|October 15, 2013|
Previously published on October 11, 2013
In February 2013, the Instituto Nacional Da Propriedade Industrial (the “Brazilian Patent and Trademark Office”), ruled that Gradiente Electronica (“Gradiente”), not Apple, owned the “iPhone” mark in Brazil. The “iPhone” term was registered by Gradiente in 2000, 7 years prior to Apple’s release of its iPhone. The decision came 3 months after Gradiente launched a low-cost Android smartphone using the iPhone brand (see their model here).
Brazil adopted the first-to-file principle (in other words, applicants that register their trademarks do not need to prove “intent-to-use”), although there is an exception for a party who has been using the same or similar mark in good faith for at least 6 months before the filing of an application. A trademark remains in force for a 10 year term, with the possibility of equal and successive renewals. Proof of use to maintain a registration is not necessary, but if the use of the mark has not been initiated, or it has been interrupted for more than 5 consecutive years, then a trademark can be canceled.
Apple appealed the ruling of the Brazilian Patent and Trademark Office before a court in Rio de Janeiro, arguing that Gradient’s rights over the iPhone mark should have expired, since it did not use the mark for more than 5 years. The court ruled in Apple’s favor, stating that Gradiente could not control in exclusivity the iPhone mark, and the Brazilian Patent and Trademark Office should have considered the worldwide impact of the iPhone mark before granting such exclusivity in favor of Gradiente. Apple also argued that Brazilian law expressly recognizes special protection to well-known trademarks, whether or not they have been previously filed or registered in Brazil. However, as pointed above, Gradiente filed for registration 7 years before Apple launched its iPhone.
Gradiente has already expressed their intention to appeal the court’s decision, and they have also filed a complaint in the courts of Sao Paulo, which has not yet come to trial.
This is another reminder of the complexities of protecting your brand internationally, and how the owner of a brand should make a thorough trademark research under the main jurisdictions where the applicable brand is intended to be commercially exploited.