STF to hear Apple-Gradiente dispute in plenary session – 10/23/2023 – Market

The dispute between Apple and Gradiente over the use of the iPhone brand will be heard in a physical plenary session of the STF (Supreme Federal Court) at the request of Minister Diaz Toffoli.

The process was discussed in a virtual plenary session, the venue of the Supreme Court, where ministers voted by a deadline. By early Monday evening (23), eight ministers had voted and the score was 5 to 3 in favor of the American campaign.

The date of the discussion of the case at the physical plenary meeting will be determined by the President of the STF, Luis Roberto Barroso. Ministers must resubmit their votes and can change their minds before the trial is over.

This will keep the case alive and, in theory, could even get a vote from incoming STF minister Rosa Weber (who resigned in September and was not involved in the lawsuit between the two companies). One of the company’s lawyers in the case is former president Michel Temer (MDB).

Apple claims that products beginning with “i” such as the iMac, iPad and iBook are related to it, and claims that Gradiente can only use the full expression “Gradiente Iphone”, but not the term in isolation.

Gradiente, in turn, claims to have filed the trademark with the INPI in 2000, when Apple was not yet active in the mobile phone sector, and was granted permission to register in 2008.

Ministers Luis Roberto Barroso, Alexander de Maraes, Luis Fuchs, Cristiano Zanin and Carmen Lucia voted to reject Gradiente’s request.

On the other hand, Ministers Díaz Toffoli, Gilmar Mendez and André Mendonza spoke in favor of the Brazilian campaign. Edson Fachin declared himself a suspect and did not appear in court.

The trial is being held in a virtual plenary session, the Supreme Court’s platform where ministers cast their votes over a period of time, in a session due to end at 11.59pm this Monday.

The appeal, which reached the Supreme Court, challenges the decision of the TRF-2 (Federal Regional Court of the 2nd Region), which ordered Inpi to cancel the grant of registration and its re-publication, except that the Brazilian company does not have an exclusive right to the word iphone in isolation.

The court said that between the date of the request and the granting of the registration, the market had undergone significant changes and Inpi could not have failed to take this into account.

Most of the ministers understood that there are no obstacles for the Brazilian company to continue using the “Gradiente Iphone” brand in full.

“The appellant’s isolated use of the expression ‘iPhone’ would offend the necessary protection of consumers, as it could confuse different products,” Minister Cristianu Zanin said during the vote.

“If the purpose of a brand is to provide adequate identification of a product in the consumer marketplace, to hold otherwise would run counter to consumer protections that also have a constitutional basis.”

The case before the Supreme Court has universal resonance. In other words, it affects other similar processes that discuss the exclusivity of industrial property due to the delay in granting Inpi trademark registration, at the same time as the promotion of a product with the same name by a competing company.

Ministers Cristianu Zanin and Alexander de Moraes in their vote followed the thesis proposed by Luis Roberto Barroso for similar considerations.

According to him, “the ban on the isolated use of a term that is an element of a registered trademark does not violate the Constitution, given its global attachment to a product manufactured by a competitor.”

Minister Díaz Toffoli, who voted first, spoke in favor of Gradiente, but was defeated. For him, the application for trademark registration cannot be affected by its subsequent use by third parties in Brazil or abroad.

Toffoli also voted to order the losing party (which, according to his vote, would be Apple) to pay the prevailing party’s legal costs and expenses. Gilmour followed the same understanding as the speaker.

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