As mentioned in our previous article, French Polynesia (FP) an overseas community of the French Republic, became autonomous under the organic law of February 27 2004.
This new status has consequences for the validity of IP rights in this territory. As from March 3 2004, IP rights filed with the French National Institute of Industrial Property (INPI) no longer cover FP.
A recognition system of these IP rights in this territory has recently been established. nitially, this system foresaw the following rules, depending on when the rights were filed:
- Before March 3 2004: automatic recognition
- Between March 3 2004 and August 31 2013: optional recognition
- From February 1 2014: claim of extension to FP at the time of filing or renewal.
This time frame thus contained a grey period between September 1 2013 and the January 31 2014 with a legal void as a consequence.
The Polynesian authorities recently solved this problem: the period of optional recognition now extends from March 3 2004 to January 31 2014.
French patents, utility certificates, trade marks, designs and semiconductor topographies filed with the INPI during this period will therefore benefit from this optional recognition. As a consequence:
- Before March 3 2004: automatic recognition. All IP rights filed, renewed or maintained at the INPI before March 3 2004 cover FP as well as metropolitan France, without any extra formality to fulfil.
- Between March 3 2004 and January 31 2014: optional recognition. All IP rights filed, renewed or maintained at the INPI during this period will have to be the subject of a recognition procedure in order to cover FP. This procedure, which is a simple payment of a tax to the Polynesian Authorities can be made until September 1 2015 (this date might be further extended).
- As from February 1 2014: possible claim of an extension to FP, but imperatively when filing an application, renewal or maintenance at the French trade mark office.
The recognition in FP will be valid through the extension claim in this territory before the INPI and will entail the payment of an additional tax at the same time as the introduction of this main procedure (failure of payment can entail the rejection of the claim).
We draw your attention to the fact that any renewal or maintenance filing must relate to a right previously valid in FP. This implies that the procedure of optional recognition, entailing a tax, has to be lodged before the renewal or maintenance filing.