Brazil's Prosecutor General Sides With Apple in Long-Running 'iPhone' Trademark Dispute

[MacRumors]

The Brazilian Supreme Court has issued a favorable opinion to Apple in a long-running dispute over the exclusive use of the iPhone brand in the country, local media reports.

For those unfamiliar with the case, Brazil's highest court accepted a constitutional appeal in 2020 by ISB Electronica, an electronics company that registered the ‌iPhone‌ trademark in Brazil in 2000.

Under the name Gradiente, IGB Electronica produced a line of IPHONE-branded Android smartphones in Brazil in 2012, and there was a period of time where the Brazilian company was given exclusive rights to the ‌iPhone‌ trademark.

The appeal resulted in a trademark battle that saw both Apple and IGB Electronica given the rights to use the name in the country, but that didn't prevent back and forth judicial fighting between the two, with each company attempting to gain exclusive rights to the trademark.

A 2018 decision upheld a 2013 ruling that gave both brands permission to use the trademark, but then IGB Electronica revived the dispute in an attempt to get the 2018 decision reversed by Brazil's Supreme Federal Court.

In the latest development in the case, Brazilian Prosecutor General Augusto Aras last Friday gave his assent to Apple's position. Aras said that even though IGB Electronica applied to register the iPhone trademark several years before Apple's smartphone was launched, the "iPhone" brand has since become a globally recognized name, and therefore plays an important role in the world electronics market.

For this reason, Aras said the use of the iPhone brand should not be subject to the traditional question of who registered the name first, but instead the "supervening context and relevant factual changes" should be considered before a decision is made.

According to Tilt (via MacMagazine), the Prosecutor General's opinion has now been delivered to the Brazilian Supreme Court, which will hear the case and come to a decision, although a date for the hearing has not been scheduled.

Article Link: Brazil's Prosecutor General Sides With Apple in Long-Running 'iPhone' Trademark Dispute

 

[ph001bi]

Finally a logical decision by a court. It's amazing that it took 12 years and having to go to the Supreme Court in order to obtain this result.

 

[Shirasaki]

Sounds like some fresh perspectives from the court. And makes sense at first glance. There will always be more details behind tho so let’s see how it will unfold.

 

[Samplasion]

It makes sense but I can't stop thinking how unintelligent that decision was to try to get exclusive rights and get yours taken away 😂
I think if they had kept their mouths shut they could keep using the name (unless Apple started the dispute again in which case we'd end up here anyways)

 

[Robert.Walter]

Although I would like to see apple have exclusive use of the iPhone name, this decision is quite bizarre.

I’m not a trademark attorney but I’ve never heard of somebody losing their intellectual property (here ™) because some other player became more successful using that name both later and elsewhere.

This decision doesn’t really uphold the point of registering a trademark if it can later can be reversed on such convenient and spongy grounds.

 

[ProfessionalFan]

Although I would like to see apple have exclusive use of the iPhone name, this decision is quite bizarre.

I’m not a trademark attorney but I’ve never heard of somebody losing their intellectual property (here ™) because some other player became more successful using that name both later and elsewhere.

This decision doesn’t really uphold the point of registering a trademark if it can later can be reversed on such convenient and spongy grounds.

I agree that this seems unusual.

However, I think a big point here was that they didn't use the trademark until years after the iPhone was released. Which could make some see this as them trying to capitalize off the success of Apple's iPhone. Had they used it prior to the iPhone release, I wonder if this would've ended differently. Even though they registered it in 2000, they didn't actually have a product with the name until 2012.

I'm not a lawyer either though.

 

[Edsel]

Mother Nature is still awaiting a decision on "apple v. Apple, Inc"

 

[iAFC]

The Supreme Court or the Prosecutor General? Make up your mind, MacRumors!

Finally a logical decision by a court. It's amazing that it took 12 years and having to go to the Supreme Court in order to obtain this result.

The decision is yet to be taken.

 

[darngooddesign]

Had they been making and selling "Iphones" before Apple released its "iPhone" then the decision likely would have been different.

 

[Kaikidan]

I agree that this seems unusual.

However, I think a big point here was that they didn't use the trademark until years after the iPhone was released. Which could make some see this as them trying to capitalize off the success of Apple's iPhone. Had they used it prior to the iPhone release, I wonder if this would've ended differently. Even though they registered it in 2000, they didn't actually have a product with the name until 2012.

I'm not a lawyer either though.

Since the indrotuction of the iMac it become common practice for copyright trolls and other brands to patent i[Devicename] as it's a pretty low hanging fruit in name terms, just slaps i in front of every possible name before anyone else and sue apple if they use "your" trademark in a new product or try to sell the rights to the name, that's basically what gradient did, they are not even in the market anymore for ages (last time I remember purchasing something from them was the N64, they got the rights to import nintendo products here for a time after nintendo ended the deal with playtronic who sold the SNES here), probably become a mutilaser like company who buy cheap whitelabel crap from aliexpress and resell there with their brand for 8x the cost. that's why apple stoped using i on the name of newer products, it's way harder for someone to launch a product named apple watch or apple tv than iWatch or iTv.

