The Cayman Islands legislature recently passed the Patents and Trade Marks Law, 2011 which repeals and replaces the previous law and introduces some significant changes to patent and trade mark law in the Cayman Islands. The Law became effective on 7 December 2011 and is intended to be the first step towards bringing Cayman Islands patent and trade mark law in line with other jurisdictions.
Requirement for registered agent
Previously any person could apply to register a patent or trade mark with the Cayman Islands Registry of Patents and Trade Marks. Pursuant to the Law, except for general searches of the registry, now only a registered agent who is ordinarily resident in the Cayman Islands and licensed by the registrar of patents and trademarks may transact business with the registry.
Owners of patents or trademarks recorded in the Cayman Islands who do not have a registered agent must now appoint one when they next deal with the registry in relation to their patent or trade mark or when they next pay their annual fee, whichever is sooner. A list of registered agents is maintained by the registrar.
Upon being instructed by the owner of the patent or trademark, the registered agent will deal with the registry on such matters as registration, renewal, payment of annual fees and any other dealings as instructed by the owner.
Pursuant to the Law, if a registered agent with respect to a patent or trade mark resigns, the record of such patent or trade mark will be cancelled unless a new registered agent is appointed within 60 days of the registrar being notified of the registered agent’s resignation.
Annual fees and penalties
After the year of initial recording of the patent or trademark, annual fees are payable in January of each year. The failure to pay annual fees by 31 of March will cause the recorded entry to be in abeyance from 1 April until the annual fee and a penalty fee have been paid.
In the event the applicable annual fee and penalty fee are not paid for more than 12 months, the record of a patent or trade mark may be liable for cancellation by the registrar. In circumstances where the record of a patent or trade mark has been cancelled and the owner wishes to re-register the patent or trade mark in the Cayman Islands, the owner, through its registered agent, must apply for recording again as though it was being registered for the first time.
Certificates of good standing
If requested by a registered agent, the registrar may now issue a certificate of good standing evidencing that a patent or trademark has been recorded and all applicable fees have been paid.
Renewal of expired patents or trademarks
As a result of the Law, a registered agent may apply for an expired patent or trade mark to be renewed on behalf of the owner of such patent or trademark. However, a renewal application which is made more than two months after the recorded expiry date of the patent or trade mark will attract a penalty fee in addition to the renewal fee and any outstanding annual and penalty fees.
Abandoned patents or trademarks
Pursuant to the new Law, owners of a patent or trade mark must inform the registry, via their registered agent, if a patent or trade mark has been abandoned. In such circumstances, the registry will record the protected right as inactive. During the period of inactivity, the obligation to pay an annual fee is suspended. The registered agent can apply to reactivate the patent or trademark on payment of a re-activation fee and any annual fees owed for the suspension period.
Changes in particulars
If the particulars of the grant or registration of a right recorded in the registry are modified or changed in the United Kingdom or the European Community and the registry is not notified of such change within 2 months, the rights protected by the recorded entry in the Cayman Islands will be in abeyance against the person in default from the date the change was recorded in the United Kingdom or the European Community until the date the registrar has been notified of the change and the applicable fee is paid.
Despite the changes brought about by the Law, the registry is still not a registry of original registration. Instead, the registry acts as an extension of rights held by the holder of a trademark or patent in the United Kingdom to the Cayman Islands.
Therefore, prior to seeking registration in the Cayman Islands for a trademark, such trademark must either be: (a) registered in the United Kingdom; (b) a European Community trademark registered in the United Kingdom; or (c) an international trademark under the Madrid Protocol that is protected in the United Kingdom.
Prior to seeking registration in the Cayman Islands of a patent, such patent must be an existing: (a) United Kingdom patent; (b) patent granted under the Convention on the Grant of European Patents designating the United Kingdom as a contracting state (ie. a European patent in force in the United Kingdom); or (c) patent granted under the Community Patent Convention.
Effect of registration
The effect of recording an extension in the Cayman Islands of a United Kingdom trademark, European community trademark, international trademark or patent is to provide the owner of such right in the Cayman Islands, in the case of a trademark, the protection and rights afforded to that owner by virtue of the Cayman Islands Merchandise Marks Law (1997 Revision) and in the case of both a trademark or patent, all the equivalent rights and remedies available to such owner in the United Kingdom.
The protection and rights conferred upon owners of patents and trademarks in the Cayman Islands will continue in force so long as such protection or rights remain in force in the United Kingdom.
Applying for registration
The process for registering a trade mark or patent in the Cayman Islands involves several steps and other than the registered agent requirement, has not changed significantly as a result of the Law. The steps are as follows:
- Search of registry. Upon payment of the applicable fee, any member of the public including the registered agent may cause the registrar to search in the registry for particulars of any recording contained in the registry. A search of the registry ensures that the patent or trademark right has not already been registered.
- Application. An application to the registry by a registered agent to register a trademark or patent must include:
- the name and address of the owner;
- the name and address of the registered agent making the application;
- the effective date of the extension of IP rights to the Cayman Islands;
- a reference to the particulars of the existing grant or registration sufficient to identify the patent right or trade mark right in a positive manner (ie. copy of certificate of registration of United Kingdom or European Community registration showing that the registration or renewal has been duly recorded in that jurisdiction);
- the expiry date of the protection afforded by the recording (being the same date as the expiry of the relevant grant or registration);
- for trademarks, the international classes for which protection is sought in the Cayman Islands along with any applicable limitation; and
- in the case of trademarks, a clear print of the trademark. (A clear print of the trademark can be downloaded from the websites of any of the Intellectual Property Offices of the United Kingdom or the Office for Harmonisation in the Internal Market or the World Intellectual Property Organisation).
- Payment of relevant registration fees. The government fee structure for trademarks continues to be based on the number of classes in which the trademark is registered.
- Publication in the Government Gazette. Publication in the Cayman Islands Gazette is required for all recordings (ie. new registration, renewal and change in particulars) and cancellations of recordings made on the registry (other than the recording of the expiry or abandonment of a patent or trademark or the appointment of a registered agent in respect of any patent or trademark). Such publication is prima facie evidence of the recording.
- Certificates of recording. Certificates of recording will be issued after publication of the recording in the Cayman Islands Gazette. The average time for receiving a certificate of recording is approximately six weeks after submitting the requisite documents and the payment of the prescribed fees.
Permitting the direct registration of patents and trademarks is expected to be the next step in improving the legislative regime with respect to intellectual property rights in the Cayman Islands. Further changes in this regard are anticipated in 2013. Having a legislative regime that permits the direct registration of patents and trade marks complements the businesses of those companies joining Cayman Enterprise City’s Internet & Technology Park and Biotechnology Park and in that respect, may assist in attracting more business to the Cayman Islands.
The foregoing discussion and analysis is for general information purposes only and not intended to be relied upon for legal advice in any specific or individual situation.