Brazilian Supreme Court to decide whether Apple can use 'iPhone' brand name

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in General Discussion
The Brazilian Supreme Court is set to decide whether or not Apple can use the "iPhone" trademark in the country.

Credit: IGP Electronica
Credit: IGP Electronica


Apple has been entrenched in a long-running trademark dispute with Brazilian company IGB Electronica, which registered the "iphone" trademark in 2000 and produced several Android devices under the brand name in 2012. A lower court ruling in 2018 affirmed a 2013 decision that allowed both companies to use the name.

Earlier in 2020, IGB Electronica appealed the lower court's decision. Now, the highest court in Brazil will decide whether Apple can use the "iPhone" trademark, even if IGB registered for it first.

"Allowing a company to claim a trademark submitted in good faith by another one punishes creativity, distorts free competition and runs over Brazilian intellectual property authorities," said IGB attorney Igor Mauler Santiago in the request.

The back-and-forth dispute has been ongoing since IGB, under the name Gradiente Group, produced a number of IPHONE-branded Android smartphones in 2012. That sparked a dispute which saw both companies arguing for exclusive rights to the name.

Apple, for its part, argues that the National Institute of Industry Property (INPI) shouldn't have granted the trademark in dispute. Although it was filed for in 2000, the "iphone" name was granted in 2008 -- after Apple's first iPhone was released.

According to local law firm Mauler Advogados, Apple has taken "commercial deals" to acquire the iPhone brand name in countries such as Mexico, Canada and the U.S., regions where existing firms submitted trademarks to the name before it did.

It isn't clear when the Brazilian Supreme Court will hear the case or issue a decision.

Comments

  • Reply 1 of 10
    I don't think Apple's argument holds water. If I apply for something and it takes 8 years to be granted, that's not my fault. The date of application is the rightful basis for determination.
    iOSDevSWEuraharaDAalseth
  • Reply 2 of 10
    chadbagchadbag Posts: 1,473member
    I don't know how Brazil trademark law works, but in the US you just can't file for anything you want as a trademark.  You have to show it actually be used in trade as I understand it.  Ie, when you first release the product you put the little "tm" next to it and apply for the trademark showing your usage of it with the little "tm" to prove it is actually being used. When it is approved you can change it to the (r) -- r in the circle registered trademark symbol.

    If this company applied in 2000, was approved in 2008, but did not actually  use it in trade until 2012, if the Brazil law is at all similar to the US law, then this company may not be able to enforce it since they were not actually showing a "trade mark" -- a mark used in trade.

    IANALAIDPOOTV


    edited August 2020 PetrolDaveuraharaBeatscommand_faderuttermike1ronnwatto_cobra
  • Reply 3 of 10
    I don't know the specifics of the case, but if the trademark was applied for 7 years before the release of the iPhone, I think Apple should simply reach a deal with them and buy the trademark.

    There was another company called iCloud which became CloudMe because Apple purchased the iCloud trademark from them. 

    command_fwatto_cobra
  • Reply 4 of 10
    BeatsBeats Posts: 2,531member
    I always find it funny when Apple has to fight for a name inspired by Apple.

    I don't know the specifics of the case, but if the trademark was applied for 7 years before the release of the iPhone, I think Apple should simply reach a deal with them and buy the trademark.

    There was another company called iCloud which became CloudMe because Apple purchased the iCloud trademark from them. 


    The problem I see is companies using Apple's iconic "i" for attention. iHome, iGoogle and Sony's iSound are examples. None of these companies gave a sh** about the letter "i" until Apple started using it before their names. "The iComfort Sleep System" is the worse of the bunch.
    flyingdpronnwatto_cobra
  • Reply 5 of 10
    BiCBiC Posts: 2member
    chadbag said:
    I don't know how Brazil trademark law works, but in the US you just can't file for anything you want as a trademark.  You have to show it actually be used in trade as I understand it.  Ie, when you first release the product you put the little "tm" next to it and apply for the trademark showing your usage of it with the little "tm" to prove it is actually being used. When it is approved you can change it to the (r) -- r in the circle registered trademark symbol.

