Cayman Islands IP law revision
The new law repealed the Patents and Trade Marks Law (2010 Revision, the old law) and is the first phase in the review and updating of the main statutory underpinning of intellectual property law in the Islands.
Significant defects in the old law included the fact that it did not allow for: renewal of patents; abandonment of patents and trademarks; or strike-off of patents and trademarks for non-payment of fees. The old law also allowed any person, regardless of location, qualification or experience, to act as a patent and trademark agent. These matters have all been addressed in the new law.
Significantly, under the new law, only registered agents may conduct business with the Cayman Islands Registry of Patents and Trade Marks. All patent and trademark agents must be legally and ordinarily resident within the jurisdiction and must meet the requirements to be prescribed in the proposed regulations.
These improvements to the previous regime bring Cayman in line with more sophisticated jurisdictions in this field.
Patent and trademark owners and practitioners can expect, in time, the development of a qualified, reliable and experienced cadre of professionals performing the agency functions that were previously open to all and sundry without regulation for quality or compliance with local standards.
“ALL PATENT AND TRADEMARK AGENTS MUST BE LEGALLY AND ORDINARILY RESIDENT WITHIN THE JURISDICTION AND MUST MEET THE REQUIREMENTS TO BE PRESCRIBED IN THE PROPOSED REGULATIONS.”
The new law also contains important transitional provisions under which applications for registration and civil proceedings for enforcement pending on the effective date are to be dealt with under the provisions of the new law. Understandably, criminal proceedings brought in respect of offences under the old law are to be dealt with as though the new law had not come into effect. It is still a towering feature of the Cayman Islands legislation that trademarks and patents may be registered only by way of extension of existing rights granted in the UK. These rights extend to trademarks registered in the UK as Community trademarks, as well as to international trademarks registered as such in the UK under the Madrid Protocol.
Allowing direct registration of patents and trademarks in the Cayman Islands is regarded as the next important step in the progressive improvement of the legislative regime and is proposed for the next phase of the process, expected to take effect in 2013.
Perhaps in this phase consideration may be given to innovative developments elsewhere, including the registration of sound marks. Whether such bold steps are deemed necessary has yet to be seen.
