France - Recognition in French Polynesia of industrial property titles delivered by the French Industrial Property Office (INPI)

French Polynesia adopted intellectual property legislation with the adoption of the Polynesia law n°2013-14 of May 6, 2013.

Since the French organic law n°2004-192 on the statute of autonomy of French Polynesia of February 27, 2004 was passed, intellectual property falls into the exclusive competence of French Polynesia. Moreover, the French order n°2008-1301 of December 11, 2008 had removed French Polynesia from the list of the overseas territories where the French Intellectual Property Code applies (Articles L. 811-1 and L. 811-4). However, failing a proper legislation, French industrial property titles were in practice still recognized in French Polynesia.

The Polynesian decree n°1002 CM of July 22, 2013 was passed to reflect this practice and states, as a principle, that industrial property titles delivered by the French Industrial Property Office (INPI) shall have effect in French Polynesia.

Titles delivered before March 3, 2004 will be automatically recognized. Titles delivered between March 3, 2004 and August 31, 2013 will only have effect in French Polynesia upon request from their proprietor before the General Directorate for Foreign Affairs (DGAE) (which shall be made prior to September 1, 2015) and payment of a specific fee. As from January 1, 2014, the extension to French Polynesia would have to be requested directly before the INPI when filing (this should be further determined by a future decree).

In addition, even though French Polynesia is not within the EU territory, the Polynesian law of May 6, 2013 expressly refers to community designs among titles on the basis of which an infringement action can be initiated in French Polynesia. This is not the case of community trademarks, which, to date, and in principle, remain without legal effect in French Polynesia.

European Law - Publication of the draft reports on the proposals for a reform of the regulation on community trade mark and the directive approximating the laws of the Members States relating to trade marks

On July 31, 2013, the rapporteur of the European Parliament's Committee on Legal Affairs published its draft reports on the proposal for a directive to approximate the laws of the members states relating to trademarks and on the proposal for a regulation on the community trademark.

Among the amendments to the draft regulation and draft directive filed March 27, 2013 with the European Parliament (please refer to the Legal and regulatory update – March 2013), the rapporteur proposes to only allow the proprietor of a trade mark to prevent the introduction of goods in transit when such proprietor proves that the trademark is also validly registered in the country of destination

In addition, the draft report on the proposal for a directive is also introducing harmonisation of national opposition procedures. At the moment, the French Code of Intellectual Property requests opposition to be based on only one earlier mark. Following the draft report, a notice of opposition may be filed on the basis of one or more earlier rights, provided they all belong to the same proprietor.

The vote on these draft reports in committee is scheduled for November 2013 and the proposals will be voted in plenary session in February or March 2014.