Extension of IP rights to French Polynesia
French Polynesia has now adopted laws and regulations to fill this legal void:
Law No. 2013-14 of May 6, 2013, amending Part 2 of the French Intellectual Property Code (Legislative Part), entitled Industrial Property.
Order No. 1002 CM of July 22, 2013, passed according to Article LP 138 of the Act No. 2013-14 of May 6, 2013.
Applications in French Polynesia will be possible as of January 1, 2014 (probably through the French Industrial Property Office [INPI]) and in the meantime, transitional provisions have been included in the texts.
These new provisions apply equally to patents, utility certificates, topographies of semiconductor products, trademarks and designs.
Thus Law No. 2013-14 of May 6, 2013 provides that IP rights which have been issued by the INPI and are still in force may be extended to French Polynesia. Article LP 138 of the act provides that:
“French Polynesia recognises, in the manner specified by Order taken in council of ministers, the industrial property rights granted by the INPI before the entry into force of this Article. This recognition has the effect of allowing such titles to be protected in French Polynesia under the same conditions as in continental France, particularly in terms of duration of protection. This recognition is automatic for certificates issued before the entry into force of Law No. 2004-192 of February 27, 2004 on the autonomous status of French Polynesia. This recognition is optional for certificates issued after the entry into force of Law No. 2004-192 of February 27, 2004 on the autonomous status of French Polynesia. Owners of the abovementioned rights have a period of two years from the entry into force of the implementing regulations referred to in the first paragraph of this Article, to exercise their option with French Polynesia.”
Order No. 1002/CM of July 22, 2013, entered into force on September 1, 2013, and specifies the conditions for the recognition of these titles as follows:
Automatic recognition
All IP titles issued before March 3, 2004, continue to produce in French Polynesia the same effects as in continental France without their owners having to fulfil any formality—(Article 2).
Optional recognition
Rights issued by the INPI as of March 3, 2004 and until August 31, 2013, are subject to a declaration of recognition to the Polynesian Office for producing an effect in French Polynesia—(Article 3).
This recognition may be submitted until September 1, 2015, provided that the concerned industrial property right is still in force at the time of submission of the declaration.
“Issued” must be understood as “published in BOPI (the French IP Official Gazette)”. However, the criteria retained by French Polynesia are the date of application of the right for which protection is sought, and checking whether the same right has already been registered in continental France. The date of publication therefore, actually has no consequence for recognition in French Polynesia.
The above Order further states that “the industrial property rights, which no longer produce effects in France, notably because of their revocation or cancellation, produce no effects in French Polynesia (Article 7)”. If a recognition was made, it becomes invalid if based on false or erroneous information. Similarly, its validity is always subject to the rights of third parties.
These new provisions apply equally to patents, utility certificates, topographies of semiconductor products, trademarks and designs.
However, Community trademarks as well as International IP rights are not covered by the provisions of the Polynesian law allowing the recognition of IP rights in French Polynesia. Nevertheless, Community trademarks are protected in Polynesia under Article L 811-4 of the French Code of Industrial Property. The situation is the same in application of Article LP 18 of the Act of May 6, 2013 for Community designs.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at: amarie@bdl-ip.com
