As widely reported in the IP and UK press, M&S brought trade mark infringement proceedings in the UK against Aldi back in April 2021, alleging that the similarity of Aldi's "Cuthbert the Caterpillar" cake leads to consumer deception and rides on the coat-tails of M&S' reputation in the "Colin the Caterpillar" cake, for which M&S owns several trade mark registrations. The registered trade marks that M&S relied upon for their claim in respect of Colin the Caterpillar are:
- Word mark for COLIN THE CATERPILLAR (registered in 2009);
- Word mark for CONNIE THE CATERPILLAR (registered in 2016); and
- Shape mark representing the iconic caterpillar wrapped up in its packaging (registered in 2020).
Image source: UK IPO.
It is the third of these registrations which put Aldi in perhaps a more difficult position than the discounter is used to when defending its lookalike products. If M&S had failed to register Colin's packaging "get up," it would have had to enforce its unregistered rights against Aldi by way of a common law action in passing off. It is notoriously difficult to succeed in enforcing unregistered rights against lookalike products – particularly due to the requirement to demonstrate a "misrepresentation." This would require M&S to show that the lookalike packaging of Cuthbert the Caterpillar actually deceived customers into purchasing that product, in the belief that they were buying M&S' Colin the Caterpillar product. Given Aldi's well-known "own brand" business model, as well as the fact that – as a rule – supermarkets do not tend to stock products of other supermarkets, this would have been a significant hurdle for M&S to surmount.
The difficulty that the "misrepresentation" requirement poses for claimants has served Aldi well in previous passing off actions brought against the supermarket. In May 2014, Aldi successfully defended a claim brought by the owners of the hair oil brand Moroccanoil for alleged passing off in relation to Aldi's Miracle Oil (Morrocanoil Israel Ltd v Aldi Stores [2014] EWHC 1686 (IPEC)). The High Court took the view that "a recognition on the part of the relevant public that the name and/or packaging of the former looks similar, even strikingly similar to the name and/or packaging of the latter would not by itself translate into an actionable misrepresentation on the part of Aldi."
However, here, M&S' prudent registration of Colin's packaging get-up as a trade mark has enabled it to bring a concurrent action for trade mark infringement (an action which can only be brought in respect of registered trade mark rights). In this case, M&S is only required to meet the comparatively lower thresholds of demonstrating (a) a likelihood of confusion between the Colin the Caterpillar and Cuthbert the Caterpillar products, or (b) that the Cuthbert the Caterpillar product rides on the coat-tails of M&S' reputation in the Colin the Caterpillar product.
Unable to rely on the absence of a misrepresentation, Aldi describes the get-up of the Cuthbert the Caterpillar product and its packaging as "manifestly different" from the get-up of the Colin the Caterpillar product and its packaging. However, Aldi spends a not-insignificant part of its Defence justifying the apparent similarities between the two. For example, Aldi describes any similarity in the size and shape of the packaging as arising "from the fact that both products represent anthropomorphic caterpillar cakes of a weight that is suitable for about a dozen servings" and any commonality in colour palette as reflecting "the fact that caterpillars are associated with greenery, being their predominant food source." It is interesting to note that - despite this latter claim - Aldi changed the design of Cuthbert's packaging in April 2020 to move away from the greenery theme it had previously used.
The difficulty arguing that there is no likelihood of confusion extends to the names of the products. In its Defence, Aldi contends that the name Cuthbert is "very different, visually and aurally, from the name Colin," describing Cuthbert as "unusual and old fashioned" and Colin as "more popular."
The case has a way to go, and the outcome – if it goes to trial – will be an interesting and potentially landmark case in the lookalikes world. What is clear from Aldi’s Defence, however well-argued, is that they have had to go to some trouble to address and attempt to dismiss the similarities between the two caterpillar cakes in the context of a claim for trade mark infringement, and cannot simply rely on the tried-and-tested arguments of lack of misrepresentation that have served Aldi well in the past when defending passing off claims. This may encourage other consumer goods brands to register the get-up of their products as trade marks, since this undoubtedly puts the rights owner in a stronger position to enforce those rights against parasitic copyists producing lookalike versions of their products.
The five-month gap between the filing of the original claim and the Defence perhaps suggests that settlement negotiations between M&S and Aldi may have been taking place behind the scenes. Assuming that these do not resume, it will be interesting to follow the case over the coming months, and what it will mean for the booming industry in lookalike products sold by discount supermarkets. Publicly, Aldi does not appear troubled by M&S’ claims. The discounter launched a new Cuthbert the Caterpillar plush toy in November 2021, and its much-anticipated Christmas advert included an implicit reference to the litigation – an animated Cuthbert being led away in handcuffs.
