Cadbury UK Limited v J H Whittaker & Sons Limited
[2014] NZHC 816
•16 April 2014
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV-2013-485-006524 [2014] NZHC 816
UNDER The Trade Marks Act 2002
IN THE MATTER OF an appeal from the decision of the Assistant Commissioner of Trade Marks dated 2 September 2013
BETWEEN CADBURY UK LIMITED Appellant
ANDJ H WHITTAKER & SONS LIMITED Respondent
Hearing: 27 March 2014
Appearances: R M Wallis for Appellant
N J Robb and C A Edmonds for Respondent
Judgment: 16 April 2014
JUDGMENT OF DUNNINGHAM J
Introduction
[1] This is an appeal by Cadbury UK Limited (Cadbury) of a decision of the Assistant Commissioner of Trade Marks (Assistant Commissioner) approving the application by J H Whittaker & Sons Limited (Whittakers) to register the trade mark BERRY FOREST.
[2] The nub of the Cadbury case is that the trade mark BERRY FOREST is sufficiently similar to Cadbury’s trade mark BLACK FOREST that consumers would likely be confused or deceived as to the source of the goods bearing the BERRY
FOREST trade mark.
CADBURY UK LIMITED v J H WHITTAKER & SONS LIMITED [2014] NZHC 816 [16 April 2014]
[3] While that issue is tested in slightly different ways under s 17(1)(a) and (b) and s 25(1)(b) and (c) of the Trade Marks Act 2002 (the Act) (as discussed below), Cadbury says, on any of those tests, the application should have been declined.
Background
[4] Cadbury is one of the largest producers of chocolate and confectionery in the world and has operated in New Zealand since the 1920’s. It has been the market leader in the chocolate confectionery market in New Zealand for almost 50 years and currently remains so, with a 51% share of the chocolate confectionery market in
2009.
[5] In 1992, Cadbury launched its BLACK FOREST chocolate product. Cadbury’s BLACK FOREST chocolate is manufactured and marketed in moulded block form. It consists of Cadbury Dairy Milk chocolate with small cherry flavoured jelly and chocolate biscuit pieces throughout.
[6] When it launched its BLACK FOREST chocolate product, it also registered
BLACK FOREST as a trade mark in relation to the following goods:
Farinaceous products; biscuits; confectionery including frozen confectionery excluding gateau.
[7] Evidence by Mr de Raadt, the managing director for Cadbury in New Zealand, states that the Cadbury’s BLACK FOREST moulded chocolate block has remained one of Cadbury’s core products and has been “in the top 10 best sellers out of all chocolate products, of all brands in New Zealand, at least since 2006. It is one of the most popular chocolate products for Cadbury and continues to maintain a high level of sales despite the product not being separately advertised in any significant way for a number of years”.
[8] Whittakers is a rival chocolate manufacturer in New Zealand selling moulded chocolate blocks, as Cadbury does.
[9] It currently markets a product called “Berry and Biscuit”, which is a moulded
chocolate block product with biscuit pieces, and mixed fruits including strawberries,
raspberries, black currants and cherries. It appears likely, although it is not confirmed by Whittakers, that this is the product which Whittakers intends to use the proposed BERRY FOREST trade mark on.
[10] On 22 December 2010 Whittakers applied to register BERRY FOREST as a trade mark in relation to “confectionery including chocolate confectionery and chocolate bars”.
[11] Cadbury opposed the application but in a decision issued on
2 September 2013, the Assistant Commissioner found that Cadbury had not succeeded on any of its grounds of opposition and accordingly she directed that “trade mark application no. 835272 BERRY FOREST must be registered after the expiry of the appeal period; but only if there is no appeal”.1
[12] Cadbury appealed the Assistant Commissioner’s decision on
30 September 2013.
Nature of the appeal
[13] An appeal of this nature is conducted as a rehearing.2 The Court is not bound to accept the Assistant Commissioner’s findings of fact and is entitled to exercise any power or discretion available to the Assistant Commissioner. The Court must exercise its own judgment, but where appropriate the Court may give weight to the expressions of opinion of the Assistant Commissioner.
