Brazil’s Supreme Court to restart iPhone trademark lawsuit

The decade-long trademark battle between Brazilian tech producer IGB (formerly known as Gradiente) and Apple over the name “iPhone” will take longer to reach a conclusion.

IGB applied for the trademark of the name “iphone” in 2000. The trademark would only be granted in 2008, one year after Apple launched the first iteration of its now iconic smartphone. In 2021, the two companies ended a 20-session round of negotiations without a settlement.

This is a textbook example of how patent delays can be detrimental to businesses. A 2021 report ranked Brazil’s intellectual property regulator Inpi as the world’s slowest at granting patents, despite recent improvements.

The Supreme Court has made the IGB-Apple battle a landmark case, meaning it will establish a precedent for how to deal with intellectual property in Brazil.

The case is on the Supreme Court docket since 2020, and on October 13 the court started a “virtual trial,” when justices cast their opinions electronically so trials can finish faster. 

The trial was expected to end on Monday; Justice Dias Toffoli, the case rapporteur, then requested an in-person trial. That essentially means taking deliberations back to square one, with all justices presenting their opinions again. Five justices had sided with Apple and three with IGB. There is currently no estimate of when the case will be scheduled.

In 2013, Apple filed a petition for courts to invalidate IGB’s registration. A federal court in Rio de Janeiro sided with the Silicon Valley giant, in a decision that was upheld by an appellate court. This result prevented IGB from using the term “iphone” as a standalone product. The Supreme Court now reviews an appeal by the Brazilian tech manufacturer.

Apple has petitioned for the removal of IGB’s trademark on the grounds that the term “iPhone” has acquired “secondary meaning,” signifying that a brand is so closely linked with a product that it transforms into a common term for referring to that product as a whole (similar to how people say “Kleenex” for tissues).

Last year, Brazil’s Prosecutor General, Augusto Aras, issued a favorable opinion towards Apple and suggested the court should in rule in favor of the American company. 

However, Igor Mauler Santiago, the legal representative for IGB, contested this, stating that “‘iPhone’ was never a colloquial term for a smartphone. This was particularly untrue in 2008, when the trademark was initially granted.”

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