Having topped Twitter’s trending topics earlier this year, readers may be aware of the Colin v Cuthbert saga (maybe those who aren’t, live in a social media cocoon). The saga emerged after retailer Marks and Spencer (“M&S”), issued proceedings against budget supermarket chain, Aldi, for alleged passing off and trade mark infringement relating to its Cuthbert the Caterpillar cake (“Cuthbert”).

Trade mark infringement takes a back seat

What is immediately noticeable from M&S’ Particulars of Claim is how passing off appears to be the primary cause of action with trade mark infringement alleged as a secondary cause of action. M&S’ allegation of trade mark infringement relies on three registered marks: two word marks consisting of “COLIN THE CATERPILLAR” and “CONNIE THE CATERPILLAR” and one figurative mark covering the exterior product packaging for goods in class 30.

The fact that passing off takes centre stage in M&S’ claim seems to reflect the limitations of its trade mark registrations, particularly the lack of protection for the product itself (i.e. the roll-shaped cake and any accompanying decoration). M&S nonetheless seeks to rely on the registered rights detailed above, by pursuing arguments under s.10(2) (likelihood of confusion) and s.10(3) (unfair advantage) of the Trade Marks Act 1994 (UK).

Looking at the word marks, M&S argues that “Cuthbert the Caterpillar” is similar to their registered word marks (“COLIN THE CATERPILLAR” and “CONNIE THE CATERPILLAR”) and is used in relation to goods that are identical to these registered word marks. In terms of similarity of signs, the “THE CATERPILLAR” element is unlikely carry much significance since that element is descriptive of the product, is commonly used by other products on the market and consumers tend to pay more attention to the first word of a trade mark. The dominant element of the marks are therefore likely to be the names “Colin” and “Connie” and the High Court’s assessment will be focused on the similarities with “Cuthbert”.

Arguably, the names are aurally and visually dissimilar and perhaps even conceptually dissimilar, but as M&S argues, they share some common aspects, for example starting with the same letter and consisting of two syllables followed by “the Caterpillar”. The fact that M&S relies on those particular features to run a “family of marks” argument flags the potential weaknesses in M&S’ case on similarity. Moreover, it is difficult to see how the common characteristics M&S relies on will be perceived by consumers as indicators of commercial origin, especially since other products sharing those characteristics were available on the market before Cuthbert.

Further, in its Defence, Aldi repeatedly relies on the fact that that there is a well-established market for caterpillar cakes, which, when combined with the circumstances of sale and price differentials (i.e. different trade channels and separate supermarkets), might make it difficult for M&S to argue confusion at the point of purchase. As the product names and packaging will be less relevant to the appearance of the product post-sale, the lack of trade mark protection for the appearance of the Colin product itself might explain the prominence given to passing off, in particular post-sale passing off.

Passing off in the spotlight

The difficulties in establishing confusion at the point of sale indicate that post-sale passing off is vital to M&S’ prospects of success. The essential elements needed to establish the tort will involve M&S first having to prove that they own goodwill in Colin’s appearance (i.e. that the caterpillar is so well-known to consumers that they would easily identify the cake’s origin as an M&S product). M&S will then need to show that misrepresentation and confusion have resulted from the presence of Aldi’s Cuthbert, such that the public are led or likely to be led to believe that Cuthbert is in fact, Colin. Finally, M&S will have to demonstrate that there is a likelihood of damage. For example, M&S allude to potential reputational damage around quality in their Particulars of Claim and this may result in lost sales.

Offering a broader scope of protection than traditional trade mark infringement, the post-sale passing off pleading covers what M&S describe as “a signature product”, “much loved … to a large section of the British public”, that has “become a staple at events”. They argue that goodwill resides in several indicia including the packaging, the names “Colin the Caterpillar” and “Connie the Caterpillar” and, importantly, the unpackaged product and accompanying get-up (namely its chocolate shell covered in multi-coloured chocolate beans, white chocolate face and feet, protruding tongue and contrasting brown chocolate eyes). According to M&S, the unpackaged product and accompanying get-up are themselves relied upon by consumers as the product is typically presented to those about to consume it, without seeing the box and having been involved in the transaction. For instance, even if there has been no deception or misrepresentation during the point of purchase, this does not exclude a misrepresentation and deception occurring at the later stage in the life of the product when presented for consumption.