[14] In Austin, Nichols & Co Inc v Stichting Lodestar,3 the Supreme Court said that when considering a general appeal the High Court is required to:
… come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment [sic]. If the High Court is of a different view from the Commissioner and is, therefore, of opinion that the Commissioner’s decision is wrong, it must act on its own view.
[15] The Court went on to say:4
1 J H Whittaker & Sons Limited v Cadbury UK Limited [2013] NZIPOTM 30 at [52].
2 Trade Marks Act 2002, s 173; High Court Rules, r 20.18.
3 Austin, Nichols & Co Inc v Stichting Lodestar[2007] NZSC 103, [2008] 2 NZLR 141 at [3].
4 At [16]-[17].
Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment [sic]. If the appellate court’s opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. In such circumstances it is an error for the High Court to defer to the lower Court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion. In the present appeal there was no basis for caution in differing from the assessment of the tribunal appealed from. The case entailed no question of credibility. It turned on a judgment [sic] of fact and degree, not the exercise of discretion entrusted to the tribunal. We are of the view that the Court of Appeal was not correct to suggest that, because the decision turned on a value judgment [sic] apparently open to the Assistant Commissioner, “the High Court Judge ought not to have embarked on a reconsideration of the issue without considering and giving weight to, the Assistant Commissioner’s conclusion”. The High Court Judge was obliged to reconsider the issue. He was entitled to use the reasons of the Assistant Commissioner to assist him in reaching his own conclusion, but the weight he placed on them was a matter for him.
The Assistant Commissioner’s decision
[16] After dealing with a preliminary issue as to admissibility of evidence, the Assistant Commissioner considers, in turn, each ground of opposition raised by Cadbury to the registration of the trade mark.
[17] She begins with s 25(1)(b) and, citing NV Sumatra Tobacco Trading Co v
New Zealand Milk Brands Limited,5 she explains that the order of inquiry is:
(1)Is the opposed mark in respect of the same or similar goods covered by the opponent’s registered mark?
(2) If so, is the opposed mark similar to the opponent’s registered mark? (3) If so, is use of the opposed mark likely to deceive or confuse?
[18] In respect of the first issue, she unsurprisingly concludes that the goods covered by Cadbury’s registered mark, which include “confectionery”, are the same as the goods to be covered by Whittakers’ mark, being “confectionery”.
[19] The next issue is the more substantive one. After discussing the applicable legal test,6 she concludes that:7
… the opponent’s registered mark is more likely to be perceived as BLACK FOREST, rather than as the colour BLACK and FOREST. This is because I consider that the opponent’s registered mark naturally calls to mind two concepts: (1) black forest gateau (cake), which is “a chocolate sponge with layer of morello cherries or cherry jam and whipped cream and topped with chocolate icing, originally from S.Germany”,8 and/or (2) “a hilly wooded region of SW Germany, lying to the east of the Rhine Valley”.9 I consider that, in the context of confectionery and farinaceous products, the dominant concept that is likely to be called to mind will be the concept of black forest gateau (cake) because black forest is likely to be taken as a reference to flavour and/or variety of confectionery/farinaceous products. In my view, the exclusion of gateaux from the specification of goods from the opponent’s registered mark would not prevent this concept from being called to mind. I also note that the opponent appears to accept that black forest cake is well known.
On the other hand, I consider that BERRY FOREST is not a naturally understood term, which means I must fall back on the meanings of each word in combination. I consider that BERRY FOREST is likely to be taken to mean a forest of berries, which is a distinct concept to the BLACK FOREST concepts. I also consider that the concept of a forest of berries is slightly fanciful because forests are usually associated with trees. However, I accept that berries may grow wild in forests and those kind of berries may be referred as forest berry/berries or forest fruit(s) or fruit(s) of the forest.
