The Battle of the Caterpillars

By Lucy Slatter

Senior Associate

Last week, it was announced that Marks & Spencer (M&S) had started legal action against Aldi by lodging an intellectual property claim with the High Court.

M&S claimed that their Colin the Caterpillar and Aldi’s Cuthbert the Caterpillar has led consumers to believe that they are of the same standard; given that they look very similar and come in almost identical packaging.

Trademarks

A trademark is used to identify a product or service of a specific business. M&S have three trademarks for their Colin the Caterpillar. Colin has retained its distinctive character and reputation for M&S since it was launched around 30 years ago. Apart from adapting his appearance to suit different festivities, Colin’s appearance has not changed since 2004. Therefore, giving M&S a distinguished and well-established trademark.

A claim brought under section 10(3) of the Trademarks Act protects companies against third parties from using a similar trademark. Other supermarkets have created their own versions, but M&S have requested that Aldi remove the product from their shelves and agree not to conduct any further sales on the basis that their product is superior and Aldi is seeking to ride off the quality off M&S’s reputation.

To succeed, M&S will need to prove that Colin the Caterpillar is so well known that it would influence Aldi’s sales. We await further commentary on how the case will progress and whether Aldi wish to defend the proceedings. Aldi has already hit back by selling a limited edition version to support charity which M&S support but have stated that they should still use their own character.

So, what is trademark infringement? And what should companies and businesses look out for when protecting their assets/products?

Trademark Infringement

A trademark infringement occurs when a registered trademark is used without the trademark proprietor’s consent in any of the following circumstances:

  1. The sign used is identical by the infringer and is used in relation to goods or services which are identical to the trademark that has already been registered
  2. The sign used is similar to the registered trademark and used in relation to goods or services which are identical or similar to those for which the trademark is registered

If it can be found that the above has been conducted, the proprietor of the registered trademark can recover damages in relation to the acts committed from the date in which the trademark was registered. If a business is in the process of infringing, then that business could also be subject to injunction proceedings.

Defences to Infringement

In some cases, you may be able to use the same registered trademark and use the following defences:

  1. If another trademark has been registered in relation to the same goods and services as an already existing trademark, then there is no infringement
  2.  The use by a person of their own name or address, which can include the use by a company of its own name
  3. The use of indicators concerning the kind, quality, geographical origin and other characteristics of goods or services
  4. The use of an earlier mark, such as an EU trademark, which may have existed prior to the filing of the UK trademark

Businesses and Protecting their Intellectual Property

Whether you are a large or small business, it is important that you protect the products or services that you own, as competitors can use your success and copy ideas which could lead to loss of good will and ultimately profit.

As a first port of call, it might be that you wish to send a letter to a potentially infringing business by way of a ‘cease and desist’ letter to stop the alleged illegal activity. Using such letter may help avoid unnecessary costs and delays that are associated with bringing proceedings.

If your business has any concerns in relation trademark infringement and you would like further information, please contact us on 0345 646 0406 or fill in our online enquiry form and a member of our Team will be in touch.