Colin vs Cuthbert – trade mark infringement

Marks and Spencer (“M&S”) have commenced legal action against Aldi, arguing that Aldi’s Cuthbert the Caterpillar cake infringes the trade mark of its Colin the Caterpillar cake.

Background

M&S first launched Colin the Caterpillar in 1990 and the cakes have become hugely popular in the UK. M&S have stated that the similarities between the two cakes mean that consumers may think that the Cuthbert the Caterpillar cake is of the same standard as the Colin cake and associated with M&S’s reputation for high-quality food.

Trade mark infringement claim 

M&S has three trade marks against the Colin cake, which it believes means that Colin has acquired and retains a distinctive reputation. When a trade mark is used the owner acquires ‘goodwill’ in relation to that mark. Goodwill is the quality or reputation which causes a customer to use one particular good or service rather than any other. The owner of a trade mark can take legal action against another trader who uses that mark in a way which confuses the customer or the public into believing that his goods or services are those of the owner of the mark. This action is defined as ‘passing-off’.

What is a trade mark?

Trade marks provide important protection for your brand and your business and are a sign, capable of distinguishing the goods or services of one undertaking from those of another. It is essentially a “badge of origin”.

A sign must not have already been registered in respect of the goods or services to which it relates, and it must not be descriptive of the goods or services to which it relates.

Securing a trade mark in the UK

To secure trade mark protection in the United Kingdom, an application process is required to be undertaken through the United Kingdom Intellectual Property Office. The process is commenced by filing an Application Form. The application is then examined and, if it is accepted, it will then be published. Third parties are then afforded an opportunity to oppose the registration. If the registration process is successful, a United Kingdom Registered Trade Mark will be obtained and this can be indicated by placing the ® symbol next to a mark. The process takes on average five months.

Protection lasts indefinitely in renewable 10 year periods. However, such a registration would only allow acts of infringement undertaken within the United Kingdom to be pursued. Saying this however, a registration in the United Kingdom allows the symbol to be placed next to the mark wherever it is used in the world and, since most laypersons assume this means the same is protected worldwide, a registration in the United Kingdom can prove to be a strong worldwide deterrent to infringers. 

If you require legal assistance regarding trade marks, then please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services team on 01908 660966 / 01604 828282 or email christopher.buck@franklins-sols.co.uk who will be happy to assist.