Registered design right protection coming to the Cayman Islands

03-10-2016

Sophie Davies

Owners of UK registered designs and registered Community designs (RCDs) will soon have the opportunity to re-register their rights in the Cayman Islands.

A new Design Rights Registration Law is expected to be passed and implemented before the end of 2016. The re-registration of UK registered designs and RCDs in the Cayman Islands will afford the owner all the equivalent rights and remedies available to them in respect of that design right in the UK.

The new law follows the launch of the Cayman Islands Intellectual Property Office in May 2016 and stems from the Cayman Islands government’s commitment to expand the range of intellectual property protection available.

The re-registration process

In order to obtain protection, an application will be made through a registered agent in the Cayman Islands. All that will be needed to proceed are the particulars of the UK registered design or RCD to be re-registered, along with the applicable fee (the official fees are still to be confirmed). No power of attorney or other documentation will be required. 

Given that most applications should be accepted on the basis that they have already been registered in the UK or the EU, generally it will not be necessary to conduct a pre-application search of the Cayman Designs Register. 

"As design right protection is not currently available in the Cayman Islands, the new re-registration law is the natural first step."

Examination will be limited to checking the particulars of the UK/RCD registration and determining whether the application consists of or contains: (a) national flags, insignia of royalty, insignia of international organisations and national emblems or the design of such flags, insignia or emblems; or (b) words, letters or devices likely to lead persons to think that the applicant either has, or recently has had, government patronage or authorisation. 

Such applications will be recorded only if the Registrar of Design Rights is satisfied that consent to the re-registration has been given by, or on behalf of, the respective government or international organisation. 

Once an application passes the examination stage, it will proceed to registration and a certificate of registration will be issued. Once a UK registered design or RCD has been re-registered in the Cayman Islands, its duration and validity will be entirely dependent on the duration and validity of the underlying UK registered design or RCD registration. The Cayman re-registration will have the same expiry/renewal date as the UK registered design or RCD registration on which it is based.

 

Annual maintenance fees

Once a UK registered design or RCD is re-registered in the Cayman Islands, an annual maintenance fee will become payable to the local registry on January 1 each year until the expiration or renewal of the Cayman Islands Design Registration. 

A penalty fee will be incurred where annual fees are not paid within the grace period, which ends on March 31 each year. Upon renewal, the annual fee cycle will begin again. 

Failure to pay annual fees will result in the rights protected by the registration being placed in abeyance, and the proprietor will be unable to enforce the registration against third party infringers in the Cayman Islands. 

It will not be possible to process renewals until all outstanding annual fees are paid up to date. Moreover, the local registry will be able to cancel a Cayman registered design right for failure to pay annual fees and any penalties accrued for 12 months. It will not be possible to avoid payment of annual fees by re-registering the design right and forgoing the earlier filing date previously secured. 

It will be possible to apply to the Cayman Registry to re-activate any abandoned design rights upon payment of a reactivation fee, along with any unpaid annual fees and penalties.

It will be a criminal offence to make a false entry in the register or to falsely represent a design right as being registered in the Cayman Islands. Penalties on summary conviction include a term of imprisonment and/or a fine of up to CI$10,000 ($12,000).

As design right protection is not currently available in the Cayman Islands, the new re-registration law is the natural first step. It is hoped that in the future the Cayman Islands will adopt a standalone national registered designs law.

Sophie Davies is an attorney at HSM IP. She can be contacted at: sdavies@hsmoffice.com 

Sophie Davies, HSM IP, registered Community designs, Cayman Registry, design right,

WIPR