IPO chops down Cadbury Black Forest trademark breach claims

25-Sep-2013 - Last updated on 26-Sep-2013 at 10:41 GMT

"...Whittaker’s are attempting to leverage off our established trademark," say Mondelēz New Zealand

Cadbury has failed to block Kiwi rival Whittaker’s trademarking of the name 'Berry Forest' on the grounds that it is too similar to its Black Forest chocolate bar.

The Intellectual Property Office (IPO) ruled Whittacker’s Berry Forest was sufficiently different to Cadbury’s Black Forest, despite Cadbury owner Mondelēz's claim Whittaker’s was trying to "leverage off our established trademark".

The New Zealand authority said that Black Forest chocolate was likely to conjure thoughts of the German black forest cake, while Berry Forest was likely to be taken to mean a forest of berries, according to reports.

“We are taking this matter very seriously because we have invested heavily behind the Black Forest brand and believe Whittaker’s are attempting to leverage off our established trademark,” Julia Fraser, senior corporate affairs manager, Mondelēz New Zealand, told us.

“Given the length of time we have been in the marketplace with Black Forest and the sales the brand has generated, we believe the use and registration of Berry Forest will confuse consumers."

Jennie Walden, assistant commissioner of trademarks at the IPO, told Fairfax NZ News: "In the context of confectionary . . . the dominant concept that is called to mind will be the concept of black forest gateau."

"I find that, as a whole, the opposed mark is visually, aurally, and, most importantly, conceptually dissimilar to the opponent's registered mark."

Chocolate rivals

Whittaker's was founded in 1896 by James Henry Whittaker who began his career as an apprentice for "an unnamed British confectioner" according to the Whittaker website. Today the confectioner is still owned by the Whittaker family, headed by J.H. Whittaker’s grandsons.

Mondelēz International accounts for half of New Zealand’s block chocolate market – largely due to its Cadbury Dairy Milk brand.

Whittaker’s won the titles of New Zealand's Most Trusted Brand and Most Iconic Brand in the Reader’s Digest poll this year, based on a sample of 500 people aged 18 years and over. Whittaker’s first entered the running in 2010, the same year that Cadbury was toppled from the top spot.

Confectionery in New Zealand

According to Leatherhead data, the New Zealand confectionery sector amounted to an estimated NZ$557m (US$473.45m) in value sales for 2012, up from NZ$494m (US$419.9m) in 2008.

Within this chocolate was the largest sector, tallying 58% of overall 2012 sales at NZ$325m (US$276.25m).