Which of the items of Article 124 of Law No. 9,279/96 would be open to the principle of telle quelle

Abstract

The study analyses the provisions of Article 124 of Law No. 9,279 of 14 May 1996, the Brazilian Industrial Property Law, and points out which of them could be open to the application of telle quelle, one of the principles laid down in Article 6 quinquies of the Paris Convention. It starts from the definition of the principle, under which every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, and situates it as an exception to territoriality, articulating it with the principle of the independence of trademark registrations. It covers domestic and foreign doctrine, the practice of the INPI, judicial decisions and Spanish and Community law, examining the grounds for refusal of registration. It concludes that reliance on telle quelle would be ruled out as regards items III and X, which fall within the exception of Article 6 quinquies (3) of the Convention, and would prevail over items VI, VII and VIII where secondary meaning is proved, noting that the principle's reach remains limited by its under-use, by resistance to its application in administrative proceedings and by the Convention's public-interest exceptions.