In 2021, Marks & Spencer launched legal action against Aldi over the now-famous Colin the Caterpillar and Cuthbert the Caterpillar cakes, and the story quickly became national news. The case sparked widespread debate, with many questioning whether Aldi had gone too far in creating a similar product, or whether Marks & Spencer had overreacted. Public opinion was divided, and many people rallied behind Aldi, with several other supermarkets even joining the conversation on social media to show their support for Cuthbert in a light-hearted display of brand banter.
While the dispute captured public attention thanks to its light-hearted subject matter, it also highlighted an important area of UK intellectual property law that many businesses know little about: passing off.
Unlike trade mark infringement, a passing off claim does not necessarily rely on having a registered trade mark. Instead, it protects the goodwill and reputation that a business has built over time, preventing competitors from misleading consumers into believing their products or services are associated with another brand.
For businesses of all sizes, understanding passing off claims is essential. Whether you’re launching a new product, growing an established brand, or concerned that another business is benefiting from your reputation, knowing your legal rights can help you protect the value you’ve worked hard to build.
In this guide, our UK and international passing off specialists explain what a passing off claim is, explore the Colin vs Cuthbert dispute as a real-world example, help you understand whether you may have grounds to bring a passing off claim, and outline the steps you can take if another business is attempting to pass off its products or services as your own.
What Is a Passing Off Claim?
A passing off claim is a common law legal action that enables a business to protect its brand against another party that misrepresents its goods or services, leading consumers to believe there is a commercial connection between the two businesses.
Passing off protects businesses that have developed a valuable reputation through trading, even where certain elements of their brand may not be formally registered. In practice, a passing off claim often arises where another business adopts branding, packaging, product names or other distinguishing features that are sufficiently similar to create confusion in the marketplace.
It’s important to note that simply creating a similar product is not automatically passing off. Competition is perfectly lawful. The issue arises where similarities are likely to mislead consumers into believing there is some form of commercial connection between the two businesses.
For this reason, passing off claims often involve careful consideration of consumer perception, branding, marketing and the overall impression created by the products or services in question.
What Are The Three Elements of a Passing Off Claim?
To succeed in a passing off claim, the claimant must satisfy three key legal elements, commonly known as the ‘classical trinity’. This formulation of passing off was set out by Lord Oliver of Aylmerton in the House of Lords, in 1990 (Gov.uk, 2026).
The three elements for passing off claims are:
1. Goodwill
The first requirement in the classical trinity is establishing goodwill.
Goodwill refers to the reputation a business has built with its customers. It represents the commercial value attached to a brand through factors such as customer loyalty, recognition and trust.
What evidence can be used to demonstrate goodwill in a passing off claim?
Evidence used to demonstrate goodwill could include:
- Sales figures
- Length of time trading
- Marketing and advertising activity
- Customer testimonials
- Press coverage
- Social media presence
- Market share
Without goodwill, there is generally nothing for the law of passing off to protect.
2. Misrepresentation
The second element is misrepresentation.
Misrepresentation does not require deliberate deception or outrightly acting as another brand, business, or product. Instead, the courts consider whether the defendant’s actions are likely to lead consumers to believe that their goods or services are connected with the claimant’s business.
What could count as a misrepresentation in a passing off claim?
Things that could be classed as misrepresentation include:
- Similar product packaging
- Similar brand names
- Comparable logos or branding
- Product shapes or presentation
- Marketing that creates a misleading association
The key question is whether the average consumer is likely to be confused.
Even if customers eventually realise the products come from different businesses, initial confusion may still be relevant when assessing whether passing off has occurred.
3. Damage
Finally, to be able to make a successful passing off claim, the claimant must demonstrate that the misrepresentation has caused, or is likely to cause, damage to their goodwill.
Alleged damage from passing off may include:
- Lost sales
- Damage to reputation
- Brand dilution
- Loss of exclusivity
- Reduced consumer confidence
In some cases, the mere risk of damage may be sufficient, particularly where an established brand has invested significant time and resources into developing its reputation.
Together, these three elements – goodwill, misrepresentation and damage – form the legal foundation of every successful passing off claim.
Colin vs Cuthbert: An Example of a Passing Off Claim
The infamous dispute between Marks & Spencer‘s Colin the Caterpillar and Aldi‘s Cuthbert the Caterpillar is perhaps one of the UK’s most recognisable examples of a passing off claim.
Originally launched by Marks & Spencer in 1990, Colin the Caterpillar has become well recognised. Over the years, Colin the Caterpillar cake has developed a strong reputation with consumers, becoming synonymous with birthdays, celebrations and family occasions. M&S has since expanded the Colin brand into a wider product range, including soft toys, confectionery, tableware, and more, reinforcing its recognition and commercial value.
In 2021, Marks & Spencer brought legal proceedings against Aldi, alleging that Aldi’s Cuthbert the Caterpillar cake infringed its intellectual property rights. M&S wanted Aldi to remove the product from sale and agree not to sell anything similar in the future (BBC News, 2021). Alongside claims relating to registered trade marks, M&S also relied on the law of passing off.
