Mondelēz told ConfectioneryNews today that it has lodged an appeal with the New Zealand Wellington High Court on the grounds that the Intellectual Property Office's (IPO) decision last week did not give adequate consideration to the reputation and consumer awareness of the Cadbury Black Forest brand and was wrong in its conclusion that Black Forest and Berry Forest are not similar.
The company said: “In our view they are very similar and likely to confuse consumers.”
“Mondelēz New Zealand has worked hard to establish the Black Forest brand over the past 20 years and in fact, in the past 5 years alone, Black Forest has generated sales in excess of NZ$18M,” Julia Fraser, senior corporate affairs manager for Mondelēz New Zealand, told ConfectioneryNews.
She said that Whittaker’s registration of its own berry chocolate bar was an attempt to “leverage” off Mondelēz’s established brand.
Whittaker’s marketing manager, Phillip Poole, told ConfectioneryNews: “We would just like to say that we are surprised that Mondelēz have lodged an appeal. The Assistant Commissioner of Trademarks was definitive in the extreme in her ruling in favour of Whittaker’s.”
Asked if Whittaker's would consider changing the Berry Forest brand to avoid further trouble, Poole said: "We totally agree with The Assistant Commissioner of Trademarks ruling and do not see any merit in Mondelēz’s argument. We are still committed to the Berry Forest brand name."
The ruling
Last week the New Zealand IPO rejected Mondelēz’s complaints, ruling that the two products were sufficiently different.
Discussing Mondelez’s Black Forest brand, the assistant commissioner of trademarks at the IPO, Jennie Walden, told Fairfax NZ News: "In the context of confectionery. . . the dominant concept that is called to mind will be the concept of black forest gateau."
Adding: "I find that, as a whole, the opposed mark is visually, aurally, and, most importantly, conceptually dissimilar to the opponent's registered mark."