Copying, Caterpillar Cakes, and Camper Vans

In April 2021, Marks & Spencer (M&S) accused Aldi of copying its “Colin the Caterpillar” cake through the sale of “Cuthbert the Caterpillar.”’ The saga made global news late last year, before settling in February 2022. But would the dispute have gone quite so far in other countries?

Panelists at The Hungry Caterpillar – Colin vs. Cuthbert and a Look at How to Best Protect Cutting Edge Marks Inside and Outside the Trademark Arena—which took place on the virtual platform yesterday—addressed this question, alongside a review of both this case and another involving Volkswagen Aktiengesellschaft (Germany).

Setting the scene, Clair Lehr, partner at Edwin Coe LLP (UK) and moderator of the panel, said: “The proceedings for both infringement and passing off made global news, largely assisted by Aldi’s adventurous tweets on the detention and subsequent release of its ‘Cuthbert the Caterpillar’ cake.”

Michael Silverleaf, mediator at 11 South Square (UK), outlined the dispute, noting that M&S had alleged infringement of three trademarks and passing off and adding that it was a “surprising” claim for M&S to bring under the circumstances.

“In my view it was likely to fail,” said Mr. Silverleaf. “Attempts to protect the unusual shapes of the well-known KITKAT chocolate bar and TOBLERONE chocolate bar have had little success in the UK. Given the number of other caterpillar cakes on sale, the appearance of Colin was hardly unique.”

If M&S had sought registration in the United States, the company would have needed to show that the caterpillar cake shape in and of itself served as source identifier, according to Katherine Califa, partner at Foley & Lardner LLP (US).

“Given several decades of use and presumably at least some unsolicited press or look-for advertisements, it’s likely that M&S would have been able to get registration on the principal register,” said Ms. Califa.

Another panelist, Yan Zhang, partner at Beijing East IP (China), believes that M&S would not be in a strong position to pursue trademark infringement in China, because the retailer “may not have strong claims for the similarities of the marks and the likelihood of confusion.”

Distinctive Character

The speakers also discussed Volkswagen’s opposition to the registration of European Flipper / Pinball Factory GmbH’s (Germany) logo, which featured a camper van alongside the word “Cultcamper’.”

Volkswagen opposed the trademark before the EU Intellectual Property Office (EUIPO), citing its two 3D trademarks as the basis and using a Wikipedia article as evidence that its trademarks enjoyed a high degree of recognition within the relevant public. On appeal, the EUIPO’s Board of Appeal held that there was a likelihood of confusion in the case.

“Although the Board of Appeal had rejected Volkswagen’s claim that the evidence it submitted showed a high degree of acquired distinctiveness, it was able to reach essentially the same conclusion by taking into account the meaning of the words to the English-speaking public,” said Mr. Silverleaf.

The China National Intellectual Property Administration (CNIPA) would likely render a similar decision on the similarity of the marks, according to Ms. Zhang. However, she said that registering a 3D mark in China is challenging, and that CNIPA rejected Volkswagen’s earlier 3D marks in 2008.

“To register a 3D mark, the requirements of distinctiveness and non-functionality must be satisfied. In practice, only a tiny part of the 3D marks based on product shape alone were approved in China. Most of them are incorporated with relevant features of logos to enhance distinctiveness of the mark,” said Ms. Zhang.