October 25, 2020

CAYMAN ISLANDS: Trade Marks Bill Would Update Local Trademark Regime


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2015123154014460Contributor: Katherine Van Deusen Hely, Caribbean IP, West Palm Beach, Florida

Verifier: Kathryn Pearson, Livingston Alexander & Levy, Kingston, Jamaica

From: International Trademark Association

Ms. Van Deusen Hely is Co-Chair and Ms. Pearson is a member of the INTA Bulletins Law & Practice—Latin America Subcommittee.

On August 31, 2016, the issued Trade Marks Bill, 2016. Once passed, the new law would completely overhaul the current trademark regime. An implementation date for the new law has not yet been set.

Perhaps most notably, the bill provides for a fully local registration system and abolishes the current system, which requires trademark owners to file on the basis of an already-registered UK mark, , or International Registration designating the UK. Of the English-speaking Caribbean jurisdictions, the Cayman Islands is the last jurisdiction without a local registration system in place.

Although the current system of registration can be quite quick, it may also frustrate mark owners that have no need for a European registration. Without one of the prerequisite registrations, mark owners currently have no way to register their marks locally in the Cayman Islands.

Also, under the current system, applications are granted as a right, as the local registry relies on the prior examination of the base registration. Once the new law is implemented, applications will be examined on both absolute and relative grounds and be subject to opposition by third parties.

Once enacted, the Cabinet of the Cayman Islands will have regulatory powers relating to the laws, including the power to determine the effective date, trademark fees, and transitional regulations, among other things. It is not clear how existing registered marks will be treated under the new law, particularly with respect to renewal. Under the current law, the term of registration for the Cayman mark is the same as that of the underlying registration to which the mark is based, no matter the date of local filing. Marks to be registered under the new law will be registered for a term of ten years from the date of registration. The official registration date will date back to the filing date. There will be a six-month grace period for late renewal.

Mark owners must continue to pay annual fees each year to maintain their marks. While the new fees have not yet been set, it is unlikely they will decrease under the new system. As was noted in an earlier INTA Bulletin article, trademark owners can no longer pay annual fees in advance. Instead, annual fees must be paid between January 1 and March 31 of the year they are due to retain the mark in good standing.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2016 International Trademark Association

SOURCE: http://www.inta.org/INTABulletin/Pages/Cayman_Islands_7120.aspx

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