M&S’s well-known claim against Aldi that alleged that Aldi’s ‘Cuthbert the Caterpillar’ cake infringed the Intellectual Property in M&S’s ‘Colin the Caterpillar’ and ‘Connie the Caterpillar’ cakes, has been withdrawn following settlement.
Whilst the terms of settlement are confidential, the dispute was due to see the High Court consider whether Cuthbert (1) infringed M&S’s UK trade marks for “Colin the Caterpillar”, “Connie the Caterpillar” and its figurative trade mark that related to the former cake’s standard packaging, and/or (2) if it constituted passing off of M&S’s products. This article briefly explains trademark infringement and passing off claims, and considers them in the context of M&S’s and Aldi’s dispute.
Trade Mark Infringement
Trade mark infringement occurs when an identical or confusingly similar sign is used in the course of trade (without the consent of the registered trade mark’s owner) for identical or similar goods or services that the trade mark is registered for.
A UK trade mark may therefore be infringed in the following circumstances:
(i) The infringing sign is identical to the registered trade mark and is used for identical goods and services that the trade mark is registered for.
(ii) The infringing sign is identical to the registered trade mark and is used for similar goods and services that the trade mark is registered for (and there is a likelihood of confusion on the part of the public, which includes a likelihood of association).
(iii) The infringing sign is similar to the registered trade mark and is used for identical or similar goods and services that the trade mark is registered for (and there is a likelihood of confusion on the part of the public, which includes a likelihood of association).
(iv) The infringing sign is identical or similar to the registered trade mark, the registered trade mark has a reputation in the UK, the use of the infringer’s sign is without due cause, and its use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the registered trade mark.
M&S’s trade mark infringement claim was based on points (iii) and (iv) above, namely that there was a likelihood of confusion by consumers between Colin and Cuthbert, and that Aldi’s product took unfair advantage of M&S’s trade marks (pursuant to section 10(2) and 10(3) of the Trade Marks Act 1994 respectively).
However, Aldi denied these allegations on several grounds, including the existence of other similar lookalike products on the market and that M&S had not taken any steps to prevent other third parties from selling similar, and similarly named, caterpillar cakes to Colin since 2011.
It is also common for a claim to be brought for passing off alongside a claim for trade mark infringement, especially in respect of lookalike products when the validity of the infringed trade mark may potentially be challenged.
Passing off occurs when:
— There is goodwill or reputation attached to goods or services.
— There is a misrepresentation by the defendant to the public (whether or not intentional) that leads or is likely to lead to the public believing that the goods or services offered by the defendant are the goods or services of the claimant.
— The misrepresentation by the defendant caused damage to the claimant’s goodwill.
The misrepresentation element of a passing off claim conventionally occurs at the point of sale and therefore takes into account the packaging of Colin and Cuthbert. However, M&S’s claim also included an allegation of “post-sale” passing off; a concept that was recognised in Freddy SPA v Hugz Clothing and others  EWHC 3032. This was because M&S alleged that the misrepresentation to consumers by Aldi also occurred when the unpackaged Cuthbert is presented to consumers, i.e. after the point of sale.
However, Aldi defended these allegations on similar grounds to M&S’s trade mark infringement claim, and also denied that the product is distinctive to M&S as caterpillar cakes appeared in cookbooks prior to Colin’s existence.
Whilst the Colin and Cuthbert dispute was not ultimately determined by the court, not only did the case raise some interesting legal issues, its extensive media and press coverage demonstrated the wider commercial and PR implications that often come into play.
Our Disputes and Corporate and Commercial teams are highly experienced in advising businesses on IP issues including trade marks and passing off. If you would like advice about protecting your intellectual property or if it’s alleged that you have infringed the intellectual property of another, please get in touch.