The legal conflict between Apple and the Brazilian company Gradiente over the “iPhone” brand has just experienced a significant new development. The Federal Regional Court of the 2nd Region (TRF2) issued a complex decision which, while generally favoring Apple, still leaves several questions unanswered in this case which has lasted for more than a decade.
A partial victory for Apple
The Second Specialized Chamber of the TRF2 ruled in favor of Apple regarding the use of the “iPhone” brand in Brazil. The judge-rapporteur, whose opinion was unanimously followed, considered that despite the exploitation of the same market segment, “the nominative and figurative elements of the marks are sufficiently distinct not to create confusion or association undue” between the products of the two companies.
However, Apple’s victory is tempered by the rejection of its request to cancel the “G Gradiente iPhone” trademark for non-use. Even more, the chamber annulled a previous first instance decision favorable to Apple, ordering a new investigation and a new judgment. The court considered that the initial procedure contained an “unavoidable defect” by treating the two actions simultaneously.
A complex history dating back to 2000
This complex affair has its roots in a bold step by Gradiente, which registered the trademark “G Gradiente iPhone” with the Brazilian National Institute of Industrial Property (INPI) in 2000, seven years before Apple presented its first iPhone. Eugênio Staub, CEO of Gradiente, proudly claims to have marketed a phone under this brand at the time: “We sold 30,000 units in a few months”, he declared in an interview with the newspaper Folha de S. Paulo.
The story became complicated in 2008, when Gradiente finally obtained the rights to the brand, after the global launch of the Apple iPhone. In 2012, the Brazilian company returned to the market with an Android smartphone called “Gradiente iPhone”, provoking an immediate reaction from Apple, which requested the invalidation of the trademark.
A legal battle that is not over
The CEO of Gradiente is keen to defend the legitimacy of his approach in the face of accusations of opportunism: “People look at this story and say ‘Gradiente is a Brazilian company, so it must be a scam, right?'”, laments he. He recognizes the genius of Steve Jobs while maintaining his rights:
Jobs launched a sensational product. He is a genius of our generation and of several generations. But that doesn’t take away from the fact that we launched a similar product before with the same name.
The case is far from closed since an extraordinary appeal is still pending before the Brazilian Supreme Court. The upcoming decision will have particular significance because it will benefit from the status of “repercussão geral”, meaning that it will serve as a legal reference for all similar cases in the Brazilian judicial system.
