Cabinet Beau de Loménie
When Law No. 2004-192 of 27 February 2004 regarding the autonomous status of French Polynesia came into force, French industrial property rights ceased to extend to this territory and therefore no longer gave protection there.
French Polynesia has now adopted the following laws and regulations to fill this legal void:
· Law No. 2013-14 of 6 May 2013 amending Part 2 of the French Intellectual Property Code (Legislative Part), entitled "Industrial Property".
· Order No. 1002 CM of 22 July 2013 passed according to Article LP 138 of Act No. 2013-14 of 6 May 2013.
Applications in French Polynesia will be possible as of 1 January 2014 (probably in connection with the French Intellectual Property Office, INPI) and in the meantime, transitional provisions have been included in the texts.
Thus Law No. 2013-14 of May 6, 2013 provides that IP rights which have been issued by the French Intellectual Property Office and are still in force may be extended to French Polynesia. Article LP 138 of the Act indeed provides:
" French Polynesia recognizes, in the manner specified by Order in council of ministers, the industrial property rights granted by the INPI (French IP Office) 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 the duration of protection.
This recognition is automatic for titles issued before the entry into force of Law No. 2004-192 of 27 February 2004 on the autonomous status of French Polynesia.
This recognition is optional for titles issued after the entry into force of Law No. 2004-192 of 27 February 2004 on the autonomous status of French Polynesia. Owners of the above mentioned rights have a period of 2 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 22 July 2013, which entered into force on 1st September 2013, specifies the conditions for the recognition of these titles as follows:
1 / Automatic recognition:
"... All IP titles issued before 3 March 2004, continue to produce in French Polynesia the same effects as in continental France without their owners having to fulfill any formality" (Article 2).
2 / Optional recognition:
Rights issued by the French IP Office as from 3 March 2004 and until 31 August 2013 are subject to a declaration of recognition to the Polynesian Office for producing effects in French Polynesia (Article 3).
This declaration of recognition may be submitted up until 1st September 2015 provided that the concerned industrial property right is still in force at the time of submission of the declaration.
"Rights issued" means IP rights that were “ published in BOPI (French Intellectual Property Official Gazette)" before one of these two dates. However, the declaration of recognition is nevertheless allowed for rights published after the 3 March 2004 or after the 31 August 2013, when they were granted before.
The above Order further states that "industrial property rights which no longer produce effects in France, notably because of their lapsing or cancellation, produce no effects in French Polynesia (Article 7)". If a declaration of 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 well to patents, utility certificates and topographies of semiconductor products as to trademarks and designs.
However, Community trademarks and designs, as well as International Industrial Property 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 6 May 2013 for Community Designs.