Intellectual property rights in French Polynesia

Published onJanuary 2014

If you own French registered trademarks, designs or patents, that were filed or renewed since 03 March 2004, you should find interesting to know that they are no longer valid in French Polynesia.

One of the consequences of organic Law No.2004-192 of 27 February 2004, which proclaimed regional autonomy of French Polynesia, was that IP titles such as trademarks, designs or patents, delivered by the INPI (the French Patent and Trademark Office) have no longer been recognized in French Polynesia since 03 March 2004.

But it is almost ten years later that new legal provisions and implementing rules were enacted and, as a result, an arrangement signed between the INPI and French Polynesian authorities is entering into force on 01 February 2014.

Three periods must be identified.

1. Before 03 March 2004

French trademarks, designs and patents filed or renewed with the INPI before 03 March 2004 automatically continue being valid and fully protected in French Polynesia, just as in the rest of metropolitan France, without any formality.

Such mechanism will not have real repercussions for French trademarks for their registration or renewal is for ten years only.

But it may be more valuable for other IP titles, such as designs filed before 01 October 2001 for example. French designs filed before this date were automatically granted for a 25-year period. As a consequence, such French designs will remain valid in French Polynesia without any formality.

2. Between 03 March 2004 and 31 January 2014

In order that French trademarks, designs or patents, filed or renewed with the INPI between 03 March 2004 and 31 January 2014 remain valid and protected in French Polynesia, one must apply for recognition of their title(s) before the Polynesian authorities.

Such application must be filed before 31 August 2023 and specific official fees must be paid depending on what IP titles are concerned (a few dozens of euros in most cases). After the application is approved by the President of French Polynesia and published in the local Official Journal, the IP title in question will be fully valid in French Polynesia, just as in the rest of metropolitan France.

Almost all French trademarks valid on 01 February 2014 are concerned because they were almost all filed or renewed between 03 March 2004 and 31 January 2014. Numerous French designs or patents are also concerned.

It is consequently urgent to decide whether you need your French IP rights protected in French Polynesia.

3. From 01 February 2014

For French trademarks, designs or patents filed or renewed from 01 February 2014, a simplified mechanism is put into place enabling new applicants or owners to ask for an extension of protection of their IP titles in French Polynesia using application and renewal forms of the INPI. Official fees must be paid, amounting to 60 euros for a trademark or a design and to 300 euros for a patent.

Once published in the French IP Bulletin, French Polynesian authorities will have a two-month deadline either to accept the extension and publish it in the local Official Journal or to refuse it by way of a duly motivated decision notified to the applicant or owner.

Attention

This last procedure should not raise difficulties for new trademark, design or patent applications.

But it is very important to understand that it raises serious difficulties for IP titles to be renewed. Because the extension of protection of IP titles to French Polynesia would be admissible only if such titles are already valid in French Polynesia at the date they are renewed. It means that in most cases, interested parties would need to ask first for a recognition of their IP titles in French Polynesia, according to the previously described mechanism (See paragraph 2).

As a consequence, you must immediately start thinking of the future of your French IP titles in order to act rapidly and preserve your rights and interests.

© INSCRIPTA

IMPORTANT NOTES:

1. Community trademarks and Community designs are not concerned by these new laws and regulations.

2. Actually, the mechanism described in paragraph 2 only covers IP titles filed or renewed between 03 March 2004 and 31 August 2013. But no procedure was enacted to cover IP titles filed or renewed between 01 September 2013 and 31 January 2014. It seems to us only normal to apply the same mechanism for this last period so that IP titles filed or renewed during this period would not be entirely abandoned in French Polynesia.

This article was updated in July 2014.