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Today, I’m thinking about a particular type of confusion: do I think I am buying Colin, when I am buying Cuthbert?
The M&S legend ‘Colin the caterpillar’ hit the headlines last week - not for its delicious chocolatey face or to debate its status as a ‘national treasure’ - but because M&S have taken action against Aldi – claiming Cuthbert, Aldi’s caterpillar cake is, well, ripping off Colin.
Is Cuthbert ripping off Colin?
It’s not actually that simple. But in Outset style, I’ll try and give you the easy to understand, speed version.
If you register a trade mark you can stop other people using it.
A trade mark can be a range of different things: words, images, shapes, colours – as long as it is a clear sign that any products or services are yours, and not anyone else’s.
Once you have a trade mark, to stop other people using it, you need to demonstrate a couple of things.
- That the sign (trade mark) is the same as yours and is being used for similar goods or services
- That the sign is similar and is being used for identical goods or services.
Secondly: as well as one of the above, you also need to show that the public might be confused by it – and in particular, may associate it with you.
In short – they might be fooled into buying someone else’s goods or services, thinking they are yours.
I’m going out on a limb here, but I don’t think many people wander into Aldi and get confused thinking they’re in M&S. That’s not to be positive or negative about either – they are just very different…
So what are M&S saying?
I don’t know for certain, but from what I’ve read, I think they’re taking a slightly different approach. Another option available to a trade mark owner – in particular, when it is unlikely you’ll be able to demonstrate any confusion - is to show that the sign (trade mark) is identical or similar to yours, that yours has a “reputation”, and that the use of it by someone else either takes unfair advantage of your sign, or is harming its distinctiveness or reputation.
That’s where I think M&S are coming from – other caterpillar cakes out there are unfairly taking advantage of Colin’s long history and damaging his distinctiveness.
The key, I suspect, lies in that word “reputation”. They need to demonstrate a significant part of the cake-buying public are aware of Colin and his general cake-y tastiness.
They also need to show that Colin becomes less special if there are loads of other Colin lookalikes out there, and that Cuthbert is free-riding off Colin’s success.
Will they be successful? It will be interesting to see.
Aldi are no strangers to this sort of controversy – they had a very public accusation from Brewdog last year over their lookalike beers. In the end, it resulted in a collaboration beer which created exposure and sales for both brands.
It shows legal action may not always be the way to go (did I say that out loud?).