Proving that goodwill exists in the appearance and get-up of the product without any indication of origin (namely demonstrated through its packaging and reference to the Colin name) may prove difficult for M&S. Usefully for M&S, however, recent case law has acknowledged this novel and developing post-sale passing off argument. For example, the Intellectual Property Enterprise Court case of Freddy SPA v Hugz Clothing & Ors [2020] EWHC 3032 establishes that passing off can result from post-sale misrepresentation concerning the design and aesthetics of a product, as opposed to branding alone. Though even with the Freddy SPA decision, question marks remain over whether post-sale passing off is actionable, therefore, it will be interesting to see whether the decision is given positive judicial treatment in this case.

Why Aldi?

The fact that a number of caterpillar cakes were available on the market before Aldi does beg the question: why Cuthbert and why Aldi? For example, several UK supermarkets produce their own version of Colin – namely, Asda’s “Clyde the Caterpillar”, Tesco’s “Curly the Caterpillar” and Waitrose’s “Cecil the Caterpillar”. M&S’ failure to take action against these products does give rise to the argument that consumers regularly see caterpillar cakes in various supermarkets and hence will not easily associate a caterpillar cake, or particular aspects of the branding and packaging of caterpillar cakes with M&S. Indeed, according to Aldi’s Defence, the presence of other caterpillar cakes has impacted the distinctiveness of Colin and all it has done is genuinely enter an established product market for caterpillar cakes with two-syllable alliterative names beginning with the letter “C”.

Arguably, M&S’ position is not assisted by the existence of its own variations of Colin, including Connie the Caterpillar with puffy cheeks, separate eyes and pink bow and feet and its green-faced, red-eyed, Halloween-themed Count Colin the Caterpillar. In fact, Aldi noted these variations, amongst others, in its Defence, arguing that their presence “has educated the public to understand that there is no fixed get-up for Colin …”.

Furthermore, Aldi has relied on the existence of other products on the market to advance a novel form of acquiescence defence to trade mark infringement. Typically, the defence of acquiescence is tied to acts of the defendant only (i.e. features of third party products do not lead to a third-party acquiescence defence). In this case, Aldi is arguing that M&S has acquiesced to third parties using a two-syllable forename starting with the letter “C” in connection with a caterpillar cake. Whether Aldi can successfully argue that acquiescence to third party market activity can be a defence to trade mark infringement remains to be seen, but it is a thought-provoking line of argument. The acquiescence argument will not provide Aldi with a complete defence, but, it will be interesting to see how the High Court interprets this novel argument.

Despite the points above, M&S may have taken issue with Cuthbert for several reasons. Firstly, it is argued that Cuthbert shares distinct similarities with Colin when compared to other supermarkets’ caterpillar cakes. For example, M&S’ Particulars of Claim show that Cuthbert and Colin both have joined brown eyes and a protruding pink tongue, similar shaped faces and antennae, and similar packaging (noting shape, size, style, colour palette and transparent window). As a result, it is argued that Cuthbert appears intentionally designed to call Colin to mind. Secondly, Cuthbert could be considered the first alternative caterpillar cake to appear on the market that challenged M&S’ 2020 registration of their figurative mark covering the exterior product packaging. Finally, Cuthbert is sold at a significantly lower price-point when compared to other supermarkets’ caterpillar cakes. For instance, Clyde the Caterpillar is sold for GBP 5.92, Curly the Caterpillar for GBP 6 and Cecil the Caterpillar for GBP 7. As Cuthbert sells for a mere GBP 4.99, M&S may be concerned that consumers will be inclined to purchase this much cheaper alternative and may result in actual loss of sales.

Closing remarks

Given the public engagement in this case and whilst many trade mark infringement and passing off claims are settled outside of court, it is hoped that the matter will continue to trial so that we can follow the development of novel points concerning post-sale passing off and third-party acquiescence. Whether these arguments will prove convincing to the High Court remains to be seen, but it is clear even at this stage, that winning the case will not be a piece of cake for M&S.

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This article first appeared in the Intellectual Property Forum journal, published by Intellectual Property Society of Australia and New Zealand. Marc Linsner and Samantha-Jayne Millington, ‘Current Developments – Europe: United Kingdom: Passing off given prominence in Marks & Spencer’s legal action against Aldi’s Cuthbert’ (2021) Intellectual Property Forum 126.