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Trade Mark Infringement: Is Cuthbert 'Free-Riding' on Colin?

By Makeda Brown - Law Student @ Queens' College, Cambridge


#FreeCuthbert began trending on Twitter in April after M&S announced that it would be bringing legal proceedings against Aldi. M&S claimed that Aldi have infringed the trade marks which M&S owns for the name ‘Colin the Caterpillar’, the packaging, and the shape of the cake.

This dispute is centred around trade mark law. Trade mark infringement is when a third-party (i.e., Aldi), uses a trade mark on their goods (i.e., ‘Cuthbert the Caterpillar’), without permission from the owner of a similar trade mark that is already on the trade mark register (i.e., M&S’s ‘Colin the Caterpillar’).

M&S has argued that the similarity of the products amounts to an infringement of its trade mark as such similarity has allowed Aldi to gain an ‘unfair advantage’ (otherwise known as ‘free-riding’) – Aldi has reaped the benefits of the reputation built up by ‘Colin the Caterpillar’, without having incurred any expense i.e., advertising, to do so. However, whilst such similarity may have afforded Aldi an advantage, the Court will need to consider whether such an advantage was unfair.

In L’Oreal v Bellure, the CJEU held that ‘free-riding’ is actionable per se i.e., the party bringing the claim does not have to prove that they have suffered loss. The decision was heavily criticised by many, including Jacobs LJ in the Court of Appeal, for allowing large companies to obtain a monopoly over products at the expense of those who cannot afford to pay premium prices for goods and services. M&S v Aldi is the latest in a saga of cases which has debated whether we can justify ‘free-riding’ claims being actionable per se.

Being an intellectual property right, trade marks are exclusive by nature, meaning that only the creator can use the trade mark unless a third-party is given permission by the owner, by purchasing a licence for example. Whenever a right is exclusive, the first step is always to consider whether the right can be justified.

To determine whether we should #FreeCuthbert or #SaveColin, one must consider why English law protects trade marks in the first place. There are two commonly recognised justifications:

  • Origin function – a trade mark allows consumers to identify the origin of the goods or services which they are purchasing.

  • Competition – if there were no trade marks, consumers would be unable to recognise differing qualities of goods or services. This means that they would be unwilling to pay varying prices for goods/services as there would be no immediate way of assessing price-worthiness by product or service quality.

Such justifications give rise to further questions which fuel the debate surrounding the actionability of ‘unfair advantage’ claims:

  • Will consumers who shop at Aldi actually mistake Cuthbert for Colin?

  • Are those who formerly purchased Colin the Caterpillar from M&S, now likely to purchase Cuthbert the Caterpillar, taking away from M&S’s profits?

  • What should trade marks protect – investment in product quality or investment in advertising?

This case will be heard by the High Court who will consider M&S’s claim by, seeking to provide answers to some of these questions. If the Court decides that granting M&S a monopoly will uphold the competition aspect of trade mark protection, then Cuthbert is sure to get the chop from Aldi’s shelves.

Further reading:

  1. s.10(3) Trade Mark Act 1994

  2. ‘Because You’re Worth It: L’Oreal and the Prohibition on Free Riding’ – Gangjee and Burrell

  3. L’Oreal S.A. v Bellure N.V. [2010] EWCA Civ 535 (Court of Appeal)

  4. L’Oreal S.A. v Bellure N.V., Case C-487/07 (European Court of Justice)


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