Cadbury and Whittaker’s involved in a Trademark dispute

The confectionary giants, Cadbury and Whittaker’s are involved in a trademark dispute regarding the name of a famous cake that ended up in the New Zealand High Court, with the judge reserving her findings.

The trademark for the term Black Forest is owned by Cadbury for the last 20 years and they have been using it in New Zealand to sell chocolate with cherry and biscuit pieces. Now its rivals, Whittaker’s wants to trademark the name ‘Berry Forest’ to market a product which has not yet been revealed. However, Cadbury doubts that the name will be used to market a chocolate product with a range of berry and biscuit pieces, and are concerned about it.

The Intellectual Property Office (IPO) had ruled last year that Whittaker’s was free to trademark that name in spite of protests from Cadbury. Assistant Commissioner of Trademarks Jennie Walden concluded that the name ‘Berry Forest’ would most likely be taken to signify a forest of berries. On Thursday last, Cadbury filed a complaint against the Whittaker’s trademark to the High Court in Wellington, stating that the name would likely “deceive or confuse” consumers.

Whittaker’s argue that Cadbury’s Black Forest trademark is mainly a description of a flavor linked with the famous Black Forest cake, rather than a distinctive trade name. Nigel Robb, Whittaker’s lawyer informed that court that an average customer sees Black Forest as a flavour. He also told the court that the term ‘Black Forest’ is descriptive in nature and therefore deserves only “limited and narrow” protection. Mr Robb also argued that Cadbury has the right to stop someone using Black Forest, and that they are not using the word Black Forest.

However, Rosemary Wallis the lawyer for Cadbury said that customers relate Black Forest with the Cadbury chocolate ingredients because of the immense reputation that the product has earned. She also said that the product was a ‘big seller’ for Cadbury and is at times sold along with Whittaker’s products.

To this Mr. Robb gave a list of several products sold using Black Forest, including Arnott’s Black Forest Tim Tams, which are at times sold in the same shop as Cadbury chocolate. But Mrs Wallis told the court that the words Black Forest and Berry Forest was “so similar and connected” that it would cause confusion among the consumers.

Justice Dunningham who was hearing the argument has reserved her findings.

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