Colin v Cuthbert: a delicious lesson in trademark infringement

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In what has undoubtedly been a trying time for those attempting to watch their waistlines, the news lately has been awash with details of the dispute between Marks and Spencer and Aldi over their chocolate covered caterpillar cakes. Colin has been a Marks and Spencer staple since 1990, adorning many a birthday table with a cheery chocolate smile. Cuthbert on the other hand is a young upstart, launching in 2019. There’s no doubt that both caterpillars are equally delicious, so what’s the issue here?

The most popular question on social media seemed to be asking why Cuthbert was singled out when there’s a myriad of other imposter caterpillars roaming the aisles. Tesco has Curly, Asda looks after Clyde and Waitrose, after all, have Cecil (but of course they do).

To answer the question, it’s worth looking at what Marks and Spencer have protected, and for that we look at the UK registration #3509740 (though they have others), which depicts Colin resplendent in his green packaging with his sweet-adorned back on show. Whilst it hasn’t come to light exactly what caused Marks and Spencer to decide to send the lawyers after Cuthbert, a look at the various caterpillars would suggest that the design of Aldi’s Cuthbert was especially close to Marks and Spencer’s Colin. The glassy milk chocolate eyes, the scattering of sweets along his back, the frankly delicious white chocolate face, the bright green packaging holding him place – it all adds up into (depending on which side of the argument you’re sitting on) a cheeky chocolate homage or a blatant trademark infringement.

Of course, Aldi have some history here. A quick trip down their aisles will reveal many products that have clearly been ‘inspired’ by the big brand names. They have built an incredibly successful business offering cheaper alternatives to the most popular products. Whilst businesses cannot simply copy the design, name or look of a product without fear of significant repercussions, they can launch a similar product and use some of the key visual indicators from the leading brands to draw people in. Sometimes it is a simple play on words, from the tell-it-like-it-is ‘Mint Sticks’ instead of Matchmakers to the slightly subtler ‘Seal’ biscuits which just so happen to look like Penguin bars, but other times it’s a far more comprehensive ‘inspiration’.

They don’t always get it right, either. Aldi’s ‘Saucy Salmon’ product landed them (somewhat ironically) in hot water back in 2014, when Icelandic Seachill, the manufacturers of The Saucy Fish Co. launched legal proceedings against them. Their argument was simple: the name might be different, but Aldi’s packaging was so close to their own that your average customer was likely to mistake the two. When a company has spent time and money building brand recognition and significant goodwill in their product, it is perhaps understandable that they would want to stop a rival from benefitting from that goodwill to sell their own product. They settled out of court, although Aldi stopped stocking their Saucy Salmon anyway, claiming it was only ever a trial product.

This will be the crux of Marks and Spencer’s argument: that Aldi are benefitting from the goodwill that has been built up over the many years that Colin (and his charming girlfriend, Connie) have turned up at parties. If the products are almost identical, then there’s also a risk of confusion between the two products. Then there’s the reputational risk: if Cuthbert doesn’t quite pass the taste test that one might expect of a Marks and Spencer cake – and you legitimately thought you were tucking into a Colin – then you may decide not to buy a cake from Marks and Spencer ever again.

Whilst it has been convenient for the press and social media to paint Marks and Spencer as the bad guys for stamping down on Cuthbert, the fact is that they had little choice. In order for protection to be maintained, an owner of a trademark must be seen to be diligently taking action against those who infringe upon it. Failure to do so can weaken your rights in the brand. After all, if you allow one close imitation, why would you then decide to stop another? Had Marks and Spencer decided to let Cuthbert go unchallenged, it could have led to other caterpillars springing up – and then the distinctiveness of Colin is lost. However, their failure to act on the other caterpillars may prove to be their undoing for the reasons outlined above.

If this teaches us anything, other than the fact that the British public love a good scrap over Swiss rolls, it’s the importance of doing your own due diligence before launching your brand. Whilst it is likely that Aldi knew what they were doing when they created Cuthbert to be ‘inspired’ by Colin, you do not want to find yourself twelve months into launching a product only to discover there’s a brand, formally protected or otherwise, out there that shares similarities with your own. Whilst there are often circumstances which can allow two similar products to happily co-exist, it can be an expensive and drawn-out affair to get there.

One of the best ways to avoid such a situation is to perform searches before you commit to launching your product. By way of example, a search of the UK trademark register for a plain word will show existing applications or registrations that are identical, or close enough to be of potential concern, to your brand. Coupled with your own due diligence in the form of social media searching, hashtag searching and good old fashioned Google research, you can be confident launching your product knowing you have done all you can to make sure the road ahead is clear.

Our costs for performing such a search begin at £500 (plus VAT) and take around a week – this may be an outlay you hadn’t considered at launch but given the costs of rebranding down the line, paying out costs from an infringement case or destroying your existing stock, it is worth considering.

As for Colin vs Cuthbert? Neither for me, even with Cuthbert’s fancy new eyes. I’m a Percy Pig chap all the way.

If you’re looking for trademark advice with puns-a-plenty, then please drop me an email at [email protected] for a quick chat through your options. I may not be able to help you have your cake and eat it with a caterpillar clone of your own, but I can certainly assist with most other problems.