Going it alone: Cayman Islands to create local trademark registry, further calls to join Paris Convention 08 Jun 17
The new Cayman Islands trademarks law will be implemented on August 1, transforming how international brand owners attain protection in the Caribbean jurisdiction. Previously, a UK or EUIPO registration was required to attain trademark rights on the island, but this practice will end, with only national applications filed by local agents being accepted. However, there are claims the changes don’t go far enough – with one commentator calling for the country to join the Paris Convention.
The trademark overhaul in the Cayman Islands was first proposed in May 2015 by commerce minister Wayne Panton. At the time, local trademark attorney Sophie Davies of HSM IP described some aspects of the current law as “outdated” due to the requirement to obtain a UK or EU trademark registration and then needing to extend the right to the Cayman Islands. “A lot of local businesses tend to turn away from filing trademarks in the Cayman Islands when they become aware that it is first necessary to register the mark in the UK or EU, which adds an extra layer of expense,” she explained.
The new law, then, will create a local trademark registry, with the Cayman Islands IP Office (CIIPO) only accepting national applications filed by a registered agent based locally. This will be implemented from August 1. For international brand owners, that will mean ensuring they have adequate representation in the Cayman Islands when seeking protection.
Davies, who recently wrote a guide on the new law, tells World Trademark Review that brand owners should be aware of how the examination and objection process is changing. Unlike current extension applications, she says, applications filed under the new law will be examined on absolute and relative grounds. Third parties will have 60 days from the date of publication to file an opposition. “There is no intent to use provision and there is no obligation to use a registered trademark at any time – therefore, trademark registrations cannot be challenged on grounds of non-use. The examiner will also not prevent the publication of new filings on the basis of confusingly similar prior marks on the register, although they may write to the owners of those prior marks to notify them in case they wish to file opposition proceedings.”
Further, she adds, it will not be possible to file series mark applications under the new law. “Series registrations protected under the current law will stay in effect until the next renewal date at which point it will be necessary to renew each mark in the series (or any of them) as separate registrations in order to keep them alive,” she clarified.
With just less than two months before the new law comes to fruition, Davies advises international brand owners that want protection in the Cayman Islands to make preparations now. “Proprietors of UK or EU trademark registrations who want a fast track to registration in the Cayman Islands should carefully consider re-registering in the Cayman Islands before the new law comes into force,” she explains. “In doing so, such proprietors will avoid the possibility of an office action or third party opposition proceedings being issued and therefore minimise costs.”
While this new trademark law is a step forward in terms of protection in the Cayman Islands, Davies argues that there is still room for improvement. Cayman is not a Paris Convention country, and she claims that implementing this could further improve the IP landscape in the country. “It means we cannot offer priority filings, and we do not have any provisions to protect well-known marks under Article 6bis,” she adds. “Therefore, I think we should focus on becoming part of the Paris Convention.”
The Paris Convention currently has 177 contracting member countries, making it one of the most widely adopted treaties worldwide. With the Cayman Islands newfound focus on improving its local IP rights system, perhaps WIPO needs to engage further with the Cayman government to add the country to the Paris roster.
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