The rivalry between Colin and Cuthbert: A commentary on the potential issues in product design trade marks

Written by: YANG Zhuoyan of IPSA Core Team

Edited by: Denise THIA of IPSA Core Team

Did you know that some of the “knock-off” versions of your beloved snacks found at dollar stores may be at risk of legal liability?

In April 2021, the British retail giant, Marks and Spencer Plc (“M&S”) filed a trademark infringement and passing off claim against the UK-affiliate of the supermarket chain, Aldi Stores Ltd (“Aldi”) with the UK High Court. It was alleged by M&S that Aldi’s newly released cake, Cuthbert the Caterpillar (“Cuthbert”), was an actionable imitation of its own Colin the Caterpillar cake (“Colin”). Since its launch some 30 years ago, Colin had brought in enormous and consistent sales for M&S[1], so it was no surprise that the retailer would seek to protect its leadership in this particular market.

Spot the difference? (left: Aldi’s Cuthbert before it got taken off shelves https://www.theguardian.com/business/2021/apr/15/ms-takes-aldi-to-court-over-colin-the-caterpillar-look-alike-cake ; right: M&S’ design trade mark registered with the UK IPO https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003509740)

In intellectual property law, product imitations may constitute trade mark infringement under statutory legislation, and/or the common law action of Passing Off. As UK and Singapore laws are substantially similar in this area, this dispute provides a good window to discuss some trade mark issues a business might face in Singapore. If, hypothetically, this M&S v Aldi dispute takes place in Singapore, what would the possible outcome be?

Infringement under the Trade Marks Act

Generally, unique elements of food products, including its name, label, shape and colour, among others, may be registered as a protected trade mark. Protection under trade mark legislation are only given to marks registered. In M&S’ case, a quick search with the UK Intellectual Property Office (“UKIPO”) reveals that the only registered Colin-related marks are the above packaging[2] and a simple word mark for “COLIN THE CATERPILLAR”[3].

Under Section 27 of Singapore’s Trade Marks Act (Cap 332) (“TMA”), any use of registered marks without the consent of the trade mark’s registered proprietor(s) may amount to infringement if a person uses a ‘sign’ (what marks are called before they are officially registered):

  1. which is identical, or similar to the registered mark; and
  2. the sign is used in relation to goods or services identical with, or similar to those for which the trade mark is registered; and
  3. because of the above, there exists a likelihood of confusion on the part of the public.

An alleged infringer, like Aldi, may claim that there is no infringement by proving that there is unlikely to be confusion amongst the public.

Principally in Singapore, the confusion inquiry comprises first and foremost a consideration of marks-similarity on consumer perception which comprise these factors: the degree of marks-similarity; the reputation of the marks; the impression given by the marks; and the possibility of imperfect recollection of the marks.

One relevant point that may be made here is that, at least in the UK market, Colin does seem to possess a strong reputation which may ironically have the reverse effect of decreasing likelihood of confusion.[4]

Next, another set of factors relating to the effect of goods-similarity on consumer perception is also admissible, these are:

  • the normal circumstances under which consumers would purchase goods of that type;
  • whether the products are expensive or inexpensive items;
  • the nature of the goods and whether they would tend to command a greater or lesser degree of fastidiousness and attention on the part of prospective purchasers; and
  • the likely characteristics of the relevant consumers and whether they would or would not tend to apply care or have specialist knowledge in making the purchase.[5]

Some factors here lean in favour of a finding of confusion: both products being off-the-shelf supermarket offerings, primarily purchased physically, and both being inexpensive consumables, may collectively mean that the consumer is less discerning and less likely to take extra effort to inspect the marks attached to the goods. To elaborate on factor (ii), it is impermissible to consider a trader’s superficial marketing choices[6] or insignificant price disparity between competing goods[7]. For instance, the fact that Colin, like many M&S products, are supposedly marketed towards more high-end consumers is not material. While Colin is no doubt more expensive than Cuthbert[8], the disparity is probably insufficiently large to distinguish the two. One example of price difference being accepted in local jurisprudence concerned a case of similar marks used by a fast casual chain and by a fine dining restaurant[9].

In response, however, Aldi may seek to adduce evidence that there is a growing interest in novelty cakes (something not too farfetched given the various lifestyle columns and blog posts made on it even prior to the dispute[10]), and thus the relevant segment of the public is unlikely to be confused[11].

Invalidation of Registration

In the case of Colin, what if there was a dispute over the cake’s caterpillar-shape as a mark (notably, this is a matter of pure conjecture as there is no known registration of the shape with the UKIPO)?

A common counter-argument raised in this regard is that the mark should not have been allowed registration in the first place – without a registered mark, there is no basis under the TMA to bring infringement proceedings. Notably, the fact that a mark was previously allowed registration by the relevant trade marks office is not a bar to the court’s invalidation of the same.

