How M&S’s Colin the Caterpillar legal battle could be trouble for Aldi and Lidl

British consumers are now used to seeing imitation products on the shelves at Lidl and Aldi – such as Neo biscuits instead of Oreos, Titan bars instead of Mars and Monster Claws instead of Monster Munch.

But these lower-cost alternatives could now be under threat, after Marks & Spencer started legal action against Aldi with a claim that its rival’s £4.99 Cuthbert the Caterpillar cake infringes its trademark on Colin the Caterpillar.

Retail experts told MailOnline that M&S would be unlikely to win because it would have to prove consumers were ‘sufficiently confused’ despite the £7 Colin product only being offered in M&S and Cuthbert only on sale in Aldi.

But they said a victory for M&S would open a ‘can of worms, because it won’t end, it will be product after product’ – and that all other supermarkets would also possibly have to remove their own versions of the caterpillar cake.

This would create a ‘cascade effect’ amid fears that other equivalents at Lidl and Aldi could also be under threat – such as Freeway Cola, (Coca-Cola), Frosted Flakes (Frosties) and Snaktastic Stacking Potato Snacks (Pringles).   

Retail expert Clare Bailey said today: ‘This is a can of worms, because it won’t end, it will be product after product, or in any sensible court case it will just get rejected because you’re picking on Aldi, so why not anyone else? 

Speaking about what would happen in the event of an M&S victory, she continued: ‘The first situation is Aldi would have to take it off sale, you would assume. It all comes down to whatever the judge rules or whatever is requested.

‘Then there might be some suggestion of lost sales and damages. And then you could potentially be in a situation where they have to apply the same rule against all caterpillar cakes. 

‘So you’d then start having an issue with Asda, Morrison’s, Tesco and Sainsbury’s. I can’t see them winning, and if they do there’s a cascade effect. They own the rights to Colin, but not to Clyde at Asda, Wiggle at Sainsbury’s.

‘There’s a point where you can’t protect the rights any further. If you invest millions of pounds in product design, branding and testing then you don’t want it copied directly, but it’s inevitable that it can happen, will happen.’

M&S is arguing that the similarity of Aldi’s product leads consumers to believe they are of the same standard and ‘ride on the coat-tails’ of M&S’s reputation with the item.

The retailer, which which lodged an intellectual property claim with the High Court this week, wants Aldi to remove the product from sale and agree not to sell anything similar in the future.

But Ms Bailey told MailOnline: ‘The thing is, they’ve got an amazing copy of Oreos in Aldi. Oreos are things that you could buy anywhere. You could reasonably be confused if you pick up something like Oreoes. That would be more likely to hold water.

‘But this is an M&S own product, you can only buy Colin at M&S. It isn’t like M&S sell this to other supermarkets. From a legal point of view there are copyright, brand encroachment and potential claims there, but Aldi’s position could be everyone else sells a version, so why are you picking on us?

‘But you’d have to have a customer who says I was sufficiently confused and I spent the money on the product because I was confused and M&S would have to say customers have been sufficiently confused. But if you know Colin the Caterpillar is only in M&S, if you go to Aldi, you know it’s not that. 

‘We know things are cheaper because they’ve cut back on packaging, and they’re not using the same ingredients. It’s not going to be the same. Look at supermarket own brands. Let’s say Sainsbury’s milk chocolate digestives.

‘You could put them side by side with McVitie’s and you’d struggle to tell the difference. If you get a big bag of Walkers selection pack of crisps side by side with the own brand, they swap the colours and that’s about it.’ 

M&S launched Colin in 1990 and his appearance has been substantially unchanged since around 2004, except for adaptations for events such as Halloween and Christmas, and related products such as Connie the Caterpillar.

The product is central to M&S’s partnership with cancer charity Macmillan, and the retailer has created a Colin product for the annual World’s Biggest Coffee Morning fundraising event.

The cake is a sponge with milk chocolate and buttercream, topped with chocolate sweets and a smiling white chocolate face.

M&S has three trademarks relating to Colin, which the retailer believes means Colin has acquired and retains an enhanced distinctive character and reputation. 

The brand includes sweets and mini-cakes – and even Colin’s girlfriend Connie, who is decorated with a pink bow and flowers.  

While M&S has Aldi in its sights, it is not the only rival store to take a bite out of the caterpillar cake market. There is Cecil from Waitrose, Curly from Tesco, Wiggles from Sainsbury’s, Clyde from Asda and Morris from Morrisons. 

Mark Caddle, partner and trademark attorney at European intellectual property firm Withers & Rogers, told MailOnline: ‘Aldi has fought off similar trade mark infringement cases before, and there is nothing to say it won’t do it again. 

‘However, if there was a ruling in favour of M&S, then it could open the flood gates for other brands that feel Aldi’s product names come too close for comfort.

‘Nevertheless, the ruling will only affect the sale of the Cuthbert the Caterpillar cake. Aldi’s business model is not the focus of this case. It is unlikely that businesses like Aldi or Lidl will change their ways because of one ruling. 

‘However, Aldi may now think twice about future product names, potentially choosing to distance itself to avoid any future infringement claims.

‘For M&S, this could be a difficult battle to fight, especially as there are a number of similar caterpillar cakes out there. 

‘With so many versions on the market, it may be a challenge to argue the level of brand confusion required to take down Aldi’s Cuthbert. It will be interesting to see how Colin vs Cuthbert plays out.’

An M&S spokesman said: ‘Because we know the M&S brand is special to our customers and they expect only the very best from us, love and care goes into every M&S product on our shelves.

‘So we want to protect Colin, Connie and our reputation for freshness, quality, innovation and value.’ 

However, yesterday Aldi said its cake has not been on sale since February. ‘The Cuthbert cake is a seasonal product,’ it said. ‘Aldi has only been made aware of the claim by M&S today.’

On Twitter, Aldi poked fun at the legal action, saying: ‘This is not just any court case, this is… #FreeCuthbert’ – and later added: ‘Just Colin our lawyers. #FreeCuthbert.’

Aldi has faced several accusations of selling copycat products, although it denies deliberately making its lines similar to popular brands in order to win sales.

In 2019, it withdrew its Moo range of ‘gourmet yogurt’ after the maker of a similar product complained they looked like its pots.

Sausage brand Heck accused Aldi of being a ‘playground bully’ by mimicking its Chicken Italia sausages and threatened to sue, but the cut-price store argued that the product and packaging was consistent with its own long-established range. 

And the Saucy Fish Co brought legal action over Aldi’s packs of Saucy Salmon fillets. The case was settled out of court.