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Wynne-Jones IP’s Victor Caddy looks at the recent verdict in the case of the clashing cakes – and what it says about IP protection in this sector.
By now, you probably have heard that the big fight is off.
Colin the Caterpillar, the reigning champion trained by Marks & Spencer, will not get to defend his crown against Cuthbert, the challenger trained by Aldi. The two warring caterpillars have settled their differences – or should that be similarities?
The agreement is confidential so we will never know what happened. However, Colin is reported to be very pleased with the outcome and Cuthbert is doing what caterpillars do best… He is changing his appearance. This suggests there has been a climb down by Cuthbert, but maybe it’s more accurate to say he’s crawled onto a different branch and is feeding off a different tree.
Legally, Colin had many things going for him. He had over 30 years of experience and his career earnings to date were very large. Although almost every other supermarket has an own brand caterpillar cake these days, the other grubs all kept a respectful distance from Colin. Not so, Cuthbert. Cuthbert had little respect for reputation; he sized up his opponent and looked for a way to crawl in under Colin’s guard.
This is, of course, what the owners of lookalike products do. They look for chinks in the armour and seek ways of avoiding infringement by designing around the intellectual property in a product. If you are a brand owner, it is difficult to know what to do.
In the case Colin v Cuthbert, the cakes themselves were actually quite similar in appearance, but Marks & Spencer’s product had been around too long to be protected by design registration. Although it might have been possible to register the cake as a three-dimensional trade mark, there would have been practical difficulties in doing so.
For one thing, M&S would have had to be able to show that consumers had been educated to the idea of Colin cakes being trade marks (i.e. badges of origin) rather than simply cakes shaped like caterpillars.
And then there would have been the additional problem of the similarities between the cakes not being visible at the point of sale because of the packaging. The similarities between them would only become properly apparent if you bought one of each and opened them both at the same time – something that is very unlikely to ever happen, of course.
The issue of lookalike products affects many commercial sectors. For example, it’s prevalent in the board game industry where, because intellectual property does not protect “an idea”, it’s relatively easy to produce a game that’s identical to an existing one and avoid any intellectual property infringement by creating a new name and new packaging.
Discount supermarkets like Aldi exploit similar loopholes, but go one step further by proactively using what they are doing as a marketing hook. Hence Aldi’s use of the strap line “like brands, only cheaper”.
When news that Colin and Cuthbert had begun the lengthy process of shaking legs, Aldi quickly tweeted: “Getting out early on good behaviour, keep an eye out for Cuthy B this Spring x #FreeCuthbert”.
It is enough to drive any self-respecting caterpillar to the bottle… And so it has proved to be in Colin’s case. Colin and Cuthbert settled in November (but the news has only just become public) and in December, M&S launched another claim against Aldi; this time over the latter’s clementine gin liqueur, which M&S claims is “strikingly similar” to its own.
We wish Colin well but urge moderation. We do not think he should expect Cuthbert to turn over a new leaf any time soon.
Victor Caddy is Trade Mark Attorney and Director at Wynne-Jones IP. He can be contacted via email at firstname.lastname@example.org.
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