What happened to Colin the Caterpillar & what does it mean for your brand?
Updated: Jan 4
We take legal research very seriously - in order to fully understand the implications of the most tasty dispute of the year, Colin vs Cuthbert, we had to undertake a detailed examination of Colin, including, of course, his taste. What we discovered will have implications for businesses across the land.
The furore over Colin v Cuthbert has died down and the dispute appears to be heading toward settlement (either that or Cuthbert has had a very long time to file his Defence).
Colin has played a starring role in birthday parties across the UK for over 30 years. He has spawned a variety of related sweets and finally has another caterpillar to hang out with - the elusive Connie.
The story here is not so much the trade mark and passing off case as the social media fallout. The dispute about caterpillar themed chocolate cakes captured the national attention and allowed Aldi to seize the moral high ground - an unusual location for a company which has repeatedly strayed close to the IP infringement line.
The legal dispute apparently centred on three trade marks owned by M&S for: (1) COLIN THE CATERPILLAR ; (2) the distinctive Colin the Caterpillar packaging; and (3) CONNIE THE CATERPILLAR all in in class 30 for cakes and related products. The low res packaging that was registered includes the M&S sign as well as the words Colin the Caterpillar.
The Particulars of Claim remain unavailable but in addition to an allegation of trade mark infringement there appears to have been a claim for passing off and there may have been a claim for copyright infringement in relation to the printed design on the packaging.
The packaging is too old to qualify for unregistered design protection and there is no Registered Design for either the packaging or Colin himself.
Very unusually, as soon as the claim was filed, Aldi's social media team spun into action and the Caterpillar Wars began. This led to an initial strong pro Cuthbert feeling which, as is so often the case, became a little more divided into opposing camps as time went on. The publicity appears to have been sufficiently problematic for M&S to draw a line and resolve the matter outside the public court system. This is a shame.
The question of close imitations of major consumer brands is a constant issue in IP circles and the added dimension of the packaging trade mark meant that this could have been a useful post Brexit precedent. We may have to wait a while before this issue is given the judicial attention it deserves.