A Register of Patents and Trademarks is maintained in the office of the registrar general. Patents and Trademarks are governed by the Patents & Trade Marks Law. Rather than a registry of original registration, the Cayman Islands registry serves to extend patent and trademarks rights that have been registered in other jurisdictions.
In other words, only those rights registered first in jurisdictions prescribed by the Patent and Trademarks Law may be registered by extension in the Cayman Islands.
Up until early 1998 only United Kingdom and Madrid Protocol (with UK designation) trademarks rights and United Kingdom and European patents were acceptable for registration by way of extension.
In 1998 the government acknowledged that there would be an advantage to allow customers holding EC registered Trademarks to be able to also register in Cayman by way of extension and introduced legislation that would allow EC trademarks to be extended to the Cayman Islands. The legislation was enacted and in so doing the Cayman Islands received an added benefit by the reciprocal treatment of the Cayman Islands accords to EC trademarks.
Since the changes in 1998 there has been a steady growth in registrations and the Registry now boasts some 5,000 active patents and trademarks with several thousand various classes as of 31 December 2011. The process of recording rights in the Cayman Islands is relatively straight forward. On receipt of the prescribed fees and satisfaction by the registrar that an application is in order, the extension of such right is effected and a certificate of recording issued to clients as proof thereof.
Recordings are also published in the Cayman Islands Gazette as prima facie evidence of the recording(s). Government has recognised in recent years that the IP industry is a growing market and as such has set out to increase market share by initiating a series of changes to the Patent and Trademarks Law.
In 2011 the government passed an amendment to the Patent & Trademarks Law which introduced the requirement for persons and/or firms to be licensed by the registrar of patents and trademarks before they can act as a patent and trademark agent.
The amendment also requires that all patents and trademarks agents must be resident within the Cayman Islands. Since the introduction of this new legislation the Registry has licensed 17 firms as patent and trademarks agents.
As of 31 May 2012 the following firms have been licensed as agents: Appleby, Maples and Calder, Paget-Brown Trust Company Limited, Thorp Alberga, Ogier, Walkers, Campbells, Ritch & Conolly, Harneys, Stenning & Associates, Mourant Ozannes, H&J Corporate Services, Conyers Dill & Pearman, Sonia Bush & Associates, Bodden & Bodden Attorneys at Law, Charles Adams Ritchie & Duckworth and Hernandez & Co.
The new legislation also provides that the registry, upon request may issue a certificate of good standing to evidence that a patent or trademark recorded in the Cayman Islands has paid all applicable fees and in so doing is protected. The introduction of this certificate also enhances the ability of proprietors to evidence their recorded rights. Another notable change in the patent and trademark legislation is in relation to default in the payment of annual fees and protection.
The legislation now provides that if the annual fee is not paid by 31 March of the relevant year, the right protected will be held in abeyance from 1 April until the annual fee and penalty fee is paid. A penalty is payable when the annual fee is paid after 31 March.
In the event that an annual fee and the applicable penalty fee are not paid for more than twelve months, the patent or trade mark in question may be cancelled by the registrar.
It should be noted that the trademark register is multi class. Therefore the fee structure is based on the number of classes in which the trademark is registered. A comprehensive list of all fees is available on the registry’s web site at www.ciregistry.gov.ky.
The Registry also works closely with the various law enforcement agencies within the Cayman Islands to ensure that the rights of owners of patents and trademarks registered in the jurisdiction are protected and enforcement action is taken where infringements are discovered.
The trademark register remains open as a public register and allows persons to search the register for a nominal fee to ascertain if a trademark is registered. The current process for public searches is manual so requests must be submitted to the registrar in writing along with the relevant fee. Agents however can sign up for the registry online service which allows them to conduct searches and will in the immediate future also allow for the payment of annual fees online.
It is also expected that later this year online searches using the department’s website will also be available to the general public. It is anticipated that further changes will be implemented over the next few years that will complement the current law as well as enhance services to agents and their clients.
Source: General Registry