Colin in tiers: has Aldi committed a tort(e)?

Cake has not caused so mousse hysteria since Deborah stole Howard’s custard in Season 4 of Bake Off. For those of you who missed the Twitter showstopper being baked by Aldi’s social media team over the weekend, Marks & Spencer is suing Aldi over its alleged abuse of Colin the Caterpillar.

Chocolate caterpillar cakes themselves are not protected by trademarks. Marks & Spencer has a UK and EU trademark over the name “Colin the Caterpillar” and the packing of the cake. Aldi sells a similar product called “Cuthbert the Caterpillar.” They’re not the only supermarket to make a chocolate covered caterpillar cake with a chocolate face and chocolate feet. Tesco sells Curly/Calli, Asda sells Clyde, Co-Op sells Charlie and for some absurd reason, Sainsbury’s sells Wiggles.

Suing over trademarks can be a technical challenge. The person suing kneads to show that the goods are likely to be confused by consumers. Just because Aldi is using a different name for its caterpillar cake does not mean that Marks & Spencer does not have a case. The legislation behind trademark infringement states that marks which are similar to protected marks can be infringing if they relate to the same product.

Marks & Spencer have said that they are raising a claim of passing off. Passing off is separate common law violation (meaning the law comes from case law rather than statute). To sustain a claim for the tort of passing off, Marks & Spencer need to show:

• That goodwill is attached to their Colin trademarks
• That Aldi misrepresented Cuthbert so that the public thought that it was made by Marks & Spencer
• That Marks & Spencer lost out on a slice of sales as a result.

The general premise behind Marks & Spencer’s claim for passing off is that Aldi sold Cuthbert cakes because of Marks & Spencer’s existing goodwill from its customers.

It doesn’t matter whether Aldi intended to cause this fake cake heartache. What matters is whether the public are confused about the baker of the cake they are eating. There is debate over how hard this will be to prove. On one hand, we tend to know if we’re in the Percy Pig shop or the fantastic middle aisle shop. These are own brand items. They are not sold in different stores or independent retailers. On the other, if you didn’t buy it but  you’re at a party and you have a slice of caterpillar cake and you don’t think that it’s up to scratch, will you think less of Colin assuming that it’s him?

Perhaps more interesting than the actual claim is Aldi’s response to the suit. Aldi launched a #FreeCuthbert campaign and are to release Cuthbert in new packaging with Cuthbert behind bars. Their feed has also been full of sharp comments and jokes with the other supermarkets. It’s attracted a feast of attention. Marks & Spencer may end up with chocolate cream on their face. To substantiate a claim for passing off or a claim for damages under the Trade Mark Act, they will have to show that they suffered a loss. If sales increase as a result, then it will likely reduce a claim for damages. There are other options (such as seeking an injunction or accounting of profits) but these are also not without their challenges.

Another complicating factor is that Marks & Spencer have been flaky and prior to now they have not tried to beat out the competing caterpillar cakes from supermarket shelves. Can Marks & Spencer have their cake and eat it? Protection cannot be given if something becomes generic. Their delay may also hamper their ability to seek an injunction. Given the proliferation of chocolate caterpillar cakes, it will be interesting to see whether the court considers Marks & Spencer to be star baker and worthy of protection.

However the case goes Colin, muffin compares to you.

If you would like further information on the topic discussed in this blog, please contact Lottie White by email: lwhite@gilsongray.co.uk or by phone: 0141 530 2038, Derek Hamill by email: dhamill@gilsongray.co.uk or by phone: 0141 530 2022 / 07973 924 333. You can also view Derek’s profile by clicking here.

The information and opinions contained in this blog are for information only. They are not intended to constitute advice and should not be relied upon or considered as a replacement for advice. Before acting on any of the information contained in this blog, please seek specific advice from Gilson Gray.