why legal protection for a shape is so hard to come by

UK retailers Marks and Spencer (M&S) and Aldi have finally called a truce^[1] to the trademark-based legal spat pitting their caterpillar cakes, Colin and Cuthbert, against each other. While details of the settlement have not been made public, Aldi’s Cuthbert will not reportedly^[2] return in quite the same form. As Aldi tweeted, upon announcing that an agreement had been reached:

Colin the Caterpillar, a roll sponge cake decorated with milk and white chocolate icing and sprinkles, has been an M&S stalwart for more than 30 years. The retailer claims to have sold more than 15 million to date. Since 2011, rival products^[3] with similarly alliterative names have appeared: Asda’s Clyde, Tesco’s Curly, Waitrose’s Cecil, Co-op’s Curious and Cuthbert^[4].

In April 2021, presumably because it was thought that, of all the caterpillar cakes, Cuthbert most closely resembled Colin, M&S launched legal proceedings to protect its intellectual property and get Aldi to remove the product from its shelves. The retailer claimed that the similarity between the two cakes would lead consumers to think that they were of the same standard, thereby allowing Cuthbert to ride on Colin’s coattails.

Companies often seek to protect, as trademarks^[5], certain signs that help them distinguish their products and services from those of their competitors, such as brand names, logos and slogans. Along with patents (which protect innovative technical solutions) and copyright (which protects creative or intellectual works such as books and music), they are a form of intellectual property.

The Colin v Cuthbert dispute hinges specifically on trademarks, because it related to the distinctive characteristics of commercial assets. M&S has held trademarks in the UK in relation to Colin’s name^[6] and green packaging^[7] since 2009 and 2020 respectively, but these have not been infringed.

The problem for M&S is that its trademark would probably not extend to the underlying idea of a chocolate roll with a smiley face on it. Securing protection for the shape of a product is actually quite difficult^[8] in trademark law – not to mention proving that a competitor has presented his goods as those of somebody else.

The four-finger-shaped KitKat^[10] chocolate bar and the shape of the London taxi^[11] are two examples of iconic shapes that have not succeeded. One key reason behind this is that the average consumer doesn’t usually make assumptions about the origin of products on the basis of their shape, or that of their packaging, when other graphic or word elements are absent.

There have been cases in the UK where shapes and packaging have attracted protection under what jurists refer to as the law of passing off. Passing off^[13] offers legal protection against harm to what is termed the “goodwill” of a business. And it can be used to protect unregistered trademarks.

Goodwill here is a legal concept^[14], which refers to a business’s means of attracting people’s custom. It is harmed when a trader suggests – through misdescription on packaging or parasitic copying of a well-known product – that their product or service has some association or connection with another trader, when this is not the case.

In 2015, pop-star Rihanna famously won her battle^[15] to stop fashion brand Topshop using an unlicensed image of her on a T-shirt. She did so by convincing a judge that customers buying the top would think she had endorsed it. The Court of Appeal ruled that the unauthorised use of her photograph amounted to passing off.

Passing-off claims are notoriously difficult to establish. If someone promotes their bottled drinking water business as “the De Beers of still water”, they may be infringing the De Beers trademark but it is unlikely that a judge would find that they were passing themselves off as connected to De Beers in any commercial sense.

To win a passing-off claim against Aldi, M&S would have essentially had to prove that Colin had built up such a reputation as a signature product – in the same way that Rihanna had done as a music artist and style icon^[16] – that customers would be able to recognise it without difficulty. The retailer would also have had to prove that Cuthbert was so similar to Colin that consumers, after opening the packaging, would be misled into thinking that the two were somehow associated.

What is more, the fact that so many supermarket chains now have their own version of a caterpillar cake – coming in a variety of sizes and decorative features – would not have helped in establishing that Colin is unique. M&S would have had to prove that in the minds of cake buyers in the UK, the caterpillar has not become a generic shape for cakes.

Further, Aldi’s excellent Twitter campaign^[17] – and the widespread publicity the lawsuit has attracted – will have also contributed to dispersing any consumer confusion.

Lastly, it would have been difficult for M&S to argue that Aldi’s caterpillar cake had damaged or had the potential to damage the goodwill in Colin – that is, its power to attract and retain buyers of the cake. The market for caterpillar cakes is saturated: there are just so many to choose from.

The agreed settlement between the two parties means there was no court judgement on the facts. The terms of the settlement remain confidential. It is unknown whether liability – that is, blame – was admitted by Aldi for the wrong allegedly suffered by M&S.

Rarely does a party in a settlement walk away thinking, I have won. Typically, there is no winner and no loser in a negotiated resolution. This case will nonetheless have seen both M&S and Aldi benefit from the kind of marketing exposure that money cannot readily buy.

What did you think of this article? Great | Good | Okay | Weak^{[18][19][20][21]}

References

1. ^{^} called a truce (www.theguardian.com)
2. ^{^} not reportedly (www.theguardian.com)
3. ^{^} rival products (www.independent.co.uk)
4. ^{^} Cuthbert (metro.co.uk)
5. ^{^} as trademarks (www.youtube.com)
6. ^{^} Colin’s name (trademarks.ipo.gov.uk)
7. ^{^} green packaging (trademarks.ipo.gov.uk)
8. ^{^} actually quite difficult (doi.org)
9. ^{^} PA Images / Alamy Stock Photo (www.alamy.com)
10. ^{^} four-finger-shaped KitKat (www.independent.co.uk)
11. ^{^} shape of the London taxi (www.theguardian.com)
12. ^{^} Art Directors & TRIP / Alamy Stock Photo (www.alamy.com)
13. ^{^} Passing off (www.gov.uk)
14. ^{^} legal concept (heinonline.org)
15. ^{^} won her battle (www.judiciary.uk)
16. ^{^} style icon (www.judiciary.uk)
17. ^{^} excellent Twitter campaign (twitter.com)
18. ^{^} Great (docs.google.com)
19. ^{^} Good (docs.google.com)
20. ^{^} Okay (docs.google.com)
21. ^{^} Weak (docs.google.com)