The episode for the rights of exclusive use over the iPhone trademark in Brazil has begun a new chapter this week. After losing in different courts to Apple, IGB Eletrônica, formerly Gradiente, took the case to be tried by the Federal Supreme Court (STF).
Both companies have been fighting in the courts since the beginning of the decade. The Brazilian company registered the term iPhone (with a capital I) in 2000 at the Brazilian Patent and Trademark Office (BPTO). It took the agency eight years to grant the registration. At that time, Apple had launched its own iPhone in 2007.
In 2012, Gradiente then launched a line of smartphones with its trademark. Equipped with the Android operating system, the devices have nothing to do with Apple’s phone. In 2014, the pre-sale of the iPhone C-600 model even made the IGB’s shares rise. Sales, however, sank.
IGB’s new action against Apple refers to an Extraordinary Appeal (ARE 1266095), which is the impugnation before the Federal Supreme Court against a judicial decision issued by a State or Federal court. In this case, the Superior Court of Justice (STJ).
In 2018, Gradiente lost the battle in the STJ court to Apple. In the decision, it was determined that both companies could use the term.
The Judge-Rapporteur, Minister Luís Felipe Salomão, argued at the time that “the use of the ‘iPhone’ trademark by Apple does not show any circumstance that implies, even potentially, parasitic exploitation, diversion of customers or dilution of the trademark, with the induction of consumers in mistake”.
The minister also made it clear that “such exegesis does not prejudice the IGB, which, having previously registered the expression ‘G GRADIENTE IPHONE’, may continue to use it, but ruling out only the exclusivity of using the expression ‘iPhone’ in isolation ”.
Filed on April 24, 2020, the appeal cites IGB Eletrônica as part of the process, as an appellant; Apple, as a defendant; in addition to the BPTO. There is no prediction as to when the appeal will be tried at the Supreme Court.
News from: Exame