Caterpillar Cakes: Why legal protection of a shape is so difficult to obtain

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British retailers Marks and Spencer (M&S) and Aldi have finally called a truce to the trademark-based legal wrangle pitting their caterpillar cakes, Colin and Cuthbert, against each other. Although details of the settlement have not been made public, Aldi’s Cuthbert not supposedly returns in the same form. As Aldi tweeted, after announcing that a deal had been struck: Colin the Caterpillar, a rolled sponge cake decorated with frosting and milk and white chocolate chips, has been a mainstay of M&S for more than 30 years. The retailer claims to have sold more than 15 million to date. Since 2011, competing products with similar alliterative names have appeared: Asda’s Clyde, Tesco’s Curly, Waitrose’s Cecil, Co-op’s Curious and Cuthbert.

In April 2021, presumably because Cuthbert was thought to resemble Colin most closely of all the caterpillars, M&S launched a lawsuit to protect its trademark and force Aldi to pull the product from its shelves. The retailer claimed the similarity between the two cakes would lead consumers to think they were on the same level, allowing Cuthbert to ride on Colin’s ponytails.

The Colin v. Cuthbert focuses specifically on trademarks, as he was concerned with the distinctive characteristics of commercial assets. M&S holds UK registered trade marks in relation to Colin’s name and green packaging since 2009 and 2020 respectively, but these have not been breached. The problem for M&S is that its brand probably wouldn’t extend to the underlying idea of ​​a pain au chocolat with a smiley face on it. Ensuring the protection of the shape of a product can be quite difficult in trademark law – not to mention proving that a competitor has presented its products as someone else’s. The KitKat chocolate bar in the shape of four fingers and the shape of the london taxi are two examples of iconic shapes that did not succeed. One of the main reasons behind this is that the average consumer generally cannot make assumptions about the origin of products based on their shape when other graphic or verbal elements are absent.

pass

There have been cases in the UK where shapes and packages have attracted protection under what legal scholars call the passing off marketing law. pass offers legal protection against attacks on what is called the “goodwill” of a company. And it can be used to protect unregistered marks. Goodwill here is a legal concept that refers to the inherent value of a company’s brands – or in other words, the recognition of those brands by consumers and the additional earning power it generates. It is wronged when a trader suggests – through an erroneous description on the packaging or a parasitic copy of a well-known product – that his product or service has an association or connection with another trader, when it is not not the case.

In 2015, pop star Rihanna won her battle to stop fashion brand Topshop from using an unauthorized image of her on a t-shirt. She did this by convincing a judge that customers buying the top would think she had approved of it. The Court of Appeal ruled that the unauthorized use of his photograph amounted to deception. Allegations of fraudulent marketing are notoriously difficult to establish. If someone promotes their bottled drinking water company as “the De Beers of plain water”, they may be infringing the De Beers trademark, but a judge is unlikely to find that they are impersonates De Beers in a business sense. .

To win a fraud action against Aldi, M&S would essentially have had to prove that Colin had built such a reputation as a flagship – the same way Rihanna had as a music artist and style icon – that customers could recognize it without difficulty. The retailer would also have had to prove that Cuthbert was so similar to Colin that consumers, after opening the package, would be misled into thinking the two were somehow related.

Plus, the fact that so many supermarket chains now have their own version of a chenille cake – available in a variety of sizes and decorative elements – wouldn’t have helped establish that Colin is unique. M&S should have proved that in the minds of UK cake shoppers caterpillar has not become a generic shape for cakes. Additionally, Aldi Twitter campaign – and the wide publicity generated by the lawsuit – will also have helped to clear up any confusion among consumers. Finally, it would have been difficult for M&S to assert that Aldi’s caterpillar cake had damaged or had the potential to damage Colin’s goodwill, i.e. his power to attract and retain customers. cake buyers. The market for caterpillar patties is saturated: there are so many choices.

The settlement agreed between the two parties means that there was no court judgment on the facts. The terms of the settlement remain confidential. It is unclear whether liability has been admitted by Aldi for the harm allegedly suffered by M&S. It’s rare for a party in a colony to walk away thinking I’ve won. Generally, there are no winners or losers in a negotiated resolution. This case, however, will have seen M&S and Aldi benefit from the kind of marketing exposure that money cannot easily buy.

Stavroula Karapapa is Professor of Intellectual Property and Information Law at the University of Essex. Alexandre Antoniouis a lecturer in media law at the University of Essex. (This article was originally published by The Conversation.)

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