In what's been a trying time for those attempting to watch their waistlines, the news has been awash with details of the dispute between M&S and Aldi over their chocolate covered caterpillar cakes. There's no doubt that both caterpillars are equally delicious, so what's the issue here?
The most popular question on social media seemed to ask why Aldi’s Cuthbert was singled out when there’s a myriad of other imposter caterpillars roaming the aisles? To answer the question, it’s worth looking at M&S’s registration #3509740, which depicts Colin resplendent in his green packaging with his sweet-adorned back on show. Whilst it isn’t known exactly why M&S decided to send the lawyers after Cuthbert, a look at the various caterpillars would suggest that the design of Cuthbert was especially close to Colin. Aldi have some history here: they’ve built a successful business offering cheaper alternatives to the most popular products. Whilst businesses cannot simply copy a product without fear of repercussions, they can launch a similar product and use some of the key visual indicators from the leading brands to draw people in. Sometimes it’s a simple play on words, from the tell-it-likeit-is ‘Mint Sticks’ instead of Matchmakers to the slightly subtler ‘Seal’ biscuits which happen to look like Penguin bars, but other times it’s a far more comprehensive ‘inspiration’. When a company has spent time and money building brand recognition and significant goodwill in their product, it’s understandable that they’d want to stop a rival from benefitting from that goodwill. This will be the crux M&S’s argument: that Aldi are benefitting from the goodwill that’s been built up over the many years Colin has turned up at parties. If the products are almost identical, then there’s a risk of confusion between the two products. Then there’s the reputational risk: if Cuthbert doesn’t pass the taste test expected of a M&S cake – and you thought you were tucking into Colin – then you may never buy a cake from M&S again. Whilst it’s been convenient for the press to paint M&S as the bad guys, the fact is they had little choice. For protection to be maintained, a trademark owner must be seen to be diligently acting against those who infringe upon it. Failure to do so can weaken your rights. If you allow one close imitation, why would you then stop another? Had M&S decided to let Cuthbert go unchallenged, it could have led to other caterpillars springing up – and then the distinctiveness of Colin is lost. However, their failure to act on the other caterpillars may prove to be their undoing for the reasons outlined above. If this teaches us anything, other than the fact that we love a good scrap over Swiss rolls, it’s the importance of doing your own due diligence before launching your brand. You don’t want to find out down the line of another brand, formally protected or otherwise, like your own. Often there’s circumstances which allow two similar products to happily co-exist, but it can get very complicated. One way to avoid this situation is to perform searches before you launch your product. A search of the UK trademark register will show existing applications or registrations that are identical or close to your brand. Coupled with your own due diligence in the form of social media and Google searches, you can be confident launching your product without stepping on anyone’s toes. Our costs for performing these searches begin at £500 (plus VAT) and take around a week – this may be an outlay you hadn’t considered at launch but given the costs of rebranding, paying out costs from an infringement case or destroying your existing stock, it’s worth considering. As for Colin vs Cuthbert? Neither for me, I’m a Percy Pig chap all the way.
