We need to talk about Cuthbert
May 7, 2021
Author: Phil Leonard
No doubt the news about Mr Colin the Caterpillar and the dastardly imposter Cuthbert has already filtered down to many people.
You may even have picked a side. Are you Team Colin? Or Team Cuthbert?
Most people will be focus on respective ingredients, tastes, looks and which name they prefer. But for IP lawyers, what we really care about is whether Cuthbert is:
(1) Identical or confusingly similar to Colin; and/or
(2) Taking unfair advantage of, or is detrimental to, Colin’s distinctive character.
There is huge scope for interpretation of those tests and a vast array of applicable case law. A moveable feast, if you will, that lawyers can delve into in order to support their client’s case.
Will M&S be able to prove  that consumers will likely be confused between Colin and Cuthbert? Will M&S be able to prove (under point (2) above) that it has suffered one of three types of injury:
1. Detriment to the distinctive character of the mark ("dilution").
2. Detriment to the repute of the mark ("tarnishment").
3. Taking unfair advantage of the distinctive character or repute of the trade mark. This commonly known as "free-riding" on the coat-tails of the well-known mark.
In addition to establishing one of these “injuries”, M&S will need to prove a change in economic behaviour on the part of the relevant public. This can be hard to establish.
Team Waterfront is reluctant to predict a winner, but it does expect Colin to have a tough uphill crawl.
The available remedies will also be of particular concern to M&S in this case.
No doubt M&S will seek non-monetary remedies for the infringement. These could include (i) an injunction to prohibit Aldi from selling, stocking, manufacturing and advertising Cuthbert, amongst other things and (ii) an order for the destruction of all Cuthberts in the world ☹.
In terms of monetary remedies, M&S might be entitled to:
• Lost royalty or licence fee.
• Lost profits from any price reduction necessitated by the infringement.
• Compensation for injury to the mark's reputation.
Successful claimants need to choose between damages or profits, making an assessment as to which will be the most lucrative option. However, in most IP cases, what the claimants are generally most interested in is the injunction, which in this case would force Cuthbert to change, presumably his name and/or his appearance.
While it appears that the litigation is at an early stage, data from Rise at Seven, a creative SEO agency, shows that the social media battle is more developed with Aldi having dominated the great Caterpillar social media battle with over 460,000 social media engagements on the topic (compared to 250,000 for M&S) and online news sentiment of +8.5% (compared to -134% for M&S).
This could conceivably lead to increased sales of Cuthberts. But will these extra sales result in an extra large damages or lost profits bill at the end of the litigation?
If you have concerns about trade mark infringement that is affecting your business or brand, please contact Waterfront here and a member of our IP & Disputes team will contact you for a free initial consultation.
 At the time of writing, we are not clear what exact claims have been asserted by M&S, so we have used our best guestimate!