At the heart of the passing off claim was the argument that Colin had built substantial goodwill over several decades, and that similarities between the two products could lead consumers to believe there was an association between them.
Although the cakes featured different names, there were a number of similarities that attracted attention, including:
- Comparable caterpillar-shaped chocolate cakes.
- Similar facial features and decorative elements.
- Similar packaging presentation.
- Positioning as celebration cakes for similar occasions.
Ultimately, in 2022, the case was settled privately between the parties, meaning the courts never reached a final decision on whether passing off had occurred (Sky News, 2022).
However, the dispute remains a valuable example of passing off because it demonstrates the types of factors that are considered when assessing a passing off claim. It wasn’t just about whether two cakes looked alike. The legal question centred on whether M&S had established goodwill, whether Aldi’s product amounted to a misrepresentation, and whether that was likely to damage the Colin brand.
The Difference Between Passing Off and Trade Mark Infringement
Whilst passing off and trade mark infringement are often mentioned together, they are separate legal causes of action with different requirements. Both are designed to protect brands, but they do so in different ways. The graphic below explains how.
One of the biggest differences is that a trade mark registration gives businesses an exclusive legal right to use that mark in relation to the goods or services it covers.
With passing off, there is no automatic right. Instead, businesses must prove that they have built sufficient goodwill and that another party’s actions are causing, or are likely to cause, consumer confusion and commercial damage.
This is one of the reasons why registering your trade marks at an early stage can be so valuable. Registration provides a stronger legal foundation for enforcing your rights and may reduce the evidential burden if a dispute arises in the future.
That said, passing off remains an important legal remedy, particularly where valuable goodwill extends beyond the scope of registered trade marks or where elements of a brand have not been formally protected.
Can I Make a Passing Off Claim?
If another business is using branding, packaging or marketing that appears similar to yours, you might have grounds to bring a passing off claim.
For example, if…
- Your business has developed a recognised reputation or goodwill.
- Another business is presenting its goods or services in a way that could mislead consumers.
- Customers have confused the two businesses, or there is a real likelihood of confusion.
- Your business has suffered, or is likely to suffer, financial or reputational damage as a result.
However, businesses are entitled to compete, and many products within the same market naturally share certain characteristics. When a passing off claim is made, courts will look at the overall impression created, the reputation of the original business, and whether consumers are genuinely likely to be misled.
This is why obtaining specialist legal advice on passing off is so important. One of Panoramix’s experienced intellectual property professionals can assess the strength of your position, review the available evidence, and advise on the most appropriate course of action before matters escalate.
Equally, if you’re developing a new brand or product, seeking advice before launch can help identify potential risks and reduce the likelihood of infringing another business’s intellectual property rights.
At Panoramix IP, we offer a free 30-minute IP consultation, where we can offer advice on your situation, and advise on whether we believe you may have grounds for a successful passing off claim.
How Do I Make a Passing Off Claim?
If you believe another business is unfairly benefiting from your brand’s reputation, it’s important to act promptly. While every dispute is different, the process of making a passing off claim typically involves gathering evidence, assessing the legal position and, where appropriate, taking action to protect your rights.
1. Establish Your Goodwill
The first step is demonstrating that your business has built goodwill in relation to the relevant products or services.
Evidence may include:
- Trading history.
- Sales figures.
- Marketing and advertising campaigns.
- Customer reviews and testimonials.
- Website traffic and social media engagement.
- Press coverage and industry recognition.
The stronger the evidence of your reputation, the stronger the foundation of your passing off claim is likely to be.
2. Gather Evidence of Misrepresentation
Next, you’ll need to consider whether another business is making a representation that is likely to confuse consumers.
Useful evidence might include:
- Photographs of competing products.
- Examples of similar branding or packaging.
- Marketing materials.
- Customer enquiries demonstrating confusion.
- Social media comments or reviews.
- Correspondence from distributors or retailers.
It’s important to remember that actual confusion is not always required. In many cases, evidence that consumers are likely to be misled may be sufficient.
3. Demonstrate Damage
You’ll also need to consider how the alleged misrepresentation has affected your business.
Claims of damage may include:
- Lost sales.
- Damage to your brand’s reputation.
- Loss of licensing opportunities.
- Reduced exclusivity within the market.
- Harm to customer trust.
In some circumstances, the likelihood of future damage may also be relevant.
4. Seek Specialist Intellectual Property Advice
Passing off claims can be legally and evidentially complex. At Panoramix IP, our top passing off lawyers help businesses protect their brands through practical, commercially focused intellectual property advice. From trade mark protection and brand strategy to passing off claims and dispute resolution, our experienced team can help you understand your options and take the most appropriate next steps.
Depending on the circumstances, these may include:
- Reviewing the available evidence, or gathering evidence.
- Advising on the prospects of success.
- Preparing and sending a letter before action.
- Exploring settlement or alternative dispute resolution.
- Commencing court proceedings where necessary.
Equally, if allegations of passing off have been made against your business, obtaining early advice from our top rated passing off lawyers can help you assess your options and respond appropriately.
If you’d like to discuss a potential passing off claim or any other intellectual property matter, get in touch with our passing off lawyers for tailored advice.
