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The dispute between Gradiente and Apple regarding iPhone trademark in Brazil

Nowadays, there is no consumer of mobile device that has not heard of the trademark Iphone, smartphone created by U.S. company Apple Inc. and object of desire in Brazil and worldwide.
It happens that the owner of the brand IPHONE in Brazil is the Brazilian company IGB Eletrônica S.A. (current name of Gradiente Eletrônica S.A.), which had a registration granted by the Brazilian Patent and Trademark Office – BPTO on 01/02/2008 for the trademark G GRADIENTE IPHONE in Class 09 (cellular telephones, etc.).

The story is interesting: in 2000, the Brazilian company Gradiente thought of uniting internet with mobile phone and created the name Internet Phone, which was considered too long and changed to Iphone. There is a video released by Gradiente telling this story: http://www.youtube.com/watch?v=rzE2CPJQHSU.

The application for the trademark G GRADIENTE IPHONE on behalf of the Brazilian company was then filed before the BPTO on 03/29/2000 and its registration granted on 01/02/2008 – nearly 8 years later. The rights to the exclusive use of the mark G GRADIENTE IPHONE by Gradiente in the Brazilian territory are valid until 01/02/2018.

On the other hand, the application for Apple’s trademark Iphone was filed in Brazil on 09/25/2006 and was rejected (denied) by the BPTO, based on the prior existence of Gradiente’s trademark. Subsequently, the rejecting decision was annulled and Apple’s application is currently suspended until the final decision on the Forfeiture Procedure (based on the alleged failure to use the trademark G GRADIENTE IPHONE by Gradiente) presented by Apple.

According to the Brazilian Industrial Property Law, a registration becomes vulnerable to forfeiture at the request of any interested party with a legitimate interest if, within 5 (five) years from its granting, in the date of the filing of the Forfeiture, the use of the mark has not been started in Brazil. So, by law, Gradiente’s registration became vulnerable as from 01/02/2013.

This was the strategy adopted by Apple aiming at administratively canceling the registration granted by the Brazilian company.

On the other hand, strategically or not, the trademark G GRADIENTE IPHONE began to be used in Brazil in December, 2012. Thus, if the initial use of the trademark is proved, Gradiente guarantees the right to exclusive use of the trademark in Brazil.

Given the history of the situation, Apple has tried to seek a solution in the courts, through judicial action pending before the 13th Federal Court of Rio De Janeiro. The action has been suspended since March, 2013 at the request of Apple. Apparently, the companies try to reach a coexistence agreement for their Iphone trademarks in Brazil.

The situation of the trademark Iphone, somehow demonstrates the consequences of the delay of the analysis of a trademark by the BPTO. Currently, a trademark registration is granted on average 3 (three) years, if it does not find administrative obstacles along the way. Otherwise, this time may increase considerably. The BPTO strives to reduce this delay.

Notwithstanding the above table, the fact is that Apple launched its iPhone in Brazil in 2007, and it is now in its fifth version. While the imbroglio is not resolved, the iPhone continues to be marketed in Brazil, since the BPTO has no power to interfere with the sale of any product on the Brazilian market.

It remains only waiting to check the end of this dispute. However, the more likely is that an agreement is signed, as happened in other parts of the world, where Apple had to negotiate the trademark of its flagship product with other companies.

Carmen Sánchez-Puelles