I find that, as a whole, the opposed mark is visually, aurally, and, most importantly, conceptually dissimilar to the opponent’s registered mark.
(emphasis in original)
[20] In respect of the grounds of opposition under s 25(1)(c) and s 17(1)(a) of the Act the Assistant Commissioner relies on her findings under s 25(1)(b) that the opposed mark and Cadbury’s registered mark are dissimilar. As a matter of logic she says it follows that Cadbury cannot succeed on these two further grounds.
[21] In respect of the grounds of opposition under s 17(1)(b) of the Act, which prohibits the Commissioner from registering a trade mark if “its use is contrary to New Zealand law or would otherwise be disentitled to protection in any Court,” she records that “a higher threshold of confusion appears to be required to establish a
breach of the Fair Trading Act 1986 or passing off than is required under s 17(1)(a)
6 As expressed in New Zealand Breweries Ltd v Heineken Bier Browenj Maatschappij NV [1964] NZLR 115 at 139.
7 At [25]-[27].
8 The New Zealand Oxford Dictionary (2005) at 111.
9 The New Zealand Oxford Dictionary (2005) at 112.
of the Act”. As Cadbury did not succeed on the ground which has the lower threshold test, it follows that its allegations that the opposed mark would be contrary to ss 9, 10, 13 and 16 of the Fair Trading Act 1986, and would amount to passing off, could not succeed.
[22] I now consider the four grounds of appeal in the order they are raised by
Cadbury.
First ground of appeal
Section 17(1)(a) – likely to deceive or confuse
[23] Section 17(1)(a) provides:
(1) The Commissioner must not register as a trade mark or part of a trade mark any matter-
(a) the use of which would be likely to deceive or cause confusion …
[24] The purpose of s 17(1)(a) is the protection of the public from deception or confusion. Those concepts were discussed in the decision Pioneer Hi-Bred as follows:10
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public.
[25] Cadbury argues that the Assistant Commissioner erred in finding that Whittakers’ BERRY FOREST mark is not similar to Cadbury’s BLACK FOREST mark and that its use is not likely to deceive or confuse. In support of its position it says that the Assistant Commissioner made three fundamental errors:
(1) she failed to separate and fully compare Whittakers’ mark with
Cadbury’s mark according to the requirements of s 17(1)(a);
(2)she broke the respective marks down to individual elements and compared them by their differences, rather than by their overall similarity; and
(3) she failed to give proper weight to Cadbury’s reputation in its
BLACK FOREST mark in the relevant market in New Zealand.
[26] The test under s 17(1)(a) can be summarised as a two-part test. First, the onus was on Cadbury to prove that its mark had acquired sufficient reputation in the relevant market by the relevant date (being the date of filing the trade mark application on 22 December 2010). Once its reputation in the New Zealand market was established, then the onus shifted to Whittakers to prove that it is not reasonably likely that there would be confusion or deception between the two marks, amongst a substantial number of persons in the relevant market.
Relevant market
[27] The parties were agreed that the relevant New Zealand market was “the general purchasing public made up of ordinary New Zealand consumers who buy food items, particularly chocolate confectionery”. It was also accepted that it was typical for the goods to which the application related to be sold in “supermarkets, dairies, convenient stores and petrol stations”.
Sufficient reputation
[28] Cadbury has the onus of establishing that it has a reputation in the relevant market which, as explained in Pioneer Hi-Bred,11 means simply an “awareness” or “cognisance” or “knowledge” of Cadbury’s mark in New Zealand.
[29] Cadbury argues that the Assistant Commissioner failed to acknowledge the
appellant’s reputation in its BLACK FOREST mark and therefore erred in law.
