Apr 19, 2021

McDaniels’ Lawyers give their views on Colin v Cuthbert debate on BBC Radio

Colin the Caterpillar, the famous chocolate roll cake filled with buttercream and encased in a hard chocolate outer shell, has been causing quite a stir in intellectual property circles. The cake is of course one of Marks and Spencer’s most popular offerings, sitting centre stage at children’s birthday party celebrations since the 1990s.

As a result of Colin’s popularity, Marks and Spencer launched a number of spin-off products including Colin’s girlfriend, Connie the Caterpillar, and Colin the Caterpillar branded cake jars.

Marks and Spencer has recently commenced High Court proceedings for trade mark infringement and passing off over supermarket chain Aldi’s Cuthbert the Caterpillar cake. Aldi has a business model based on releasing products that resemble other brands as closely as possible without infringing them: it seems on this occasion they may have crossed that line.

While some people may not be able to fathom why two supermarkets cannot both sell a caterpillar themed cake, this matter is not simply about cake but rather the name attached to these cakes and the packaging they are sold in.

Marks and Spencer PLC is the registered proprietor of UK trade mark nos. 2499694 for the mark COLIN THE CATERPILLAR and 3509640 for an image of the box Colin is sold in, as well as UK trade mark no. 915506091 for the mark CONNIE THE CATERPILLAR. These registrations will no doubt be the basis for its claim against Aldi.

There are typically two main types of infringement of a registered trade mark.

The first is where the brand complained of is using an identical mark to a registered trade mark for identical goods for which the mark is registered. Given Aldi’s cake offering is under the mark Cuthbert the Caterpillar, and the fact that this clearly differs from Colin the Caterpillar and Connie the Caterpillar registered trade marks, this type of infringement is not relevant here unless Marks & Spencer allege that the packaging is identical (which, given the different names, is unlikely).

The second type of infringement is where the brand complained of is using a similar mark to a registered trade mark for the same or similar goods that the trade mark is registered for, leading to a likelihood of confusion between the marks. Marks and Spencer has commented that, because of the similarities between the name of the cakes, consumers will believe they are of the same standard enabling Aldi to effectively “ride on the coat-tails” of Marks and Spencer’s reputation.

A consumer’s purchasing decision is ultimately influenced by trade marks and the reputation that is attached to those marks. Colin the Caterpillar and Connie the Caterpillar are marks which have become synonymous with Marks and Spencer and which it is clearly intent on protecting. Marks and Spencer has asked Aldi to remove the Cuthbert branded cakes from its shelves and to not sell anything similar in the future.

Adding to commentary from TV Judge Rob Rinder, Niall Head-Rapson, Director, and Adam Turley, Managing Associate, at McDaniels Law have each recently given a number of interviews on the matter. They have provided an IP lawyer’s perspective to several radio stations up and down the country, including the BBC’s regional stations in Sussex, Surrey, Cumbria, and Newcastle, as well as BBC Radio 5 Live and BBC Radio London with Vanessa Feltz.

What happens next with this matter will likely depend on how Aldi responds to the claim. The case has already attracted a huge amount of interest from the media and the public, and the level of public interest may have a bearing on Aldi’s strategy in responding to the claim.

McDaniels Law have first-hand experience of taking on Aldi and have helped businesses, big and small, standup to its business model which very often mimics other brands.

The recordings of some of Niall and Adam’s interviews are available to BBC Sounds subscribers and can be found on the links below, together with timings of where they start:

BBC Five Live Breakfast with Helen Skelton https://www.bbc.co.uk/sounds/play/m000v3bm from 1:50:49

BBC Radio London with Vanessa Feltz https://www.bbc.co.uk/sounds/play/p09bsvp8 from 1:53:3

BBC Radio Newcastle with Anna Foster https://www.bbc.co.uk/sounds/play/p09c75gx from 3:21:14

BBC Radio Cumbria with Caroline Robinson https://www.bbc.co.uk/sounds/play/p09c3yzl from 1:44:40

McDaniels Law is a specialist intellectual property law firm with offices in Gateshead and Cumbria. The firm’s key areas of practice supporting both businesses and individuals are identification, protection, exploitation and commercialisation of intellectual property, covering design, copyright, confidential information, patents, brand management, anti-counterfeiting, dispute resolution and business services.

If you would like any advice about copyright or intellectual property law generally, please don't hesitate to contact the team on 0191 281 4000, or by email at legal@mcdanielslaw.com.

Posted by: Hannah Flowers in: Trade Marks

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