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BRAZIL: Superior Court of Justice Allows Apple to Continue Using IPHONE Trademark

The Superior Court of Justice (STJ), on September 20, 2018, dismissed appeals filed by IGB Eletrônica S.A. (IGB) and the National Institute of Industrial Property (INPI), upholding a lower court decision which declared the partial nullity of IGB’s 2008 registration for the G GRADIENTE IPHONE trademark. 

The controversy began in 2013, when Apple Inc. (Apple) filed a lawsuit against IGB and INPI, seeking the partial nullity of registration for the G GRADIENTE IPHONE mark in Class 9 (which covers mobile telephone sets, mobile telephone sets allowing access to the Internet, fixed or mobile telephony, digital antennas, protective covers, batteries, chargers, speakerphones, hands free, parts and accessories included in this class). 

As the creator of several products of the so-called i-Family of brands, which includes the IPOD, IPAD, and IPHONE brands, in its initial complaint, and subsequently, Apple has argued that its trademarks are well known in Brazil in the multimedia device sector. Apple launched its iPhone product worldwide in 2007 and claims that the registration of the G GRADIENTE IPHONE mark was granted to IGB in error by INPI. Apple also argued that the term “iPhone,” as it is used by IGB, has no distinctiveness and simply indicates a telephone with access to the Internet, that is, a smartphone. 

In its response, INPI argued that the word “iPhone,” formed by the letter “i” and the English word “Phone” constitutes a new and separate mark with its own features, thus deserving exclusive protection. 

IGB also defended the validity of its registration and claimed that the priority use of the IPHONE mark in Brazil and worldwide should belong to IGB rather than Apple, due to the launch of a mobile phone named “Gradiente iPhone” seven years before Apple, in 2000. 

According to the lower court decision, allowing IGB to use the expression “iPhone” freely and without any limitation would represent a significant loss to Apple, which has worked to establish the product’s recognition and success in the Brazilian marketplace. 

The STJ recognized that Apple’s “iPhone” had acquired “secondary meaning” and pointed out that the use of “iPhone” alone by any company other than Apple could cause “harmful consequences” to Apple. However, the use of the G GRADIENTE IPHONE mark would not harm Apple or IGB, as such use would not mislead the consumer. 

As a result of this decision, IGB may continue using the G GRADIENTE IPHONE mark but without the right to use the name “iPhone” alone.