    If this company applied in 2000, was approved in 2008, but did not actually  use it in trade until 2012, if the Brazil law is at all similar to the US law, then this company may not be able to enforce it since they were not actually showing a "trade mark" -- a mark used in trade.

    IANALAIDPOOTV



    BiC was the FiRST company to use the lower case "i" - And they've sold more LiGHTERS than all Apple products combined.

  • Reply 6 of 10
    jd_in_sbjd_in_sb Posts: 1,600member
    The Android phones were not done in good faith thus killing their entire claim of virginity 
    watto_cobra
  • Reply 7 of 10
    Seriously what color is the sky in your world? The first POPULAR "i" product that Apple released was the iPod in late 2001. Prior to then it was just the iMac, which practically no one outside the United States creative industry bought or even so much as knew existed because Windows had like 97% market share at the time in the US and globally the Mac market share was even lower. Claiming that this was some attempt to capitalize on an Apple personal gadget brand that didn't even exist yet instead of being a generic moniker for "my phonr" or "internet phone" is ridiculous even for you.

    Beats said:
    I always find it funny when Apple has to fight for a name inspired by Apple.

    I don't know the specifics of the case, but if the trademark was applied for 7 years before the release of the iPhone, I think Apple should simply reach a deal with them and buy the trademark.

    There was another company called iCloud which became CloudMe because Apple purchased the iCloud trademark from them. 


    The problem I see is companies using Apple's iconic "i" for attention. iHome, iGoogle and Sony's iSound are examples. None of these companies gave a sh** about the letter "i" until Apple started using it before their names. "The iComfort Sleep System" is the worse of the bunch.

    dewme
  • Reply 8 of 10
    jd_in_sb said:
    The Android phones were not done in good faith thus killing their entire claim of virginity 
    Even if this is true, it is not how trademark law works. The only reason why such claims are ever countenanced is that the "in-practice" enforcement of trademark law always favors large established companies, which is why smaller companies just give up and sell the brand name to the larger entity rather than fight a losing battle.

    Also, this company can claim that there was no opportunity to capitalize on their trademark - no operating system or platform that made their selling a device under that brand name - possible prior to Android. The other phone platforms were either proprietary, terrible or would have required them to do a lot of expensive and very technical heavy lifting to create a viable product. With Android all that was handed to them.
    edited August 2020
  • Reply 9 of 10
    geekmeegeekmee Posts: 474member
    Uh...Can you say?
    The horse left the corral... Years ago.
  • Reply 10 of 10
    chadbagchadbag Posts: 1,473member
    Also, this company can claim that there was no opportunity to capitalize on their trademark - no operating system or platform that made their selling a device under that brand name - possible prior to Android. The other phone platforms were either proprietary, terrible or would have required them to do a lot of expensive and very technical heavy lifting to create a viable product. With Android all that was handed to them.

    This is total BS.   The other company filed a trademark, but if they were not using it in trade, they are in danger of losing the trademark (which probably should never have been issued if they were not already using it in trade at the time of application).  There is no aspect of trademark law (at least in the US and I suspect it is similar in most countries) that allows you to register a trademark, and then say, oh no, there is no applicable product I can sell using this name -- it is all proprietary or too expensive -- and use that as a defense to keep your trademark.   The trademark office does not really care WHAT your industry is, what you are doing with whatever product, as long as you are doing it in trade - in public.  

    There is no aspect of trademark law that protects a non-used trademark because a company claims they had no opportunity to capitalize on it.

    The other company applied in 2000, and was granted in 2008, as I understand it, but if they did not start to use it in trade until 2012, and Apple was already in 2007 using the name in trade, the other company is probably (or should be) SOL since they did not actually use the mark and therefore have nothing to protect.  Apple was actually there FIRST in trade.

    ronnwatto_cobra
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