[30] It is a logical inference from Cadbury’s evidence that its BLACK FOREST
chocolate product is one of its biggest selling products in the moulded block
category, having been in the top 10 since 2006,12 that Cadbury’s BLACK FOREST trade mark has the required level of awareness in the market place. While the Assistant Commissioner did not expressly state this conclusion, it is implicit she reached it by the fact she went straight to the next stage of the inquiry, which is whether use of the opposed trade mark is likely to cause deception or confusion.
[31] Without awareness or cognisance of the mark in the market place it is difficult to see how a risk of confusion or deception could arise in the purchasing public. As was said by Richardson J in Pioneer Hi-Bred, the reason why attention is paid to the reputation of an opponent in the local market is because:13
If the opponent’s mark is wholly unknown in the New Zealand market in which the applicant’s mark is proposed to be used, the use of the applicant’s mark could not lead to deception or cause confusion. Those concerned in that market would not be misled into drawing any false inferences as to the origin or quality of the goods or otherwise. Nor would they be confused: because of their lack of awareness of the applicant’s mark, there is nothing with which the applicant’s mark could be confused.
[32] It therefore follows that I do not consider the Assistant Commissioner failed to give proper weight to the appellant’s reputation in its BLACK FOREST mark in the relevant market in New Zealand.
Is the use of the trade mark likely to deceive or confuse?
[33] The real nub of Cadbury’s argument was that the Assistant Commissioner erred in concluding that the competing marks were not sufficiently similar to create a risk of a substantial number of the purchasing public being confused or deceived.
[34] Cadbury says the Assistant Commissioner erred in this regard because she failed to separately and fully compare Whittakers’ mark with Cadbury’s mark and she broke the respective marks down into individual elements and compared them by their differences rather than their overall similarities.
[35] When comparing the two trade marks, it is accepted that these must be considered as a whole – the overall or net impression of the marks bearing in mind
12 Declaration of Alistair de Raadt, 25 October 2011 at [14] and [15].
their distinctive and dominant elements should be considered.14 It is not proper to separate the trade marks and compare portions of them visually or aurally. As was said in Smith Hayden & Co Ltd’s Application,15 the manner in which to consider confusion is not to consider the marks side by side, but to “consider the way in which the marks would be used in shops, in orders over the telephone, or in recommendations from one person to another”.
[36] Cadbury argued that consumers were likely to focus on the essential feature of the two trade marks, being the word FOREST. This was because it was the most distinctive part of the respective marks, both visually and aurally as it is not a word commonly associated with confectionery or chocolate. It said the only difference between the two marks was the use of the word BERRY instead of the word BLACK, and even these words had a number of similarities between them, including the same initial consonant and the same number of letters. They also had a natural association by virtue of the name of the fruit “blackberry”.
[37] Cadbury also argued that because of its extensive reputation in its BLACK FOREST chocolate product, the term BERRY FOREST, which it has no natural meaning, could be understood as being connected with Cadbury’s BLACK FOREST product.
[38] Cadbury went on to assert that, from a conceptual point of view, it could not be assumed consumers would automatically understand BLACK FOREST to relate to cherries rather than berries. Purchasers might connect the term BLACK in the BLACK FOREST trade mark to other berries such as blackberry or blackcurrant. It added that the wider public would not necessarily see a difference between cherries and berries, especially when Whittakers combines these fruits with chocolate and biscuit pieces in a block in the same way as Cadbury does.
[39] It was therefore urged on me that the marks, while containing a different first word, were closely similar in their overall impression and it was highly likely that there might be confusion between the two marks.
[40] This risk was exacerbated by the fact that the chocolate was the kind of good that was purchased on a “casual or impulsive basis” and, while Whittakers and Cadbury’s products were sometimes sold in special display units, there were also times when the products were sold side by side without differentiation. Finally, as not all purchases were made directly by the purchaser, the similarity in the names could result in the purchase of the BERRY FOREST product when the BLACK FOREST product had been requested.
