21 Apr 2021
By Ruth Weir, Associate Solicitor Corporate and Commercial Blackadders LLP @CorpLawyerRuth
At the end of last week, news began to break of a court case which high street firm M&S had launched against budget supermarket Aldi over a caterpillar cake lookalike. While impending litigation might be enough to give most butterflies, the Aldi social media team flew into overdrive with a series of sassy tweets and a new campaign to #FreeCuthbert. But what is the legal position and should M&S have raised a court case or would it be better to simply let customers eat cake?
Background
Back in 1990, Marks and Spencer’s launched a chocolate sponge with a cute caterpillar face and named him Colin. Since then, Colin has become increasingly popular (seeing more than 15 million sold since he was launched over 30 years ago) and the high street shop has extended the line to include a girlfriend, Connie, wedding cakes (no longer available in case Connie gets any ideas), Count Colin for Halloween and Christmas Colin, complete with festive hat and decorations.
Despite Colin being about since the ‘90s M&S did not look to register a trade mark for him until 2009. There was also a much more recent trade mark registration of the packaging in 2020. While the registration was quite recent, there would have been other intellectual property protections in place before 2009, like passing off under common law. The effect of registration means that the name “Colin the Caterpillar” and the packaging (the green box with the leaf design) are protected in Class 30 (the cake and baked goods class).
Alleged Infringement
As they say, imitation is the best form of flattery and since 1990 most supermarkets in the UK have launched a similar caterpillar cake. Obviously Aldi has Cuthbert but Tesco has Curly, Waitrose has Cecil, Asda has Clyde, the Coop has Charlie and Sainsbury’s has Wiggles. So why is it that M&S have now decided enough is enough and a case is necessary against only one supermarket? Well, when you look at the two cakes side by side, the products are very similar and arguably more similar than other caterpillar cake offered by other supermarkets. The result, according to M&S, is that the similar face shape, decorations and packaging style infringes their registered trade mark and could lead to confusion where customers think the cakes are the same. Aldi are essentially riding on the “coat tails” of the high street firm’s time, cost and effort in establishing the Colin brand and M&S are keen to protect their reputation for “freshness, quality, innovation and value”.
What Should I Do?
I’m not going to suggest you take a side or indeed rush out to buy a Colin and a Cuthbert to compare (although there is nothing wrong with enjoying a slice of chocolate cake). However, it can be tempting when you see something on the market to think about how you might do something similar or improve. But it is important to be aware of intellectual property rights and the steps you should take to protect your own IP and to avoid infringing anyone else’s IP.
Work out what IP you actually have: A brand can be a very valuable asset of any business and can be protected by registering as a trade mark, but there could be wider intellectual property owned by your business like copyrighted work, design rights or patents. It is useful to keep a register of all IP so you know what there is and can keep Businesses would be wise to look over what IP there is and keep a record of all different types and the date they were created.
By keeping a record of your own IP, you can show when you came up with an idea and the point in time that your interest in the IP was created. Trade marks can cover a brand name/logo, sub brands and product lines and can also cover three-dimensional shapes, colours, slogans and even sounds if they are sufficiently distinctive so every marketing campaign and product launch should be documented to keep a clear, accurate and up to date record.
Consider registration:
Registration is not compulsory but does have some advantages, especially when looking to protect your intellectual property and brand. Registration is proof of your entitlement to a mark and generally allows action for infringement to be brought without needing proof of any damages. It also gives the wider world notice of your interest in the brand.
You should only seek to register in relevant classes of goods and services where you have an intention to use the trademark (so it is unlikely most businesses will need a trademark in all 45 classes). Care should be taken to properly consider which classes are appropriate to ensure protection is sought in all relevant classes. Businesses need to make sure they are not just registering in a class to prevent someone else using it (which is known as trade mark squatting).
Before seeking registration, it is worthwhile doing a check on the relevant registry as well as a more general search to make sure there are no competing brands already registered. You wouldn’t want to put time and effort into developing and registering a trade mark just to find it infringes on someone else’s pre-existing mark.
Watch for any infringements or IP misuse:
Any brand abuse (where an outside party infringes on your IP) can have a significant impact on how your business is viewed and could ultimately devalue your brand. It could include counterfeiting products, rogue websites, social media impersonation or misuse of trade mark/copyrighted work. To maintain the value in your IP (as well as protect if for any future sale or licence) it is important to keep tabs on your IP and how it is used (whether or not registered). The process of detecting and validating any infringements is important so that all brand misuse is caught but authentic companies are not penalised by mistake when you try to enforce IP rights.
But, just because you have a legal right does not necessarily mean you should enforce it. Before a decision is made to take any action, you should think through the implications and reactions, including any reputational damage, which could occur. Once action is started, you run the risk of the matter becoming public knowledge and while the saying is “no publicity is bad publicity”, you do not have to look far to see examples of when brands have got it wrong by being overzealous with brand protection.
Get advice:
If you have any doubts or are wanting to find out how to protect your IP, make sure you get appropriate advice. In addition to helping with the above points, advisors can help you put in place relevant contracts to clarify who owns certain IP and how another party can use it legitimately.
Conclusion
The case between M&S and Aldi will turn on the evidence and trade mark cases can be notoriously difficult and only time will tell which winner bakes all. It does however stand as a timely reminder to take care with IP and ensure you have an appropriate plan in place to properly protect and monetise the rights you have in your IP.
Who To Contact?
If you need any advice about intellectual property, please get in touch with Blackadders’ Corporate & Commercial Team (working in Aberdeen, Dundee, Edinburgh, Glasgow, Perth and across Scotland).
