The Battle of the Caterpillars

By Lauren Fisher
Published April 2021

The Battle of the Caterpillars

M&S has brought an intellectual property claim against Aldi, alleging that Aldi's Cuthbert the Caterpillar cake infringes M&S's rights in Colin the Caterpillar.

Background

M&S launched the Colin the Caterpillar cake in 1990, and has since sold over fifteen million. Colin's appearance has remained mostly unchanged since 2004, apart from some small seasonal variations for Christmas and Halloween. Colin is a milk chocolate cake in the shape of a caterpillar with a white chocolate face, chocolate sweets on the outside and buttercream on the inside.

Many other of the main UK Supermarkets (including Sainsbury's, Tesco, Morrisons and Waitrose) have created similar looking cakes to Colin. Aldi also sells a similar looking caterpillar cake in similar packaging under the name Cuthbert the Caterpillar.

M&S claims that Cuthbert rides on the coat-tails of Colin's reputation, and wants Aldi to remove its cake from sale. Aldi has faced similar allegations in the past, for example, when it lost to Charlotte Tilbury for copyright infringement in Aldi's own-label powders.

Legal argument: trade mark infringement?

M&S has three registered trademarks for Colin the Caterpillar and its packaging. It claims that Colin has acquired a distinctive character and reputation. On this basis, M&S argues that Cuthbert's (Aldi's cake's) strong resemblance to Colin will cause consumers to think that Cuthbert is of the same standard, taking unfair advantage of M&S's trade marks. M&S stated in its claim filed to the High Court that it wants to protect Colin's reputation for freshness, innovation and value.

Will M&S succeed in its claim for trade mark infringement?

Aldi may be able to wiggle its way out of the claim that Cuthbert the Caterpillar infringes M&S's trade mark in Colin the Caterpillar, on the basis that caterpillar is merely describing the shape of the cake. Elements within signs that are merely descriptive of the goods are incapable of amounting to trade marks. This may lead the High Court to focus on comparing the beginnings of each sign (Cuthbert and Colin), resulting in a possible conclusion that there is no risk of consumers being confused.

Furthermore, the fact that many other UK supermarkets sell similar caterpillar cakes may suggest that consumers do not necessarily associate the cake with M&S. This may weaken M&S's argument that consumers will think that Cuthbert shares an origin with Colin.

Possibility of passing-off?

M&S may also bring a claim against Aldi in passing-off. In order to succeed, M&S will need to show that Aldi's selling of Cuthbert has damaged, or could damage M&S's goodwill in Colin. This may be shown by proving that Aldi's selling of Cuthbert reduces M&S's sales of Colin. The high number of sales of Colin support the argument that M&S has goodwill in Colin. It may be possible for M&S to argue that Cuthbert (£5) is damaging this goodwill because it is a cheaper alternative to Colin (£7), and is arguably lower quality. If customers purchase the lower quality cake and are disappointed, they may be less inclined to buy a Colin due to the strong resemblance between the caterpillars, potentially resulting in reduced sales for M&S.

May the tastiest caterpillar win.

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