As reported in September 2016 [article], the Cayman Islands recently implemented long-awaited changes to its copyright law as part of a broad effort to modernize its intellectual property laws and institutions. The next phase of this modernization project involves an overhaul of the Cayman Islands’ trademark law.
The new trademark legislation has been published and was scheduled to be passed in October 2016. As of November 7th, it was still under consideration. It is anticipated that the new law will be passed before the end of the year, and will be implemented sometime in early 2017.
Key features of the new trademark law as it currently stands include:
- The Cayman Islands Intellectual Property Office will no longer accept extensions of UK or EU trademark registrations. All trademark filings must be national Cayman Islands applications. This represents a significant reversal of the current system, in which the re-registration in the Cayman Islands of a UK or EU registration, or an IR extension to the UK, is the basis for registered protection in the Cayman Islands.
- New trademark applications will be examined on both absolute and relative grounds, and they will be published for opposition by third parties. The opposition period will be sixty days following publication. By contrast, the current examination process is minimal, and if a mark is already registered in the UK or the EU, it can generally be registered in the Cayman Islands without any obstacle.
- In addition to opposition proceedings, the law establishes grounds for revocation of a trademark registration where the use of the trademark is liable to mislead the public. The registration may also be declared invalid on the basis of earlier rights.
- Remedies for trademark infringement are set forth under the proposed legislation, including damages, injunctions, and delivery of infringing goods for forfeiture or destruction. Further, fines and imprisonment are penalties for the unauthorized use of a trademark that is identical to a registered mark, as well as for the false representation that a trademark is registered.
- The new law provides for the registration of collective and certification marks.
- Annual maintenance fees will still be required to maintain a registration.
- The new law makes provision for the licensing of a registered trademark. A license is only effective if it is in writing, signed by or on behalf of the licensor.
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Owners of UK and EU trademark registrations who wish to take advantage of the existing system of re-registration, and to enjoy a more streamlined examination process, are advised to re-register their marks in the Cayman Islands before the end of 2016. Following implementation, only national Cayman Islands applications will be accepted.