There are a several grounds for refusal or invalidation of a mark’s registration under Sections 7 and 8 of the TMA. Specifically, Section 7(3) warrants greater attention when it comes to product designs; under which, a sign cannot be registered if it consists exclusively of a shape which either: a) results from the nature of the goods themselves; b) is necessary to obtain a technical result; or c) gives substantial value to the goods.

Given that registered trade marks can potentially exist in perpetuity with renewal, the purpose of s 7(3) is to prevent trade mark protection from granting its proprietor a monopoly over technical solutions or functional characteristics of a product which users are likely to seek in the products of competitors.[12] This prevents trade mark law from overreaching beyond core principles of protecting a trader’s badge of origin. A shape which is functional may be more appropriately governed by the Registered Designs Act[13] or Patents Act[14], which has a shorter maximum IP-lifespan of 15 and 20 years, respectively.

Section 7(3)(b)

In the 2016 Singapore Court of Appeal (“SGCA”) case of Nestlé v Petra Foods (the “Kit Kat case”)[15], there was a similar dispute concerning the imitation of the shape of the ‘Kit Kat’ chocolate-wafer product. The Court stated that the test for ascertaining whether a shape mark was caught by the “technical result” prohibition in Section 7(3)(b) of the TMA is to first identify the essential characteristics of the shape mark, following which, determine whether each essential characteristic performed a technical function (with the aid of expert evidence from industry insiders, of course).

KitKat’s registered shape mark which was subsequently invalidated (image source: Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64)

Courts and/or registration offices will scrutinize even the most unassuming design detail to answer these questions. For instance, the SGCA in the Kit Kat case agreed that each essential feature of the familiar Kit Kat ‘fingers’ sign (pictured above) was attributable to a technical result based on these reasons: (a) the rectangular “slab” shape was to facilitate manufacturing speed and resource efficiency; (b) the presence, position and depth of the breaking grooves was necessary to facilitate consumers’ breaking up of a larger rectangular slab of chocolate bar into smaller neat finger-like pieces with the appropriate proportions of a suitable size each time for eating.; and (c) the number of breaking grooves in each slab was necessary to obtain optimum portion size within fixed retail conventions.

Returning to Colin’s case, the caterpillar’s ‘body’ segments may serve the technical function of making cake portions easily sliceable[16], much like the grooves of Kit Kat bars. On the other hand, it would be difficult to argue that other essential features, like Colin’s face, have any practical purpose beyond amusing consumers.

Section 7(3)(c)

Perhaps, this provision would be more applicable to a product like Colin. Under s 7(3)(c), a sign cannot be registered if it consists exclusively of a shape which gives substantial value to the goods. While this sub-section may overlap with the other section 7 indents[17], it is concerned primarily with the substantial value brought about by the shape’s aesthetics.

The artistic value of the shape, whether the shape itself forms the core of a promotion strategy and the target public’s perception of the shape, are some assessment criteria which may be used to determine whether this ground for refusal is applicable.[18] However, when considering whether a shape gives substantial value to the goods, the court does not take into account the value added to the goods as a result of the trade mark function of the shape.[19] 

Critically, the court would compare the shape sought to be registered/invalidated and shapes of equivalent articles, and it is only if the shape has substantial value in relative terms that it will be excluded from registration.[20] Of course, the fact that the shape may be pleasing or attractive is not sufficient to exclude it from registration because if that were the rule, it would be virtually impossible to imagine any trade mark of shape.[21] The question is thus one of degree, and is ‘whether the shape is of such appeal that it would be improper for a trader to monopolise it for an indefinite amount of time’.[22]

To analogize, the Singapore High Court in the Kit Kat case held that the Registered Shapes were not particularly eye catching in relation to other competing confectionary products in the market to have given it “substantial value”. This was because the date of assessment is the time of registration, in that case being year 2000, when a shape like Kit Kat’s fingers is relatively ordinary.[23]

Likewise as for Colin’s shape, depending on the time at which registration was made (hypothetically speaking),  the strength of evidence supporting its aesthetic appeal may change[24]. The fact that there have been copycats may suggest that monopolizing the caterpillar shape is improper but there is also no shortage of novelty cakes in the market such that consumers would be drawn to Colin simply because of its shape[25]. A proper analysis in relation to this absolute ground of refusal is certainly a fact-sensitive exercise which is beyond the scope of this article.

What if the claimant had not registered its sign?