[41] Whittakers, on the other hand, began by asserting that the term “black forest” is one that ordinary consumers are exposed to, in relation to a number of foods, and this means that the trade mark BLACK FOREST has minimal distinctiveness. The average consumer of food would see it as a reference to the flavour combination of chocolate and cherry. Whittakers said this was relevant because the less distinctive a trade mark was, the less likely it was that consumers would make a confusing connection.
[42] In response to the assertion that the Assistant Commissioner erred by: (a) failing to fully and separately compare the mark; and
(b)breaking the marks down into individual elements and considering the differences not the similarities,
Whittakers referred to extracts from the Assistant Commissioner’s decision which show that she did consider the marks as a whole, and had regard to both the similarities as well as the differences between the marks.
[43] In looking at the individual components of the trade marks, Whittakers said the words BLACK and BERRY are readily distinguishable in look, sound and idea, especially as black is a colour and berry is a fruit. It emphasised that the combination “BLACK FOREST” is an indication of flavour, but when the word “forest” is used in conjunction with the word “berry”, it is more likely to conjure up concepts such as berries being fruits of the forest. In summary Whittakers said that:
Given the way that chocolate is purchased and the descriptive significance of black forest as a flavour, consumers will not be confused as to the origin of BERRY FOREST as being from Cadbury … . At the most BERRY FOREST may cause consumers to call to mind the BLACK FOREST product. However, the descriptiveness of black forest and the concept of berries or forest berries means confusion is unlikely in the sense required of consumers be (sic) ‘caused to wonder’ if the products are from Cadbury.
Discussion
[44] In my view, the Assistant Commissioner’s discussion of the comparison of the marks was thorough and commenced on a proper understanding of the legal test. She averred to the discussion in New Zealand Breweries Ltd v Heineken Bier Browerig Maatschappig NV,16 which summarised the rules for comparison of word marks as follows:
(1) You must take the two words and judge of them both by their look and by their sound;
(2) You must consider the goods to which they are to be applied and the nature and kind of customer who is likely to buy these goods; and
(3) You must consider all the surrounding circumstances and what is likely to happen if each of the marks is used in the normal way as a trade mark for the goods of the respective owners of the marks;
[45] Similarly, she drew on the guidance contained in De Cordova and Ors v Vick
Chemical Coy,17 which stated:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order or goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. (emphasis in original)
[46] Taking those legal tests into account, I have compared Whittakers’ proposed
mark with Cadbury’s mark and have:
16 New Zealand Breweries Ltd v Heineken Bier Browerij Maatschappij NV [1964] NZLR 115 (CA)
at 139.
17 De Cordova and Ors v Vick Chemical Coy (1951) 63 RPC 103 at 106.
(a) made an overall assessment of the marks and refrained from breaking down each of the marks into their component parts;
(b)focused on the similarity of the marks, including the ideas and concepts of the marks;
(c) kept in mind the significance of imperfect recollections;
(d)taken into account the circumstances in which the applicant’s mark might be used, the market in which its goods may be bought and sold and the character of those involved in that market.
[47] In my assessment, there are undeniable similarities between the individual words used in the mark. However, the word mark is to be read as a whole and I accept the evidence for Whittakers that the trade mark BLACK FOREST instantly calls to mind a flavour combination which finds its origin in the ingredients of a black forest gateau. In contrast, BERRY FOREST, although it has a degree of visual and aural similarity, when read as a whole, invokes the concept of a combination of berries. This is because a key idea the trade mark brings to mind is the phrase “fruits of the forest”, a common term for a mixture of berries. Such similarities as exist are insufficient when I consider the marks as a whole, including the concepts and ideas they bring to mind, to risk confusion or deception among the purchasing public.
