Chocolate makers battle in court

HAMISH MCNICOL
Last updated 11:55 27/03/2014

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Global chocolate giant Cadbury's latest block is attempting to stop its Kiwi competitor Whittaker's trademarking the name, "Berry Forest".

Cadbury said "Berry Forest", which Whittaker's applied for in 2010, was too similar to its trademarked "Black Forest" chocolate and would deceive or confuse customers.

However, the Intellectual Property Office in September ruled that Berry Forest was sufficiently different, and could be registered as a trade mark.

Cadbury has appealed the decision in the High Court in Wellington this morning.

The September decision said Cadbury's Black Forest chocolate, which contains cherry jellies and biscuit pieces, was likely to be thought of as similar to the famous German black forest cake, a chocolate sponge with a layer of cherries or cherry jam and whipped cream.

"In the context of confectionary ... the dominant concept that is called to mind will be the concept of black forest gateau," Jennie Walden, assistant commissioner of trade marks, said.

She found Berry Forest was likely to be taken to mean a forest of berries.

"I find that, as a whole, the opposed mark is visually, aurally, and, most importantly, conceptually dissimilar to the opponent's registered mark," Walden said.

Cadbury's lawyer, Rosemary Wallis, said this morning the Black Forest brand, first sold as moulded chocolate in 1992, had a high reputation in New Zealand.

Cadbury had sold chocolate here since the 1920s, accounting for about 51 per cent of the market.

In the year to May 2010, Cadbury sold $110 million of its moulded block Black Forest chocolate, making it about the fifth or sixth most popular chocolate choice.

The reputation of the product in New Zealand was such that "the use of Berry Forest would confuse or deceive", Wallis said.

Cadbury was the only company selling Black Forest chocolate in the country, but Whittaker's had a black forest cake-styled block, named Berry and Chocolate.

It was not clear if Whittaker's product would be renamed Berry Forest, should the trade mark be registered, she said.

But Cadbury's Black Forest had also built its own reputation within New Zealand, separately from the German cake black forest.

"That mark has come to mean something to consumers, in association with Cadbury," Wallis said.

However, Whittaker's lawyer, Nigel Robb, said the appellant's case was really just it having another run at opposing the trade mark.

There was nothing incorrect in the assistant commissioner's decision, he said.

"They've sought to narrow it down to blocks and bars.

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"But the mark was applied for as confectionary."

It was "going too far" to suggest Whittaker's Berry and Chocolate block would simply be renamed Berry Forest, if the mark was granted, Robb said.

Whittaker's evidence on this point went only as far as not telling Cadbury what product the mark would be used for, but this did not mean the products would be one and the same.

Today's hearing is the latest in the chocolate wars between the two companies which started 117 years ago when James Henry Whittaker quit his apprenticeship at Cadbury to start his own company.

It gained an extra bitterness in recent years as Whittaker's replaced Cadbury as New Zealand's most trusted brand in a Reader's Digest survey.

Cadbury had held the top spot for six years running, but in 2010 fell to 36th place amid widespread criticism of its use of environmentally destructive palm oil.

Justice Rachel Dunningham reserved her decision.

- Fairfax Media

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