M&S and Aldi have come to a confidential settlement in relation to their dispute over the alleged infringement by Aldi of M&S’s intellectual property rights in its popular Colin the Caterpillar cake.

I spoke this morning on Radio Solent about the interesting news.

This story caught the eye of the public, many of whom will no doubt have purchased and/or consumed Colin cakes over the years, in April last year when M&S started legal action against Aldi alleging breach of their COLIN THE CATERPILLAR and CONNIE THE CATERPILLAR trade marks and passing off. There have been other copycat-erpillars’ before, but it seems that Cuthbert, is more similar to Colin and is probably the deciding factor as to why M&S went after Aldi last year.

There are various laws on ‘copycats’ – famous cases such as the Jiff lemon case lead the way where products seem to be ‘riding on the coat tails’ of other famous brands – and of course, each case will depend upon which intellectual property rights protect the original products, what the infringement is and whether or not the public is deceived.

What rights does M&S have in Colin the Caterpillar cake?

Let’s refresh our minds as to what rights M&S has in the Colin cake, they have been very diligent in protecting him:

1. The name COLIN THE CATERPILLAR is protected as a registered trade mark in the UK and has been since 2008. S 10(2)(b) of the Trade Marks Act 1994 will stop anyone from using a similar name on identical goods provided that there is a likelihood of confusion (which includes a likelihood of association) in the mind of the public. M&S also pleaded s 10(3) TMA 1994 which prevents infringement where a similar mark is used in the course of trade and which takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark. When assessing ‘similarity’ in trade mark terms, a judge looks at aural, visual and conceptual similarity and whether there is direct or indirect confusion.

Given that ‘the caterpillar’ are not words that are inherently protectable in relation to something that looks like a caterpillar, it is arguable that CUTHBERT is different (rather than ‘similar’) to COLIN when looking at aural, visual and conceptual similarity.

Interestingly, M&S filed a wide range of additional ‘Colin’ trade marks in September last year which protect the look of the packaging and cover a wider range of goods (such as clothing, sweets, toys and cards).

2. M&S have a registered design over the look of the cake – this will protect the way that it looks and stops anyone producing a cake that fails to create a ‘different overall impression’ on an informed user (being a buyer of cakes in a store like M&S).
3. M&S alleged passing off in relation to the cake. Passing off is a common law action relating to reputation and prevents a third party from misrepresenting an association with the original product. M&S would have to prove:
   1. their own reputation;
   2. that Aldi is misrepresenting the product to the public;
   3. that the public is confused as a result of the misrepresentation; and
   4. that as a result, M&S is suffering damage (either financially or to reputation).

Given that both causes of action (Trade mark infringement and passing off) require M&S to establish a likelihood of confusion, it may be settlement was the best option. Because the Cuthbert cake is sold through different trade channels (ie in Aldi not M&S) at a different price point, in different packaging and without any M&S labels on the packaging, it may be that the public were not confused after all – particularly after all the social media activity that the dispute attracted.

The terms of the settlement are confidential and so we will not know what they are – but we will see whether Cuthbert cakes are on sale again soon!

If you would like any further information on any of the IP rights mentioned above, then please get in touch with Laura Trapnell at laura.trapnell@parissmith.co.uk or visit our intellectual property page for details of our services.