Cayman Islands: New trademark laws go into effect on August 1, 2017

A new trademarks regime will come into effect in the Cayman Islands this summer. By an order promulgated on May 17, 2017, the Caymanian Cabinet declared that the Trade Marks Law, 2016 will come into effect on Tuesday, August 1, 2017. The new trademark system will allow only local registration of marks. This stands in stark contrast to the current system, which allows only for the extension of marks already registered in the United Kingdom (including through the Madrid System) or the European Union. Until now, purely local registration of trademarks was not possible.

Trademark owners with existing UK or EU rights may want to strongly consider applying for a Cayman Islands trademark before the new law takes effect. The current application process can be viewed as a fast track to registration that does not involve substantive examination or the potential for opposition, both of which will be features under the new regime. While we still await regulations governing the transition of current applications and registrations into the new system, it is expected that all marks applied for under the current system will retain their renewal date but be treated essentially as local registrations under the new regime. read more 

We detailed some of the important changes to be instituted by the new legislation in a previous update, which can be found here. Most notably, the new law provides for a local-only registration system, a ten-year trademark term, and opposition and substantive examination procedures. Annual maintenance fees will still be required under the new laws and cannot be paid in advance.

The Trade Marks Regulations, 2017, approved on May 17, will come into effect concurrently with the new act. The regulations provide additional details regarding the new regime, including the following:

• Deadlines for a variety of application, renewal, and contentious matters;

• Provisions for late renewals and restorations of lapsed marks;

• Use of the current edition of the Nice Classification system;

• Provision of additional proof of use or intent to use when an application seeks protection for all or a “large variety” of the goods or services in a class; and

• Discretionary extensions of some matters—notably excluded are extensions for filing an opposition or counterstatement, which must be filed timely or result in default.

The regulations also establish fees under the new laws, which are largely the same as under the existing law. Fees have been established for procedures not previously available (opposition, cancellation, etc.).

We expect to receive more information on the transitional procedures in the coming weeks and will provide additional updates as we have more information.