Copying, caterpillar cakes, and camper vans
In April 2021, Marks & Spencer accused Aldi of copying its “Colin the Caterpillar” cake through the sale of “Cuthbert the Caterpillar.”’ The saga made global news late last year, before settling in February 2022.
But would the dispute have gone quite so far in other countries?
Panellists at a virtual seminar held during the International Trademark Association Annual Meeting this year addressed this question, alongside a review of both this case and another involving Volkswagen.
Setting the scene in “The Hungry Caterpillar–Colin vs Cuthbert and a Look at How to Best Protect Cutting Edge Marks Inside and Outside the Trademark Arena”, Clair Lehr, partner at Edwin Coe and moderator of the panel, said: “The proceedings for both infringement and passing off made global news, largely assisted by Aldi’s adventurous tweets on the detention and subsequent release of its ‘Cuthbert the Caterpillar’ cake.”
“It seems to be that trademarks actually remain the best way for brand owners to protect the shape of goods.” - Clair Lehr, Edwin Coe
Michael Silverleaf, a mediator at 11 South Square, outlined the dispute, noting that M&S had alleged infringement of three trademarks and passing off and adding that it was a “surprising” claim for M&S to bring under the circumstances.
“In my view it was likely to fail,” said Silverleaf. “Attempts to protect the unusual shapes of the well-known Kitkat and Toblerone chocolate bars have had little success in the UK. Given the number of other caterpillar cakes on sale, the appearance of Colin was hardly unique.”
If M&S had sought registration in the US, the company would have needed to show that the caterpillar cake shape in and of itself served as source identifier, according to Katherine Califa, a partner at Foley & Lardner.
“Given several decades of use and presumably at least some unsolicited press or look-for advertisements, it’s likely that M&S would have been able to get registration on the principal register,” said Califa.
Another panellist, Yan Zhang, partner at Beijing East IP, believes that M&S would not be in a strong position to pursue trademark infringement in China, because the retailer “may not have strong claims for the similarities of the marks and the likelihood of confusion.”
Distinctive character
The speakers also discussed Volkswagen’s opposition to the registration of European Flipper / Pinball Factory logo, which featured a camper van alongside the word “Cultcamper’.”
Volkswagen opposed the trademark before the EU Intellectual Property Office (EUIPO), citing its two 3D trademarks as the basis and using a Wikipedia article as evidence that its trademarks enjoyed a high degree of recognition within the relevant public. On appeal, the EUIPO’s Board of Appeal held that there was a likelihood of confusion in the case.
“Although the Board of Appeal had rejected Volkswagen’s claim that the evidence it submitted showed a high degree of acquired distinctiveness, it was able to reach essentially the same conclusion by taking into account the meaning of the words to the English-speaking public,” said Silverleaf.
The China National Intellectual Property Administration (CNIPA) would likely render a similar decision on the similarity of the marks, according to Zhang. However, she said that registering a 3D mark in China is challenging and that CNIPA rejected Volkswagen’s earlier 3D marks in 2008.
“Attempts to protect the unusual shapes of the well-known Kitkat and Toblerone chocolate bars have had little success in the UK.” - Michael Silverleaf, 11 South Square
“To register a 3D mark, the requirements of distinctiveness and non-functionality must be satisfied. In practice, only a tiny part of the 3D marks based on product shape alone were approved in China. Most of them are incorporated with relevant features of logos to enhance the distinctiveness of the mark,” said Zhang.
Califa is confident that this case would not have reached a decision on the merits in the US.
“Unlike the EU, the US conducts relative examination and, as it happens, Volkswagen owns a US registration for the 3D configuration of its camper van. The US Patent and Trademark Office would likely have refused the application at the outset, based on likelihood of confusion with the prior trade dress registration owned by Volkswagen,” she said.
Califa added that if the application had made it through examination and Volkswagen had opposed the application, the parties would likely have settled.
Following discussion around the two cases, Lehr advised brand owners to think ahead and promptly register designs or design patents.
“These rights are actually limited in time, unlike trademarks. It may well be too late if you file to secure meaningful protection,” she cautioned.
Lehr advised that practitioners should encourage brand owners to retain evidence of use and reputation, and collate it very carefully if they are going to be filing for an IP right.
Finally, she concluded: “It seems to be that trademarks actually remain the best way for brand owners to protect the shape of goods,” around the world.
This article originally appeared in the INTA Daily News, which is published by WIPR.
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