Is Cuthbert infringing Colin’s rights?
As has been widely reported in the IP and UK press, M&S has brought trade mark infringement proceedings in the UK against Aldi, 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 holds several trade mark registrations.
A registered trade mark in the UK is infringed by the use of an identical or similar sign in relation to the same or similar goods and services for which the trade mark is registered. Moreover, registered trade marks with a reputation in the UK are infringed by the use of an identical or a similar sign without due cause where the use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Even where no registered trade mark exists, earlier unregistered rights holders can still look to the common law and accuse a competitor of passing off their goods or services as those belonging to the earlier right holder.
In principle, any sign capable of indicating origin by distinguishing the goods or services from one trader to another, can be registered as a trade mark. It is widely known that this includes the name of a product, but it can also include its packaging. In this case, M&S owns two registered trade marks for its Colin the Caterpillar cake, one of which is a shape mark:
1. Word mark for COLIN THE CATERPILLAR (registered in 2009); and
2. Shape Mark representing the iconic caterpillar wrapped up in its packaging (registered in 2020):
Colin has been in M&S stores since 1990, and has been a regular fixture on the shelves and at children’s parties for many years. In 2019 Aldi launched its Cuthbert lookalike (just one of its many “like brands, only cheaper” copycat products in its stores), and on 13 April 2021 M&S filed its claim against Aldi objecting to Cuthbert – which is just one of rather a large number of copycat cakes on the shelves of several supermarkets.
Since the claim was filed, Aldi appears to have altered the appearance of its Cuthbert cake slightly, such that it now has white chocolate eyes instead of brown, presumably in an attempt to distinguish Cuthbert from Colin, and quite possibly as a result of ‘behind the scenes’ discussions with M&S. This of course has no bearing on the historic infringement claim, and it remains to be seen whether a court – if the case proceeds to trial – would consider it sufficient to distinguish Cuthbert from Colin.
Setting the scene for Colin
If brand owners are relying on unregistered rights in their packaging ‘get-up’, it is notoriously difficult to succeed in enforcing these against lookalike products. Passing off requires goodwill, misrepresentation and damage. In a lookalikes dispute, misrepresentation is often the trickiest to prove as it comes down to deception rather than imitation ie. does the lookalike packaging actually deceive the consumer into purchasing that product, in the belief that they are buying the branded product?
For this reason, lookalike goods will often imitate the get-up of the original product, without necessarily using wording similar to the brand name; in fact, lookalikes producers will usually choose a brand name which is dissimilar to that of the branded product, in an attempt to torpedo any claim of deception. In United Biscuits (United Kingdom) Limited v Asda Stores Limited [1997] RPC 513, Asda had labelled their biscuits as “Puffin” rather than “Penguin” biscuits. Although arguably there is a degree of conceptual similarity between the two birds, on the basis of the registered trade marks alone, the judge was not convinced that the word mark "Penguin" was infringed by use of the mark "Puffin" and so there was no trade mark infringement.
However, in a rare example of a successful passing off claim against lookalike products, the court held that the similarities between the respective packaging would mislead consumers. United Biscuits initially adduced a survey (which was later withdrawn on technical grounds). Evidence was given by witnesses in three categories: senior employees of the parties, expert and technical witnesses and members of the public (being examined and cross-examined as to their shopping habits). The evidence that customers mistakenly thought the two products were affiliated was of crucial importance. The High Court concluded that a substantial number of shoppers would assume an association between the Puffin and Penguin. Ultimately, Asda rebranded its Puffin biscuits.
Whilst this case would appear to give hope to brand owners seeking to enforce rights in passing off against lookalikes, the “Penguin v Puffin” case might be decided differently today, particularly with respect to supermarkets which operate well-known “own-brand” business models, for which it is difficult to argue consumer deception.
For example, 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)). Even though it was held that there was no doubt that the claimant enjoyed goodwill, that Aldi had intended to make the public think of Moroccanoil when they saw Miracle Oil and had succeeded in doing so, the court did not agree, on the evidence presented, that the purchases had been or were likely to be made with the false assumption that they were in fact the same product, came from the same manufacturer or were otherwise linked in trade. 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”. Considering the similarities between both products, this case established a high bar for establishing misrepresentation leading to deception (although brand owners may take some comfort from the fact that this was a High Court decision, and so not binding for decisions at the same or a higher level).
Registering your product’s get-up
Disputes over lookalike products rarely make it to the courts. Brand owners are often reluctant for fear of harming a key commercial relationship, particularly where they would need to rely on unregistered rights. In Colin’s case, M&S has been savvy in registering Colin’s get-up as a trade mark (albeit only as recently as last year), and since Aldi’s ‘own-brand’ business model means that it has no commercial leverage over brand owners, this may well have been a strategic target for M&S.
In 2014, Icelandic Seachill geared up for a court spat with Aldi over their own-brand fish products which Icelandic Seachill argued closely resembled the distinctive black packaging of its “The Saucy Fish Co” products. Details of the precise scope of the rights relied on by Icelandic Seachill are unavailable, since the case did not proceed to trial (quite possibly on the basis of a confidential settlement). However, of note to brand owners: Icelandic Seachill owns various trade marks in its packaging, which include a UK registration of a series of marks with a cardboard sleeve containing colour variants of the logo. This may well have given Icelandic Seachill a favourable bargaining position in settlement negotiations with Aldi.
Prior to The Saucy Fish Co case, Mondelēz International was also wrapped in a dispute with Poundland based on the packaging of – and the 3D trade mark rights in – its iconic Toblerone bar, which it claimed was infringed by Poundland’s own ‘Twin Peaks’ bar. This resulted in another out-of-court settlement, and a clearly favourable one for Mondelēz International since it resulted in Poundland re-designing the Twin Peaks bar – another demonstration, perhaps, of the value of registering a product’s get-up and/or shape.
If Colin’s case makes it to trial, it may well blaze the trail (and serve as a valuable precedent) for brand owners seeking to rely on registered trade mark rights in relation to the appearance and packaging of their products. Whilst Aldi has deployed an interesting counter-offensive strategy – relaunching its ‘Cuthbert’ lookalike as a charitable initiative, which has played well with the press – regardless, the value of registering packaging ‘get-up’ for brand owners’ important products is undeniable.
Tips for brand owners
This case highlights the importance of registering not only a product name as a trade mark, but also the appearance of the product and its packaging to enforce against lookalikes. If successfully registered, the protection offered will be extremely valuable, particularly given that trade marks (as opposed to design rights) can be renewed perpetually and so provide the brand owner with an ongoing monopoly right.
Of course, registering shape marks does not come without its difficulties, as can be seen from the complex and evolving case law on the subject. Recent attempts highlight both the complexities and the desirability of seeking this type of protection over product appearance.
Stay tuned for further updates on how (or if!) the case progresses. Please do get in touch if you would like to know more about how the issues mentioned in this article may affect your important brands and products.
Authored by Anneka Dalton and Laura Alvarez Otero
