Cayman Islands: Major changes to IP laws
Three new intellectual property (IP) laws were published on 31 August 2016 in the Cayman Islands. These laws will come into force on a date to be announced.The laws are:
The Trade Marks Bill 2016.
The Design Rights Registration Law 2016.
The Patents and Trade Marks (Amendment) Bill 2016.
Presently, the only way of getting IP protection in the Cayman Islands is through the extension of UK registrations, and there is only provision for patent and trade mark rights. What the three new laws do is:
- Create a system of direct trade mark registration in the Cayman Islands;
- Create a system for the extension of UK design registrations;
- Bring about some minor amendments to the existing system of extending UK patents.
The bill creates an independent trade mark registration system, in other words one that does not involve the extension of UK registrations.
Here are some interesting features of the bill:
- There is a requirement that a proprietor must appoint an agent;
- The term ‘trade mark’ is defined in fairly broad terms to include words, designs, numerals, letters and shapes of goods or their packaging;
- There is provision for the registration of ordinary trade marks, as well as certification marks and collective marks;
- There are absolute and relative grounds of refusal;
- The registration and renewal terms are 10 years;
- An annual maintenance fee is payable;
- There are various offences relating to trade mark infringement, and these carry hefty fines and prison terms;
- There are specific provisions regarding counterfeiting - for example, the registered proprietor can give notice to the Collector of Customs of suspected infringing goods that are expected to arrive in the Cayman Islands and, provided that the proprietor furnishes the necessary fees and security, the officials will impound the goods and the goods will be forfeited;
- Regulations can be passed and these can relate to the continued application of the Patents and Trade Marks Law of 2011 - presumably the Regulations will explain how existing registrations (UK extensions) will be treated.
The Design Rights Registration Law 2016 provides for the registration of design rights that are held in the UK. As there is currently no provision for design registration in the Cayman Islands, this is a significant development.
Here are some interesting features of this new law:
- Only registered agents can act in matters relating to design rights;
- The expression ‘design right’ is defined as a property right currently held in the UK that subsists in an original design as per Part III of the Copyright, Designs and Patents Act 1988, and is derived from registration of the right in the UK or the European Union (Registered Community Designs);
- The owner of a design right will be entitled to apply for extension of that right to the Cayman Islands;
- The effect of an extension will be to grant the owner ‘all the equivalent rights and remedies available to the owner in respect of such design in the UK’;
- The term of protection will be the same as in the UK, although it will not be possible to bring an action in the Cayman Islands for any infringement that occurred prior to the extension;
- An annual fee will be payable in respect of a design right extension.
The Patents and Trade Marks (Amendment) Bill 2016 amends the Patents and Trade Marks Law of 2011, the law that provides for the extension of UK patent and trade mark registrations to the Cayman Islands. The 2016 bill repeals all the provisions in the 2011 law that relate to trade marks, but it retains the provisions relating to the extension of patents, with a few modifications. One substantive change is the introduction of various provisions regarding ‘bad faith assertions of patent infringement’.
These changes will come into effect on a date to be announced. They will have a significant impact, especially as regards trade mark and design protection. Companies with commercial interests in the Cayman Islands should start planning for the new regime.
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