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Expert Insights

28 April 2021

Playing Copycat – Why have M&S begun legal action against Aldi over Colin the Caterpillar?

Last week it was announced that retail giant Marks & Spencer had begun legal action against German supermarket Aldi, over its renowned Colin the Caterpillar cake. An intellectual property claim has been filed with the UK High Court, as M&S claim their product has been infringed and the similarities between the budget brand’s Cuthbert the Caterpillar cake has damaged M&S’s reputation.

M&S’s chocolate caterpillar was the first of its kind to land on our supermarket shelves, over 30 years ago. Therefore, it is no surprise that the company took steps to protect the identity of the cake, applying for UK trade marks in 2008 and more recently in 2020. Colin’s first application was successfully registered in April 2009, allowing M&S to bring an action for infringement against anyone else attempting to use the name ‘Colin the Caterpillar’ under class 30, relating to various food types. More recently, M&S took a significant step further and protected the packaging of the cake as a trade mark. By doing so they have protected the caterpillar cake even further and it will be interesting to see how much weight the High Court places on this mark.

Will M&S be successful?

Whilst the details are not public, it seems likely M&S will need to prove that Cuthbert the Caterpillar is so similar to Colin the Caterpillar that it creates a likelihood of confusion for consumers. Furthermore, the premium food supplier is likely concerned about having its product associated and confused with a budget brand, believing Aldi “rides on the coat-tails” of M&S’s reputation.

Arguably when looking at the two cakes side by side, the similarities are very apparent. The cake itself is nearly identical, featuring the same white chocolate face and multi-coloured chocolate toppings. The packaging features the same green colour scheme, with the only real difference being that Cuthbert is presented vertically, whilst Colin sits horizontally in its packaging. As with the name, both caterpillars sound very similar and could leave consumers confused, as to who is who.

Taking the above into account, it seems that M&S will try to rely on their registered trade marks in order to protect the caterpillar cake. Their registrations may be easier to enforce and rely upon, rather than the common law right of passing off, to protect their reputation in the cake.  To rely on the passing off argument, M&S will need to prove that Colin’s appearance is so renowned and commonly recognised that any consumers would identify the caterpillar as an M&S product, resulting in a misrepresentation or confusion in the marketplace.

Why Aldi?

Aldi is not the first and only supermarket to launch its take on Colin the Caterpillar. The first ‘copycat’ appeared on supermarket shelves back in 2011 and since then many other retailers have followed suit. Most similarly, we have Asda’s Clyde the Caterpillar, Tesco’s Curly the Caterpillar, Waitrose’s Cecil the Caterpillar, One Stop’s Clive the Caterpillar and the Co-op’s Curious Caterpillar. In addition, some supermarkets have opted for more distinctive caterpillars and have not taken on the alliterative name; examples include Sainsbury’s Wiggles the Caterpillar and Morrison’s Morris the Caterpillar. Given that so many other supermarkets have launched their own caterpillars, all of which bear very similar names, looks and packaging to that of Colin, this leads to one big question on everybody’s mind, why Aldi?

It is interesting to note that Aldi is the first supermarket to bring out a ‘look alike’ cake since M&S trade marked Colin’s figurative look in 2020. M&S may believe that having this additional mark under their belt will help them to achieve a successful claim against any further supermarkets trying to copy their cake, leading them to finally pursue action.

If the courts do find in M&S’s favour, this will set a precedent going forwards which the other supermarkets may feel the brunt of. Moreover, the case may set down a precedent that shapes intellectual property law more broadly in the future.

Social media war

The dispute quickly led to a social media war with the hashtags #SaveColin and #FreeCuthbert trending on Twitter. If anything, both retailers seem to be capitalising on the publicity by producing viral social media content, raising the profile of both cakes. Aldi appears to be taking the case on in good humour, mocking M&S with its tweet “This is not just any court case, this is… #FreeCuthbert.” The German retailer has even teased the launch of a limited edition caterpillar on their Twitter page, antagonising the case even further.

This is not the first time big brands have taken to social media in an attempt to produce ambush marketing. There are many parallels that can be drawn between the behaviours of M&S and Aldi, to even the sporting industry with the likes, to take just one example, of Paddy Power’s marking campaign in relation to the 2012 Olympic Games. The advertisement stated that they were the “Official Sponsor of the Largest Athletics Event in London this Year” with the betting brand explaining that they were referring to an egg and spoon race they were sponsoring in London, France. More recent examples include Ryanair’s humorous TikTok videos, mocking other airlines and generating themselves free publicity.

Concluding remarks

Colin the Caterpillar was the first of its kind and an original chocolate caterpillar to hit our shelves, leading to a UK favourite for birthday cakes and snacks. This will certainly put the cake in good stead and aid M&S’s case. The court will have to decide on whether Aldi is commercially benefiting from the introduction of Cuthbert by marketing such a similar product. The ultimate aim for M&S is to have the caterpillar removed from sale in all Aldi stores and have an agreement put in place that Aldi cannot sell anything similar In the future. In light of the dispute, Aldi has not stocked the cake since mid-February; leading to the ultimate question: “Will Cuthbert return”?

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