A rare event happened last week. The intellectual property world’s version of sighting Haley’s Comet. And with it, from the media heavens above, a meteor shower of mainstream news articles poured forth. Every regional and national news desk, the length of the land, was momentarily engaged with a trademark dispute. And the cause of all this IP fuss – a kids chocolate cake shaped like a caterpillar. What fun the Journo’s had with a reference point so relevant to any household with children. But, behind the puns and banter was a serious matter of alleged intellectual property theft.
If you missed this IP shooting star, here are the facts as we know them.
Not just any trademark dispute…
Marks and Spencer sell a cake called Colin the Caterpillar. It’s a very popular children’s birthday party cake. So popular is Colin that his fans know and ask for him by name. He has a sister cake called Connie. Colin is a thirty-year-old chocolate coated, sweetie-decked, sponge filled attraction costing around £7. No doubt a good earner for M&S as it’s taken out three trademarks to protect it including the name and packaging.
German Food discounter Aldi entered the kids cake market with Cuthbert (£5), a similar themed chocolate covered caterpillar. This was a step too far for M&S. They lodged an intellectual property infringement claim in the High Court last week to:
“…protect Colin, Connie and our reputation for freshness, quality, innovation and value.”
M&S want Cuthbert removed from the shelves of Aldi and to stop the retailer from riding “…on the coat-tails” of M&S’s good reputation with lookalike Cuthbert. M&S allege, in its claim (and will need to prove it to be successful) that Aldi is seeking to benefit commercially by bringing a confusingly similar product to market.
Several legs to stand on
Ignore the crazy cake-based fun for a minute and think through what M&S or any of your clients who might find themselves in a similar position, really want to protect. M&S has developed a strong brand of cake. That’s a fact. It’s a draw to their food stores. Kids ask for the product by name. So, when Mum and Dad prepare the birthday bash if they head to M&S chances are, they will probably pick up other party items at the same time taking their M&S spend way beyond the £7 of the iconic item itself. That’s good retailing. That’s a business interest worth protecting.
It follows that such cases are, not as some in the media suggest, “petty” but perhaps necessary to protect a legitimately and purposefully developed market. The three trademarks relating to the cake ably demonstrate what M&S believe the product means to them in terms of its distinctive character and reputation. And if they can successfully protect those attributes; they protect their revenue stream.
What about the others…
Whilst, Cuthbert has been temporarily removed from sale, Wiggles (Sainsbury’s), Curly (Tesco), Clyde (ASDA) and Cecil (Waitrose) are keeping a low profile and have declined to comment.
Imitation is no form of flattery in IP law.
OPUS Underwriting Limited
+44 (0) 203 920 9985
Written and researched by Ben Fairclough