Apple is battling to obtain the iPhone trademark registration in Brazil, one of the world’s largest economies. The National Institute of Industrial Property—known as “INPI” in Portugal—recently announced its denial of Apple’s application to register the “iPhone” since a Brazilian company Gradiente Electronica (“GE”), already owns a registration for the mark. In 2000, seven years before the worldwide launch of Apple’s iPhone, GE applied for registration of the trademark “iphone g gradiente”. Although the INPI formally granted registration in 2008, GE did not effectively use the trademark until December 2012, when it finally announced the release of the “gradiente iphone,” ensuring registration for itself. Apple appealed the INPI’s decision seeking cancellation of GE’s registration since it did not use the name within a five-year limit. INPI’s decision, once issued, should not affect iPhone sales in Brazil, since only a court ruling could prohibit Apple’s use of the name. Even though GE is seeking such court judgment, its chairman, Eugenio Emilio Staub recently declared to Bloomberg: “We’re open to dialogue for anything, anytime…we’re not radicals.” Bloomberg Feb. 5, 2013. It is noteworthy that Apple had branding problems when it released the first iPhone in 2007, prompting it to sign a deal with Cisco Systems, Inc. Apple also recently paid $60 million to a Taiwanese company to end litigation in China over the iPad trademark.
This article was prepared by Mariano T. De Alba Uribe (Mariano.DeAlba@nortonrose.com and 58 212.276.0764) of Norton Rose’s Antitrust, Competition and Regulatory Practice.