Colin v Cuthbert: the great British cake-off

One of the most high profile stories in the food and drink press in the past few weeks has been the steps taken by Marks & Spencer against Aldi over claims that Aldi’s “Cuthbert the Caterpillar” cake is infringing Marks & Spencer’s intellectual property rights in its “Colin the Caterpillar” cake.

The general principles are relatively basic to any lawyer in the intellectual property field:

• Marks & Spencer have a trade mark and claim that it is being infringed; and
• Marks & Spencer claim that Aldi are benefitting from their goodwill and so are “passing off” their version of the cake as Marks & Spencer’s.

The questions which are being asked are, however, – why now? and why Aldi? – when it is clear that all the main retailers have their own version of a “caterpillar cake” – Curly, Cecil, Wiggles to name a few.

What has triggered M & S to come out of their cocoon and raise proceedings now when these “imposters” have been around for a while we can’t tell, but for those in the industry it is interesting to note that while they had registered “Colin the Caterpillar” as a word trade mark in 2008 in July 2020 also obtained a registration for an image of the entire cake in its packaging.  Most producers would think about registering their brand name; and rely on copyright protection or passing off as an additional basis of claim for their packaging.  But will M & S’ move to register the packaging as a trade mark start a movement in that direction?  For trade mark lawyers it’s an interesting concept – how do you apply a trade mark to the product when the trade mark is an image of the product itself?

The timing would suggest “Cuthbert” has been “bugging” M & S for some time and registering the packaging as a trade mark was planned to give them a stronger argument.   What seems to have pushed Marks & Spencer to take the action against Aldi rather than on of the other multiple retailer’s s is that they believe that in Aldi’s case, the eyes, shape of their faces, the candy-coated chocolate sweets (other brands are available) on top all combine to make Cuthbert more similar to Colin than any of the others.

Imitation may be the sincerest form of flattery, but Marks & Spencer clearly don’t think that it is the sincerest form of flutterby.

Producers will be looking on with interest.  Own-brand producers notoriously try to achieve as close a look and feel to market-leading brands as they feel they can get away with without stepping over the line and infringing either trade marks or being liable for “passing off” which occurs where the public is confused as to the origin of the goods and assumes that they are linked to another business in some way.  But this time it’s different – this time one own-brand producer is turning on another.

The case highlights that own brand producers now recognise the value of branding not only of their own retail brand, but the sub-brands which they may operate beneath it. And the trend is becoming more popular. It started with the clothing ranges – “Florence & Fred” for Tesco; “George” for Asda; “Per Una” for Marks & Spencer. But it has now moved over into the food and drink sector as we get “Colin the Caterpillar”, Sainsbury’s “Maryann’s” range; Tesco’s “Ms Molly’s” etc.  The large retailers now recognise the value of having a brand other than their own-label.

And that may be what is driving this.  It’s difficult for M & S to argue that shoppers would think Aldi would be selling a Marks & Spencer cake.  But this isn’t about M & S it’s about “Colin” – the sub-brand has now become as, if not more, important than the headline own-label.  And so while a shopper might not be confused the end consumer (all those attending the birthday party) might be – assuming that any caterpillar is a Colin.  But as we know they’re not – they may look the same but some will become a Red Admiral and others a plain Cabbage White.

But in taking steps to enforce, Marks & Spencer’s may have misjudged the moment given the high volume and content of social media comment. Just as the European Super League has been scuppered by fans’ protests so the public appears to have got behind Aldi.

Of course to use that old adage, all publicity may be good publicity and this has been the most high profile case on cakes since the “Is it a cake or a biscuit” VAT argument for Jaffa cakes.

Will the matter go all the way to a court hearing or will it be settled out of court? I suspect for both parties’ interests, the latter – they can’t have their cake and eat it.

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