Quickly becoming the “case of the century”, and at the very least “trial of the year”, Colin vs Cuthbert has got everyone talking. Heck, even Judge Rinder has been weighing in on the issue.
M&S lodged their trademark infringement claim with the High Court last week, claiming that Aldi has benefited from M&S's reputation.
Aldi have been weathering the storm with a first-class performance on social media and witty quips. Nevertheless, Aldi is no stranger to intellectual property lawsuits. In 2014, they fought off a claim brought by Moroccan Oil for allegedly infringing intellectual property rights by selling its own brand “Miracle oil”. Icelandic Seachill took on the supermarket discounters later the same year and that matter settled out of court. In 2018 Heck and Aldi had a tiff over the similarities between their chicken sausage products. In 2019, Aldi delisted its Moo Gourmet Yoghurt after claims by the Collective that the products looked too similar to their own.
What’s this litigation really all about?
M&S is arguing that the similarity of Aldi’s product leads consumers to believe they are of the same standard and seeks to “ride on the coat-tails” of M&S’s reputation.
M&S has three trademarks relating to Colin, which the retailer believes means Colin has distinctive character and reputation.
The causes of action appear to be in trademark infringement and “passing off”. Both registered trademark law and the tort of passing off protect trademarks, but they do so in different ways; the latter having far wider application and encompasses a greater spread of unlawful conduct.
Once a trademark has been officially registered, rights are conferred on the owner of the mark under the Trade Marks Act 1994 (TMA 1994), including the right to prevent unauthorised use of that trademark by third parties in respect to the goods or services specified on the register.
Under s10(4) TMA 1994, a mark is used if it:
- affixes to goods or the packaging thereof;
- offers or exposes goods for sale, puts them on the market; or
- stocks them for those purposes under the sign, or offers; or
- supplies services under the sign;
- imports or exports goods under the sign; or
- uses the sign on business papers or in advertising.
To establish that there has been a trademark infringement it must be shown that:
- the mark was used in the course of trade or business (i.e. it must be used in the course of a commercial activity with a view to gain and not one which is simply a private matter); or
- the use falls within one of the infringing acts prescribed by TMA 1994.
Trademark infringement is made out by way of:
- identical marks on identical goods and services;
- identical or similar marks for identical or similar goods and services; and/or
- conflict with a mark of repute.
Identical marks on identical goods/services
If a third party uses a mark which is identical to a trademark registered by another individual on goods or services which are identical to those which the registered trademark is used for there will be an infringement. Minor or insignificant modifications, even if noticeable by the average consumer, will still be classed as identical.
Identical or similar marks for similar goods/services
This is again, relatively self-explanatory and applies where a third party uses a similar or identical mark on similar goods or services (think counterfeiting). However, to constitute an infringement this must result in:
- the possibility of the public being likely to be confused as to the origin of the goods or services;
- the possibility of association between the two marks.
In determining whether there is an infringement the court will consider:
- how widely the trademark is recognised on the market for the goods or services it represents;
- the association between the two marks;
- the similarity between the two marks and the goods or services.
Conflict with a mark of repute
This applies to circumstances where an identical or similar mark is used on dissimilar goods or services to that of the registered trademark. In order to constitute an infringement the mark must be shown to have a reputation or standing within the UK. Further, one of the following criteria must also be met:
- that an unfair advantage is taken of the registered mark;
- that there has been a detrimental effect to the distinctive character and reputation of the registered trademark.
An unfair advantage means that the infringer has attempted to align itself with the registered trademark and has exploited the goodwill associated with that mark. I.e. in this instance M&S state that they wish to protect “Colin, Connie and our reputation for freshness, quality, innovation and value.”
To establish a detrimental effect to the distinctive character of the registered mark it must be shown that the mark’s association with certain goods or services is no longer immediately recognised.
Passing off is similar to trademark infringement but applies to protect unregistered rights associated with a particular business, goods or services. The tort of passing off protects the goodwill of the business in relation to their goods and services. “Goodwill” is basically a brand’s reputation which has been built-up in relation to specific goods or services and accordingly attracts customers to it.
There is no statutory guidance in this area of law. Instead, a potential claimant must make out the 3 elements, distilled from Reckitt & Colman Products Ltd v Borden Inc  1 WLR 491, (the "Jif Lemon” case), namely:
- That they possess a reputation or goodwill in their goods, name, mark, or other identifying feature that associates the public with those particular goods, and distinguishes them from others;
- That there has been a misrepresentation by the other party which has led others, or is likely to lead others, to believe the goods are actually those of the claimant, and;
- This misrepresentation has caused damage to the claimant’s reputation or goodwill.
The burden of proof is with the claimant to show on the balance of probabilities.
Therefore to succeed in passing off, M&S will need to be able to prove that the appearance of its Colin the Caterpillar cake is so well known that it has its own goodwill i.e. consumers would recognise it as being the M&S product without any other prompts.
It is often quite difficult to prove there is goodwill in a product or service and M&S would have to prove that a specific feature, name or similar trait, attracts the consumer to that particular brand. This is what enables consumers to distinguish between the different brands on the market.
If M&S succeed at this limb, they will then need to demonstrate that Aldi’s Cuthbert is so similar that it is misrepresenting to consumers that it is in some way associated with Colin the Caterpillar, and therefore M&S’s product.
The bar is high and mere confusion alone will not be sufficient to prove misrepresentation. The leading case law states that confusion will only amount to misrepresentation if it's "really likely" to divert business away from the business of the possessor of the goodwill.
How can Aldi fight this?
Under s 11 of TMA 1994, the defences available to an action for trademark infringement include:
- Use of another registered trademark;
- Use of own name and address;
- Use of certain indications i.e. the kind of goods or services, the quality and quantity of the goods or services, the value or geographical origin of the goods or services;
- Use of intended purpose i.e. where it is necessary to use the mark to indicate the intended purpose of goods or services;
- Use of an earlier mark in the course of trade in a certain area e.g. the EU trademark which has existed prior to the filing of a UK trademark.
In respect of the most likely allegation, conflict with a mark of repute, Aldi’s strongest points are:
- that no unfair advantage has been taken of the registered mark;
- that there has been no detrimental effect to the distinctive character and reputation of the registered trademark;
- the product is lacking in distinctive character.
These points are all the more weightier given that Asda, Morrison’s, Sainsbury's, The Co-op and Tesco are all selling similar caterpillar cakes.
The impact, thus far, could be classed as the opposite of “detriment” given that Colin is flying off the M&S shelves.
The following are available as a defence to a passing off claim:
- The claimant’s mark, slogan, etc is not distinctive;
- The mark, slogan, etc has become generic;
- The defendant may be innocently using his or her own name;
- There is no goodwill in the mark;
- The Claimant has consented or encouraged the use of the marks;
- Damages or loss are not made out.
Again, Aldi’s best points relate to the absence of misrepresentation and the lack of consumers who would be under the misperception that Cuthbert the Caterpillar and Colin the Caterpillar were associates and that the former was an M&S product. Nonetheless they could also argue that there is a lack of goodwill, a lack of distinction and that the mark is generic.
In any event, whether this matter makes it way before a judge or is settled out of court remains to be seen. Let’s watch this space as the drama unfolds because after all "this is not just any court case, this is... #FreeCuthbert"
AYESHA SMART © 2021
33 BEDFORD ROW
NOTICE: This article is provided free of charge for information purposes only; it does not constitute legal advice and should not be relied on as such. No responsibility for the accuracy and/or correctness of the information and commentary set out in the article, or for any consequences of relying on it, is assumed or accepted by any member of Chambers or by Chambers as a whole.