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Designing design right protection in the Cayman Islands



Design registration will go live in the Cayman Islands on 1st of August this year and here is how it all started.

Just a few days before the INTA Annual Meeting in Orlando in 2016 our friend in the Cayman Islands, Abraham Thoppil, partner at Maples and Calder, contacted me to ask if I could be available to meet the Cayman Islands government delegation to discuss design rights. Abraham had been aware of my firm’s growing Design Rights practice and our commitment to educating clients, and businesses in general, to the value of protecting design rights through workshops and speaking engagements.

The Cayman Islands had no legislation to protect designs and Abraham firmly believed that the ability to obtain design registration would benefit foreign companies trading in the Cayman Islands as well as home-grown designers. Abraham wanted me to share my firm’s experience and my personal experience with design protection.

At that point my schedule for INTA looked its horrendously-packed usual, but I could not miss this opportunity to spread the design creed and managed to swap a couple of appointments and meet with the Cayman crew.

At my meeting with Minister of Financial Services, Commerce and Environment, Wayne Panton, Chief Officer Dr. Dax Basdeo, the head of the Cayman Islands Intellectual Property Office (“CIIPO“), Donnie Dixon and Abraham, we discussed design protection in general and what the formalities of design registrations would be. We considered in particular the possibility of a re-registration system of UK registered designs in the Cayman Islands akin to the one in force for trade marks. I gathered that CIIPO had been in conversations also with the UK IPO examiners to hear their views and learn from their experience. We had a guess at estimating possible interest from foreign companies and volume percentage vis-a-vis trade mark filings. Minister Panton and the team were of the view that design registration would be a positive addition to the IP protection available in the Cayman Islands. In congratulating them on their decision to offer Design Right protection in the Cayman Islands I noted that ‘IP is a sign of progress’ and this was well received especially by Minister Panton.

Within a few months of that meeting in Orlando, draft legislation was ready for review by a standing IP Sub-Committee at the Cayman Islands Government – headed by Abraham. The draft was finalised following consultation with the legal department. ‘The Design Rights Registration Bill 2016’ was subsequently passed by the Legislative Assembly of the Cayman Islands on 24 October 2016 and assented to by the Governor of the Cayman Islands on 16 November 2016. The Design Rights Registration Law, 2016 will come into force in the Cayman Islands on 1 August 2017.

CIIPOHow it works

Owners of UK Registered Designs and Registered Community Designs (“RCDs“) will be able to obtain extension of their registered design protection to the Cayman Islands through a re-registration process.

The Cayman design registration will be directly linked to the UK registration or RCD it relies on, in that if the latter expires or is cancelled, the former will also become lapsed or invalid. However, Cayman design registrations will need to be renewed separately from the UK registration or RCD. Also, if the particulars of the original registration are changed the owner is under an obligation to notify CIIPO and to pay the appropriate fee.

The owners of a design right need to appoint a registered agent (from the list of approved registered agents maintained by CIIPO) prior to recordal of the design right in the Cayman Islands. There will also be an annual maintenance fee due on 1 January every year, with a grace period for late renewal until 31 March of that year, during which a late penalty fee would be payable.

In terms of enforcement, Cayman design registrations will give their owners the same rights and remedies they are entitled to in the UK on the basis of that registered design right. However, design infringement could be found for acts taking place in the Cayman Islands only.

I have saved questions on whether there are plans to review the Design legislation in view of Brexit for next year’s INTA.

Protection for unregistered designs remains unavailable in the Cayman Islands.

Final comments

At the INTA Annual Meeting in Barcelona last month Abraham, Donnie and I met again and were joined by Candace Westby Fisher, CIIPO Trade Mark Examiner, who will soon also be responsible for design applications examination. My friends were very excited about the imminent coming into force of design registration in the Cayman Islands and gave me an account of the steps taken after INTA Orlando and how the legislation was drafted, finalised and passed. Abraham said that the new law was extremely well received by the IP profession in the Cayman Islands and that the meeting we had in Orlando last year was a turning point. The industry in Cayman Islands had been calling for design protection to be implemented for some time.

Candace said she was particularly excited because she thought that as a CIIPO examiner she would deal with trade mark examination for the rest of her career, but now she will be able deal with a new type of IP right. She also commented that design registration will not only be of interest to foreign companies, but there are many local entrepreneurs in the Cayman Islands, for example, jewellery designers, who could benefit from design protection for their products and it will be important to ‘get the message out’ and make them aware that there are other forms of IP in addition to patents, trade marks and copyrights.

Keltie wishes every success to the CIIPO in its new design venture. On a personal level, I am rather flattered to have played a small part in it.

Manuela Macchi 21 June 2017

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