Caterpillars, trade marks and social media
How should brand owners approach the legal and reputational impacts of taking action to protect their trade marks?
Social media presents brand owners with both opportunities and risks that must be carefully navigated if a brand is to succeed in the 21st century.
With internet users spending an average of 2 hours 25 minutes a day on social media it is fertile ground for brands looking to increase their visibility, engage in ‘trending’ issues and topics, and connect with consumers.
The relatively low-cost nature of social media advertising has also led to a shift away from marketing strategies focused primarily on increasing sales (previously essential to ensure a return on the expense of, for example, a large-scale billboard campaign) to those aimed at promoting brand awareness.
One social media management company found that 70% of the marketeers it asked considered increased brand awareness to be their biggest goal for social media, with sales/lead generation coming in second place.
However, the 24/7 exposure brought about by social media also increases brand owners’ vulnerability to bad publicity.
For example, since working as a Chartered Trade Mark Attorney, I can recount numerous news stories concerning overzealous cease and desist letters sent on behalf of a large company to a comparatively smaller party, and the PR ramifications of such action.
I have previously written an article on this topic in relation to Hugo Boss.
This vulnerability was further highlighted earlier this year when Marks & Spencer initiated proceedings against competitor supermarket Aldi for what it sees as being an infringement of its ‘Colin the Caterpillar’ trade marks, without anticipating how the dispute would play out on social media.
When making decisions on trade mark enforcement, brand owners would thus be mistaken to believe that judgement is limited to the traditional courts. Social media allows anyone to have an opinion, and to share it in an instant. Legal strategies should therefore no longer exclusively concern issues of confusion, dilution, and free-riding, but also the perception of any action by consumers.
Colin v Cuthbert: a case study
In April 2021, Marks & Spencer initiated legal proceedings in the High Court against Aldi, claiming that the design of the supermarket’s ‘Cuthbert the Caterpillar’ cake infringes their registered trade mark for ‘Colin the Caterpillar’, and rides on the coat-tails of their reputation.
Despite the case being in its infancy and the available details being limited, what followed was a media frenzy, orchestrated by Aldi, which largely played out on Twitter.
Rather than issue an official statement on the situation, Aldi took to social media on 15th April to publicly comment on the court claim with a tweet inspired by M&S’s well-known slogan:-
That same day, the hashtag #FreeCuthbert was trending on the platform, and within a week had amassed many tens of thousands of tweets from consumers.
Meanwhile, the Twitter feed of M&S remained notably silent until 19th April, when they shared the following meme:-
Whilst on the face of it this situation may seem fairly trivial, it demonstrates a number of issues that need to be unpacked.
How each company handled the situation on social media
This case displays two contrasting approaches, one of which was highly successful in engaging consumers, enhancing the perception of their brand online, and generating favourable publicity.
Notably, Aldi made the first move with a brief, ironic comment and the creation of a hashtag that allowed consumers to engage with the dispute and meant that the issue became public knowledge in a short space of time. In contrast, M&S’s four-day silence provided Aldi with the opportunity to control the narrative around the matter and garner popular support.
After the initial mic-drop comment, Aldi then rode the wave by increasing their social media output on 16 April, posting 11 tweets featuring the hashtag.
The nature of these posts varied from direct critiques of M&S (“Marks & Snitches more like. #FreeCuthbert”, retweeted over 31,000 times), building up rapport with other competitors against M&S (“Cecil, Wiggles, Curly, Clyde. We got you. @Waitrose @Sainsburys @Tesco @Asda #FreeCuthbert”, being a reference to the caterpillar cakes of these parties), and creating humorous content around the ‘Cuthbert’ character:-
Aldi’s marketing strategy then underwent a further evolution when they announced that they would be bringing back a limited edition Cuthbert the Caterpillar cake and donating all profits to cancer charities.
Aldi launched a new hashtag, #CaterpillarsforCancer, and publicly contacted M&S about the campaign to invite them to join the initiative.
However, rather than continuing their strategy of silence, M&S put out the following response which misjudged the public mood and led to considerable criticism:-
M&S found themselves accused of being uncharitable, despite Colin the Caterpillar being a key part of the company’s partnership with the cancer charity Macmillan.
