Colin v. Cuthbert: The Case of the Caterpillar Cake Copy-Cat

Why are these people dressed up as caterpillars? Why are they eating cake? Why are they fighting?

If you are like me, you have been toiling over this mystery for several months. It has caused me many sleepless nights. I am sure you are all dying for an explanation. Luckily for you, I have investigated the situation and uncovered the truth. No need to thank me; the honour is to serve.

This ad is the result of a legal battle that started in 2021. In short, Marks and Spencer sued Aldi for passing off a caterpillar cake. What followed was a social media battle and then an eventual settlement in 2022. This case is interesting not only because of the UK’s weird obsession with cakes shaped as caterpillars (see the link below), but also because it examines the issue of knock-off brands in discount stores.

Marks and Spencer (M&S) is a British multinational retailer with several stores in the UK. In 1990, M&S introduced Colin the Caterpillar, a chocolate sponge roll cake decorated to resemble a caterpillar. Colin has become a cultural phenomenon in the UK. M&S sells about five million Colin cakes per year along with additional Colin products. It is a common birthday cake for children in the UK, where Colin often makes an appearance in person. Colin even has an Instagram page with close to 63,000 followers. It is a bit surprising that after 30 years of being a caterpillar, Colin has not yet turned into a butterfly, but I am not familiar enough with caterpillar cake biology to comment further on that.

Colin the Caterpillar

The popularity of Colin the Caterpillar has inspired several clones. One of them is Cuthbert the Caterpillar, sold by Aldi. Aldi is a German-owned supermarket chain. Aldi has stores in multiple countries, including in the UK, and sells good at generally lower price. We indirectly came across Aldi in the 20 November class when we discussed the Pirate Joe’s vs. Trader Joe’s conflict. Trader Joe’s is a subsidiary of Aldi.

Cuthbert the Caterpillar

Aldi has a reputation for its knock-off products. Stepping into an Aldi is similar to entering the Bizzarro World. From afar, all the products looks the same like in any typical supermarket, but on closer inspection, you start to see the differences. To be fair, Aldi is not the only store which does this in the UK. Other stores include Tesco and Lidl. In the wake of Colin’s popularity at M&S, a handful of stores now sell a caterpillar cake.

In 2021, M&S filed a lawsuit against Aldi with hopes to take Cuthbert off the market. In response, Aldi started the #freeCuthbert social media campaign, which became a hit in the UK. The hashtag trended no.1 on Twitter on two occasions, and made about 500 million social impressions (I don’t know what that means, but I guess that’s okay). The parties settled in 2022, and Cuthbert make his way back on the shelves, but with a small change to his appearance.

#freeCuthbert

The lawsuit revolved around trademark and passing off, but I shall focus on the passing off. Although this took place in the UK, they follow the same common law elements of passing off:

1. Is there goodwill by the plaintiff?
2. Is there deception due to misrepresentation by the defendant?
3. Is there damage to the plaintiff?

I don’t intend to do a full legal analysis here, but I do want to examine two points that this particular case brings up: acquiescence of goodwill and the deception of knock-off products.

Acquiescence of goodwill:

In Kirkbi AG v. Ritvik Holdings Inc., para 69, the SCC holds that the plaintiff cannot establish goodwill because the distinctiveness of the product is “now common to the trade.” The BCCA held in Edward Chapman Ladies’ Shop Limited v. Edward Chapman Limited that:

A plaintiff’s acquiescence in a defendant’s use of a name or mark can result in the defendant’s acquiring goodwill of his own in the name or mark so that it becomes unconscionable to allow the plaintiff to bar the defendant’s continued use of that name or mark in a passing-off action.

This defence seems to apply to Aldi and Cuthbert. It is possible that M&S’s delay to file suit against Aldi is a sign that they acquiesced the goodwill of the caterpillar cake mark and get-up. However, Aldi’s position in 2021 wanted to take that further. According to an article written by Mark Linsner (linked below), an associate of the London firms Bristows, Aldi was trying to make a novel 3rd party acquiescence defence. Alid argued that not only did they make constant use of the caterpillar cake mark and get-up, but so did multiple other supermarkets. It was their collective actions that made M&S’s IP “now common to the trade.” Of course, this case settled and we cannot know if the court would have accepted the 3rd party argument.

Deception of knock-off products:

The deception is not limited to caterpillar cake, but the whole slew of products I mentioned earlier. In the Pirate Joe’s case, Pirate Joe was a knock-off store and lost their case in the USA. However, knock-off products in these discount supermarkets remain untouched. What is the distinction? I think our examination of the two “Test Persons” helps explain this action. First is the “customer in a hurry.” Would a customer in a rush confuse the two products if they were side by side? If a single store sold Colin and Cuthbert side by side, yes, that would be a likely outcome. However, both caterpillars are unique to their individual stores. The customer in a rush who goes to M&S will only buy Colin, and the same applies with Cuthbert and Aldi. This combines with the second type of customer, the luxury buyer. As much as I don’t want hurt Colin or Cuthbert’s feelings, they are not luxury products. However, this principle may in some way still apply. M&S is a higher end retail store. It is similar to The Bay in Canada. Aldi is more like a No Frills. This luxury shopper in choosing the store will certainly know the difference between both caterpillars. If the store itself is not an indicator, then the price difference between Colin and and Cuthbert should. In short, I suspect that a main reason why nobody goes after these knock-off brands is because of the lack of deception. Is it misleading and taking advantage of the goodwill of the main brand? Yes. But does anyone truly mix up the real product the knock off? No. The distinction between Aldi’s and Pirate Joe’s is Aldi obvious attempt to differentiate themselves. Aldi using M&S’s goodwill, but not to fool anyone into mixing the two products up. The ads and social media campaigns reinforce that. A part of Aldi’s brand now, in the wake of the legal dispute, is that they are certainly not M&S.