A snack and vapes distributor may have beaten the Greens to the punch by applying to trademark the name "KiwiMart" after the party announced its supermarket chain policy.
But the law around trademarking for something which doesn't yet exist could complicate the case.
On September 6 the Green Party announced a plan to create a publicly-owned supermarket chain called KiwiMart, with the aim of breaking up the supermarket duopoly and boosting competition.
Following this announcement, Lion Labs Limited director Cahn Mackenzie said his company has filed an application to trademark KiwiMart through the Intellectual Property Office of New Zealand (IPONZ).
The company currently runs businesses distributing snack foods and vapes and says it plans a "broader grocery offering under KiwiMart".
The party want to create a nationwide supermarket chain called KiwiMart, with 120 stores aimed at increasing competition and lowering grocery prices. (Source: 1News)
"Our earliest documented internal discussions about using the name date back approximately 12 months, before the Green Party’s announcement. We intend to use it for a convenience and grocery-store business," McKenzie told 1News.
A trademark is a form of intellectual property protection protecting something that identifies your business and the goods or services it provides. Common examples of intellectual property that you can register are business logos or slogans.
McKenzie said the Greens' announcement "prompted us to apply to protect the name for our own planned business".
"We submitted the application after the announcement on September 6; IPONZ records the filing date as 7 September. Our plans to use the name predate that announcement."
Following the announcement, another company also filed to trademark the name on September 10.
How does the law actually work?
A trademark application made solely to block someone else may be vulnerable to challenge.
Jane Glover, a barrister and trademark law specialist at legal firm Sangro Chambers, said trademarks involve registering words or logos in relation to specific international classes of goods or services.
She said there were two main categories — distinctiveness and descriptiveness — that the Intellectual Property Office would consider to determine whether KiwiMart could be registered in the first place.
The first issue the office would consider is whether it was sufficiently distinctive to register as a trademark.
"I would have thought for sure KiwiMart would be at least registrable in a logo form. Whether it's registrable as a word mark, I would have thought probably it is. But maybe the office would take a different view on that."
In New Zealand, trademark rights are not based solely on who files first. Glover said we follow the "first to use" system, similar to Australia and other countries.
"We have what's called proprietorship or ownership, which is a really strong ground of opposition if someone else files a trademark, and you say, 'hey, I was actually the first to use that trademark in relation to these specific goods or services, therefore, I'm the true owner'.
"Interestingly, that can include preparatory use. So if you've made preparations to use a trademark, but you haven't actually sold any goods or services, then that can be enough," she explained.
Why didn't the Greens trademark the name themselves?
Glover said the question of why the Greens hadn't trademarked the name was not simple to answer because you cannot simply trademark an idea. Also, the party who files the application for a trademark has to be the ones intending to use it.
"Anyone can oppose a trademark application. It is only applications for revocation/invalidity (where a trade mark has already been registered and someone wants to remove it) where the person seeking to remove it must be a 'person aggrieved'," she explained.
She said she thought someone from the Green Party would have standing to oppose this, and could make a "bad faith" argument.
This applies when a company applies for the trademark not because it genuinely wants to use it as its own brand, but primarily to take advantage of, block or interfere with another's planned use of the name.
"Probably the strongest [argument] here would be bad faith where someone registered this essentially like a cyber squatter would in a domain name dispute, to try and block the way or maybe make some cash," she said.
The process for the Intellectual Property Office would now be to examine the proposed trademark application to assess whether it can be registered. If accepted, the application would be published so others have an opportunity to oppose it before registration.
Greens respond
A Green Party spokesperson said: "We’re pleased that the idea of KiwiMart and lowering food prices for New Zealanders is generating such keen interest.
"There is no trademark on the name ‘KiwiMart’, although one application has been made, on Sunday after our KiwiMart policy launch.
"This application was made by an e-liquid company."
They noted there are also two registered entities called KiwiMart, one in Auckland and one in Dunedin. "Neither of them have a trademark on the name, and there is no other restriction on use of the name," the spokesperson said.
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