Good news, despite some gaps
On August 1, 2017 the Trade Marks Law, 2016 was implemented in the Cayman Islands. The new law is essentially a customised version of the UK’s Trade Marks Act 1994 and has made it possible for local and international brand owners to file standalone trademark applications before the Cayman Islands Intellectual Property Office (CIIPO) for the first time, without the need to first secure a UK or EU trademark (EUTM) registration. In cases where no office actions are handed down and no third party oppositions are filed, trademarks can be registered in as little as three to six months.
Under the repealed Patents and Trade Marks Law, 2011, all Cayman Islands trademark applications had to be based on an underlying UK or EUTM registration, and the life of the Cayman application once registered was solely dependent on the life of the underlying registration. This meant that if the underlying registration was invalidated or revoked, the corresponding Cayman Islands registration would also die even if, for example, there had been genuine use in the Cayman Islands. Therefore, there were situations in which the proprietors of Cayman Islands trademarks were left without protection despite having duly paid registration and annuity costs.
The trademark application process available under the new law has led to a significant reduction in official fees paid by brand owners at the initial filing stage since the cost of obtaining a UK or EUTM registration has been cut entirely, whereas local official filing fees for the first class have only slightly increased (due to extra publication costs), with reduced rates applying to each additional class (Table 1).
The new law has also provided for an absolute grounds examination process to ensure that the marks applied for meet international standards. Therefore, additional expenses have been incurred by proprietors in responding to office actions addressing absolute grounds issues (official fees for amending an application/specification are US$121.95).
The transition to the new law has also resulted in some gaps in trademark protection for proprietors of Cayman Islands trademarks secured under the repealed law but which could not be renewed under the new law.
We discuss key aspects of the application and examination process below, as well as CIIPO’s approach to registrations which expired under the repealed law
Application and examination process
The following information is required to file a trademark application in the Cayman Islands: (a) a representation of the mark to be filed; (b) a specification of the goods and/or services; and (c) the applicant’s name, address and type (eg, person, registered company, LLC, partnership, etc).
It is also possible to include a description of the trademark (this may be beneficial if it is a wordless device) as well as any relevant limitations and/or disclaimers. Any marks comprising non-English words or non-Roman characters must be translated/transliterated. Coined words without meaning should be cited on the application form. Applications must be filed by a registered agent.
