First published on the Trademark Lawyer Magazine, December 2021

At the time the details of M&S’ allegations were unclear and much of the coverage was focused on how the parties, in particular Aldi, had taken the fight to social media. Now the battle lines have been drawn and this article picks out and explores certain aspects of M&S’ passing off and trademark infringement claims and Aldi’s staunch defence of Cuthbert.

Post-sale passing off

According to M&S Colin the Caterpillar (“Colin”) is a “signature product” and is “a very familiar and much loved M&S product to a large section of the British public”. M&S claims that goodwill resides in a number of indicia including the names “Colin the Caterpillar” and “Connie the Caterpillar”, the get-up of the packaging for the standard Colin cake and the get-up of the Colin product itself. M&S’ claim involves a conventional passing off claim at the point of sale, but more interestingly includes an allegation of post-sale passing off, a relatively nascent concept in the context of passing off that was formally recognised in 2020 by Deputy Judge David Stone in the case of Freddy v Hugz [2020] EWHC 3032.

For post-sale passing off, M&S argues that goodwill exists in the get-up of the Colin product (the roll shaped cake, encased chocolate shell topped with multi-colored beans and moulded white chocolate face and feet). According to M&S the appearance of Cuthbert misrepresents that Cuthbert is a product of M&S and a mis[1]representation occurs post-sale when removed from the packaging because the un-packaged product is presented to consumers, about to consume it, therefore in a real-world context consumers are familiar with and rely upon the un-packaged shape, appearance, and get-up of Colin.

Aldi denies that any goodwill resides in the get-up of M&S’ Colin product or that the product is distinctive of M&S. Firstly, Aldi contends that the idea of a caterpillar cake did not originate from M&S, having featured in novelty children’s cookbooks prior to the launch of Colin. Secondly, Aldi relies on the fact that several other cater[1]pillar cakes that share similar features, including a roll-shaped cake with chocolate covered shell, faces and feet, and multi-coloured chocolate beans, have been on the market since 2011, long before Cuthbert was launched. Thirdly, Aldi claims the variants of Colin (including Connie) actually inform the relevant public that there is no fixed get-up for either Colin or Connie and in fact the products come in a variety of sizes and with varying decorative features, the only constant feature being the name “Colin” or “Connie”. Aldi further argues that consumers do not rely on the appearance of the Colin product because (a) there are other similar products on the market; and (b) when presented with the un[1]packaged product consumers are not aware of the commercial origin.

Why is this problematic for M&S, well, we know now that M&S is alleging post-sale passing off. In that context the appearance of Colin (and Connie) will be critical as consumers who receive Colin will see the cake itself, and will not necessarily be informed by the name or the get-up of the packaging. Therefore, for post-sale passing off to be successful, M&S will need to demonstrate that their goodwill extends beyond the product name and get-up of the packaging (which would be pertinent at point of sale) to the physical appearance of Colin in order to argue that the appearance of Cuthbert constitutes a misrepresentation which deceives or confuses consumers post-sale.

Post-sale confusion is likely to be key to M&S’ claim as the nature of the market, the circumstances of sale and price of the products seem to reduce the possibility of confusion or deception at the point of sale (as Aldi contends), whereas there is an argument that without the packaging, the brand names and wider context at the point of sale, Cuthbert is not readily distinguishable from Colin and therefore the misrepresentation becomes operative post-sale because there is increased likelihood that consumers will be deceived into thinking Cuthbert is an M&S product (or related product) or equivalent standard to Colin. However, it will not be easy for M&S to establish a claim for post-sale passing off for a number of reasons.

M&S will need to establish goodwill, establishing goodwill in the names of Colin and Connie, and perhaps the get-up of the packaging might be straightforward, but demonstrating the get-up of the product attracts goodwill may prove more difficult. If one thinks about the difficulties in a trademark context of demonstrating that non-traditional trademarks, including shape and appearance of products, are distinctive and denote commercial origin, it is easy to see parallels in a passing off context when it comes to demonstrating that goodwill attaches to get-up and appearance of the Colin product. As Aldi contends, once the packaging is removed a consumer presented with the unpackaged product would not be aware of the trade origin, so unless consumers rely on the appearance of the product as the indication of origin, there is no indication of origin after the point of sale.

Since there are multiple forms of Colin and there are multiple caterpillar offerings on the market, Aldi denies that the appearance of Colin is distinctive of M&S and further denies that a significant portion of the relevant public would recognise or rely on the appearance of Colin as an indication of origin. That argument seems to carry some force and M&S will need to show clear evidence that consumers perceive the get-up of the product itself as indicative of origin. Even if M&S can demonstrate goodwill in the get-up of the Colin product, there remains a question over whether post-sale confusion is an actionable form of misrepresentation. Aldi disputes that and despite the decision in Freddy v Hugz doubts remain over whether similarities in the appearance of a product are capable of constituting a misrepresentation after the point of sale.

