Posted On / 22.04.2021

Trademarks and caterpillars

You may have seen the battle of the caterpillar cakes on social media, as M&S takes legal action against Aldi, arguing that the supermarket's “Cuthbert the Caterpillar” cake infringes M&S’s “Colin the Caterpillar” trademark on the grounds that it’s too similar and would lead to confusion amongst customers. M&S wants Aldi to remove the product from sale and agree not to sell anything similar in the future. 

Colin was launched around 30 years ago and Colin's appearance has not changed since 2004. The words “Colin the Caterpillar” were registered as an M&S trade mark in 2008, and in 2020 M&S registered a logo for “M&S Colin the Caterpillar” including a picture of their caterpillar cake as part of the trademark.  This means any other cake looking very much like theirs, with a similar name, could be adjudged to constitute a trademark infringement. In addition, the alliterative C (Colin and Cuthbert obviously both start with a “C”, as does “Caterpillar”) shows a possible attempt by Aldi to mimic M&S’s cake, potentially trading off its reputation.  There is certainly the potential for customer confusion.

Like in games of top trumps, trademarks beat corporate names, domain names and unregistered intellectual property rights.  If M&S hadn’t registered their trade marks they would have had to bring a common law passing off action against Aldi, which would have been more difficult to win.

M&S was the first retailer to sell a caterpillar cake, but many supermarkets have since created their own similar products.  Other cakes include Waitrose's Cecil, Sainsbury's Wiggles, Tesco's Curly, and Asda's Clyde the Caterpillar, and it doesn’t look as if M&S are taking action right now against the others, although, depending on how they do against Aldi, that may change.

As long as the words or logo you want to protect are specific and distinctive, you should consider trade marking them as a way of protecting your brand against your competition, just as M&S have done.

If you have a trademark query, contact Brian Levine on 0800 652 8373 or email brian.levine@battens.co.uk 

View our trademark services here.