French Polynesia

Change in the law regarding legislation applicable to the protection

of certain intellectual property rights in French Polynesia

French organic law No. 2004-192 of February 27, 2004 giving autonomy status to French Polynesia which came into force on the following March 3, notably extended the competence of the authorities of this former French overseas territory, now an “overseas country within the Republic“, to the sphere of intellectual property.

As from March 3, 2004, IP rights which were filed, renewed or extended at the French PTO ceased to have effect on the territory of French Polynesia.

In order to put an end to this absence of protection, the Polynesian authorities have recently instituted provisions for recognizing IP rights which were filed, renewed or extended between March 3, 2004 and January 31, 2014.

Starting February 1, 2014, in order to be the object of protection in French Polynesia, IP rights which were filed, renewed or extended at the French PTO require a claim to extension to be made.

The above applies to “French” (i.e.  governed by the French intellectual property code) patents, utility patents, trademarks, designs and semiconductor mask works.

It does not apply to Supplementary Protection Certificates (SPCs), Community trademarks, Community designs and international IP rights (International trademarks that designate France or the European Union; International design registrations).  French Polynesia is automatically covered by these IP rights.

  1. 1.   Regarding IP rights filed or renewed before March 3, 2004 and still in force in France

Recognition is automatic. These IP rights are considered automatically to cover the territory of French Polynesia without requiring any validation steps.

When next renewing a trademark or when next extending the term of a registered design, it will simply be required to claim protection on this territory.

The cost of this, including official fees, is currently:

– €130 plus VAT if applicable for trademarks;

– €130 plus VAT if applicable for registered designs.

  1. 2.   Regarding applications filed between March 3, 2004 and January 31, 2014 and still in force in France.

Recognition is retrospective and optional.  It can only be obtained by accomplishing a Patent recognition procedure at the latest by September 1, 2023, with the French Direction Générale des Affaires économiques (DGAE).  This procedure will lead to the President of French Polynesia issuing a decision to validate the patent which will be published in the official Journal of French Polynesia.

The cost of this is currently (official fees included):

– €175 plus VAT if applicable for trademarks;

– €160 plus VAT if applicable for registered designs;

– €450 plus VAT if applicable for patents.

When renewing a trademark or extending the term of a registered design for which an application for recognition has already been made, it will additionally be appropriate to request extension of protection in French Polynesia.

The cost of this, including official fees, is currently:

– €130 plus VAT if applicable for trademarks;

– €130 plus VAT if applicable for registered designs.

3    Regarding applications filed as from February 1, 2014

If the Territory of French Polynesia is relevant to your business, it will be necessary, when filing in France to ask the French PTO, accompanied by payment of a fee, for the application to be extended to the territory of French Polynesia.

The cost is currently, official fees included:

– €130 plus VAT if applicable for trademarks;

– €130 plus VAT if applicable for registered designs

– €370 plus VAT if applicable for patents.

Finally, starting in the second half of 2014, it should be possible to directly file patent applications with the Polynesian administration.

We are at your disposal to review your IP rights portfolio and together with you to study whether it would be useful to you to have your IP rights recognized/protected in French Polynesia.

If your company wants to have the protection of its trademarks or registered designs recognized retrospectively in French Polynesia, we recommend you to give us your instructions at a minimum four months before the date of the next renewal/extension of term of your trade marks/registered designs.  This will give us sufficient time to proceed with the steps for retrospective recognition, which need to be performed prior to renewal/extension of term.

Do not hesitate to contact us if you require further information on these points.