Have your caterpillar cake and eat it! What arguments could M&S make against Aldi?

Posted on: May 6th, 2021

Colin the Caterpillar, the well-known Marks & Spencer’s (M&S) chocolate sponge roll cake has been sold on their shelves since 1990, but would you be able to tell the difference between him and one of their rival supermarket’s own caterpillar cakes?

This is what M&S are alleging and has begun legal action against Aldi. They are arguing that the supermarket’s Cuthbert the Caterpillar cake infringes its Colin the Caterpillar trademark.

Why did they choose Aldi?

Since M&S launched Colin the Caterpillar cake, Asda created Bonnie and Clyde, Sainsbury’s has sold Wiggles the Caterpillar, Morrisons invented Morris, Waitrose also joined the craze with Cecil, the Co-op manufactured ‘Curious caterpillar cake’, and Tesco made Curly. However, Aldi recently took the top spot in an annual Which? survey. Could this be why M&S took aim for Aldi out of all the others?

What argument could M&S make?

For M&S to prove Aldi had infringed its trade mark, they will need to demonstrate that Aldi’s Cuthbert is so similar that it is a misrepresentation to consumers. To do this, M&S may claim that consumers could be confused as to which caterpillar originates from which store. Evidence of this might take the form of an individual trying to return a Cuthbert to M&S or vice versa.

However, there are a plethora of cakes that use the word ‘caterpillar’ in their name. This is a problem for M&S as ‘caterpillar’ is being used to describe the type of cake, and elements within signs that are descriptive cannot be recognised as a trade mark.

Publicity

Two months after withdrawing its Cuthbert the Caterpillar cake Aldi is bringing the cake back to its shelves. However this dispute ends, it has been thrusted into the public eye.  ‘Let’s raise money for charity, not lawyers,’ Aldi tweeted. It claims that the limited-edition version will benefit Teenage Cancer Trust and Macmillan Cancer Support. This type of publicity could ultimately backfire for M&S and whether they proceed with the dispute remains to be seen.

Conclusion

The number of registered trade marks is on the rise, with 81,556 registered in 2018 and 95,162 in 2019. Naturally, this has also increased the amount of trade mark infringement claims.  It has never been more important to be on the lookout for any infringements and to protect your businesses intellectual property to avoid the headaches that M&S and Aldi are currently facing. M&S will certainly want to defend their trade mark but will they want to be seen as denying the proceeds of Cuthbert going to charity? Not an easy decision.

In this case, good publicity on social media may speak louder than legal actions.

If you have any questions or require any further assistance with any IP rights, please do not hesitate to contact us.