Orange County – Two big name chocolate producers faced off last week as the New Zealand Intellectual Property Office found that Cadbury cannot stop rival Whittaker’s from using the Trademark “Berry Forest.” Cadbury, which is famous for its chocolate bunnies and Cadbury Creme eggs, filed an opposition to keep Whittaker’ s from using the Berry Forest name, claiming that it is too similar to its own “Black Forest” chocolate bar.
Cadbury argued that if Whittaker’s was allowed to use “Berry Forest,” it might deceive or confuse customers into thinking that it is the same or related to its own “Black Forest” chocolate. Cadbury obtained registered trademark protection over Black Forest in 1996 in connection “farinaceous products; biscuits; confectionery including frozen confectionery excluding gateaux.” Despite Cadbury’s claims to the contrary, the Intellectual Property Office found that the two names conjured up different conceptual ideas in the minds of consumers.
The Assistant Commissioner of Trademarks, Jennie Walden, noted that “In the context of confectionary . . . the dominant concept that is called to mind will be the concept of black forest gateau,” referring to a British-used term for cake. In pointing out Cadbury’s Black Forest’s similarity to Black Forest cake, one can assume that she was referencing the fact that the Black Forest chocolate bar contains bits of cherries and biscuits, much like the famous cake recipe. Berry Forest, on the other hand, brings to mind a forest of berries, according to Commissioner Walden. Given these two conceptual dissimilarities, she found that Whittaker’s chocolate was “sufficiently different” enough to receive trademark protection. She ruled that in light of her finding, Berry Forest must proceed to registration at the close of the opposition period.
This loss for Cadbury is the most recent development in a long standing feud between the two British chocolate makers. The saga stems from the inception of the companies in 1896, when James Henry Whittaker left his family’s company to start up Cadbury. Whittaker’s has steadily gained in popularity in more recent years, even being named “most trusted brand” of chocolate in a Reader’s Digest survey in New Zealand. With this latest win for Whittaker’s, it is yet to be seen whether its use of Berry Forest will further ramp up its competition with Cadbury.