A bitter sweets war between chocolate giants will come down to a famous cake and whether the difference between black and berry is black and white.
Cadbury owns the trademark Black Forest and for 20 years has used it in New Zealand to sell chocolate with cherry and biscuit pieces.
Chocolate rival Whittaker’s wants to trademark the name Berry Forest and use it to market a product which hasn’t yet been revealed.
Cadbury suspect it will be used to market a chocolate product with a range of berry and biscuit pieces, causing “concern” to the company.
Last year, the Intellectual Property Office (IPO) ruled Whittaker’s was free to trademark that name despite objections from Cadbury.
Assistant Commissioner of Trademarks Jennie Walden found the name Berry Forest would probably be taken to mean a forest of berries.
On Thursday, Cadbury took its fight against the Whittaker’s trademark to the High Court in Wellington, arguing that the name was likely to “deceive or confuse” consumers.
But Whittaker’s says that Cadbury’s Black Forest trademark is predominantly a description of a flavour associated with the famous Black Forest cake, rather than a distinctive trade name.
“We say that the average consumer seeing Black Forest will see it as a flavour,” Whittaker’s lawyer Nigel Robb told the court.
“We say it is obvious why Black Forest was chosen from a marketing perspective. Black Forest tells the consumer what it is.”
He said the price for using a descriptive trade name is that it is not unique and distinctive and therefore deserves “limited and narrow” protection.
“We submit Black Forest is very much at the descriptive end of trademarks,” Mr Robb said.
“Cadbury might have the right to stop someone using Black Forest but we’re not using Black Forest.”
But Cadbury lawyer Rosemary Wallis said consumers associate Black Forest with the Cadbury chocolate ingredients because of the reputation the product has gained.
The product is also a “big seller” for Cadbury and is sometimes sold side by side with Whittaker’s products, she said.
“I submit that the wider pubic won’t see a difference between cherries and berries,” she said.
Mr Robb listed several products marketed using Black Forest, including Arnott’s Black Forest Tim Tams which are sometimes sold in the same isle as Cadbury chocolate.
But Mrs Wallis told the court Berry Forest was “so similar and connected” to Black Forest it would cause consumers to wonder and confuse the two products.
Earlier in court, Justice Rachel Dunningham questioned whether the public associates Cadbury’s Black Forest with the flavours because of the famous German cake.
“Is it not because they know Black Forest cake?” she asked Mrs Wallis.
“If you were sold Black Forest muesli, what would you expect it would have in it?”
Mrs Wallis said she did not know.
“I wouldn’t be able to tell you ma’am,” she said.
Justice Dunningham has reserved her findings.