M&S have lodged a well-publicised intellectual property claim in the High Court against Aldi to protect Colin the Caterpillar. M&S allege that Aldi’s Cuthbert the Caterpillar cake is a copy that infringes their trade marks for Colin the Caterpillar.
Trade marks are signs that distinguish your businesses’ goods or services from others in terms of words, designs, numerals, packaging or shapes. If you register a trade mark you can stop other people from using it without your consent, and a registered trade mark is, arguably, the most powerful right available for brand owners to rely on.
Lookalike products copy the look of a product and its packaging, but not the brand name or logo. It is for this reason that lookalike products are difficult to deal with; they avoid the typical registered intellectual property rights relied upon by brand owners who often register brand names but rarely product designs. However, if you register a trade mark which protects the packaging designs (which M&S have) there is scope to claim trade mark infringement if a lookalike product, like Cuthbert, emerges in the market.
M&S’s claim is brought under section 10(3) of the Trade Marks Act 1994 which affords brand owners of well-known trade marks protection against lookalikes that take unfair advantage of, or are detrimental to, the distinctive character or repute of a well-known trade mark. This can be a powerful tool for tackling lookalikes provided that the brand owner can demonstrate that they own a mark with reputation i.e. that Colin the Caterpillar is so well-known that consumers would recognise it as being an M&S product without any cues.
Whilst this is easier for large corporations like M&S, the same cannot be said for smaller businesses. Despite the fact that M&S may be able to demonstrate Colin’s reputation given that Colin the Caterpillar is so iconic, trade mark cases are especially difficult when based on shapes and designs of products. For example, Toblerone successfully protected their famous triangle shaped chocolate, but Nestle were unable to protect the shape of the four fingered KitKat bar.
It will be interesting to see whether M&S will be successful. Aldi’s current packaging has Cuthbert behind bars, and we will have to wait to see if he can break free.