Colin v Cuthbert: Not Just Any Caterpillar Cake…

A staple of British birthdays for generations, and a regular sight across the cake sections of many supermarkets in the UK, the caterpillar cake will need no introduction to many. But in 2021, the identity of Marks and Spencer’s ‘Colin the Caterpillar’ cake has become the subject of a legal battle between two of the UK’s largest supermarket chains.

Battle of The Giants

Marks & Spencer have lodged an intellectual property claim at the High Court, claiming that Aldi is infringing the registered trade marks that M&S owns in respect of cakes (including ‘Colin the Caterpillar’ cake) and other goods. The dispute relates to three registered trade marks owned by M&S. These include a word mark ‘Colin the Caterpillar’ and a figurative mark ‘M&S Colin the Caterpillar’.

Colin the Caterpillar has been on the shelves in M&S stores for over 30 years with more than 15 million cakes made to date. Colin has not changed much over the years, except for some special editions such as ‘Connie the Caterpillar’ being launch for Mother’s Day. In fact, Colin and Connie got married back in 2017, after several months of increasing rumours that they were dating.Colin is certainly the most famous caterpillar cake in the UK with almost 30,000 Instagram followers and appearances at the birthday parties of celebrities such as Dame Judi Dench, Taylor Swift and David Beckham.

Aldi recently launched their own caterpillar cake, ‘Cuthbert the Caterpillar’, which M&S claims infringes its registered trade marks. Cuthbert has become a very popular choice amongst British consumers, undoubtedly thanks to its attractive looks and price which is significantly lower than Colin’s. Cuthbert’s rising popularity certainly did not give the M&S team butterflies.

Whilst we have not had sight of the pleadings in this case, our initial view is that M&S might argue that its registered trade marks have been infringed under section 10(3) of the Trade Marks Act 1994. To succeed in such claim, M&S would need to successfully argue that its registered trade marks have a reputation in the United Kingdom and the use of the similar mark by Aldi takes unfair advantage of, or is detrimental to, the distinctive character or repute of M&S’s trade marks. M&S have stated publicly that they do not wish to allow Cuthbert to ‘ride on the coat-tails’ of the M&S cake’s reputation.

What About The Other Caterpillars?

Colin’s popularity had meant that other supermarket chains have released their own caterpillar cakes in recent years. Other caterpillars include Sainsbury’s Wiggles, Tesco’s Curly, Morrisons’ Morris, Co-op’s Charlie, Cecil by Waitrose and Asda’s Clyde. So why did M&S not bring legal proceedings against any of the other supermarkets?

In bringing this action, M&S appear to be seeking to prevent Aldi from gaining an unfair advantage by using the reputation and association of quality that comes with M&S cakes and other goods to increase the sales of Cuthbert the Caterpillar.

This is especially true when you compare the price of the two cakes. Aldi’s Cuthbert costs £4.99 whereas M&S’ Colin costs in the region of £7, with special editions being sold at higher prices (such as the £10 Christmas edition). It could be safely assumed that most consumers would choose the cheaper option when two products look so similar. When asked why M&S was taking action against Aldi, an M&S spokesman stated they were taking “a targeted approach to protect our brand assets.”

Aldi’s Response

Aldi removed Cuthbert the Caterpillar from their shelves before M&S commenced the legal proceedings. It then started an exceptionally successful PR campaign on Twitter which attracted thousands of likes and retweets. Aldi’s PR team was widely praised by social media users for its humorous approach. Aldi posted a series of tweets with the hashtag #FreeCuthbert and was soon joined in its caterpillar jokes by other major British supermarkets.

This is not the first time that Aldi has taken to social media to seek an amicable conclusion to an IP dispute, with the help of its exceptionally talented PR team. In what became a comical back and forth on Twitter between Aldi and BrewDog last summer regarding one of BrewDog’s Punk IPA’s, the two companies settled the dispute in a way no one saw coming. BrewDog initially suggested it would launch a ‘Yaldi IPA’ in a mocking social media post. Aldi responded by stating “We would have gone with ALD IPA, send us a crate and we’ll talk…”. Soon after, what started as a spoof brand on social media was being sold exclusively at Aldi stores. For every case bought, both BrewDog and Aldi donate a tree to BrewDog’s forest, supporting their commitment to reducing carbon and fighting climate change.

This time, Aldi suggested that both Colin and Cuthbert could work together to raise money for cancer charities, including Macmillan Cancer Support, whom M&S have supported for many years through the sales of its Colin cakes. One tweet from the increasingly popular Aldi PR team suggested that Colin and Cuthbert should become ‘besties.’

Whether Colin and Cuthbert do become besties remains to be seen, but the battle between M&S and Aldi over their similarity has certainly become one of the most publicised IP cases in the UK this year.

If you have any queries or concerns about registered trade mark infringement or infringement of any other IP rights, we can assist you with resolving early stage disputes and support you all the way through litigation/contentious proceedings should they prove necessary.

With special thanks to our team’s star baker and trainee Jon James for his contribution to this article.