Well Known Trade Mark

As noted earlier, the caterpillar shape is not registered. In this regard, M&S may argue under the basis of taking of an unfair advantage of their well known trade mark. Under s 55 TMA, a mark which is unregistered may still be considered a “well known trade mark” , provided that it belongs to a person who is domiciled under the laws of a Paris Convention country (which includes the UK and Singapore) and is not deemed unregistrable because of an absolute ground of refusal under the TMA[26] (discussed in the previous section).

s 55(3)(b)(ii) of the TMA provides that where a proprietor’s trade mark is well known to the public at large in Singapore, he may ask the court to restrain any unconsented use of a trade mark (or an essential part of that mark) which is similar to the proprietor’s trade mark where the use of the trade mark would take unfair advantage of the distinctive character of the proprietor’s trade mark. The unfair advantage claim is aimed at preventing exploitation and free riding on the reputation of the mark.[27]

The first step in an unfair advantage claim is to determine whether the mark is “well known to the public at large in Singapore”; this means the mark has to be recognized by most, though not all, sectors of the public[28]. This is answered with regard to (among others) the degree to which the trade mark is known to or recognized by any relevant sector of the public in Singapore[29]; the duration, extent and geographical area of trade mark use or any promotion of the same[30]. For M&S, the statistical evidence in terms of their efforts in promoting the Colin shape and actual consumer perception from evidence like surveys would be critical[31]. Next, there must be existence of a mental association between the two marks, although confusion is not necessary[32]. Thus, while the infringement claim may fail for want of confusion, M&S may nevertheless succeed here.

Critically, the concept of unfair advantage relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.[33] Interestingly, representatives of M&S have used the same phrasing of “riding on coat-tails” in press releases[34], pointing towards this cause of action being a part of M&S’ arsenal.

In determining whether an unfair advantage had been taken, there are several factors to consider, and a global assessment of all of them will be undertaken in a highly fact-sensitive enquiry. Some factors include (but is not limited to): the strength of the mark’s reputation and the degree of distinctive character of the mark; the degree of similarity between the marks at issue; the nature and degree of proximity of the goods or services concerned; and the immediacy and strength with which the mark is brought to mind by the sign.[35] Should unfair advantage be found, there may be significant ramifications in the UK confectionary industry as there are already multiple Colin look-alikes floating around.

Law of Passing Off

In the event that a proprietor had not registered their sign or their registration is limited to say, the product name, it would be necessary for the owner of the sign to seek recourse by way of a claim under Passing Off. Briefly, this is a common law tort with the basic principle that a trader should not sell his or her goods or services under the pretext that they are the goods or services of another[36]. It requires (in both UK and Singapore) that:

  1. the claimant has goodwill or reputation attached to its business[37];
  2. the sign to be protected is sufficiently associated or distinctive of the claimant’s business;
  3. there is misrepresentation in that the alleged infringer holds itself to be, or be connected with, the claimant’s business thereby giving rise to confusion; and
  4. the owner is likely to suffer damages due to such misrepresentation.

Evidently, Passing Off may be a more difficult legal solution due to the need to prove goodwill and further, that people associate a given sign with the business. Presently however, M&S can likely easily establish goodwill given its immense popularity and reputation in the UK. Realistically, if Passing Off were to be raised by M&S in this case, it would likely be in related to unregistered elements – i.e. the get-up of Colin.[38] In this regard, the problem may lie with distinctiveness, a threshold inquiry to finding misrepresentation. If a mark or get-up is not distinctive of the plaintiff’s products or services, the mere fact that the defendant has used something similar or even identical would not amount to a misrepresentation that the defendant’s products or services are the plaintiff’s or are economically linked to the plaintiff.[39]

While Colin is purportedly a “national tasty treasure”[40] with more than 30 years of existence[41], whether its shape and visual features is sufficiently distinctive of M&S is another question. The relevant public must view the get-up[42] in question as an indicator of its trade origin[43]. A good example of distinctiveness would be how most can immediately associate the Nike “tick” with the Nike brand itself, but inherent distinctiveness in a shape is relatively rare[44]. This is because there is a nuanced difference between consumers recognizing a shape as a characteristic of products or the product and brand with which they have become familiar on one hand, and actually coming to perceive the shape as a badge of origin, such that they would rely solely on that to identify the products as coming from a particular source.[45] It may be argued that Colin is often seen in posters on its own, only bearing M&S’ house sign at inconspicuous areas – but more evidence may be needed to show that the public can immediately associate the shape of Colin with M&S directly, as opposed to merely ‘Caterpillar Cake’ or even ‘Colin the Caterpillar’.

Conclusion

The devil is in the details. Based on our brief discussion in this piece, M&S may not necessarily have sure-win victories in either a claim of trade mark infringement and/or Passing Off. Much will depend on the arguments and evidence presented to convince the court, crucially, that the British public are likely to confuse Cuthbert as being Colin or is a product of M&S’s.

Already, some commentators have satirized M&S’ commencement of the lawsuit[46], and others have perceived M&S’ actions as protectionism[47]. Aldi’s out-of-court retaliations using social media[48] also adds further fuel to the ongoing fire. M&S’ victory in court would really be a much-needed aid to wiggle itself out of this precarious PR situation.

