M&S wages war on Aldi copy-caterpillar

It has been widely reported that Marks and Spencer plc (M&S) filed a claim against Aldi in the High Court alleging that Aldi's "Cuthbert the Caterpillar" cake infringes M&S's trade marks over its well-known "Colin the Caterpillar".

The claim alleges that Aldi is riding on the coat tails of Colin's reputation and infringes their trade marks. At the time of the claim being issued, Aldi was not selling Cuthbert and had not done so since February 2020.

The reasons for M&S' claim is not entirely clear and from a legal perspective, it is by no means a straightforward case for M&S to win.

Trade mark infringement

M&S own a word trade mark for 'Colin the Caterpillar' which they have held since 2008 and for "Connie the Caterpillar" which has been registered since 2016. They also have a figurative trademark, registered in October 2020, which appears to cover the packaging for "Colin the Caterpillar".

For trade mark infringement, M&S will either have to show a likelihood of confusion on the part of the public, which includes the likelihood of association with M&S' trade marks or that their trade marks have a reputation in the UK and the use of "Cuthbert the Caterpillar" by Aldi takes unfair advantage of or is detrimental to the distinctive character or repute of the M&S trade marks.

Given the length of time Colin the Caterpillar has been on the market and the well understood nature of Aldi's business, it may be difficult to argue that customers are confused as to whether Cuthbert is associated with Colin and Colin's reputation is tarnished by Cuthbert's presence on the market.

Passing off

M&S will also likely be arguing passing off on the basis that the 'get up' has been copied by Aldi. The likelihood of M&S succeeding on passing off looks to be equally difficult. In brief, M&S must show the following:

  • Colin and Connie the Caterpillar have acquired goodwill in the UK
  • There has been a misrepresentation by Aldi which deceives or is likely to deceive consumers
  • There has been or there is a real prospect of damage to M&S' business

M&S would likely need to show that they have goodwill in the overall get up of their products, i.e. consumers see a chocolate caterpillar cake and immediately know it is M&S' Colin or Connie. That will be more difficult (and expensive) for M&S to prove as Aldi has used a different brand name which is clearly displayed on their goods. M&S are also not helped by the many competing caterpillars which are now sold and could be considered 'commonplace' in the celebration cake aisles – none of which have been challenged by M&S.

The burden is also on M&S to prove that Aldi has deceived or is likely to deceive customers. This is more than mere confusion. Given Aldi's business model and previous English case law in its favour, this will be difficult. Moroccan Oil stands as saying 'you know when you're in Aldi'. It isn’t clear how M&S would argue that differently. The damage being suffered by M&S could be financial or reputational damage. M&S would likely argue reputational rather financial damage as the success of Colin and Connie, irrespective of Cuthbert, may make it difficult to show financial damage has been suffered. The sale of similar caterpillars by the other major UK supermarkets, many for longer than Aldi has sold Cuthbert, also indicates that the sales of competing caterpillars has not sufficiently damaged M&S' business to warrant them taking action.

Aldi's response

M&S' legal attack against Aldi to protect its beloved caterpillar initially generated interest from the mainstream media and the public, rather than just keen IP lawyers. However, the widespread publicity and social media furore has arguably not played out in the way M&S had hoped.

Whilst it isn’t exactly clear why M&S issued a legal claim against Aldi, what is clear is that M&S, its legal team and perhaps its PR team either did not consider how Aldi might respond or decided the risk of Aldi creating a PR nightmare for M&S was low. In both scenarios, that has proved to be a mistake.

Shortly after the news broke that M&S had issued a legal claim, Aldi began tweeting cheeky messages with the hashtag #freecuthbert which sparked mass interest from the public and other retailers, including all major supermarkets who sell their own caterpillar cakes. The strong theme quickly appeared to be that M&S were unfairly attacking Aldi rather than the other retailers who have sold caterpillar cakes for a long time.

Aldi's master stroke in PR and the ultimate backlash for M&S came when Aldi suggested in their typical cheeky way that they join forces with M&S to sell both caterpillars to raise money for their respective cancer charities rather than lawyers. #Freecuthbert and #caterpillarsforcancer hashtags were trending on social media and hundreds of thousands of social media accounts had liked, retweeted and replied to Aldi's tweets. Many if not all the major supermarkets had pledged to stand with Aldi to support #caterpillarsforcancer. M&S responded to say they loved a charity idea although they wanted Aldi to use their own character. This appears to have been taken poorly by the social media community as an intention to continue the legal action, rather than withdraw the claim and raise money for charity. That may well not be correct but M&S are now in a very difficult position from a PR perspective.

Whilst we cannot be certain of M&S' reaction to Aldi's response via social media, a reasonable assumption might be that they hadn’t bargained for it. Given M&S were seemingly concerned about reputational damage, it may be that they have now damaged their own reputation.

Observations

If M&S were to consider how they could have better protected Colin (to the extent it is possible to monopolise a caterpillar-shaped chocolate cake), one point that would likely be raised is that a zero-tolerance policy should have been taken from the start in relation to copycat products. There are no guarantees that M&S would have been successful should it have taken legal action against the first 'copy-caterpillar' but it may well have helped M&S to now argue they have goodwill in Colin the Caterpillar and Aldi's product is either confusing or deceiving consumers.

This case highlights the importance of carefully considering the PR positon alongside the legal position when considering whether to take legal action. Whilst it is never certain how your opponent will react, it is important to be aware of the potential to lose control of the narrative if your opponent is savvy with social media. Again, this shouldn’t prevent legal claims being brought but it may well be an important factor when deciding whether to bring a claim 'on principle' without a strong legal basis.

It will be interesting to see how this case plays out both in the High Court and on social media. We will keep you updated.