Copycat-erpillars

Indeed, Colin has been so successful that it has faced numerous rival caterpillar cakes sold under names like Clive, Cecil and Charlie (amongst many others). The dispute with Aldi arose when it released a similar cake under the name Cuthbert the Caterpillar and M&S launched proceedings against the discount retailer. M&S claim that Cuthbert infringes a number of its trade marks and also amounts to a passing off of its rights. The claim relies on trade marks for the word COLIN THE CATERPILLAR but also a registration for the packaging that Colin comes in, as well as the shape of the cake itself. To succeed M&S will need to demonstrate that Cuthbert causes confusion amongst consumers (i.e. that consumers buy Cuthbert thinking it’s an M&S product, or is otherwise authorised by M&S) or that Cuthbert is free-riding on Colin’s reputation and thus results in an unfair advantage for Aldi.

Aldi is however no stranger to such ‘lookalike’ cases and its reputation for selling ‘lookalike’ products plays into their hands in cases such as this. Indeed Aldi was able to see off a claim by Morroconoil back in 2014. In that case Aldi was selling a ‘lookalike’ of Morroconoil but whilst the Judge noted the “cheeky” similarities between the products it was deemed that there was no confusion because, ultimately, consumers understand that Aldi sells lookalikes and thus are aware they are not buying the genuine article.

But, Aldi doesn’t always come out on top. In another 2014 case The Saucy Fish Co succeeded in obtaining a preliminary injunction against Aldi relating to the use of the term SAUCY on distinctive packaging for fresh fish. In that case The Saucy Fish Co (as with M&S) had registered trade marks for the design of its packaging and, ultimately, that proved decisive.

Ultimately, where the battle of the caterpillars is likely to turn is the issue of reputation, specifically the significant reputation that M&S had built up in Colin and the extent to which Aldi can be shown to be free-riding on the same. In considering this angle the court will look at how similar are the trade marks involved (both names and packaging), how big is Colin’s reputation, how similar are the products and ultimately, what was Aldi trying to achieve with Cuthbert? Was the discounter trying to free-ride off of Colin’s reputation or is it simply a coincidence?

M&S will be boosted by a recent decision north of the border, in Scotland. William Grant & Sons, makers of the Hendrick’s brand of gin, brought action against another discount retailer, Lidl, over the rebranding of its Hampstead gin. The rebrand meant that the two gins had similar bottles and labels. At a preliminary hearing Hendrick’s was able to show that it had a case for unfair advantage (i.e. free-riding) even though its arguments for confusion and passing off were rejected. This enabled Hendrick’s to obtain an interim interdict i.e. a temporary ban on Lidl from selling the products, pending a final trial. Whether Hendrick’s succeed at a final trial depends largely on evidence but brand owners, and M&S in particular, will feel that this decision offers them hope against the discounters.

What these cases all have in common is the importance of being creative when considering brand protection. Simply registering the name of a product (whilst still advisable) may not be enough in combating the discounters. Instead the businesses that have had, and are having, the most success are those that have a particularly distinctive get-up (i.e. product packaging, shape, labels etc.) which have been protected by securing appropriate rights. This shows the importance of thinking creatively when protecting important product lines and considering the full range of intellectual property rights that are available. Sometimes registered trade marks are the answer but often there are other rights that are equally, or more useful.