A change in French law will mean that French Polynesia will no longer be automatically covered by a French trade mark registration.

History

French Polynesia is an overseas territory of the French Republic. It is made up of several groups of Polynesian islands and has been autonomous since 2004. Previously trade mark protection in French Polynesia was covered by a national French trade mark registration.

However, recently the French Patent and Trade Mark Office (INPI) has sought to provide clarification on whether French Polynesia is still protected under the umbrella of a French national trade mark registration.

It has been decided that national French trade mark registrations will no longer also include trade mark protection for French Polynesia.

A system for revalidation of existing French registrations in French Polynesia has been put in place.

What do you need to do?

  • If you have a French national trade mark filed, registered or renewed BETWEEN the 03 March 2004 and 31 January 2014, it will need to be re-validated by the French Polynesia General Directorate of Economic Affairs to be valid and enforceable in French Polynesia.

The deadline to attend to revalidation has been set as the 01 September 2015

The term of protection of revalidated marks will be the same as the underlying National French Trademark.

  • If you have a French national trade mark applied for or renewed on or after 01 February 2014, it can be extended to French Polynesia by applying for revalidation at the time of filing or renewing at the INPI.

The deadline to attend to revalidation has been set as the 01 September 2015

Is it compulsory?

The revalidation of marks is advisable but not mandatory. The decision on whether to proceed with revalidation will depend on how important this territory is to you. If you do not revalidate then you will not have any protection for your mark in French Polynesia.

Further Points to Note

Community Trade Mark registrations have never covered French Polynesia so revalidation is not possible for a Community Trade Mark registration.

At present there is no other national system for registering trade marks in French Polynesia. It is hoped that in the future there will be a national registration system. We will provide a further legal update on this should there be any developments.

The INPI did not indicate whether French designations of International trade mark registrations also require revalidation. We will provide a further legal update when this issue has been decided.

There is the possibility that the deadlines for attending to the revalidation may be extended to 1 September 2023 but to ensure you are protected you should proceed with revalidation sooner rather than later. We will provide further updates if the deadline is extended.