You might want to grab a cup of tea and a block of Cadbury’s “Black Forest” chocolate to settle in and read this blog post -or, if you prefer, a block of Whittaker’s “Berry Forest” chocolate. While Australians have had a choice between the two for several years now, New Zealanders will also be able to have an option soon, thanks to the Cadbury v Whittaker decision that was recently handed down by the High Court of New Zealand.

This case was an appeal by Cadbury UK Limited (‘Cadbury’) of a decision of the Assistant Commissioner of Trade Marks, who had approved the application by  J H Whittaker & Sons Limited (‘Whittaker’) to register the trade mark “BERRY FOREST” (the ‘Whittaker mark’).

Under section 17(1)(a) of the Trade Marks Act 2002 (NZ), Cadbury argued that the Whittaker mark should not be registered as it was similar to  Cadbury’s trade mark “BLACK FOREST” and its use would be likely to deceive or confuse consumers. Cadbury was required to prove that its mark had acquired sufficient reputation in the NZ market by the relevant date (being the date of filing the trade mark application in 2010). The onus then shifted to Whittakers to prove it was not reasonably likely that there would be confusion and deception between the two marks, amongst a substantial number of persons in that NZ market. Dunningham J ultimately agreed with the  Assistant Commissioner in finding that that although Cadbury established that its mark had acquired sufficient reputation, overall, the “BERRY FOREST” mark was visually, aurally and most importantly, conceptually dissimilar.  Whittaker’s mark was therefore unlikely to deceive or confuse.

Cadbury argued that the Assistant Commissioner had broken down the respective marks to their individual elements, as opposed to considering the marks as a whole. Dunningham J accepted that the proper approach in comparing trade marks was to consider the overall impression of the mark, bearing in mind their distinctive and dominant elements. Cadbury claimed that there was sufficient visual and aural similarity between the two marks to cause confusion, and that the most distinctive part of the marks –“FOREST”- was actually identical. It claimed that the risk of confusion was exacerbated by the fact that chocolate is the kind of good purchased on a ‘casual or impulsive basis’ (something we are well aware of at IP Whiteboard!) and there would be times when the products were sold side by side without differentiation. In contrast, Whittaker emphasised that while the combination “BLACK FOREST” is an indication of a flavour, when the word “forest” is used in conjunction with the word “berry”, it was more likely to conjure up concepts such as berries being fruits of the forest.

Dunningham J assessed that there were “undeniable similarities” between the individual words used in the mark. However, she accepted Whittaker’s argument that the trade mark “BLACK FOREST” instantly called to mind a flavour combination similar to a black forest gateau, whereas “BERRY FOREST” invoked the concept of a combination of berries. The similarities were insufficient to cause confusion or deception when she considered the marks as a whole.

Following on from the finding that registration of the mark would not likely cause confusion or deception, Dunningham J subsequently found against Cadbury under a number of other provisions of the Act. One of those grounds was under section 25(1)(c). Cadbury claimed that registration of the Whittaker mark would be likely to prejudice the interests of its already well known mark. Cadbury submitted that because its product had such a strong place in the New Zealand market, registration and use of the opposed mark would blur the distinctiveness of its mark and dilute its strength, causing it prejudice. However, Dunningham J considered that there must be a risk of deception or confusion before prejudice could arise, and therefore this ground also failed.

This case illustrates how the addition of one word may help an otherwise identical mark evoke a completely different concept, enough to overcome any visual or aural similarities that might otherwise lead to a risk of confusion or deception. This is referred to in the European trade mark case law as the counteraction theory, and a leading case is that of the European Court of Justice in Case C-206/04P Muelhens. That case considered the comparison between the earlier mark SIR (stylised) and the applied for mark ZIRH. In assessing the likelihood of confusion, the Court of Justice held that any phonetic similarities could be counteracted by conceptual differences between the signs.

This type of reasoning is applied in Australia too, and perhaps most commonly cited decision is that inGardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR 485, in which the marks “GARDEN” and “GARDENIA” were held not to be deceptively similar. This was on the basis that confusion is mitigated when one of the compared marks has no readily apparent meaning (notwithstanding that each mark contained “GARDEN”). That was exactly the case here as regards “BLACK FOREST”.

Interestingly, Cadbury did not oppose Whittaker’s “BERRY FOREST” application in Australia.