The power of alliteration and get up or the shape of things to come?

3D or ‘shape’ trade marks have had a chequered history over the years. In order for a shape trade mark to be capable of registration it needs to be distinctive and capable of distinguishing the goods and services covered from those of competitors. In addition, it cannot be the product itself, it cannot be dictated by a technical function, and it cannot add substantial value to the product. However, in the foodstuffs sector, shape marks are relatively common, for example Kraft’s triangular shaped Toblerone product is protected with a number of shape mark registrations, although Nestle were unsuccessful with the Kitkat 4 finger bar.

At first glance, Marks and Spencer’s recent action against Aldi in connection with the COLIN THE CATERPILLAR cake sold by Marks and Spencer might appear to relate to the shape of the product, as Marks and Spencer have a registration for the following mark:

However, all is not what it seems because this registration is not a 3D or shape mark but is an image of the product in 2D form. The registration contains the words COLIN THE CATERPILLAR and it is the whole image which is covered, not its component parts.

Marks and Spencer has issued proceedings against Aldi in respect of their CUTHBERT THE CATERPILLAR cake, claiming trade mark infringement based on COLIN THE CATERPILLAR and the 2D image of the packaging. M&S also claims passing off. It will be interesting to see whether the High Court considers that a 2D image of green packaging dictated by the product contained within the packaging, a long cylindrical cake in the shape of a caterpillar is distinctive. It seems likely that Aldi will challenge the validity of M&S’s recently registered 2D image as the law which previously covered only shape marks now applies to all types of trade marks.

The Court is also being asked to determine whether alliterative use of a name for a cake aimed at children, which is itself dictated by the shape of the depicted creature, a caterpillar, constitutes trade mark infringement. In other words: is CUTHBERT THE CATERPILLAR confusingly similar to COLIN THE CATERPILLAR for a cake in the shape of… a caterpillar?

Alliterative caterpillar cakes are apparently popular as other supermarkets have their own variations. Waitrose sells CECIL THE CATERPILLAR, Asda has CLYDE THE CATERPILLAR and Tesco offers CURLY THE CATERPILLAR. They are all cylindrical chocolate cakes.

We look forward to seeing how the case develops and what emerges from this particular caterpillar.