Whittaker's has come out on top in the latest stoush between
New Zealand's chocolate kings.
A decision from the High Court in Wellington has found in
favour of the confectionary company, dismissing a bid by its
rival Cadbury to stop it from registering the trademark
Cadbury had appealed against a decision from the Assistant
Commissioner of Trade Marks - which gave the go-ahead to
Whittaker's to use the Berry Forest name - in the High Court
The company based its appeal on similarities it drew between
the Berry Forest mark and it's own Black Forest trade mark.
Lawyer Rosemary Wallis argued at the time people were likely
to associate the Berry Forest name with Cadbury and its Black
This meant consumers were likely to be confused or deceived,
amounting to a breach of the Fair Trading Act.
However Justice Rachel Dunningham, who heard the High Court
appeal, disagreed, finding the marks were not similar enough
to create confusion between Cadbury and Whittaker's products.
While she acknowledged there were "undeniable similarities
between the individual words" used in the relevant trade
marks, she agreed with evidence presented by Whittaker's
showing "Black Forest" was more likely to be associated with
flavours of a black forest gateau cake.
A key idea the Berry Forest mark brought to mind was the
phrase "fruits of the forest", which was a term for a mixture
of berries, Justice Dunningham said in her decision.
She considered the similarities between the two marks were
"insufficient" to risk confusion or deception among
Justice Dunningham dismissed Cadbury's appeal.
- By Teuila Fuatai of APNZ