Chocolate fight back in court

New Zealand's chocolate kings have been fighting it out in court over the name of a block of chocolate.

Lawyers for Cadbury and Whittaker's were in the High Court at Wellington today over a "berry" chocolate trade marking issue.

The stoush between the two companies stems from an application made by Whittaker's in 2010 to register the name "Berry Forest" as a trademark in New Zealand.

The Intellectual Property Office ruled in favour of Whittaker's last year, a finding Cadbury appealed.

It believes the name "Berry Forest"is too similar to the name of its "Black Forest"chocolate block. The company registered the name as a trademark in 1992.

Cadbury's appeal focused on what it said was the confusion and deception created among consumers due to the similarity between Black Forest and Berry Forest.

While Jenni Walden, the Assistant Commissioner of Trade Marks, found the Whittaker's Berry Forest name was dissimilar, Cadbury lawyer Rosemary Wallis argued against this and raised similarities between Cadbury's Black Forest chocolate and its rival's Berry & Biscuit chocolate.

Both had similar descriptions stating the use of similar products, Mrs Wallis said in her submissions.

" I acknowledge that Mr [Philip] Poole, the marketing manager from Whittaker's, does not admit or say that the Berry Forest product is going to be that product but he does not say its not going to be that either."

People were likely to associate the Berry Forest name with Cadbury and its registered Black Forest trade mark, she argued

"We're talking about ordinary people who go to the supermarket, go to the service station, got to dairies to buy chocolate," Mrs Wallis said.

The use of "forest" in the proposed trade mark also made the link between Cadbury's Black Forest and Whittaker's Berry Forest stronger, as "forest is not a thing you'd usually see on a confectionery product", she said.

Nigel Robb, who is representing Whittaker's, said the company stood by the original decision by Ms Walden.

"We say the marks are not confusingly similar, Cadbury may have the rights to stop somebody else using Black Forest, but we're not using Black Forest."

While he accepted Cadbury's Black Forest and Whittaker's Berry & Biscuit chocolate blocks were similar, Mr Robb said it was not for Cadbury to determine where the proposed trade mark was going to be applied.

"I think you can assume that it may have a berry content but he [Mr Poole] says it's not up to Cadbury to tell him what to do and what product to use it on," Mr Robb said.

He also argued Cadbury's Black Forest trade mark was highly descriptive, meaning people were less likely to confuse it with Berry Forest, or be deceived by it.

Black Forest was also used in the names of many other types of products including other chocolate brands to describe a flavour, and it wasn't for Cadbury to block the use of Berry Forest by Whittaker's, he said.

Justice Rachel Dunningham reserved her decision.

Read the original Intellectual Property Office ruling here: