Mike4 wrote:I'm really not getting this. So you make a cake in the shape of a caterpillar, and so do some other supermarkets.
So what? It's hardly a world-beating original idea.
What if I made a cake in the shape of a dog? Should I be able to stop you from making a dog-cake?
It's an action for
trademark infringement. The first clue is in the first part of the word - to establish a trademark, you've got to be engaging in a 'trade', i.e. a business venture. So no, just making a cake in the shape of a dog doesn't establish a trademark for you - you've got to establish a business of making cakes in the shape of a dog and selling them to do that.
Supposing that you did that, the second clue is in the second part of the word - a trademark needs to 'mark' your product, i.e. make it distinctively different from other dog-shaped cakes in the market. The idea of making a cake in the shape of a dog is hardly new (a quick internet search is enough to establish that), and even if it were, I very much doubt that "dog-shaped cake" is specific enough to count as a trademark. The idea behind trademarks is
not to allow people to monopolise a type of product, but just to ensure that competitors in the market for a type of product can protect themselves from others passing their products off as theirs. For example, if you were to set up in business making dog-shaped cakes, and sold them as "Mike4's Dog-Shaped Cakes", you could probably (*) trademark that term. The result of doing so would be that no-one else would be allowed to sell dog-shaped cakes as "Mike4's Dog-Shaped Cakes" or anything similar enough to be reasonably easily confused with it. And if for example you'd put a lot of effort into establishing the reputation of your dog-shaped cakes as being particularly good quality cakes for their price, that would enable you to protect yourself against having your business taken away
and the reputation of your cakes damaged by competitors making poor-quality cakes from the cheapest possible ingredients and passing them off as your cakes. It's quite a limited form of intellectual property protection: the trademark won't protect you against competitors making poor-quality cakes from the cheapest possible ingredients entering the market - just against them trying to pretend their cakes are your cakes, or more subtly by making the difference from your cakes rather non-obvious.
So I'd guess that the legal case is going to mainly be about how easily the "Colin the Caterpillar" and "Cuthbert the Caterpillar" cakes are confused with each other by typical customers. The names are different, but they're both alliterative - is the typical customer looking for a child's birthday cake and who has heard about "Colin the Caterpillar" going to remember the exact name, or just that it's a caterpillar whose name starts with "C"? And given that their contact with the products on the supermarket shelves is as packaged cakes, how similar is their packaging - if they've seen the boxed "Colin the Caterpillar" on the M&S shelves but been put off by the price, if they then see the boxed "Cuthbert the Caterpillar" on the Aldi shelves, how likely are they to have the impression that it's the same product and either not notice the packaging differences or notice that it's not quite the same but think the differences don't matter? And a whole host of similar questions...
I.e. it's a question of whether the products have been made similar enough for trademark infringement to have happened. That "similar enough" is rather a grey area legally, of course, and deciding whether or not "Cuthbert the Caterpillar" is sufficiently different from "Colin the Caterpillar" is basically what this case is about.
So anyway, if you want to set up in business selling dog-shaped cakes, feel free! But if you want to protect the reputation of your cakes, you will probably want to come up with a trademark you can associate with them - and if you want to protect yourself from lawsuits for trademark infringement, research the market and make certain your dog-shaped cakes are distinctively different from those made by others.
One final comment is that trademarks are
not patents. I doubt that the invention of making a dog-shaped cake has ever been patentable - I'd be pretty certain that making cakes the shape of some creature or object has always been 'prior art' (i.e. not a
new invention) since long before modern patent law came into effect. And making an existing invention more specific by adding an obviously-possible detail (i.e. in this case, the creature or object specifically being a dog) isn't enough to change it into a new invention unless it gives a surprising new benefit. I equally doubt that the invention of a caterpillar-shaped cake has ever been patentable - but even if it was and M&S got the patent on it back when they introduced the product about 30 years ago (according to the OP's BBC link), the patent would be long-expired by now... Basically, patents come as close as intellectual property does to protecting ideas (they actually protect inventions, but at least some inventions come pretty close to being no more than ideas) and they give quite wide-ranging protection, but they are quite limited with regard to what they can protect - e.g. it's got to be new - and strictly limited with regard to how long they can protect an invention for. Trademarks are pretty much the opposite - they don't even come close to protecting ideas and the protection they give is very limited, but they do last for as long as you keep them in use for your trade.
(*) "Probably" mainly because I have no idea what trademarks already exist in the dog-shaped cake market! For instance, if someone else was already selling dog-shaped cakes under the trademark "Mark4's Dog-Shaped Cakes", I'm pretty certain you wouldn't be allowed to trademark "Mike4's Dog-Shaped Cakes"...
Gengulphus
