Another separate IP jurisdiction: French Polynesia

This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!

This week is no difference as it heads to Tahiti, the main island of French Polynesia.

Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.

The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.

3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.

Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").

This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.

That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.

The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.

The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.

Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.

It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.

It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.

It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).

What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.

The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.

The benefits of UK registration in addition to a CTM

The United Kingdom (despite a fair bit of internal Euro-scepticism) is an integral part of the European Union. Community Trade Marks provide for trade mark protection to the country like they do to all other member states of the EU.

The Community Trade Mark is not designed as a supplement to any national trade mark rights, more of an alternative. It is designed for those with business interests throughout the trading block (although use in one member state should be regarded as sufficient use to stave off cancellation proceedings). Naturally, some local companies may register in the home country first of all before they develop expansion plans for the EU and then file a CTM.

However, are there any reasons or benefits to obtaining national protection separately and in addition to CTM protection?

When it comes to the United Kingdom the answer is "yes". Although the reasons stretch beyond Europe and are more relevant to global trade mark owners.

A UK National registration either covers automatically or can be extended to former or current UK territories. The same right is not accorded to Community Trade Marks with a few exceptions. UK legislation is not extended to its territories automatically and the territories have a distinct legal status so they would need to change their own laws to cater for CTMs. Most have not done so.

UK legislation is directly extended to the Isle of Man. In this sense it also provides for protection of Community Trade Marks.

Jersey has introduced legislation that allows for Community Trade Marks to cover the island automatically. This is a special situation as United Kingdom National registrations do not cover Jersey automatically but must be extended to the island with the filing of a local application.

The situation with Gibraltar is, in my view, ambiguous. OHIM indicates that a Community Trade Mark does cover Gibraltar. This is based on an understanding of Gibraltar's status with the EU under Article 299(4) of the Treaty of Rome. However, there do not appear to have been amendments to Gibraltar's local Trade Marks Act to reflect this. The 'usual' way to protect a trade mark in Gibraltar is to extend a UK registration by making a local application. Confusingly, it is also possible to extend a Community Trade Mark to Gibraltar (in addition to it apparently covering the territory automatically). This news release from Gibraltar offers some evidence of the indecisive situation.

Guernsey operates a separate and modern Intellectual Property Office. It allows for purely local applications but also 'supported' applications which can be based on inter alia a UK or CTM registration. A benefit to 'supported' applications is a reduction in the official fee due.

Outside of Europe, a Community Trade Mark is going to be sufficient if you need protection in the Cayman Islands as it is possible to extend a CTM registration locally in addition to a UK registration. The Falkland Islands introduced legislation to coincide with the start of the Community Trade Mark in 1996 which allows for automatic protection of UK and CTM registrations. It previously required a UK registration to be extended to the Islands - making it the world's smallest jurisdiction with a formal trade mark law by population - but the General Registry no longer maintains a Trade Marks Register of its own.

Neighbouring South Georgia and the South Sandwich Islands has a Trade Marks Ordinance from 2001. This covers trade marks "having effect in the United Kingdom" and I interpret this as including Community Trade Marks, particularly as the legislation dates from when the CTM was already operational. It is not exactly densely populated!

Outside this a UK registration is a prerequisite basis to making local applications in Grenada, Kiribati, St Helena, Solomon Islands and Tuvalu. Note that with the exception of St Helena, all of these are now independent of the UK. If you need service mark protection in the British Virgin Islands ("BVI") then a UK registration is also required. This will (probably) change soon with the adoption of a new Trade Marks Act in the BVI. The UK IPO's website indicates that a Community Trade Mark has effect in Kiribati, but I cannot see on what basis this statement is made and I cannot see any amendments to the local legislation. It might be based on an informal interpretation from the Administration in Kiribati which I would be wary of relying upon.

The British Indian Ocean Territory introduced a Trade Marks Ordinance in 1984 allowing for the automatic protection of UK registrations. I cannot locate this legislation on-line but suspect this is only with respect to UK National registrations.

This table may help clarify the incoherent situations:

Jurisdiction	UK	CTM
British Indian Ocean Territory	Automatic	No
British Virgin Islands (service marks)	Extendable	No
Cayman Islands	Extendable	Extendable
Falkland Islands	Automatic	Automatic
Gibraltar	Extendable	Automatic and Extendable but questions remain
Grenada	Extendable	No
Guernsey	Can 'support' an application	Can 'support' an application
Isle of Man	Automatic	Automatic
Jersey	Extendable	Automatic
Kiribati	Extendable	No
St Helena	Extendable	No
Solomon Islands	Extendable	No
South Georgia and the South Sandwich Islands	Automatic	Automatic
Tuvalu	Extendable	No

In short this explains why a UK National registration can be of use in addition to a Community Trade Mark registration.

Those who examined the OHIM's notice may note that a French registration also has value above a Community Trade Mark. France has overseas departments and territories sometimes referred to as "DOM-TOM". The DOM is for the departments which are covered by a CTM. The TOM is for the territories which are not and are only protected by a French trade mark.

The Faroe Islands and Greenland are constituent countries of the Kingdom of Denmark. They are outside of the EU and therefore not covered by a CTM. They do not maintain separate trade mark regimes so registration in Denmark covers them both.

Italy and San Marino have an Agreement of Amity and Good Neighbourhood which provides for mutual recognition of trade mark rights from one to the other without the need to register in both. This is not provided for under the CTM but in this event it is a simple case of registering locally in San Marino. It can be added that Sammarinese registrations are usually obtained far quicker than Italian registrations.

With other EU countries, the situation is more straightforward with National and Community rights (including International designations) providing automatic protection. This applies to the Atlantic island groups of the Azores, Madeira and the Canary Islands, the Spanish possessions in Morocco of Ceuta and Melilla and the Swedish-speaking autonomous Åland Islands of Finland.

In the other places that OHIM indicates are not covered by a CTM, local filing routes are generally available and I would be happy to advise where required.

Companies with global needs reaching out to far flung places should be wary of the limitations of a Community Trade Mark in its wider context and consider filings in Denmark, France and the United Kingdom. Please also be aware that whilst a designation of France in an International Registration is fine, designations of Denmark or the United Kingdom are not always recognised in the same manner as National applications. Please do not hesitate to get in touch if any advice on this is required.

We will take a look at the situation with UK Registered Designs shortly.