IPSA curiously anticipates the UK High Court’s judgment.


IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.


[1] https://www.theguardian.com/food/2020/sep/03/colin-the-caterpillar-at-30-how-a-supermarket-cake-stole-the-nations-heart

[2] https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003509740 (last accessed 28 June 2021).

[3] https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002499694 (last accessed 28 June 2021).

[4] e.g. McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR(R) 177.

[5] Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] SGCA 30 at [56].

[6] The Polo/Lauren Company, L.P. v Royal County of Berkshire Polo Club Ltd [2017] SGIPOS 19 at [119]-[120].

[7] Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (HC) at [181].

[8] 2.01 British pounds cheaper, to be exact: https://www.dailymail.co.uk/news/article-9474381/Colin-Caterpillar-M-S-sues-Aldi-4-99-Cuthbert-Caterpillar.html

[9] Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (HC).

[10] https://www.mirror.co.uk/money/colin-caterpillar-many-lookalikes-ultimate-23938440; https://www.huffingtonpost.co.uk/entry/ms-colin-the-caterpillar-cake-the-best-we-tried-5-supermarket-rivals_uk_5d89da0ae4b0938b5933c104

[11] e.g. Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd [2014] SGIPOS 11; Bacardi & Company Limited v G3 Enterprises, Inc [2015] SGIPOS 17.

[12] Philips v Remington [2006] EWCA Civ 16; the same general purpose underlies all three sub-sections of Section 7: see Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU) at [20].

[13] Cap 266.

[14] Cap 221; see comments in Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [76].

[15] Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64.

[16] https://www.theguardian.com/food/2020/sep/03/colin-the-caterpillar-at-30-how-a-supermarket-cake-stole-the-nations-heart

[17] Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU).

[18] Hauck GmbH & Co KG v Stokke A/S (ECJ) [2014] Bus LR 1284 (CJEU).

[19] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [134].

[20] Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809

[21] Office for Harmonization in the Internal Market (OHIM) (Trade Marks and Designs), Third Board of Appeal, Case R 395/1999-3, 3 May 2000, at [33]

[22] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [142].

[23] Societe Des Produits Nestlé SA v Petra Foods Ltd [2014] SGHC 252 at [143]-[145].

[24] Opinion of Advocate General Szpunar delivered on 6 February 2018, Christian Louboutin and Christian Louboutin Sas v van Haren Schoenen BV, EU:C:2018:64 at [51].

[25] Eleonora Rosati, “The absolute ground for refusal or invalidity in Article 7(1)(e)(iii) EUTMR/4(1)(e)(iii) EUTMD” (2020) Journal of IP Law & Practice 15(2), 103-122- at 109.

[26] Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [127]-[137].

[27] Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2012] SGCA 56 at [90].

[28] City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2009] SGCA 53 at [94].

[29] TMA, s 2(7)(a).

[30] TMA, s 2(7)(b).

[31] Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS 6 at [110].

[32] Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (2014) at [21.5.51].

[33] L’Oréal SA v Bellure NV (C-487/07) [2010] Bus LR  303 at [41].

[34] https://metro.co.uk/2021/04/15/ms-sues-aldi-because-cuthbert-the-caterpillar-is-too-similar-to-colin-14414732/ (last accessed 11 July 2021)

[35] Swatch AG (Swatch SA) (Swatch Ltd) v Apple Inc. [2019] SGIPOS 1 at [123]; Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2011] SGHC 176 at [182]-[186].

[36] Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 at [26].

[37] Tuitiongenius Pte Ltd v Toh Yew Keat [2021] 1 SLR 231 at [80].

[38] The term “get-up” is normally used in passing-off to mean the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase.

[39] Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 at [38].

[40] https://www.marksandspencer.com/ie/c/food/not-just-any-food/mands-brands/colin-the-caterpillar

[41] https://www.goodhousekeeping.com/uk/food/a33631942/original-colin-the-caterpillar-cake-1990/

[42] The term used in passing-off to mean the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase. The packaging for Colin is a see-through box.

[43] Tuitiongenius Pte Ltd v Toh Yew Keat [2021] 1 SLR 231 at [88].

[44] e.g., Nations Fittings (M) Sdn Bhd v Oystertec Plc [2006] 1 SLR(R) 712.

[45] Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 at [78]; Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64 at [44] (both in context of distinctiveness for trade mark registrability).

[46] https://www.retailgazette.co.uk/blog/2021/04/marksandspencer-collin-caterpillar-cake-cuthbert-aldi-memes

[47] https://www.theguardian.com/business/2021/apr/18/caterpillar-wars-time-to-pick-sides-in-battle-of-colin-v-cuthbert

[48] https://www.independent.co.uk/life-style/food-and-drink/colin-caterpillar-aldi-m-s-lawsuit-b1834469.html

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