Cayman Islands: Trade Marks Bill, 2016 would completely change the local trademark regime

The Cayman Islands recently published the Trade Marks Bill, 2016, which, once passed, will completely overhaul the current trademark regime. The bill was released to the public on August 31, 2016, and it is expected to be passed at the upcoming Legislative Assembly meeting in October. Local officials are hopeful that implementation of the new law will take place within a few months of passage, but it may take longer.
 
Most notably, the new law will implement a local registration system while doing away with the current system, which relies solely on registering on the basis of an already-registered UK mark, EUTM, or International Registration designating the UK. This system can frustrate brand owners who lack these European registrations, as it forces them to register twice to protect their mark in the Cayman Islands.
 
On the other hand, the current laws provide a relatively fast track to registration, assuming that the mark owner already has a UK mark, EUTM, or IR. The local Cayman Islands Registry essentially rubber stamps applications under the current system, and the turnaround time from application to final registration is usually quite short, within a few months. The proposed law will foreclose this filing strategy. Thus, any mark holders who have the prerequisite marks may wish to take advantage of the current system soon. After the change, applications will be examined on both absolute and relative grounds and subject to opposition.
 
The bill leaves the details of transitional provisions to post-enactment regulations. So, it is not clear how marks registered under the current law will be treated under the new law. Current registrations’ terms are coterminous with the underlying mark. For example, if the underlying UK mark expires on January 1, 2020, the resulting Cayman Islands registration would also expire on this date, no matter what date the application was filed locally. All marks registered under the new law will be registered for a period of ten years from the date of registration, which is the same date as the filing date.
 
Annuity fees will remain an annual requirement. While the Caymanian Cabinet has not set the fees yet, one should not expect them to decrease under the local registration system. As we indicated in an earlier newsletter (June 9, 2016), trade mark owners can no longer pay these fees in advance. All 2017 annuity fees must be paid between January 1 and March 31, 2017 to maintain the mark in good standing. Caribbean IP will send notices regarding these payments to our clients with Cayman Islands registrations in the near future.
 
We will continue to provide updates on these changes as progress is made on passage and implementation of the new trademark law in Cayman Islands.
 
For any questions, please contact us at Katherine@Caribbean-IP.com.