HM Insights

The Very Litigious Caterpillar: Colin v Cuthbert

Even those outside the legal profession have been intrigued by the recent twitter spat between supermarket giants Marks and Spencer (M&S) and Aldi concerning their products Colin the Caterpillar and Cuthbert the Caterpillar. #SaveColin and #FreeCuthbert have gone viral!

With Colin first making his appearance on UK shelves in 1990 and with £15 million worth of sales to date this could be one very litigious caterpillar indeed!

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This social media exchange, though entertaining and comical to outside observers, stems from a sensitive area for many businesses: their intellectual property. Indeed M&S are so concerned that Aldi is allegedly "riding on the coat tails" of the success of Colin that they are seeking an injunction, similar to a Scottish interdict, in the English High Court to prevent Aldi from marketing Cuthbert.

The claim by M&S relies primarily upon three trade marks which they had registered in an effort to protect Colin. A trademark in respect of "Colin the Caterpillar" was first registered in the UK and EU in 2009 and a subsequent registration in 2020 included an image of Colin in his packaging. This means that Colin the Caterpillar enjoys intellectual property protection and M&S are entitled to raise an action for infringement of that right against anyone who attempts to use this trade mark without licence.

However, even in instances where a trade mark has not been registered, businesses can still rely upon legal protection from common law (i.e. that arising from case law rather than legislation) against "passing off". In effect even in the absence of registered protection, such as trade marks and copyrights, or where such rights do not cover the entire extent of the intellectual property the business is trying to protect, one business can prevent another from using a similar product or branding. This legal doctrine also appears to be being relied upon by M&S in the current case. However, the ability to benefit from this protection very much depends on the ability to prove that the business has built up a reputation and goodwill which is closely associated with the goods in question and that these are distinguishable from a generalised product which could be offered by competitors. Passing off actions are typically complex and difficult to pursue due to the high evidential burden on the pursuer to prove 1) that the product has built up such goodwill, 2) that there has been an infringement by the other party with a view to benefitting from this goodwill, and 3) that the business has suffered a loss as a result of the actions of its competitor.

Registering a trade mark, such as has been done by M&S, is a much more prudent course of action than relying on the common law. In essence a trade mark can be a sign, symbol, logo or words. Trade marks provide protection in respect of what has been registered throughout a particular territory regardless of whether or not the business has built up a reputation or good will associated with the product. This is accordingly a much faster and efficient method of a business protecting its intellectual property than relying upon the common law "passing off" protections.  Once a trade mark is registered the presumption is that the product is protected and the other party must demonstrate that their product is sufficiently dissimilar to escape these protections.

The question ultimately before the court in "Colin v Cuthbert" is whether the similarities between Colin and Cuthbert could lead to confusion in the reasonable consumer and whether Aldi is seeking to derive a benefit from that confusion. Aldi doubtless will seek to differentiate Cuthbert from Colin and will point to other similar "caterpillars" on the market by competitors which has not given rise to action by M&S. Indeed, some of Aldi's tweets already appear to be alluding to this line of argument.

M&S's position appears to be that not only is the name similar but the packaging and design of Cuthbert's face are so similar to that of Colin's, even more similar than that of other competitors, that it is reasonably foreseeable that the average consumer would be confused as to the difference between the two products. It is also telling that Aldi are marketing Cuthbert at roughly £2 below the price of Colin.

What is interesting is that apparently M&S are not yet seeking damages from Aldi. It may be that this is because it is difficult to quantify the loss that has arisen or it may be that there are wider public relations considerations at play in what is already a very public dispute. Time will tell how the High Court views the case but it is understandable that M&S have taken a pro-active approach in defending their intellectual property and their arguments may well be found to be convincing by the High Court.

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If you have any questions surrounding the protection of your own businesses brand or are concerned by any potential infringement our intellectual property team are on hand and always happy to assist.

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