The STF (Supreme Federal Court) this month resumed the trial of a dispute between the American Apple and the Brazilian Gradiente over the iPhone brand in Brazil.
Minister Alexandre de Moraes, who had requested a review, followed the understanding of his colleague Roberto Barroso and decided in favor of the American company – which is ahead on the scoreboard, by 3 to 2.
Moraes decided to partially nullify the registration of the brand “G Gradiente Iphone” combined with the determination to INPI (National Institute of Industrial Property) so that Gradiente does not have exclusivity over the word “iPhone” alone.
The minister cites Barroso’s understanding saying that this solution is the one that best reconciles the interests of those involved, as it protects the consumer, who associates the isolated term “Iphone” with the American brand’s product, and does not cause damage to either party in view of that “the term actually registered is the brand ‘G Gradiente Iphone'”.
With his vote, Moraes follows Barroso’s understanding, according to which “the prohibition of the isolated use of a term that constitutes an element of a registered trademark does not offend the Constitution, in view of its worldwide link to a product manufactured by a competitor.”
Deliberations take place in the virtual plenary, through which votes can be cast throughout the week without the need for in-person sessions. The trial is expected to end this week.
Minister Dias Toffoli, rapporteur, had already voted in favor of Gradiente. For him, the trademark registration application cannot be affected by its subsequent use by third parties, in Brazil or abroad.
Toffoli also voted to condemn the losing party (which, according to his vote, would be Apple) to pay costs and legal fees to the winning party. Gilmar followed the same understanding as the rapporteur.
He diverged from Toffoli (in addition to Barroso and Moraes) Luiz Fux. Edson Fachin declared himself a suspect in the case.
The case began in an action filed in 2013 by Apple, seeking to nullify the registration of the brand “Gradiente Iphone” with the INPI. The company recalled its business history, noting that the family of products that begin with the letter “i” (such as iMac, iBook and iPad) are related to it, and Gradiente could only use the full expression, “Gradiente Iphone” – no the term alone.
Gradiente, in turn, argues that it had submitted the trademark to INPI in 2000, when Apple was not yet active in the cell phone sector, and obtained the registration grant in 2008.