The companies’ handling of the matter on social media has had implications for consumer perceptions of the brands and their reputations. In particular, whilst consumers loved Aldi’s reaction, there were predominantly negative responses regarding M&S:-
Aldi’s management of the situation is a masterclass in PR – transforming a dispute in which they may be found to have acted unlawfully (to be determined by a Judge) into a marketing opportunity in which their responsive, relevant, and reactive strategy contrasts markedly with M&S’s more traditional, formal, and potentially out-of-touch approach to PR.
Aldi’s reaction has made the claim appear almost ridiculous such that, irrespective of the eventual legal outcome, from the point of view of consumers the dispute has already been overwhelmingly settled in Aldi’s favour.
Why this case captured public attention
This dispute raises the question of why the reaction amongst consumers was so strong in this case compared to others (after all, it’s not the first time Aldi has been the defendant in an IP claim).
Firstly, the publicity risks in this matter are likely to have been greater because the disputed product, a cake in the shape of a caterpillar, is far more conspicuous than a packet of salmon or a bottle of hair oil.
Caterpillar cakes have been an icon of British birthday parties since the 90s and, as a result, are well-loved by consumers. It is thus inevitable that, when such a product is centre-stage in a legal dispute, it will pique public interest.
Secondly, Aldi’s response was helped by the fact that the disputed product is a character, such that it can easily be personified in order to create a social media narrative that resonates with consumers.
This allowed Aldi to create the #FreeCuthbert hashtag, to reach out to M&S to ask if “Colin and Cuthbert [could] be besties?”, and to launch Cuthbert’s charity sky dive, in such a way that would have been impossible if the dispute concerned virtually any other product.
Considerations for brand owners looking to enforce IP rights
Wearing my trade mark attorney hat, I must admit to finding myself becoming slightly jaded when scrolling through the social media comments – not only in the Colin v Cuthbert matter, but also those of Aldi’s subsequent posts (involving a clothing campaign featuring the slogan ‘JUST DONE IT’, and a range of McDonald’s inspired products including a ‘Big Stack’).
As much as I appreciate the importance of brand protection, it seems an inescapable reality that ‘lookalike’ and ‘copycat’ products are popular with consumers.
This is evidenced not only by Aldi’s success (being awarded ‘Favourite Supermarket’ in the Good Housekeeping Food Awards 2019 and 2020, as voted for by the British public), but also in research.
A UK study carried out by Qing Wang of Warwick Business School and Paurav Shukla of Glasgow Caledonian University London (published in 2013) found that consumers respond positively to products which look the same as those of competitors, which in turn influences their purchasing decisions.
In particular, Professor Wang noted that “highlighting similarity between competing products in marketing communications may have a positive effect on consumers’ choice confidence”.
In fact, having regard to Aldi’s inherently risky business model (which is based on offering own-brand products designed to mimic or bring to mind the goods of other parties), we could interpret their decision to address the dispute with M&S head-on in the public domain as an ingenious way of not only appealing to consumers but also deterring other brand owners who might be minded to launch IP claims against them.
So, does all this mean that brand owners should be fearful of taking legal action against imitation products?
Social media provides so much opportunity for brand creation, that protecting IP rights in order to distinguish your goods/services remains as important as ever.
Fundamentally, trade mark law exists to protect businesses and their assets, and parties should not be afraid to seek redress where they believe that their rights are being compromised.
That said, how such a dispute might play out on social media or be perceived by consumers should not be overlooked, and businesses should therefore be mindful of PR considerations when initiating legal action.
For instance, is the nature of the product such that the dispute might prove particularly controversial? If the other party turns to social media to publicise the claim, how are consumers likely to respond? Does the other party have equivalent resources, or might your action be perceived as being heavy-handed? Synergy between legal and PR decision-making is therefore essential.
The future for trade mark disputes
In many ways, Colin v Cuthbert seems a unique case since it constitutes a ‘perfect storm’ of Aldi’s growing popularity, consumers’ attitudes to ‘lookalikes’, an iconic disputed product, and two contrasting social media responses.
However, whilst social media risks should not, in themselves, deter brand owners from seeking to prevent unlawful acts by others, they should always be taken into account to guide and inform the battles a business chooses to fight.
Nevertheless, it is also worth remembering that the fast-paced nature of social media means that it can be a fickle environment, and brands often have the potential to recover almost as quickly as they were harmed. Businesses should therefore weigh up the potential value of the infringement claim against the likely only temporary reputational damage.
This article was first published on the CITMA website on 20 July 2021