Colin vs Cuthbert – the trial of the chocolate cakes

They often say that imitation is the most sincere form of flattery, but such assurance is clearly of little comfort to high street stalwart Marks & Spencer (M&S). In the firm belief that a cake sold by discount retailer Aldi, under the name of Cuthbert the Caterpillar, imitates their own chocolatey creation, Colin the Caterpillar, M&S has lodged a High Court intellectual property infringement claim.

M&S claims that the products are so similar that consumers will believe they are of the same standard. Furthermore, they claim that Cuthbert benefits from M&S’s reputation, and as a result Aldi should not be allowed to sell it or anything like it in the future.

Trademark protection

In bringing the claim, M&S is relying on its registered trademarks which protect the product’s name and how it looks. One of the central issues for the High Court to decide will be whether Aldi has breached the terms of M&S’s trademarks and considering whether Aldi consumers believed that they were buying an M&S product.

High street rivalries

Sales of cakes which look like caterpillars are not only restricted to M&S and Aldi. In fact, many supermarkets offer such a product, but so far only Aldi has been named in the litigation, leading some commentators to question whether the case reflects a deeper commercial rivalry.

Commercial reality

Irrespective of the outcome of the IP battle, ahead of the hearing the trial has already been playing out on social media, with Cuthbert and Colin supporters all battling it out in support of their favourite. The Aldi marketing team has also entered the fray with a series of tweets defending and promoting its product line, and even mocking those of its rival. M&S, however, is at the time of writing maintaining a dignified tweet silence on the subject.

Whatever the outcome of the intellectual property case, all sides appear to be winners in the commercial war, with reports of increased sales and some shortages of caterpillar cakes from any retailer, not just Aldi and M&S, in the immediate aftermath of the media coverage. With the costs of such litigation not for faint hearted, such sales will offer all sides a welcome crumb of comfort.

Limits to protection

Any person looking to protect their products must face up to the very real limits that intellectual property protection can offer. Whereas a name or a logo can be protected as a registered trademark, that of an idea or a concept cannot. So, the idea of creating a cake which looks like a caterpillar would be difficult to protect from infringement, which is why the High Court will need to consider names and other similarities in the actual product appearance.

Even though trademark registrations cannot guarantee success in an intellectual property battle, creators are in a far stronger position in the event of an infringement than they would be without them.

More information

For guidance in this area please contact our specialist commercial team.

This article was written by Edward Garston, Partner in the Company & Commercial Team at Pinney Talfourd LLP Solicitors. The contents of this article are for the purposes of general awareness only. They do not purport to constitute legal or professional advice. Specific legal advice should be taken on each individual matter. This article is based on the law as of April 2021.