After several years of legal uncertainty French Polynesia has finally adopted new law and regulation to expressly recognize industrial property titles issued by the French Industrial Property Office (the INPI).
French Polynesia is an overseas country of France. Since the French Organic Law No. 2004-192 on the statute of autonomy of French Polynesia passed on 27 February 2004, French Polynesian authorities have exclusive competence over certain areas of law, including intellectual property. As a consequence, the French Order No. 2008-1301 of 11 December 2008 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).
Since then, industrial property titles issued by the French Industrial Property Office (the "INPI") has had no legal effect in French Polynesia. This said, lacking proper legislation, French Polynesian authorities have tended in practice to enforce French industrial property titles.
The adoption by French Polynesia of the Polynesian Law No. 2013-14 of 6 May 2013 and of the Polynesian Decree No. 1002 CM of 22 July 2013 addresses and remedies this situation of legal uncertainty.
These texts indeed provide for a system of recognition in French Polynesia of industrial property titles (i.e. trademarks, designs, patents, semiconductor topographies, utility certificates and supplementary protection certificates) issued by the INPI (i.e. applications filed with the INPI and whose registration or renewal has been or will be published in the INPI Official Gazette) which differ depending on the date of filing of titles concerned:
- Titles filed with the INPI prior to 3 March 2004 are automatically recognized. No formality is required for their recognition to be effective.
- Titles filed with the INPI between 3 March 2004 and 31 August 2013 will be optionally recognized (French Polynesia has announced that this period might be extended until 31 December 2013). These titles will only have effect in French Polynesia upon request from their proprietor filed with the Polynesian General Directorate for Economic Affairs (DGAE), for each concerned title, subject to payment of a specific fee and after validation by a Presidential Decree published in the French Polynesia Official Gazette. The requests for recognition will have to be filed by 1 September 2015 at the latest (French Polynesia has announced that this deadline might be extended to a later date).
- Titles which will be filed with the INPI as from 1 January 2014 are not yet covered by the new recognition system. French Polynesia and the INPI are currently discussing an extension agreement allowing applicants and proprietors to request the extension to French Polynesia directly before the INPI during the filing or renewal of their titles.
This new system of recognition has been long-awaited and the efforts made by French Polynesian authorities in view of securing the situation of intellectual property rights holders in French Polynesia are to be welcomed.
However, only titles issued by the INPI and whose registration is published in the INPI Official Gazette are concerned by these new provisions, excluding, for instance, Community trademarks, Community designs, international trademark or design registrations, European patents, PCT applications and future unitary patents.
Yet, to sum up, even though Polynesian Law is not devoid of legal provisions with regard to international, European and Community titles, their enforceability in French Polynesia following the transfer of competence in the field of intellectual property from France to French Polynesia remains disputable. Pending a clarification in this regard, it seems prudent to rely on the new recognition system and use French titles to ensure intellectual property protection in French Polynesia.