We’ve recently seen the start of caterpillar gate between M&S and Aldi, with M&S claiming that Aldi’s Cuthbert the Caterpillar cake is an infringement of their own Colin the Caterpillar trademark. Here we take a look at the dispute and why it’s important for businesses to protect their intellectual property.
Colin the Caterpillar first made his debut in 1990 and over the years has become hugely popular, so much so that M&S went onto release several variations of their classic caterpillar cake including: a Christmas Colin, a wedding cake range and his own brand of sweets. He even has his own Instagram account and recently found TikTok fame with his friend, Percy Pig.
Colin the Caterpillar is a large part of the M&S brand and the retailer has three trademarks in relation to Colin including the name “Colin the Caterpillar” and the product packaging. We’re interested to see the outcome of this dispute, particularly as the other supermarket caterpillar cakes seem to have been left out of it.
One thing that the dispute has highlighted is the importance for companies to trademark their brands and products, and what can happen if your product is too similar to another companies trademark.
Trademark disputes are something that we’ve been advising on recently and we’ve broken down the basics of what a trademark is and why they’re important.
What is a trademark?
A trademark is a piece of intellectual property which allows companies to protect their brand. It prevents other companies from using logos, slogans or signs that are the same as, or similar to your business or piggybacking off of your company’s success at a later date.
When starting a business, registering a trademark isn’t usually regarded as one of the most pressing or necessary things to do, but consider what would happen if you built up your business, only for someone else to trademark your name at a later date. All of your hard work could be taken away from you if you find yourself on the receiving end of a cease and desist letter.
Reasons to register a trademark
- It protects ownership so no one can duplicate your brand.
- It’s an asset which adds value to your business.
- It’s easier to search for your company on social media if it’s been trademarked.
How to register a trademark
You can register a trademark yourself through the government website, or you can instruct a solicitor to do this for you. A solicitor will be able to ensure the application is completed as fully as it can be and will make sure you’re not overlooking anything.
What happens if you don’t trademark your business?
If you launch a product or business without registering your trademark, you may find that either someone else has registered that trademark, or that someone else registers it at a later date either without knowledge of your brand or because they fancy a slice of your success. Either way, you could face having to rebrand your business entirely.
Imagine if the Colin and Cuthbert scenario was the other way around. If M&S hadn’t trademarked Colin the Caterpillar and Aldi subsequently trademarked Cuthbert the Caterpillar, this could potentially force M&S to forfeit their famous Colin the Caterpillar brand and all the hard work building up their product may have been a waste.
Trademark infringement
Trademark infringement occurs when:
- A party uses a mark identical to the registered trademark on identical goods or services; or
- A party uses a mark identical to the registered trademark on similar goods or services which creates a likelihood of confusion.
If your business does find that it is accused of trademark infringement, you’ll need to be able to show that your product is sufficiently different, or that there is no likelihood of confusion between the two products or brands.
One of the arguments that M&S may make is that there is likely to be confusion between Colin and Cuthbert. For this to succeed, the court would need to find that there is a likelihood that consumers would mistake Cuthbert for Colin. For example, if the packaging was removed and Cuthbert was placed out at a party, is it likely that guests would mistake Cuthbert for Colin and think that he had been purchased from M&S?
This argument may well be diluted by the fact that caterpillar cakes are seen in many other supermarkets and it may come down to the similarities in the prefixes and other distinctive elements, such as the product packaging.
Trademark infringement is something that will be assessed on a case-by-case scenario, but in any event, it can result in expensive litigation for both parties. This can often be avoided by registering your trademark from the outset which will put you in a much stronger position if another company later develops a similar product and will enable you to protect your intellectual property. Click here to get in touch and find out how we can help protect your business.