The lawsuit was filed in 2013 by Apple and the score is 3-2. Learn more about it!
On Friday (13), Minister Alexandre de Moraes, of the Federal Supreme Court (STF), voted in favor of Apple in the trial against Gradiente over the dispute over the use of the “iPhone” brand. With this, the score is three (Moraes, Luis Roberto Barroso and Luiz Fux) to two (Dias Toffoli and Gilmar Mendes), in favor of the North American company Apple.
The trial, which was suspended due to a request for review by Moraes, was resumed this Friday in a virtual plenary session. The other ministers will have until the 23rd of this month to join their vote. The action was filed in 2013 by Apple, seeking the nullification of the registration of the mixed trademark “Gradiente iphone” with INPI, the National Institute of Industrial Property. The company highlighted its business history, noting that the “i” family of products is related to it.
Continue reading and find out more about this controversy between the two companies now!
Dispute
As already mentioned, the dispute between the two companies began in 2013, when Apple filed a lawsuit seeking the nullity of the registration of the trademark “Gradiente iphone” with the INPI. Apple recalled that the “i” product family is related to its products (iMac, iBook, iPad and others), and that Gradiente could only use the full expression “Gradiente iphone”, but not the term alone.
Gradiente, in turn, argued that it submitted the brand to the INPI in the year 2000, when Apple was not even operating in the business. cell phone. The registration was granted in 2008. In the 1st and 2nd degrees, the registration was declared null and void, and it was determined that the INPI should make a reservation regarding the use of the name, to make it clear that Gradiente does not have exclusivity over “iphone” in isolation.
Rapporteur's vote
At the STF, in a virtual plenary trial, the rapporteur, Minister Dias Toffoli, voted in favor of Gradiente. Minister Gilmar Mendes cast his vote in advance, following the rapporteur.
Divergence
Ministers Luiz Fux and Barroso voted in the opposite direction. For Luiz Fux, obeying Gradiente's priority, as proposed by the rapporteur, could compromise the reasons that underpinned the very meaning of intellectual property.
Barroso understood that there is no general repercussion in the case, and that theme 1205 should be cancelled. He understood that Gradiente's property right was not disregarded by the original decision, which only determined that the enjoyment of the use of “iphone” observes the terms of the registration, which grants it exclusive use of “Gradiente iphone” together.
In his vote, submitted this Friday, Moraes agreed with the dissenting opinion expressed by Justice Luiz Fux to deny the extraordinary appeal. He pointed out that the right to property is not an absolute right, and on the other hand, the purpose of a trademark is to ensure not only the individual rights of the trademark owner, but also of consumers, and to prevent harm to free competition, demonstrating its social function.
He mentioned that the expression iPhone, which initially designated a telephone device with internet access, with the launch of the smartphone from Apple It has become what you could call a well-known brand, as consumers have come to directly associate it with the cell phones it produces.
He proposed the following thesis: the prohibition of the isolated use of a term that constitutes an element of a registered trademark does not violate the Constitution, given its worldwide association with a product manufactured by a competitor.
The trial, which takes place in a virtual plenary session, will take place until 11:59 pm on the 23rd of this month.
