Colin The Caterpillar Vs. Cuthbert The Caterpillar – Which One Takes The Cake?

Just when we thought the times that we are living in could not get any stranger, news broke last week of a legal face-off between two cakes: Marks and Spencer’s (M&S) Colin the Caterpillar and Aldi’s Cuthbert.

Colin and Cuthbert

M&S’ Colin has been around in one form or another since 1990. It would be fair to say that Colin has been a bit of a hit over the years, with Colin themed sweets and chocolates having been added to the range and seasonal special editions – such as Halloween – also being available.

Colin has a girlfriend (Connie), his own Wikipedia page and he’s also a philanthropist, partnering with cancer charity, MacMillan, for their Biggest Coffee Morning fundraising event every year. If he wasn’t baked goods, we might even be tempted to think of Colin as a celebrity.

Cuthbert is newer to the scene – whilst I’m not sure exactly how long he’s been around, M&S seem to have been aware of him since at least October 2019 when M&S’ official twitter account tweeted:

Legal proceedings being taken by M&S

In recent weeks, M&S has taken a much less light-hearted approach to matters, having launched legal proceedings for trade mark infringement in the High Court.

Whilst I have not seen the claim filed, M&S have a number of trade marks relating to Colin the Caterpillar, including his name and his packaging. Links to those trade marks on the UK trade mark register can be found here and here.

Trade mark infringement can occur in a number of different ways and most commonly when a mark that is identical or similar to a registered trade mark is used in relation to goods and/or services that are identical or similar to the goods and services for which the trade mark is registered.

Where there is similarity, a risk of confusion will also have to be proved, for the action to be successful. It will be interesting to see whether Aldi deploy an argument used in earlier litigation with high end hair care brand, Moroccanoil, to try and demonstrate that no one will confuse Colin with Cuthbert. In that case, Moroccanoil took exception – in an ultimately unsuccessful passing off claim – to Aldi’s Miracle Oil and that product’s get up. Aldi argued that there was no misrepresentation because consumers know that Aldi sells own brand goods. As the case was a passing off claim, the point is a slightly different one (as passing off requires a risk of deception) but certainly I can see an argument formulated by Aldi in similar terms.

In addition, M&S have reportedly stated that they wish to prevent Aldi from riding on the ‘coat tails’ of its reputation. In view of this, it would appear that M&S are relying on a slightly lesser used ground of infringement under section 10(3) of the Trade Marks Act 1994. To be successful here, M&S will need to show that the trade mark relied upon has a reputation in the UK and that Aldi’s mark, without due course, takes unfair advantage of M&S’ trade mark’s distinctive character or reputation or is otherwise detrimental to it.

Given M&S’ statement that it “want[s] to protect Colin, Connie and our reputation for freshness, quality, innovation and value” I think we can expect this to be one of the battles fought in this litigation.