[48] Cadbury urged in submissions that the case was analogous to the decision of Mallon J in Merial v Virbac SA.18 In that case Her Honour found that the trade mark FIPROLINE was sufficiently similar to the trade mark FRONTLINE, in respect of products for the prevention of fleas and ticks in cats and dogs, that it would be likely to cause confusion in the relevant market. She reached this conclusion based on the visual and aural similarities between the words, the fact the competing products both contain the active ingredient fipronil, and that such products would be purchased by
people who were not necessarily discerning, cautious or well-informed.
18 Merial v Virbac SA [2013] NZHC 2773.
[49] In the present case, I consider the likelihood of confusion is not the same as in the Merial case because Cadbury’s mark adopts a well known phrase which brings to mind a specific combination of ingredients. It therefore will be recognised in a way that the made up combination of the words in the mark BERRY FOREST will not be. Accordingly, even though the marks relate to products bought by a wide range of the public, sometimes on impulse, and in trade channels where the competing brands are not necessarily physically separated, I am satisfied that the use of BERRY FOREST is unlikely to deceive or confuse a substantial number of the general public.
Second ground of appeal
Section 17(1)(b) – contrary to law
[50] Section 17(1)(b) provides:
(1) The Commissioner must not register as a trade mark or part of a trade mark any matter - …
(b) the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any Court;
[51] Cadbury argued that registration of the trade mark would be in breach of s 17(1)(b) because use by Whittakers of the BERRY FOREST mark in relation to confectionery would constitute misleading or deceptive conduct in breach of the Fair Trading Act 1986 and would constitute passing off.
[52] It was accepted by both parties that while the requirements for passing off and breach of the Fair Trading Act 1986 are similar to those for s 17(1)(a), a higher threshold of confusion is required.
[53] Given my findings in relation to s 17(1)(a), it follows that the higher threshold of confusion required to satisfy 17(1)(b) is not reached.
[54] I also observe that, in reality, the respective trade marks will invariably be used in conjunction with other distinctive branding (such as the appellant’s Dairy Milk and Cadbury trade marks and its distinctive purple packaging, and the respondent’s Whittakers’ trade mark and its gold packaging) making the practical
likelihood of the public being misled or deceived, either in breach of the Fair Trading
Act, or under the tort of passing off, implausible.
Third ground of appeal
Section 25(1)(b) – similar mark for identical goods
[55] Section 25(1)(b) provides that the Commissioner must not register a trade mark in respect of any goods or services if:
… it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority under s 34 or s 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse;
[56] The key difference between s 25(1)(b) and 17(1)(a) is that s 17(1)(a) relates to Cadbury’s actual use of its trade mark,19 whereas s 25(1)(b) is dependent on Cadbury’s notional use of its trade mark.
[57] The Assistant Commissioner rejected Cadbury’s opposition based upon s 25(1)(b) of the Act for the reasons already discussed, which is that she did not find the opposed mark was similar to Cadbury’s registered mark.
[58] I have already concluded in relation to s 17(1)(a) that Cadbury’s mark and Whittakers’ mark, while similar to some degree, lack sufficient similarity when considered as a whole, to deceive or confuse. I therefore find that this third ground of appeal must be dismissed.
Fourth ground of appeal
Section 25(1)(c) – well known trade mark
[59] Section 25(1)(c) of the Act provides:
(1) The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if- …
(c) it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in
19 See Anheuser-Busch Inc. v Budvar National Corporation [2003] 1 NZLR 472 (CA) at 480.
New Zealand (trade mark D) whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and will be likely to prejudice the interests of the owner.
[60] The Assistant Commissioner concluded that because the opposed mark and Cadbury’s registered mark were dissimilar, it must follow that this ground of opposition could not succeed.
[61] Cadbury, on the other hand, argues that the Assistant Commissioner failed to take account of Cadbury’s reputation in its BLACK FOREST mark when finding that the marks were dissimilar and also that, the assessment under s 25(1)(c) only required “an essential element” of the trade mark to be identical or similar to a trade mark that is well known in New Zealand. Cadbury again argued the marks were similar, saying that the word “forest” was the essential and distinguishing element of both marks, and that the words “black” and “berry” were similar and had a common association in the word “blackberry”. It therefore argues that it met the first requirement in s 25(1)(c).
