18 May 2021|Crisis Management, Latest Posts, Legals & Compliance
A fight recently broke out between supermarket giants, over caterpillars. Or rather cakes shaped like caterpillars. The associated social media commentary is great fun but if you look beyond the memes, there are some important legal issues involved that are useful for founders to understand.
The caterpillar wars started in early April when Marks & Spencer announced it is suing Aldi over its discount version of M&S’ famous Colin the Caterpillar cake. For the uninitiated, Colin is a chocolate celebration cake that has been a staple at children’s birthday parties since it was launched in 1990.
Aldi has been selling a cheaper caterpillar cake called Cuthbert the Caterpillar and M&S accuse Aldi of infringing its trade mark in the name of the cake by selling a confusingly similar product with a similar name. M&S also say that Aldi’s Cuthbert is “riding on the coattails” of M&S’ hard work and success in making Colin an iconic product in the market, an offence known as passing-off.
If M&S is successful in its claim against Aldi, it can force Aldi to stop selling Cuthbert and promise not to sell anything similar in future. But the case could have wide-ranging consequences and change the way supermarkets have, up to now, sold their own versions of big name brand products.
If your business is developing a new product, here are a few key points to act on to make sure your product is legally protected and avoid being subject to a trade mark infringement action. Marks & Spencer has taken all of these steps and used its power in each area to protect its products and brands. If you do this, you can ensure that your product has the most chance of success from a legal point of view.
Have a good product
It goes without saying that the aim in product development is to try to create the best product possible. The reason this is important in a legal case is the higher-quality the product, both objectively and in the opinion of your customers and the general public, the bigger the increase in your reputation and goodwill in relation to the product. This gives you a strong legal standing should you need to act against any rival copycat products.
Keep an eye on your competitors
It’s vital to know what competing products are out there in the space you are trying to get into. Go right back to basics and start with a Google search of the type of product you are developing, and make sure you do a search for the product names you are considering. Looking at the directories of registered trade marks and design rights is also a good idea very early on in the process.
You should also carry out regular re-checks as the development progresses. If you are developing a new product and brand, then protect it and make sure it doesn’t infringe an existing product. Your other option is to take a risk. Either way, make an informed choice.
If you have an established brand, be prepared to act to protect it, and keep a budget for that if you can. Are you continually monitoring the market for potentially infringing products?
Protect the name and the packaging
Once you decide on your brand name, make sure you register it as a trade mark, so you have legal protection over the name for the type of products you are selling. You should also consider legal protection for the packaging and registered design right protection.
M&S has had a registered trade mark for the Colin the Caterpillar name since October 2008 and a trade mark for the green leafy packaging since July 2020.
Perhaps the biggest brand in the world, Coca-Cola, overcame misleading trade mark issues in the early 20thcentury by diverging into unique bottle design, which is now a core of its brand protection. So even if you think there are problems with your product or brand from an intellectual property point of view, there may be a creative solution around the corner.
Keep good records
It is vital to keep good records of the product development at each stage so you can prove you own the rights in the product and when it was developed to protect you against copyright infringement. It’s also a good idea to keep a record of customer reviews online and direct correspondence as evidence of how consumers view the products. This will help if you ever have to prove reputation or market standing against another brand in court.
Think about the marketing and social media angle
As we have seen from Aldi’s creative social media responses to the M&S lawsuit, sometimes it is true that all publicity is good publicity. By using emotive hashtags, such as #FreeCuthbert, Aldi have added humour into the story as well as potentially increasing its customer base.
Will more people buy the caterpillar cakes because of this story? Probably. It is worth noting that in developing their iconic curved bottle design, it was Coca-Cola’s legal team that led the design process. This was because they needed to create a unique bottle unlike anything else in the market to enable them to patent it (the relevant protection at that point in the 20th century, which would be different now). This gave them the ability to stop competing lower-quality copycat products that were flooding the market.
The best outcomes come when you get your lawyers, marketing and social media support to work together throughout the product development journey. Then you can be sure that you have both the strongest legal protections and best first to market advantage.
It could be a long time until we find out if Colin or Cuthbert will win the caterpillar wars, but for founders it is never too early to start protecting your intellectual property.
About the Author
Jowanna Conboye is a partner at Spencer West LLP, specialising in Intellectual Property and Technology. Spencer West is a leading full service international law firm advising businesses and individuals across the UK and globally. Jowanna advises organisations on the best ways to protect their intellectual property (IP) from creation through to exploitation.