Trademarks in Chocolate Cake

There’s confidence to say that most people have had a chocolate caterpillar birthday cake at least once in their lives. And if not for them personally, their children, relatives or friends have.

This week, Marks & Spencer commenced legal proceedings in the High Court against Aldi arguing that the latter’s “Cuthbert the Caterpillar” infringes M&S’s trademark on “Colin the Caterpillar”. It claims that Aldi will benefit from the goodwill and reputation associated with Colin by consumers believing that Cuthbert is of the same standard.

M&S has three trademarks over its long standing chocolate caterpillar cake, which was brought to market approximately 30 years ago. It argues that Colin’s design (which has not changed for the best part of over 15 years) has built its own reputation and character.

Breach of trademark occurs where, without the proprietor’s consent, a registered trademark is used in the course of trade where the sign used is identical or similar with the registered trademark and is used within the good and services that are identical or similar to the registered trade mark.

A claim for breach of trademark is usually brought by the trademark proprietor or, where a licence exists and is exclusive, with permission of the proprietor, a licencee can bring the actionable claim. A claim can, however, only be brought when a trademark is actually registered.

The legal test for breach of trademark depends on whether the sign and the goods are identical or similar to the registered trademark. In the case of similar sign or goods, there is the added test of likelihood of confusion. The claimant might also have to prove if the registered trademark has a reputation and is used without cause, and takes unfair advantage/detriment to the distinctive character of the trademark’s reputation.

The remedies a successful claimant can request from the court are an injunction for the breaching party to cease using the sign or good, as well as damages or an account of profits. They can also ask for removal of the offending signs from infringing goods and/or an order for the delivery up or destruction of the infringing goods.

Infringing another party’s trademark is risky business, not only for the company’s reputation and the financial cost of investing in a new product but also with having to ensue litigation and the risk of having to pay damages.

On the other hand, it is important for a party, whose trademark has been breached, to act promptly to establish a reputation for aggressively defending their trademarks against infringement. This will make potential infringers think twice about trying to copy a registered trademark.

As for our chocolate caterpillar friend, whether M&S’s actions are too little, too late is a question to consider especially as there are several other products on the market with competitors who have not had proceedings brought against them. On the other hand, there may be enough to prove that Colin simply is the number 1 caterpillar. Let’s watch this space!