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