The IP & Commercial Court Found a Profile Photo on Social Media Being Used as a Trademark

Social media has evolved from a social communication tool to an online platform where users share information, ideas, personal messages, art works, etc.  Nowadays, social media is extremely important to brand owners and consumers as they use it as a main tool to interact with each others.  As account names and profile photos represent social media users’ personalities, they too play the function of source identifier as a trademark does.  Therefore, when an account name or profile photo is similar with another’s registered trademark, marketing activities under the account name or the profile photo may constitute a trademark infringement.  A recent decision under Case No. 110-MingShanTzu-46 issued by Taiwan Intellectual Property and Commercial Court (IPC Court) rendered the Court’s latest opinion on this issue.

A Case of Profile Photo on Social Media

The plaintiff, owner of trademark registrations for “星采” and “星采 and device” in Class 44, filed a civil suit against the defendant, which is a dental clinic, for trademark infringement by using, among others, “星采牙醫 STAR BEAUTY and device”(Figure 1, hereunder referred to as the disputed device) as the defendant’s profile photo on Facebook and YouTube. 

In the decision, the IPC Court indicated that the question of whether the disputed device has been used as a trademark by the defendant, i.e. being used as a source identifier of the defendant’s goods/services, should be answered before the question of trademark infringement.  In determining the issue of “use of trademark”, the IPC Court further indicated, the following factors shall be considered: 1) whether the layout, font type, font size, color, and design of the picture or the image of digital video or electronic media are distinctive; 2) whether the nature of the use is sufficient to enable consumers to distinguish the source of the goods or services from others; and 3) whether the purpose of the use shows the defendant’s intention of taking a free ride on the goodwill of the trademark owner.  Based upon the above criteria, IPC Court found that the combination and colors on the disputed device being used by the defendant as its Facebook profile photo (Item ① at Figure 2 & Item ③ at Figure 3) and YouTube profile photo (Item ① at Figure 4) are specifically designed and distinctive enough to allow consumers to distinguish the source of the services from others.  Therefore, IPC Court concluded that use of the disputed device as the defendant’s profile photo on social media constitutes a trademark use.

TAKEAWAY

Agreeing with the common wisdom that a social media profile photo can function as an identity insignia of the account holder, the IPC Court’s decision holds that using a device as profile photo and concurrently conducting commercial marketing activities can qualify as a trademark use, hence strengthening the protection over registered device marks in the context of social media.  This decision is significant to social media users wishing to avoid trademark infringement disputes; devices similar to others’ registered trademarks should not be used as profile photos on social media.