Cadbury fails to clear Whittaker’s Berry Forest

No confusion between Whittaker's Berry Forest word mark and Cadbury's Black Forest, rules New Zealand High Court judge

Cadbury has lost its bid to annul rival Whittaker’s New Zealand trademark for Berry Forest chocolate.

Mondelēz International-owned Cadbury had argued that Whittaker’s Berry Forest trademark was too similar to its own Black Forest trademark.

But Justice Dunningham in the High Court of New Zealand dismissed Cadbury’s appeal and upheld an earlier ruling by the Intellectual Property Office.

Justice Dunningham said that while the words were similar, Cadbury’s Black Forest mark called to mind the ingredients of a black forest gateau while Whittaker’s Berry Forest “invokes the concept of a combination of berries”. He therefore ruled that there was no confusion between the marks.

Cadbury and Whittaker reaction

A Mondelēz International Australia-New Zealand spokesperson said: “While the Court’s decision is disappointing given the obvious similarities, we’re confident it won’t affect kiwis’ love of Cadbury Black Forest.”

Jasmine Currie, brand manager for Whittaker’s, said: “The trade mark application for Berry Forest filed in Australia did not have Black Forest cited against it as too close and Cadbury did not oppose Berry Forest application in Australia. The trade mark application for Berry Forest filed in New Zealand also did not have Black Forest cited against it as too close.”

“Cadbury lost its opposition to registration of our Berry Forest application in New Zealand and Cadbury also lost on all grounds in its appeal to the High Court,” she continued.

New Zealand chocolate market

Cadbury has been the chocolate market leader in New Zealand for almost 50 years and commanded a 51% share in 2009.

The company launched Cadbury Black Forest chocolate and registered the Black Forest trademark in 1992. The bar uses Cadbury Dairy Milk chocolate with cherry-flavored jelly and chocolate biscuit pieces.

The court heard that Cadbury Black Forest chocolate was a top ten seller for the company.

Whittaker’s currently sells a product called “Berry and Biscuit”, a molded chocolate block with biscuit pieces and mixed fruits. The company is expected to use the Berry Forest trademark, registered in 2010, for this product, although Whittaker’s has yet to reveal its intentions. 

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