Are Your Industrial Property Rights Protected in French Polynesia?

The organic law no. 2004-192 of 27 February 2004 laying down the autonomous status of French Polynesia transferred the authority in all Industrial Property matters to this territory.

 However, until the 6 May 2013 no provisions had been put into place by this overseas community, leading to a certain amount of uncertainty as to whether Industrial Property rights that are valid in France were also valid in French Polynesia.

The National Law No. 2013-14 of May 2013 has put an end to this uncertainty by establishing a recognition plan for Industrial Property rights.

Article LP 138 of this Act provides French Polynesia with an automatic recognition principle for certain Industrial Property rights granted by the INPI, depending on their filing date.

Recognition is automatic for rights filed with the INPI before 3 March 2004, that are still in force on 1 September 2013, and which have not been subject to a renewal (for trademarks) or an extension (for designs) after 2 March 2004. These rights have the same implications in French Polynesia as they do in France. 

Recognition is optional for rights filed between 3 March 2004 and 31 August 2013, for trademarks renewed during this time and for designs filed between these two dates. For all these rights, their holders must seek recognition from the Directorate General for French Polynesian Economic Affairs if they wish that the rights are also valid in French Polynesia.

This recognition request must be made between 1 September 2013 and 1 September 2023 and only the rights that are still in force on the day of the request will be recognized by French Polynesia. In addition, the rights must have been granted in order to be recognized in this territory.

In addition, for Industrial Property rights filed or renewed at the INPI from 1 February 2014, the rights holders must decide whether or not they wish to extend their rights in French Polynesia at the time of filing or renewal.

Finally, from the second half 2014, it should be possible to file Industrial Property rights directly in French Polynesia.

The following rights are not affected by the recognition plan presented above:

• French parts of European Patents
• Supplementary protection certificates (SPC), as SPC’s carry no implications in French Polynesia
• Community Trademarks, which nevertheless do have implications in French Polynesia under article L. 811-4 of the Intellectual Property Code
• Community designs, which were without implications in French Polynesia until 7 May 2013, since this date they do have implications on this territory, but without specific formalities
• International Industrial Property rights (international treaties relating to Industrial Property continue to apply in French Polynesia since the transfer of responsibility)

We remain at your disposal to carry out a review of your clients’ IP rights portfolio, in order to determine which rights need to be subject to the recognition procedures in French Polynesia.