Apple beats Gradiente in new battle for the iPhone brand in Brazil

The dispute over the iPhone brand in Brazil gained a new chapter, with the Apple achieving an important victory over Gradient. The Second Specialized Panel of the Federal Regional Court of the 2nd Region (TRF2) recently judged two cases involving the fight between companies over the industrial property of the famous smartphone brand.

In the first case, Gradiente (IGB Eletrônica SA) had requested the nullity of Apple’s iPhone brand, claiming to have registered the “G Gradiente Iphone” brand with the National Institute of Industrial Property (INPI) in 2000, seven years before the launch of the first iPhone from the American company. However, TRF2 denied Gradiente’s request, confirming the first instance sentence.

Also read
Are you going now? Gradiente hires Michel Temer as a lawyer in the fight against Apple over the iPhone brand
Gradiente x Apple: understand this bullshit in detail

Federal judge Wanderley Sanan Dantas, rapporteur of both processes, argued in his vote that, despite the companies exploring the same market segment, “the nominative and figurative elements of the brands are sufficiently distinct so as not to generate confusion or undue association“. Thus, the court concluded that it was possible to “peaceful coexistence of brands“.

Apple wanted the Gradiente brand to be “extinct”

The second lawsuit, filed by Apple, requested the revocation of the “G Gradiente Iphone” brand based on article 143 of the Industrial Property Law (LPI). The American company argued that the registration should be terminated due to the lack of use of the brand in Brazil for more than five years. Although the first degree ruling was favorable to Apple, the Second Specialized Panel of the TRF2 annulled this decision.

The collegiate determined the redistribution of the files by lottery among the federal courts specializing in intellectual property, for new instruction and trial. The court understood that the action proposed by Apple could not have been processed together with the action filed by Gradiente, as initially occurred. This link, according to the judges, generated an “insurmountable vice” in the distribution of the process.

Despite this decision apparently favorable to Gradiente in the second case, the overall result of the trials is considered a victory for Apple, which maintains the right to use the iPhone brand in Brazil.

Imbroglio far from over

It is important to highlight that this dispute is far from over. In addition to the two actions judged by the TRF2, an appeal is being processed in the Federal Supreme Court (STF) in an extraordinary appeal that discusses the possibility of Apple being the exclusive holder of the term “iphone” in Brazil. The STF’s decision will have general repercussions, that is, it will be applied by other instances of the Judiciary in identical cases.

The case is registered with the STF as Topic 1205, described as “discussion about the exclusivity of industrial property due to the delay in granting trademark registration by the INPI concomitant with the emergence of globally recognized use of the same trademark by a competitor“.

This legal battle, which has been going on since 2013, shows the complexity and slowness of intellectual property disputes in the globalized technological world. While Gradiente argues that it first registered the brand in Brazil, Apple argues that its iPhone has become a globally recognized product associated with its brand.

For now, Apple maintains the advantage in the dispute, being able to continue to freely use the iPhone brand in the Brazilian market. However, the STF’s final decision could have significant implications not only for this specific case, but also for future industrial property disputes in the country, especially in situations involving global brands and previous local registrations.