwill, meaning consumers would be able to recognise Colin without difficulty [24b(i)-(iv)].
- Misrepresentation by Aldi
M&S has brought this claim forward to protect its “get-up”. M&S claim Cuthbert’s get-up and packaging is misrepresented to M&S customers. This indicates that the average consumer may think that Cuthbert is a linked product to the Colin brand and there is a real likelihood of deception and damage [24a].
One way M&S can prove misrepresentation causing damage is through a loss of revenue/sales from consumers choosing to buy Aldi’s cheaper cake in a mistaken belief that it was M&S’s cake.
Up until the reintroduction of Cuthbert to raise money for charity, Aldi removed the cake from their stores in February 2021.
M&S seeks an injunction against Aldi to prevent them further infringing the Colin trade marks, order for a delivery up or destruction of goods and an inquiry as to the damage caused by the trade mark infringement. In addition, M&S want Aldi to agree not to sell any identical and/or similar products in the future [27-30].