J H Whittaker & Sons Limited (Whittaker's) are elated at their recent win in the High Court against Cadbury UK Limited (Cadbury).

Not only did they win, they won convincingly the right to call one of their chocolate products BERRY FOREST.

Cadbury won't be so happy.  This is the second time that they have lost their fight to stop Whittaker's from using or registering the trade mark BERRY FOREST.

At the nub of Cadbury's concerns is that the trade mark BERRY FOREST is too close to their BLACK FOREST trade mark and that consumers would likely be confused or deceived as to the source of the goods bearing the BERRY FOREST trade mark.

Neither the Assistant Commissioner of Trade Marks nor Her Honour Justice Denningham accepted Cadbury's concerns.

Cadbury has been using BLACK FOREST as a trade mark in New Zealand since 1992.  When it launched its product, steps were also taken to register BLACK FOREST as a trade mark.  It is one of Cadbury's core products and has been in the top 10 best sellers out of all chocolate products, of all brands in New Zealand, since 2006.

Launching a new chocolate product

In December 2010, Whittaker's decided to launch a new chocolate product, and filed  the trade mark BERRY FOREST.  To date, Whittaker's has not used the trade mark BERRY FOREST.

Cadbury opposed registration of the Whittaker application but did not succeed on any ground of the opposition, so Cadbury appealed the decision.

In the recent appeal, there were four grounds that the judge took into consideration in regards to Whittaker's filing the trade mark BERRY FORREST.

A trade mark must not be registered if:

  1. its use would be likely to deceive or cause confusion
  2. its use would be contrary to New Zealand law or would otherwise be disentitled to protection in any Court
  3. it is similar to a trade mark that belongs to a different owner and that is registered
  4. it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand

 The Judge found for Whittaker's on each of the four grounds and dismissed the appeal.

The Judge concluded that when read as a whole, there were insufficient similarities between BLACK FOREST and BERRY FOREST, including the concepts and ideas that they bring to mind, to risk confusion or deception among the purchasing public.

Cadbury has until 19 May to file a further appeal to the Court of Appeal.