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According to a recent decision¹ rendered by the Brazilian Superior Court of Justice, IGB Eletrônica (“IGB”), owner of the mark “G Gradiente Iphone”, could not restrain the use of the mark “iphone” by Apple.

In this case, Apple filed a lawsuit against IGB and the Brazilian PTO, alleging that the registration had been mistakenly granted by the Brazilian PTO, since the expression “iphone” would have been used merely as a description of the functionality of IGB’s products, with internet access, offering no distinctiveness to the mark.

In its defense, IGB argued that its trademark application was filed before Apple’s first sale of the Iphone abroad, and that, at that time, the term “iphone” was sufficiently distinctive. IGB and the Brazilian PTO also argued that the requirements for registration must be analyzed in light of the market situation at the time of the filing, and not when the registration was granted. The lower court and the Court of Appeals’ decisions were in favor of the plaintiff. The defendants filed Special Appeal before the Brazilian Superior Court of Justice.

In judging the appeal, the Brazilian Superior Court of Justice held that the right of exclusivity afforded by a trademark registration is not absolute, and one must consider the cases where the term is suggestive. For this reason, the Superior Court of Justice acknowledged that the term “iphone” would suggestive, and held that  IGB should not have exclusive rights over the expression “iphone”, isolated from other elements. The decision is not final.

¹ Special Appeal No. 1688243/RJ