Trademark infringement

In addition to passing off, M&S alleges infringement of three UK trademarks; two word marks for “Colin the Caterpillar” and “Connie the Caterpillar” and a figurative mark protecting the appearance of the standard Colin product packaging. The trademark infringement claim is a fairly standard allegation of a likelihood of confusion contrary to s.10(2) of the Trade Marks Act 1994 (“Act”) and unfair advantage contrary to s.10(3) of the Act. However there are a couple of interesting aspects to the way M&S advances its case.

For assessing infringement M&S argues that the Colin and Connie word marks form a family of marks as they share two common characteristics, namely (i) a two syllable forename beginning with the letter “c”; and (ii) the words “the caterpillar” following the said forename. Aldi denies that the word marks form a family of marks (a) because as a matter of law, at least three marks with similar characteristics are needed to form a family and (b) because neither of the family characteristics are distinctive. On the issue of similarity one can see why the family characteristics might contribute to the overall degree of similarity. However, the extent to which that informs the likelihood of confusion assessment is more questionable as it seems unlikely that the average consumer would pay much attention to the characteristics M&S relies on, in particular “the caterpillar” feature as that is a descriptive aspect of the marks that consumers are unlikely to perceive as indicative of origin. It also seems unlikely that use of a two syllable forename starting with the letter “c” would be perceived by consumers as a family characteristic that is indicative of a particular commercial entity.

On balance, the family of marks argument does not seem to enhance M&S’ infringement claim a great deal. Turning to the unfair advantage claim, this allegation tends to raise interesting questions in cases of “lookalike” products because of the very nature of those products. In this case Aldi admits that the Colin word mark has a reputation and it should be relatively straightforward for M&S to demonstrate that the packaging mark has a reputation. The Connie mark, however, may prove slightly more difficult for M&S since Connie was only released in 2016 at which point a number of other products with similar style names were on the market, however that mark is not vital to success of M&S’ unfair advantage claim given Colin is the primary brand. The issue of whether the name “Cuthbert” gives rise to a link will be complicated by the number of other products on the market. Considered in a vacuum it may be reasonable to conclude that “Cuthbert the Caterpillar” might evoke a link to Colin and M&S.

However, as consumers will have been exposed to caterpillar cakes with similar style names sold by other retailers, for example “Cecil”, “Curly” and “Clyde”, they may be less likely to perceive names of that style to be indicative of any one retailer, let alone indicative of M&S. Here the strength of M&S’ reputation and the distinctiveness of the Colin name will be key to whether a link would be formed by the average consumer. Interestingly, on unfair advantage, M&S alleges that Aldi’s conduct is unfair because Aldi has a “wide freedom of action” in terms of the design, name, and get-up of the cakes it sells. According to M&S Aldi is able to compete without mimicking M&S’ product designs and that by doing so it seeks to take the fruits of M&S’ labour without any cost and effort. Aldi denies any unfair advantage and claims that use of the name “Cuthbert the Caterpillar” and its packaging designs was with due cause.

Once again, Aldi relies on, amongst other reasons, the existence of other products on the market place with a two syllable name beginning with the letter “c” commonly combined with the phrase “the Caterpillar”. According to Aldi it was merely entering an established market with a product name consistent with other product names used in the market. Whilst Aldi might have a wide freedom of action at a general level, if they want to compete in an established market where consumers have certain expectations it is difficult to see how Aldi had the level of freedom M&S alleges.

Acquiescence

Not only does the presence of other products on the market pervade numerous aspects of Aldi’s defence, it also gives rise to a standalone acquiescence defence in respect of the product names. Specifically, Aldi alleges that M&S has acquiesced to third parties using a two-syllable forename starting with the letter “C” in connection with caterpillar style cakes and that such names have been used since 2011 without M&S taking any steps to prevent such use. The defence of acquiescence is usually tied to a defendant’s activities, but here it is tied to market activity and features of third party products. It is difficult to see how that construction conforms with the traditional understanding of acquiescence so it will be interesting to see how this new species of acquiescence might be received by the court.

Closing remarks

As the discussion above illustrates, this dispute raises a number of interesting issues for lookalike cases, in particular how the existence of similar products on the marketplace affects consumer perception and also whether M&S’ failure to take action against those products gives rise to a new form of acquiescence defence. The parties’ respective cases have strengths and weaknesses so hopefully the case goes to trial and we have the opportunity to see how these issues are handled by the court.