Judge in Brazilian 'iPhone' Trademark Lawsuit Rules in Apple's Favor

[Urban Joe]

My Two Cents

I like Apple and all...but on this one

Ah...who cares?

I mean really. Does anybody think that some silly Brazilian iphone is seriously going to confuse people who want a REAL iPhone. This is ridiculous.

As far as the trademarks go, I also don't like the double standard. This is a problem but not nearly as bad as all the frivolous patents being handed out. Oops I mean being bought under the table...let's just call a spade a spade.

 

[tbrinkma]

It's the same in Brazil; but I am afraid the judge's decision was not exactly sound - it just catered to a higher commercial interest. His statement that the mark connected "internet" and "phone" makes no sense whatsoever, as this "descriptive" principle would also have to apply to Apple, thus leading to zero protection for both companies.

In fact, Gradiente HAD a lawful trademark as well as a device making use of it within the prescribed time period. This is the relevant article of Brazil's main IPR law:

"Article 143 - A registration will become forfeit, on the request of any person with a legitimate interest, if, after 5 (five) years from its grant, on the date of such request:
I - use of the mark in Brazil has not been initiated; or
II - use of the mark has been interrupted for more than 5 (five) consecutive years or if, within that time, the mark has been used in a modified form that implies alteration in its original distinctive character, as found on the certificate of registration.
§ 1 - The mark will not become forfeit if the registrant justifies the lack of use for legitimate reasons.
§ 2 - The registrant will be notified to reply within a period of 60 (sixty) days, the onus falling on him to prove the use of the mark or justify its lack of use for legitimate reasons."

And yes, Gradiente has already said it will appeal - I still think that the most probable outcome will be that Apple pays some undisclosed sum and Gradiente shuts up.

In regard to the claim that they had a device using the name within the required period of time:

From the article:

IGB Electronica, a Brazilian cell phone company, originally filed for the iPhone trademark in 2000 but did not use the name until December of 2012 when it released a line of IPHONE Android phones.

That's 11+ years, which is greater than 5. So, unless there's a device nobody has ever mentioned, the 2000 trademark expired in 2005. Also, unless they had a device available during the 2005-2008 time period as well, they're out of luck due to the 'if not used for 5 consecutive years it expires' clause in the law you posted.

----------

Surely the fact they trademarked name 7 years before the iphone is case closed? Or is this apple waving some cash under someones nose?

As someone else posted earlier in the thread, Brazilian law requires that the trademark be *used* within 5 years, and not out of use for any 5 consecutive years after issue to avoid expiration. If, as the article states, "IGB Electronica, a Brazilian cell phone company, originally filed for the iPhone trademark in 2000 but did not use the name until December of 2012 when it released a line of IPHONE Android phones.", then they failed to make use of the trademark for far longer than 5 years, *and* it was out of use for far longer than 5 consecutive years since it was issued.

Trademarks are, in most countries, a 'use it or lose it' affair.

 

[Terrin]

I mean its a silly lawsuit, of course Apple was going to win.

But what this ruling is saying is that trademarks do not matter if you don't have a product to apply it against, which I agree with.

Which means that some of the countless trademarks held by Apple and Google and Microsoft for potential future products should also be fair game to be taken by someone if there is no product to slap it against.

I don't like meaningless lawsuits, but I also don't like double standards. Apple better get an iWatch out there soon before some Brazilian company slaps iWatch on an actual product and has Apple eating crow.

Trademark law allows companies to hold a trademark for a certain period of time while preparing it for market (provided the mark is registered). I think the time is a year. Regardless, the whole purpose of trademark is to identify a product with the mark. You only own a trademark to the extent you use it in association with a shipping product or available service. The company sitting on the mark for 12 years in the US would have meant the mark was abandoned.

 

[kdarling]

I wonder if Apple has any names trademarked that they haven't used yet

Not long ago I did a trademark search in China, and found these extra names registered to Apple:

IPOD PAD
IPOD SLATE
IPOD TAB
IPOD TABLET

APPLE PAD
APPLE SLATE
APPLE TAB

and also how long they had iPhone, iPad, iPod, before the product was actually released. Just curious.