 

[darngooddesign]

Since the indrotuction of the iMac it become common practice for copyright trolls and other brands to patent i[Devicename] as it's a pretty low hanging fruit in name terms, just slaps i in front of every possible name before anyone else and sue apple if they use "your" trademark in a new product or try to sell the rights to the name, that's basically what gradient did, they are not even in the market anymore for ages, probably become a mutilaser like company who buy cheap whitelabel crap from aliexpress and resell there with their brand for 8x the cost. that's why apple stoped using i on the name of newer products, it's way harder for someone to launch a product named apple watch or apple tv than iWatch or iTv.

I'll hand it to them that registering "iphone" was very forward thinking since the iPod hadn't been released yet.

 

[JosephAW]

I’m sure there was a lot of money moving around before this decision was make.

 

[Jarutais]

Seems like some time traveler ****ed up his only chance to get rich. Got the iPhone trademark in 2000… in Brazil?

 

[antmarobel]

Finally a logical decision by a court. It's amazing that it took 12 years and having to go to the Supreme Court in order to obtain this result.

Do you know a slug?...Well, that's justice in my country.

 

[JM]

Is bribing a thing in Brazil?

 

[Kaikidan]

Is bribing a thing in Brazil?

yeah....

 

[scottwxx]

Seems like some time traveler ****ed up his only chance to get rich. Got the iPhone trademark in 2000… in Brazil?

InfoGear sold an iPhone in the US way back in 1997. The company was later acquired by Cisco. Cisco still owned the iPhone trademark as Steve Jobs walked on staged to introduce Apple’s iPhone.

Apple settled with Cisco and both companies are allowed to use the name iPhone. It looks like someone just want a big paycheck from Apple that didn’t arrive.

 

[rpmurray]

Apple ought to pull out of Brazil. Oh ... wait!

 

[sparkinstx]

I'd like to see the ISB Electronica documentation from around 2000, to see how they came up with the name iPhone, and their reasoning for using it. Back then, flip phones and candy bar phones were predominant, and touch screens weren't a thing yet. On the Apple side, who coined the name iPhone?

 

[YourBoss]

The strongest eats the weakest. If you know what I mean 💲💲💲🤑.

BTW, Brazil is the country of bribery 💰.

 

[rpt777]

Although I would like to see apple have exclusive use of the iPhone name, this decision is quite bizarre.

I’m not a trademark attorney but I’ve never heard of somebody losing their intellectual property (here ™) because some other player became more successful using that name both later and elsewhere.

This decision doesn’t really uphold the point of registering a trademark if it can later can be reversed on such convenient and spongy grounds.

Robert I agree, while trademark registration laws can be confusing and difficult to interpret this on its face defies logic.
It is an important distinction to note that some one is not granted a trademark, they merely file for one and the trademark office merely acknowledges the date it received it Thereby establishing a timeline.

But, different countries courts sometimes interpret trademarks , copyrights and patents different but generally ownership rights are accepted as “inherent”, and are owned by the original creator,( weather they filed a specific registration or not) It looks like apple did not have a viable phone product yet when the Brazilian company filed. But had been Using the “i” indidictator on other apple products And I am assuming that is where the court granting them ownership priority from their history on using the “I” to differentiate their electronic products. If you filed a trademark for only “Phone”. That would not be accepted as it is not unique. So apples past history of using the I designation for electronics products might have scored some merit with the court. So it seems apples original use of the “I” on earlier work is interpreted by the courts as inherent.

Important note. the filing of a trademark only establishes a time line of claim, not ownership. The court is saying apple inherently already owned it via prior use.
this is true on copyright and patents as well. While your registration establishes a timeline, it does not rule out someone else having had inherent right under that because of earlier use. Apple may have been successful in demonstrating they had documentation of earlier use. A bit confusing, to say the least.

 

[q64ceo]

The sum needed to bribe anyone in Brazil is so small that it won't make anyone bat an eye on Apple's trillion-dollar accounts.

But good for Apple for finding a solution to the problem.

 

[Mousse]

It makes sense but I can't stop thinking how unintelligent that decision was to try to get exclusive rights and get yours taken away 😂

Go out for wool, come back shorn.😏

Having been on the wrong end of that proverb several times🤕, I feel for Gradiente.

I think if they had kept their mouths shut they could keep using the name (unless Apple started the dispute again in which case we'd end up here anyways)

Apple heeded the wisdom of Polonius (Hamlet Act I, sc 3)

Beware of entrance to a quarrel, but, being in,
Bear ’t that th’ opposèd may beware of thee.

(Don't start a fight. But if you get in one, beat 'em like a rented mule.)😁

 

[miniyou64]

This is why monopolies are evil and I’m not talking about Apple

 

[desslr]

All jokes aside… this is Brazil we’re talking about here… their Prosecutor General has likely got a much bigger bank account today.