Whittaker's wins chocolate giant court stoush

Photo / NZ Herald

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 "Berry Forest".

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 last month.

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 Forest mark.

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 chocolate-buyers.

Justice Dunningham dismissed Cadbury's appeal.