Marks and Spencer Legal Issues

Supermarkets reach settlement in high court after M&S lawsuit against Aldi over competing Cuthbert pie In April 2021, likely because Cuthbert was considered the most similar to Colin, M&S filed a lawsuit in April 2021 to protect its intellectual property and get Aldi to remove the product from its shelves. The retailer claimed that the similarity between the two cakes would lead consumers to think they were on the same level, allowing Cuthbert to ride on Colin`s coat tails. Colin v. Cuthbert is specifically concerned with trademarks, since it focused on the distinctive characteristics of industrial assets. M&S has owned trademarks in the UK since 2009 and 2020 respectively in relation to the Colin name and green packaging, but these have not been infringed. Last week, it was revealed that retail giant Marks & Spencer has filed a lawsuit against German supermarket Aldi for its prestigious Colin the Caterpillar cake. An intellectual property lawsuit has been filed in the UK High Court, with M&S claiming its product had been infringed and similarities between the economy brand`s Cuthbert the Caterpillar cake damaged M&S`s reputation. Marks & Spencer reached an agreement with Aldi after a lawsuit was filed to protect its beetle-shaped hake cake on more sold. M&S had appealed to lawyers because of concerns that the chocolate cookie roll competing with German discounter, Cuthbert, had imitation appearances at birthday and picnic parties. The names can be acoustically and visually different, and perhaps even conceptually different, but as M&S argues, they have certain aspects in common, for example, they start with the same letter and consist of two syllables followed by «the caterpillar.» The fact that M&S relies on these particular characteristics to support a «brand family» argument highlights potential similarity weaknesses in the case of M&S.

Moreover, it is difficult to see how the common characteristics on which M&S is based are perceived by consumers as indicators of commercial origin, especially since other products with these characteristics were available on the market before Cuthbert. Colin, the caterpillar whose name has become known on social media in recent weeks as a potential participant in the anniversary events of the Downing Street lockdown, made his debut in 1990. M&S has three brands regarding its caterpillar cake, including the words «Colin the Caterpillar» and packaging. As regards word marks, M&S submits that `Cuthbert the Caterpillar` is similar to its registered word marks (`COLIN THE CATERPILLAR` and `CONNIE THE CATERPILLAR`) and is used for goods identical to those registered word marks. In terms of similarity of signs, it is unlikely that the element «LA CATERPILLARE» will matter much, as this element describes the product, is widely used by other products on the market and consumers tend to pay more attention to the first word of a brand. The dominant element of the marks is therefore likely to be the names `Colin` and `Connie` and the High Court`s assessment will focus on the similarities with `Cuthbert`. M&S`s chocolate caterpillar was the first of its kind to hit our supermarket shelves more than 30 years ago. Therefore, it`s no surprise that the company has taken steps to protect the identity of the pie by registering UK trademarks in 2008 and more recently in 2020. Colin`s first application was successfully registered in April 2009, allowing M&S to bring an infringement action against any other person who attempted to use the name «Colin the Caterpillar» in Class 30 for various types of food. More recently, M&S has gone one step further and protected cake packaging as a brand. In doing so, they have further protected the caterpillar cake and it will be interesting to see how much weight the High Court attaches to this brand. Goodwill here is a legal term that refers to a company`s ways of attracting people`s habits.

Harm occurs when a professional suggests – by an erroneous description on the packaging or a parasitic copy of a known product – that his product or service has a link or a link with another professional when this is not the case. What is immediately apparent from M&S`s complaint documents is that the discrepancy appears to be the main plea, with trademark infringement being invoked as a secondary plea. M&S`s claim of trademark infringement is based on three registered trademarks: two word marks consisting of «COLIN THE CATERPILLAR» and «CONNIE THE CATERPILLAR», and a figurative mark covering the outer packaging of the product for goods in Class 30. Supermarket rivals Marks & Spencer and Aldi, which have once been dubbed the «caterpillar battle» by an intellectual property partner, have been in dispute over the brand name of their respective chocolate caterpillar cakes, Colin and Cuthbert. Aldi, which is in another legal battle with M&S over an illuminated Christmas gin, has hinted that Cuthbert, which was featured as a stuffed animal in its stores at Christmas and as cake last spring, will return though. But the popularity also led to the appearance of many similar confectionery based on larvae among competing retailers. Tesco has Curly, Asda has Clyde, Waitrose is Cecil and Sainsbury`s are starting a new chapter with Wiggles. Only Cuthbert appears to have crossed the line, which led to legal action by M&S. Given the above, it appears that M&S will try to rely on its trademarks to protect caterpillar cake. Their records may be easier to enforce and rely on the common law to protect their reputation in the pie. To support this argument, M&S must prove that Colin`s appearance is so well known and widely accepted that any consumer would identify the caterpillar as an M&S product, leading to misrepresentation or confusion in the marketplace.

The supermarket chain has filed a lawsuit against Aldi`s own brand of caterpillar cakes, Cuthbert. Companies often try to protect as trademarks certain signs that help them distinguish their products and services from those of their competitors, such as brand names, logos and slogans. Together with patents (which protect innovative technical solutions) and copyright (which protects creative or intellectual works such as books and music), they constitute a form of intellectual property. M&S filed a lawsuit against the German discounter in April 2021, accusing its competitor of copying the design of its Colin the Caterpillar cake to force Aldi to remove its Cuthbert the Caterpillar cake from the shelves and agree not to sell anything similar in the future. The Financial Reporting Council Lab has been launched with two new publications signaling market change in supply chain issues.