Brazilian Supreme Court to judge the right to use the iPhone trademark in Brazil, says lawfirm Mauler Advogados

SAO PAULO, Aug. 12, 2020 /PRNewswire/ -- The Brazilian Supreme Court has decided to receive a constitutional appeal and will judge whether Apple can use the "iPhone" trademark in Brazil, even if another company has submitted it first. The court's president, Justice Dias Toffoli, accepted a request from the well-known Gradiente Group, founded in 1964 by Mr. Eugenio Staub, to analyze the case. The Brazilian lawfirm Mauler Advogados represents the company.

The appellant, IGB Eletrônica S/A, communicated the Supreme Court's decision to the market last Friday. Its shares on the São Paulo Stock Exchange rose 14.09% on Monday and 5,74% on Tuesday. "The Supreme Court's President understood the relevance of the matter to our sovereignty and to the protection of intellectual property in Brazil," celebrated Staub.

The appeal questions the decision of the Federal Regional Court of the 2nd Region (Rio de Janeiro) which, despite attesting the good faith of IGB and rejecting Apple's thesis that the term "iPhone" was merely descriptive of the product (as a synonym for "smartphone") and therefor unregistrable, ruled in favor of the American company because it explored the brand most efficiently.

"Allowing a company to claim a trademark submitted in good faith by another one punishes creativity, distorts free competition and runs over Brazilian intellectual property authorities," says IGB's lawyer Igor Mauler Santiago in the petition. He also alleges the violation of free initiative and of trademarks protection, principles expressly prescribed in the Brazilian Constitution.

In March 2000, seven years before Apple first launched its smartphone, IGB submitted the "iphone" trademark to the Brazilian Institute of Intellectual Property (INPI) and started producing its own device in a plant it then possessed in joint venture with Nokia (and eventually sold to the Finnnish company for US$ 416 million). The registration was granted in 2008, with retroactive effects, as the worldwide standard.

In 2007, however, the Gradiente Group faced financial problems that led to the filing of a request for judicial recovery. It returned to the market only in 2012 and in 2018 resumed its production in the Manaus Free Trade Zone, the country's electronics main manufacture center.

Meanwhile, Apple has filed a lawsuit to claim the "iPhone" brand in Brazil. It stated that the INPI, despite having received the submission from the Gradiente Group in 2000, could not have granted it in 2008, when there was already a product of the same name in the world market. IGB countered. "To state that the circumstances of when the trademark is granted should prevail over those of when it was submitted requires the submitter to be no less than prophetical, and completely subverts the Brazilian intellectual property system", it says in the judicial process.

In Mexico (iFone), Canada (Comware) and even in the United States (Cisco Systems), Apple has made commercial deals to acquire the "iPhone" brand from companies that had submitted it before. Not without first waging legal battles similar to the one in Brazil.

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SOURCE Mauler Advogados

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