IIRC, Apple didn't get any beforehand. iPhone and iPad were registered by others back in 1997, and iPod by someone else in 1999.

iPad was abandoned by the time Apple started using it, I think. iPod was in use by an inventor in NJ using it for internet kiosks, so Apple might've paid him off. iPhone of course belonged to Cisco.

--

With various people wondering why Apple used the "i" prefix, it sounds like it's a good time to post my list of "i-products" again. I only spent one Saturday morning of trademark searching on it, so I'm sure it's not even complete. You can see that "i-anything" became quite popular in the later 1990s, which is why Apple's ad agency wanted to use it for the iMac in 1998. Enjoy:

Red = Apple trademark, Blue = a name or trademark used before Apple, but later obtained by them.

1987 - iNet (online storage)

1992 - iScreen (online computer manuals)

1993 - iTV (interactive TV)
1993 - ICONNECT (internet professionals)

1994 - iPod chair (internet equipped pod chair - Australia)
1994 - iBank (remote banking comms)

1995 - iCOMM (internet comms)
1995 - IMall (internet business)
1995 - iNET (internet comms)
1995 - ishop (internet store software)
1995 - IStore (internet shopping)
1995 - iRock (internet music radio)
1995 - I-SITE (internet comms)
1995 - I-FAX (internet to fax)
1995 - I-Central (internet consulting)
1995 - iFind (MCI directory)
1995 - IVIEW (interactive USAF viewer)
1995 - ICast (internet broadcasts)
1995 - iCity (internet hosting)

1996 - iHome (intelligent/interactive home)
1996 - iMessage (internet mail)
1996 - iRadio (interactive internet radio)
1996 - iBox (internet computer for home)
1996 - IBrowse (internet browser for Amiga)
1996 - i-Remote (internet TV remote control)
1996 - iBooks (interactive books)
1996 - iGames (internet gambling)
1996 - iMonitor (integrated systems monitor)
1996 - iKiosk (internet printer)
1996 - iName (internet addresses)
1996 - iPrint (internet printing)
1996 - iPhoto (internet printing)
1996 - iCall (internet comms)
1996 - iQuest (QWEST internet)
1996 - i-Page (paging handsets from internet)
1996 - iTel (internet media transfer)
1996 - I800 (internet directory)
1996 - I.CHALLENGE (internet gaming)

1997 - IMail (Internet Explorer Mail)
1997 - iWORLD (internet community)
1997 - iPoint (embedded Internet APIs)
1997 - iPump (internet reference design)
1997 - iMeter (internet meter reader)
1997 - I Antiques & I Collectibles
1997 - i-MAGIC (interactive learning)
1997 - iCube (internet kiosk)
1997 - IPostOffice
1997 - iRenaissance (internet software)
1997 - iCommunity (internet BBS)
1997 - iMatch (internet dating)
1997 - INote (internet note taker)
1997 - Iplay (internet games)
1997 - iPhone (internet phone)
1997 - IPAD (Internet Protocol ADapter box)
1997 - IPad (interactive notepad - Cross pens)

1998 - iMagic (interactive ad company)
1998 - iTourist (interactive ads)
1998 - iGovernment (info)
1998 - itravel (internet travel agency)
1998 - INews (internet news)
1998 - IView (interent adapter)
1998 - iAPP (internet job applications)
1998 - iAnnounce (internet announcements)
1998 - iInvite (internet invitations)
1998 - iNote (internet sticky notes)
1998 - iMac (first Apple i-name)
1998 - imouse (interactive mouse)

1999 - idesk (internet management)
1999 - iform (internet data)
1999 - iTerm (internet web terminal)
1999 - i-Opener (internet web computer)
1999 - IPOD (internet protocol converter)
1999 - iNews24 (internet News site)
1999 - iCatalog (internet catalog)
1999 - iTours (internet tour booking)
1999 - iBook by Apple
1999 - iFrame (internet photo network)

2000 - ICard (internet bank card services)
2000 - iDirect (internet direct satellite link)
2000 - iVacation (internet home rentals)
2000 - iRad (internet radio)
2000 - iPAQ (internet computer)
2000 - iPod (internet kiosk - NJ company)

2001 - iTunes by Apple
2001 - iPod by Apple

AND my favorite preApple i-Trademark. A product that used JUST the lowercase letter "i" all by itself...

