Cayman Islands: The new IP law is almost here
New IP laws for the Cayman Islands were passed in 2016. These laws will come into force on 1 August 2017. There are three separate laws, namely The Trade Marks Bill 2016; The Design Rights Registration Law 2016 and The Patents and Trade Marks (Amendment) Bill 2016.
The new trade mark law brings about major changes to the system of trade mark protection in the Cayman Islands. Here are some of the most important features:
- The old system of extending UK registrations falls away and is replaced by a direct registration system.
- Existing registrations will remain in force until the renewal date, when they can be renewed in accordance with the new law. Existing registrations for series marks will be divided and renewed individually on expiry.
- The new law provides no protection for well-known marks, so trade mark registration is very important.
- The new law does not allow for priority claims, so filing early makes sense.
- The new law does not have an intent-to-use requirement.
- Trade mark applications must be filed by registered agents.
- There is provision for multi-class filing and the 11th edition of the Nice Classification applies.
- There is provision for the registration of ordinary trade marks, certification marks and collective marks.
- The term ‘trade mark’ is defined in fairly broad terms and includes words, designs, numerals, letters and shapes of goods or their packaging.
- There are absolute and relative grounds of refusal.
- Absolute grounds include lack of distinctiveness, descriptiveness, deceptiveness, bad faith and immorality. An objection of non-distinctiveness can be overcome by proof of acquired distinctiveness. Disclaimers can be imposed.
- In the case of shape marks, an application can be refused if the shape results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods.
- Relative grounds, in other words objections based on prior rights, must be raised in opposition or rectification proceedings.
- The grounds of opposition extend to dilution.
- Registration on the basis of honest concurrent use is possible.
- There will be an opposition term of 60 days from publication.
- The registration and renewal terms are 10 years. It is important to note that an annual maintenance fee will be payable every year. This annual fee can be paid up to three months late and during this period the registration rights are ‘in abeyance’ vis a vis third parties.
- There is no trade mark use requirement, so registrations cannot be attacked for non-use.
- There are, however, provisions for revocation on other grounds. Registrations can be revoked on relative grounds, if they mislead the public regarding nature and quality, or if they become generic.
- There is a defence of acquiescence – if someone acquiesces for five years or more in the continuous use of a registered trade mark they can no longer apply for a declaration of invalidity or oppose use, unless the registration was obtained in bad faith.
- There is provision for the recordal of assignments, licences and security interests.
- Time limits will generally be strictly enforced. For example, it will not be possible to extend the opposition term, or the term for filing a counterstatement to an opposition or a rectification.
The Design Rights Registration Law 2016 also comes into force on 1 August 2017. This will create a system for protecting design rights, namely through the extension of UK registrations - as there is presently no provision for design registration in the Cayman Islands, this is a significant development.
The law defines the ‘design right’ that can be extended to the Cayman Islands 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 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.’
Finally, the Patents and Trade Marks (Amendment) Law 2016 also becomes operational on 1 August 2017. This legislation will ensure that the current system of protecting inventions through the extension of UK patents remains in place. Some minor amendments have been made to the existing legislation.
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