The use of word “Origami” in its literal meaning is not a trademark infringement

One natural person has registered trademark in Russia. According to registration this natural person was stated as owner of exclusive rights in trademark in question in the form of paper crane. The trademark has been registered for the sushi. After the registration this person has concluded asset management agreement with ltd company and three individual enterprises, Individual enterprises were asset managers. The rights owner was the constitutor of asset management under the concluded agreement.

Under the agreement the constitutor has transferred to the managers the exclusive right in trademark and the managers made a commitment to manage exclusive trademark in the best interests of constitutor. The agreement also stipulated that managers execute their authority under agreement as holders of exclusive rights in trademark. Managers have the right to dispose the trademark only by consent of the constitutor. The managers also have the authority to protect rights in trademark including by way of filing a lawsuit.

One company, trading a sushi, has published the advertising post in social networks and on local business web-sites. Promotional post mentioned the word origami and contained the image of paper crane. The constitutor has filed a lawsuit against the company trading and delivering sushi for trademark infringement. According to lawsuit, the promotional campaign infringed the exclusive right in registered trademark of the plaintiff and the phrase in promotional post “Ebidoebi buys. Origami” defaming business reputation of the plaintiff, because he runs the similar business activity.

According to the plaintiff, the word origami, placed in the sentence from the capital letter, is written in violation of grammar. The word origami means type of arts and at the same time indicates the famous brand in the field of delivering of sushi. The plaintiff believes the advertiser intentionally meant the brand “Origami” and placed near with wording the image of paper crane, similar to the registered trademark of the plaintiff. The plaintiff sought the compensation for trademark infringement and defaming his business reputation.

The defendants argued that the company, allegedly illegally using trademark in question, does not operate anymore, it does not lead any business activity, it does not have any current bank accounts, it does not produce anything. The promotional campaign in social networks did not involve the brand “Origami”; the word “origami” has been used only with purpose to specify the types of paper figures exchangeable for bonuses. The word “origami”, first of all, means the type of arts, but not the brand.

The image of the paper crane, claimed as infringing, has been taken from Wikipedia. Besides, the word “Origami” can mean everything – from the type of art to rock-band from Saint-Petersburg. Comparative analyse of two images – the trademark and image from promotional material – revealed that they have one similar element in common, but it does not mean that such element can lead to likelihood of confusion. Besides, the plaintiff’s trademark does not met requirement of originality, necessary to individualize the services provided by certain plaintiff’s organisation.

The court ruled that the core destination of trademark is providing the customer with opportunity to differ market product of one producer from similar products of other producers. Comparison of two trademarks in the context of their graphical and visual similarity must take into account the main rule – the conclusion is to be made on the ground of perception of trademarks in whole, but not their separate elements. In order to find similarity between two trademarks in question it is enough when the risk of confusion in the sight of customers exists.

The sign is similar to the point of confusion if it associates with trademark in question despite distinctive features of both signs. The sign is identical if it coincides with trademark in question in all elements, and the sign is similar to confusion if it associates with trademark in question in the whole despite distinctive features of both signs. The average customer primarily perceives the external shape of the sign. Therefore the evaluation of similarity between two signs is to be made on the ground of external shape similarity.

The court assessed all materials in case, analyzed registered plaintiff’s trademark and promotional materials of defendants and concluded there is no likelihood of confusion. Simple use of word “Origami” in promotional materials by defendants can’t be trademark infringement. Defendants have used the word “Origami” in their promotional campaign without intention or purpose to identify any good or service. Besides, the court has taken into account that the figure of crane is widespread. The court of first instance decided there is not trademark infringement. The appeal court and cassational court affirmed.