 

[Terrin]

Well, I'm Brazilian and i DO know something about our laws.
The Company (here we call it "Gradiente", it used to be a really big electronics company) DID registered the name "iPhone" 7 years BEFORE apple launched the iPhone in the US and maybe 9 years before it was launched in Brazil , so it's pretty clear that they indeed have a case (remember that when apple launched the original iPhone they actually bought the name from a British company or something).
That been sad it's also a fact that they saw a HUGE opportunity to make some cash from apple's deep pockets and that's the only reason they launched the crappiest iPhone ever(it's crap even from Android standards)
so,
1)they registered the name many years before anyone started talking about apple releasing a phone
2)they are a electronics company.They actually used to have pretty good phones back in the day (nokia technology when nokia tech meant something)

I don't see a way where apple DOESN'T pay a lot to get exclusive rights to the name, the fact that today both companies are allowed to used it is meaningless, or any one can imagine apple sharing a name?

Yes, but do you know about trademark law in Brazil? Owning a trademark is generally a use it or lose it affair. A company cannot apply for a trademark, and just sit on it forever. It must within a specified period of time use the mark in association with a product or service. Others have said, in Brazil the time period is 5 years? It seems eleven years went by without a product. Was there any other product then the obvious attempt to shake some money from Apple by releasing a horrible phone with the same name?

I think Apple will pay some money to settle the matter, but it will be a lot less than it was before this appeal decision.

 

[andrebismara]

I am Brazilian and I feel really ashamed of this gold-digging attitude of some companies here... Of course Apple would win and Gradiente su**s a**

 

[cire]

yes - such a chore

I guess it's just cooler to post that samsung must have paid off judges in threads like these. That's far more productive, accurate, and acceptable

I'm not saying corruption doesn't exist. But most of the time someone goes for the easy post of bribery just because they don't like the decision - is just silly.

Not more productive, but more reasonable for an Apple news site. What do people that hate Apple spend their time here? Go to a Samsung site. I've gone from liking samsung to hating them. I don't spend time in Samsung sites (wherever they may be) attacking the company and people that like their culture and products.

 

[RogueWarrior65]

Apply this ruling to patent trolls

One can only hope that rulings like this will eventually affect patent trolls who never use the technology described in the patent themselves but instead wait for someone else to make a real product and screw them over.

 

[AppleScruff1]

Not long ago I did a trademark search in China, and found these extra names registered to Apple:

IPOD PAD
IPOD SLATE
IPOD TAB
IPOD TABLET

APPLE PAD
APPLE SLATE
APPLE TAB



IIRC, Apple didn't get any beforehand. iPhone and iPad were registered by others back in 1997, and iPod by someone else in 1999.

iPad was abandoned by the time Apple started using it, I think. iPod was in use by an inventor in NJ using it for internet kiosks, so Apple might've paid him off. iPhone of course belonged to Cisco.

--

With various people wondering why Apple used the "i" prefix, it sounds like it's a good time to post my list of "i-products" again. I only spent one Saturday morning of trademark searching on it, so I'm sure it's not even complete. You can see that "i" became quite popular in the later 1990s, which is why Apple's ad agency wanted to use it. Enjoy:

Red = Apple trademark, Blue = a name or trademark used before Apple, but later obtained by them.

1987 - iNet (online storage)

1992 - iScreen (online computer manuals)

1993 - iTV (interactive TV)
1993 - ICONNECT (internet professionals)

1994 - iPod chair (internet equipped pod chair - Australia)
1994 - iBank (remote banking comms)

1995 - iCOMM (internet comms)
1995 - IMall (internet business)
1995 - iNET (internet comms)
1995 - ishop (internet store software)
1995 - IStore (internet shopping)
1995 - iRock (internet music radio)
1995 - I-SITE (internet comms)
1995 - I-FAX (internet to fax)
1995 - I-Central (internet consulting)
1995 - iFind (MCI directory)
1995 - IVIEW (interactive USAF viewer)
1995 - ICast (internet broadcasts)
1995 - iCity (internet hosting)

