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21 Apr 2021

M&S vs. Aldi: The very angry caterpillar cake?

You’ll have no doubt come across the news stories regarding the supermarket feud between Colin the Caterpillar, in the Marks and Spencer corner, and Cuthbert, in the Aldi corner.  Whilst the story is a somewhat humorous escape from relentless stories about COVID-19, in fact it raises numerous really interesting legal points.

It is fair to say that most, if not all, supermarkets have their own versions of more famous brands, be that chocolate bars, fizzy drinks, tea bags etc.  It’s no coincidence that pretty much every supermarket’s cola is likely to have a red and white label, or grey and red for the diet version.  But when does this cross the line to being unlawful?  This has in fact been a battle that has raged over the years, with brands keen to protect their Intellectual Property (IP) against those they feel are gaining an unfair advantage.

The M&S product, Colin, has been in existence for around 30 years and was registered as a trademark in 2009.  Virtually all of the main supermarkets now have their own version, there is Clyde (Asda), Wiggles (Sainsbury’s) and Curly (Tesco) to name just a few. 

As such, you might wonder, why have M&S decided to go legal now?

There are various ways of protecting IP and there are several ways of trying to enforce your rights to prevent others from gaining an unfair advantage off the back of your design.

A trademark requires formal registration, with the IPO, and generally protects the name or the logo, so here, on the face of it, the trademark would only protect the name Colin the Caterpillar.  Therefore, the other supermarkets could of course argue that Clyde, Curly, or indeed Cuthbert are not the same, or sufficiently similar, and are therefore not infringing in the same way that Paddington, Winnie the Pooh and Rupert are not treading on each other’s toes - not legally anyway.

Then there is the law of copyright and registered and unregistered designs.  Copyright and unregistered designs do not need to be registered anywhere to be capable of protection, whereas as the name suggests a registered design does. Copyright is the right to prevent others from copying or reproducing your work.

UK copyright law is set out in the Copyright Designs and Patents Act 1988 (CDPA). Copyright protects the form of expression of an idea, not the idea itself. For example, if you have an idea for the plot of a movie, that idea, whilst still in your head or even if communicated orally to others, will not be a copyright work. However, as soon as you commit that movie plot to paper it becomes a work capable of copyright. The material does not have to have novelty or aesthetic value to get copyright protection, but it does have to be the result of independent intellectual skill and effort. 

As such, copyright does not protect the idea of having a caterpillar cake, rather the way that that idea is expressed.  Here it would seem relatively clear that each supermarket can have its own caterpillar cake, just as each shoe manufacturer can have its own pair of brown brogues.  Again, the issue is much more nuanced - when does one product become sufficiently close to appear to be a copy of the expression of that idea?

Finally, there is the law of passing off.  This is the area of law that protects the reputation and goodwill of a business and prevents people from selling goods under the pretence that they are the goods of another. It serves to protect the trader against the unfair competition of his rivals and also protects consumers who would otherwise be confused as to the origins of goods and services that they are offered.

To bring a successful passing off action, the claimant must show three things:

  1. that goodwill or reputation is attached to the goods or services

  2. a misrepresentation is made to the public by the defendant

  3. that damage is suffered by the claimant

In a case like Colin and Cuthbert, it would be easy for M&S to clear hurdle one - they have a well-known brand in Colin - but it is the final two limbs of the action that would become the battleground:

  • Are people confused or likely to be confused about a link between Cuthbert and Colin?

  • What loss does M&S suffer, after all, if I shop in Aldi, I am likely to buy Cuthbert, and in M&S, Colin? 

You may therefore think that Aldi has a decent defence in this regard.  However, in a previous case before the courts, a well-known chocolate manufacturer introduced a new ‘Puffin’ chocolate biscuit to compete with a rival chocolate maker's long-established ‘Penguin’ chocolate biscuit. Although there was clearly a difference between the Puffin and Penguin biscuits, there was every chance that a buyer would think that the Puffin was a Penguin biscuit company product and so therefore passing off was demonstrated and as such the Puffin was held to be unlawful.

It can be seen that arguments with regard to IP rights are often very complicated and full of subtle distinctions.  Disputes can range from songs that sound alike, to movies or books with similar plots, to logos that appear the same. There is clearly a line that can be crossed, but where that line is has been a matter that has been argued and litigated about in the past, and no doubt will be long into the future.  As to how far this particular dispute will progress, if indeed it does, and who will win, we will have to wait and see.  One could take the view that, in fact, the amount of free publicity generated for M&S and their beloved caterpillar cake may already have more than made up for any perceived damage caused by Cuthbert!

For more information on what’s been discussed in this article or for general employment law advice, please contact Adam Grimwood or call us on 0371 705 4006.

Next article in series

09 Apr 2021

Employers guide: Ending furlough and requiring employees to return to work