Caterpillar Cakes War

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It’s getting nasty in the battle for a slice of the Caterpillar cake market.

Following ALDI’s launch of their own brand Cuthbert the Caterpillar birthday cake, M&S has issued legal proceedings against ALDI alleging infringement of its Colin the Caterpillar trade marks registered in class 30 for confectionery and similar goods. The cakes look very similar, as does their packaging.

Legal fisty cuffs between supermarkets over own brand products is nothing new. What makes the dispute between M&S and ALDI interesting is that the claim is brought under section 10 (3) of the Trade Marks Act which affords owners of well-known trade marks protection against third parties using an identical or similar trade mark in manner which takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the well-known trade mark.

M&S is seeking to argue that the trade mark Colin the Caterpillar is in the same league as, for example,  Apple, Visa or MacDonalds and that use of a similar name takes undue advantage of or is detrimental to the distinctive character or reputation of their mark.

Central to M&S’s argument is that theirs is a superior product and that ALDI, by using a similar trade mark, seeks to trade off the back M&S’s reputation for quality products when, in M&S’s opinion, ALDI’s product is inferior. Essentially, M&S allege that ALDI are free loading on the back of its mark.

It will be interesting to see how M&S advance their case and what evidence they bring forward to support it, as the test as to whether there is sufficient reputation to afford the mark protection under section 10 (3) requires subjective analysis.

In two separate but infamous cases, Visa succeeded in preventing the use of the name Visa for condoms whereas Ever Ready, the well-known battery manufacturer, failed to establish that it had sufficient reputation to prevent use of the name for the same products.

To succeed in stopping ALDI selling Cuthbert the Caterpillar cakes, M&S will have to demonstrate that Colin the Caterpillar is known to a significant portion of the cake buying public and in the same league as Visa, not Ever Ready. Will ALDI have their cake and eat it, or will Colin vanquish Cuthbert in the cake wars? We’ll post further on any developments in the case when they are made public.

If you require any advice on trade marks, our IP team will be happy to help.

Stephen.oliver@buckles-law.co.uk

Nicole.hirst@buckles-law.co.uk