[62] In respect of the last requirement of s 25(1)(c), Cadbury submitted that the concept of prejudice did not only occur through likely deception and confusion, but could also occur through “blurring, tarnishment, dilution and image detriment”. It was argued that because Cadbury’s BLACK FOREST product has a strong place in the New Zealand market and a high reputation, registration and use of the opposed mark would blur the distinctiveness of the BLACK FOREST mark and dilute its strength. Furthermore, use of the proposed BERRY FOREST mark would be taken as indicating a connection in the course of trade between Whittakers’ goods and those of Cadbury, which would be likely to confuse consumers and therefore would prejudice the interests of Cadbury.
Discussion
[63] The following issues arise under s 25(1)(c) of the Act:
(a) is the proposed mark, or an essential element of it, identical or similar
to the opponent’s registered mark, which is well known;
(b) are the opposed goods and the goods covered by the opponent’s
registered mark the same or similar;
(c) if not, would use of the opposed mark be taken as indicating a connection in the course of trade with the opponent;
(d)if the answer to issue (b), or (c) is yes, would the use of the opposed mark be likely to prejudice the interests of the opponent?
[64] I do not consider it is appropriate to single out the use of the word “forest” in both marks and therefore conclude that an “essential element of the marks is identical”. In my view, for the reasons already expressed, I think Whittakers’ trade mark has to be compared in totality with Cadbury’s trade mark to decide whether they are identical or similar.
[65] As previously explained, they have a degree of visual and aural similarity when considered as a whole but, because they bring to mind different concepts, I do not consider they cross the threshold of having sufficient similarity to deceive or confuse. However, for the purpose of this analysis I have assumed they are sufficiently similar to trigger the next stage of the enquiry in s 25(1)(c).
[66] For the purpose of this analysis I also assume that Cadbury’s registered mark BLACK FOREST is well known, although I have reservations about whether it could be said to reach that threshold independently of the Cadbury brand name. All the evidence I received on the reputation of the BLACK FOREST trade mark was where it was used in conjunction with other Cadbury branding. That is sufficient to establish reputation in the sense of ‘awareness’ for the purposes of s 17(1)(a) but not necessarily that the trade mark is “well known” in its own right.
[67] There is no dispute that the marks cover the same goods as required by issue (b), so I move to the critical issue which is whether such similarity as exists means that use of the trade mark is likely to prejudice Cadbury’s interests.
[68] That issue is resolved by my earlier finding on whether there was sufficient similarity between the two marks to create a risk of deception or confusion in the market. My conclusion that it did not addresses head-on the last issue in s 25(1)(c), which is whether the use of the opposed mark would be likely to prejudice the interests of the opponent.
[69] I consider that there must be a risk of deception or confusion before prejudice can arise. That was the view of the Court of Appeal in Roby Trustees Ltd v Mars New Zealand Ltd,20 when the Court concluded:
With respect to s 25(1)(c) … It is not seriously in dispute in this case such prejudice must result from consumer deception or confusion. Mr Gray pointed to “brand dilution” now that Mars has exited the dog roll segment, meaning that consumers may wonder whether the appellant’s dog roll is associated with Mars premium dried food. But that will occur only if consumers are deceived or confused about the appellant’s dog roll.
[70] Because I have found there is no likelihood of confusion or deception the ground of opposition under s 25(1)(c) also fails.
Conclusion
[71] The appeal is dismissed. The respondent is entitled to costs calculated on a
2B basis.
Solicitors:
Baldwins Law Limited, Auckland
A J Park Law, Wellington
20 Roby Trustees Ltd v Mars New Zealand Ltd [2012] NZCA 450, (2012) 98 IPR 353 (CA).
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