1996 - iHome (intelligent/interactive home)
1996 - iMessage (internet mail)
1996 - iRadio (interactive internet radio)
1996 - iBox (internet computer for home)
1996 - IBrowse (internet browser for Amiga)
1996 - i-Remote (internet TV remote control)
1996 - iBooks (interactive books)
1996 - iGames (internet gambling)
1996 - iMonitor (integrated systems monitor)
1996 - iKiosk (internet printer)
1996 - iName (internet addresses)
1996 - iPrint (internet printing)
1996 - iPhoto (internet printing)
1996 - iCall (internet comms)
1996 - iQuest (QWEST internet)
1996 - i-Page (paging handsets from internet)
1996 - iTel (internet media transfer)
1996 - I800 (internet directory)
1996 - I.CHALLENGE (internet gaming)

1997 - IMail (Internet Explorer Mail)
1997 - iWORLD (internet community)
1997 - iPoint (embedded Internet APIs)
1997 - iPump (internet reference design)
1997 - iMeter (internet meter reader)
1997 - I Antiques & I Collectibles
1997 - i-MAGIC (interactive learning)
1997 - iCube (internet kiosk)
1997 - IPostOffice
1997 - iRenaissance (internet software)
1997 - iCommunity (internet BBS)
1997 - iMatch (internet dating)
1997 - INote (internet note taker)
1997 - Iplay (internet games)
1997 - iPhone (internet phone)
1997 - IPAD (Internet Protocol ADapter box)
1997 - IPad (interactive notepad - Cross pens)

1998 - iMagic (interactive ad company)
1998 - iTourist (interactive ads)
1998 - iGovernment (info)
1998 - itravel (internet travel agency)
1998 - INews (internet news)
1998 - IView (interent adapter)
1998 - iAPP (internet job applications)
1998 - iAnnounce (internet announcements)
1998 - iInvite (internet invitations)
1998 - iNote (internet sticky notes)
1998 - iMac by Apple
1998 - imouse (interactive mouse)

1999 - idesk (internet management)
1999 - iform (internet data)
1999 - iTerm (internet web terminal)
1999 - i-Opener (internet web computer)
1999 - IPOD (internet protocol converter)
1999 - iNews24 (internet News site)
1999 - iCatalog (internet catalog)
1999 - iTours (internet tour booking)
1999 - iBook by Apple
1999 - iFrame (internet photo network)

2000 - ICard (internet bank card services)
2000 - iDirect (internet direct satellite link)
2000 - iVacation (internet home rentals)
2000 - iRad (internet radio)
2000 - iPAQ (internet computer)
2000 - iPod (internet kiosk - NJ company)

2001 - iTunes by Apple
2001 - iPod by Apple

AND my favorite preApple i-Trademark. A product that used JUST the lowercase letter "i" all by itself...

View attachment 436365

And Motorola had iDEN back in 1994. You've come up with quite a list. I think that many people believe that Apple invent the iXxx naming scheme.

 

[Konrad9]

First of all...this is not a patent dispute. This is a trademark dispute.

Having said that... you seem to think that it's "crying foul" when you have a patent, don't use it until someone else releases a popular product with that feature, and then file suit to protect your IP. How is this actually crying foul?

You realize that Apple files for and receives approval of many many patents that never make it into a product right? What would happen if some other phone or PC manufacturer were to release a product that contains a feature that Apple had patented 10 years ago? If Apple were to sue (even though they NEVER actually implemented the feature in a commercial product), would you consider that Apple is "crying foul"? I would guess no... you'd defend Apple.

Please apply your "standards" consistently.

No, I wouldn't defend Apple. I defend the people that deserve to be defended. If Apple filed a patent for a phone airbag, didn't use it for 10 years, and then someone else did, they would have no right to sue or demand royalties.

I apply my standards consistently, thank you very much.

 

[NorEaster]

No, I wouldn't defend Apple. I defend the people that deserve to be defended. If Apple filed a patent for a phone airbag, didn't use it for 10 years, and then someone else did, they would have no right to sue or demand royalties.

I apply my standards consistently, thank you very much.

I'm glad you're not a patent attorney then, because it's apparent you don't know how patent law works.

 

[Konrad9]

I'm glad you're not a patent attorney then, because it's apparent you don't know how patent law works.

I know how patent law works, what you meant to say is "I'm glad you aren't a judge, because you wouldn't allow me to patent troll."