The persistent legal dispute between the Brazilian company Gradiente (IGB Eletrônica) and the American company Apple over the use of the name “iPhone” in Brazil is still provoking discussions in the field of intellectual property. The dispute began in 2000, when Gradiente applied to register the trademark “G Gradiente Iphone” with the National Institute of Industrial Property (INPI). With the launch of the iPhone by Apple in 2007, the dispute became more complex.
In May 2025, the Superior Court of Justice (STJ) decided, by a majority vote, to annul a judgment of the Federal Regional Court of the 2nd Region which had declared that the registration of the “G Gradiente Iphone” trademark had expired. The STJ considered that Gradiente had already filed a lawsuit against Apple’s use of the trademark, making the previous decision invalid.
In addition to other legal conflicts between the companies, in 2012 Apple filed a lawsuit to partially annul Gradiente’s registration, arguing that the term “iPhone” was already linked to its products all around the world. In 2013, the request was granted by the Federal Court in Rio de Janeiro, a sentence that was confirmed by the Federal Regional Court of the 2nd Region (TRF-2). This allowed Gradiente to use the trademark “Gradiente iPhone”, but without exclusivity over the term “iPhone” in an isolated manner.
Gradiente filed a Special and Extraordinary Appeal against this decision, while the INPI filed a Special Appeal.
In 2018, the Fourth Chamber of the Superior Court of Justice (STJ) ratified the decisions made previously, rejecting Gradiente’s and the INPI’s appeals. The judge in the case emphasized that the right to exclusive use of the trademark is not absolute and that the term “iPhone” has gained distinction due to its constant and massive use by Apple. Its unquestionable notoriety today has elevated it to the position of a famous and highly renowned brand.
At the moment, the case is before the Brazilian Supreme Court, where the dispute will be definitively finalized. The judgment started in the virtual plenary, where five ministers voted in favor of Apple and three in favor of Gradiente, respectively. However, Minister Dias Toffoli requested that the case be transferred to the physical plenary, which makes it possible to review the votes and highlights the complexity and importance of the issue.
This case highlights the difficulties encountered in creating and safeguarding trademarks in a globalized and constantly changing market. The case emphasizes the need for a meticulous assessment of the principles of anteriority, distinction and the reality of the market at the time of registration, as well as emphasizing the urgency of administrative procedures to prevent future conflicts.
The STF’s final decision will have significant implications for the intellectual property system in Brazil, and may influence future cases involving conflicts between national registrations and internationally renowned trademarks.
—
Author: Isabela Nicolella Vendramelli, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados
Source:
https://olhardigital.com.br/2023/11/01/pro/por-que-a-apple-processou-a-gradiente-entenda-o-caso/
—
If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.