M&S is suing Aldi for breach of the intellectual property rights in its popular Colin the Caterpillar cake. I spoke this morning on Radio Solent about the interesting news.

This story has captured the eye of the public, many of whom will no doubt have purchased and/or consumed Colin cakes over the years! There have been other copycat-erpillars’ before, but it seems that this one, Cuthbert, is more similar to Colin and is probably the deciding factor as to why M&S are going after Aldi now.

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 do M&S have in Colin the Caterpillar cake?

I had a quick look this morning to see what rights M&S has in the Colin cake and 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. This 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. Given that M&S has apparently created a female ‘Connie the Caterpillar’ cake, there is indeed a likelihood that the public might reasonably associate Cuthbert with the M&S caterpillar cake family;
  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); and
  3. M&S may also have copyright in the design drawings of the cake (assuming that they still exist). These will be infringed by the making of a 3D article from a 2D design although M&S has a few technical legal hoops to jump through relating to ownership and validity.

I have yet to read the pleadings in detail and will do so with interest (and perhaps over a cup of tea and a slice of cake) but I anticipate that with all these IP rights protecting Colin, M&S will not have relied upon the common law right of passing off which protects reputation. Passing off is usually run as an action to protect a brand and is, as a result, notoriously difficult to run when trying to protect a product. Registered trade marks are easier to enforce and as explained briefly above, I expect that M&S will rely on this instead rather than having to use the ‘riding on our coat tails’ argument. However, we see in the newspapers that M&S are concerned that Aldi’s close resemblance of Colin will infer a certain quality standard of cake which, if not met, might damage their reputation, so it may be that a passing off argument is in the mix after all.

I will of course update you as things progress.

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