Written by: Christiane Sungu

Ready for a food fight? Marks & Spencer (M&S) has begun legal action against Aldi over their trademarked ‘Colin the Caterpillar’ cake. It lodged an intellectual property claim last week with the High Court on the basis that Aldi’s Cuthbert the Caterpillar cake was too similar to M&S’ Colin the Caterpillar cake, and could lead to consumers believing the two are of the same standard. According to M&S, Aldi is “riding on the coat-tails” of M&S’ reputation.

With Colin costing £7 and Aldi’s Cuthbert priced at a discounted £4.99, M&S do not feel that the cake – which has been described as a national treasure, having its own Wiki page, taking 38 people to assemble and even having a nationally recognised day(!) – should be easily replicated.

M&S believes that Colin has acquired and retained an enhanced distinctive character and reputation, which it currently holds three trademarks on. So how dare Aldi’s Cuthbert pose itself as Colin at birthday parties and work-dos?!

As it stands, the three trademarks registered for Colin are:

  1. The name ‘Colin the Caterpillar’;
  2. the image of Colin; and
  3. the cake’s packaging

To win the trademark infringement claim, M&S will have to prove that Aldi’s Cuthbert is identical or similar to one of the registered trademarks and that there is a ‘likelihood of confusion on the part of the public’ which includes a likelihood of association (S.10 of the Trade Marks Act 1994). Meaning that if they were put side by side, people would not be able to tell Colin and Cuthbert apart, and that as a result people would assume that Cuthbert was of the same quality as Colin – hence M&S’ “riding on the coat-tails” comment.

M&S would then need to prove that on the basis of being identical or similar, Colin has a reputation within the UK, and Aldi’s Cuthbert is taking unfair advantage of or is detrimental to the distinctive character or repute of M&S’ trademark.

Interestingly, Aldi are not the only supermarket to want a piece of the cake, with most supermarkets having created their own version of Colin the Caterpillar. Waitrose sells a ‘Cecil’, Sainsbury a ‘Wiggles’, Tesco a ‘Curly’, Co-Op a ‘Charlie’ and Asda a ‘Clyde the Caterpillar’ but surprisingly non have come under any scrutiny. The likely reason for M&S’ blasé attitude towards the other supermarkets is that they believe that the variation of the design and packaging of these cakes are clear enough to distinguish from the original Colin. However, Aldi’s Cuthbert has the same eyes, face shape, decorative smarties and packaging as Colin.

So to win, the court will need to agree with M&S that firstly, Aldi’s Cuthbert is indeed too similar to the name or image of Colin. And secondly, that there would be a degree of confusion with the general public if they were to see the two cakes side by side, or that Cuthbert is glory hunting off of Colin’s reputation or equally, damaging its reputation. M&S do not want this and the IP claim is to protect their reputation for freshness, quality, innovation and value.

Looking at it from Aldi’s point of view, it could say that as the other supermarkets sell their own version of a caterpillar cake, and have been doing so for years, Colin is no longer that distinct to warrant a trademark. It’s become a free for all.

Aldi could have an even bigger defence if they were to rely on the usual legal “moron in a hurry” test for trademark infringement. The expression is usually used to judge whether a hypothetical person would reasonably be able to tell apart two products, unless he was a moron in a hurry. Here, a reasonable person might be expected to say that there is no confusion between Colin and Cuthbert, because no one, not even a moron in a hurry would expect to find a M&S product in an Aldi aisle.

Aldi should be pretty familiar with the court process as this is not the first of trademark infringement claims against them. They have been selling lookalike products for years at discounted prices. It is essentially the reason their business model is so successful – undercutting other supermarkets. However, in 2019, the Collective won a case against its yoghurt product and Heck won its case against its copycat sausages.

Therefore, if Aldi were to lose, it could serve as a big statement to the rise of protectionism for businesses and may emphasise the importance of brand management through IP law. If that were to happen, Aldi would need to reconsider how long it would keep on producing lookalike products for. Would the rewards of a strong business model outweigh the risks of a few litigation claims?

Whether M&S will be successful is yet to be seen but stay tuned to Aldi’s and M&S’ twitter feeds for a slice of the action – full of memes and reaction tweets following the release of the news.