Marks & Spencer (M&S) has lodged an intellectual property claim against Aldi, claiming its Cuthbert the Caterpillar cake infringes M&S', Colin the Caterpillar trade mark. With Aldi being known for selling products that bear similarity to well-known brands, can IP rightsholders stop 'lookalike' products being sold?

In a claim lodged with the High Court on 14 April 2021, Marks & Spencer argues that the similarity of the Aldi caterpillar cake leads consumers to believe that they are of the same standard and allows Cuthbert to "ride on the coat-tails" of the M&S cake's reputation. M&S wants Aldi to remove the product from sale and agree not to sell anything similar in the future.

Marks & Spencer has registered trade marks relating to the cake, including a word mark for the name "Colin the Caterpillar", and a figurative mark for the appearance of the cake and box. Trade marks are commonly used to protect names of products but can also be used to protect images or visual characteristics.

What is the test for trademark infringement?

Infringement of a registered trade mark occurs when, in the course of trade:

  • an identical sign is used for identical goods or services;
  • an identical sign is used for similar goods or services and there is a likelihood of confusion by the public;
  • a similar sign is used for identical goods or services and there is a likelihood of confusion by the public; or
  • a sign takes unfair advantage of the reputation of a well-known trade mark

Where the sign and the goods and/or services are not identical, there must be a likelihood of confusion by the public.

In this case, it is the latter leg (or white chocolate foot as the case is here) upon which M&S seek to rely - arguing enhanced distinctiveness and reputation.

M&S will have to show that the trade marks relating to Colin the Caterpillar have a reputation in the UK within the relevant market. M&S will also have to demonstrate that Aldi's Cuthbert the Caterpillar is sufficiently similar, and takes unfair advantage of, or is detrimental to the distinctive character or reputation of its marks. Having been a feature of many a birthday party since 1990 is likely to aid the case for Colin's trade marks having a reputation but this matter will come down to whether the trade marks are known "by a significant part of the public concerned by the products or services covered by the trade mark" and that Aldi has or is seeking to derive a benefit from this reputation with its product.

The case may be made more difficult for M&S considering there are currently a variety of caterpillar cakes currently sold by other British supermarkets, including Waitrose's Cecil, Sainsbury's Wiggles, Tesco's Curly, and Asda's Clyde the Caterpillar.

How are competitor brands able to sell lookalike products?

You may be thinking, if similarities between products can lead to claims of trade mark infringement, how are supermarkets in general able to sell so many "lookalike" products in their stores?

The essential function of a trade mark is to indicate the origin of products or services. Where a ‘copycat’ product uses a similar sign to that of the mark (unless the mark has a reputation, as M&S is arguing) then, the owner of the registered mark, needs to show that there is a likelihood consumers would be confused as to that product’s commercial origin. In such cases, a brand owner may have difficulties proving this confusion requirement as consumers today have stronger awareness of "own-brands". Many consumers are actively looking for bargains and are aware that an own-brand is offered as an alternative and is produced by the supermarket themselves. Therefore, there is no confusion.

However, for brand owners, like M&S, who have invested their time and resources into developing their products, it can feel unfair to allow competitors this perceived advantage. Seeing own-brand versions of products that have similar packaging to well-known brands can lead customers to assume that the two products share the same or similar qualities. Therefore, if supermarkets use similar branding on their own-brand ranges, they may be benefitting from the positive associations and impressions shoppers have of well-known brands. This in turn, can lead to lowering sales of well-known brands, if consumers opt for the more affordable, own-brand products.

Aldi and IP infringement

This is not the first intellectual property claim to be brought against Aldi.

Aldi successfully saw off a passing off claim by Moroccanoil following the launch of their own argan oil hair product, sold in similar packaging. This was on the basis there was no misrepresentation, in part due to the differing price points. However, they have not always been so victorious.

In 2019, Aldi lost a case brought by the owners of make-up brand Charlotte Tilbury. Charlotte Tilbury successfully argued that the make-up palette sold by Aldi was too similar to its own. This constituted copyright infringement of an artistic design, rather than trade mark infringement of a product or a name.

The Saucy Fish Company successfully secured an interim injunction (interdict) against Aldi, on the basis of trade mark infringement, to stop the sale of similar packaged products to that of their own. This shows a willingness from the courts to try and prevent such copycat behaviour. Had Morrocanoil had registered trade mark rights upon which to rely, the outcome may well have been different for them.

Keeping out of the courts, The Collective and Heck sausages have also managed to have lookalike yoghurt products and sausages removed from Aldi shelves.

Perhaps Aldi being known for sailing close to the wind was part of the reason why M&S chose to target Aldi as opposed to one of the other retailers.


If M&S is successful in its claim, it does not necessarily mean it will succeed in getting other caterpillar cakes off the shelves. However, any ruling could make the position on trade mark infringement and 'lookalike' products clearer for future actions. Will Cuthbert soon emerge as "Bert the Butterfly" or is the caterpillar here to stay?

While this matter has already provided some light relief on social media, it does highlight serious issues as to where the line is crossed when it comes to lookalike products.