Intellectual Property Protection in the Cayman Islands

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1 Intellectual Property Protection in the Cayman Islands

2 Foreword This memorandum has been prepared for the assistance of those who are seeking information on the protection and enforcement of intellectual property rights in the Cayman Islands and deals in broad terms with the statutory regime and procedure for the registration of patents and trade marks. It is not intended to be exhaustive, but provides brief details and information which we hope will be of use to our clients. This memorandum has been prepared on the basis of the law and practice as at the date referred to below. Conyers Dill & Pearman August 2015 Page 2 of 14

3 TABLE OF CONTENTS 1. INTELLECTUAL PROPERTY PROTECTION IN THE CAYMAN ISLANDS 1.1 Copyright Protection 1.2 Design Registration 1.3 Patent Registration 1.4 Trade Mark Registration 2. THE REGISTRATION OF PATENTS AND TRADE MARKS IN THE CAYMAN ISLANDS 2.1 Patents and Trade Marks Recognised in the Cayman Islands 2.2 Recording Patents and Trade Marks in the Registry 2.3 Effect of Recording a Patent or Trade Mark in the Registry 2.4 Timing and Renewal 2.5 Change of Particulars 2.6 Assignment 2.7 Abandonment 2.8 Annual fees 2.9 Certificate of Good Standing 2.10 Searches 3. MODERNIZING THE CAYMAN ISLANDS INTELLECTUAL PROPERTY REGIME 3.1 Copyright 3.2 Trade Marks 3.3 Patents DOCUMENTS Fee Schedule Authorization of Agent Form for Trade Mark Application Form for Extension of Trade Mark Page 3 of 14

4 1. INTELLECTUAL PROPERTY PROTECTION IN THE CAYMAN ISLANDS The Cayman Islands has comprehensive legislation protecting various aspects of intellectual property. The legal system is common law, and continues to evolve to meet the needs of technological developments and trends. The Cayman Islands is not a signatory to the Paris Convention or the Patent Cooperation Treaty, nor is it party to the GATT Trips agreement. Relief available for intellectual property infringement includes permanent or interim injunctions, delivery up, damages and an account of profits. 1.1 Copyright Protection in the Cayman Islands Copyrights are protected in the Cayman Islands under the United Kingdom s Copyright Act 1956 (the ʺ1956 Actʺ). Under the 1956 Act, copyrights subsist in original qualifying literary, dramatic, musical, artistic and architectural works, sound recording, pictorial, graphic and sculptured works and other qualifying intellectual works. The author of the work is usually the first owner of copyright. Registration of copyright is neither required nor even possible in the Cayman Islands. 1.2 Design Protection in the Cayman Islands There is no extension of United Kingdom design registrations in the Cayman Islands. 1.3 Patent Protection in the Cayman Islands Patent protection is available in the Cayman Islands under the Patents and Trade Marks Law, 2011 (as amended from time to time) (the Law ). 1.4 Trade Mark Protection in the Cayman Islands Trade Mark protection is available in the Cayman Islands under the Law. 2. THE REGISTRATION OF PATENTS AND TRADE MARKS IN THE CAYMAN ISLANDS The two types of intellectual property rights which are capable of registration in the Cayman Islands are patents and trade marks. Page 4 of 14

5 The Law designates responsibility for the maintenance of the Registry of Patents and Trade Marks (the Registry ) to the Registrar of Patents and Trade Marks (the Registrar ). Only a registered agent is permitted to transact business with the Registry pursuant to the Law; Conyers Dill & Pearman is a registered agent in this regard. Unlike in many other jurisdictions, a power of attorney is not required for a registered agent to assist an applicant. 2.1 Patents and Trade Marks Recognised in the Cayman Islands In order to be recognised in the Cayman Islands, a patent or trade mark must first be recognised in the United Kingdom. For the purposes of the Law: a patent means a current and effective grant in the United Kingdom, under either the Convention on the Grant of European Patents (designating the United Kingdom and which, under the laws of the United Kingdom, is treated as a patent) or the Community Patent Convention, of a monopoly in respect of an invention; and a trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings which is currently registered in the United Kingdom, including a Community trade mark 1 and an International trade mark Recording Patents and Trade Marks in the Registry The owner of a patent or a trade mark may, by his duly appointed registered agent, on payment of the prescribed fee, apply to the Registrar to have such patent or trade mark extended to the Cayman Islands and the Registrar, being satisfied that such 1 Meaning a mark registered in the United Kingdom in accordance with Regulation No 40/94 made by the Council of the European Union on 20 December Meaning a mark registered in the United Kingdom in accordance with the provisions of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks on 14 April Page 5 of 14

6 application is in order, shall enter the same in the Registry. All entries in the Registry are published in the Cayman Islands Gazette. The application to the Registrar for the initial recording of a patent or trade mark must be accompanied by an original United Kingdom certified extract of the patent or trade mark in question. Our standard fee 3 to assist in relation to the recording of a patent is $850 USD and in relation to the recording of a trade mark is $850 USD (for one class) plus $400 USD for each additional class. 2.3 Effect of Recording a Patent or Trade Mark in the Registry The effect of recording a patent or a trade mark in the Registry is to afford to the owner of the right in the Cayman Islands all the equivalent rights and remedies which are available to such owner in the United Kingdom. The recording of a right in the Cayman Islands is effectively, therefore, a mirror of the rights in the United Kingdom. There is no separate system in the Cayman Islands to oppose, or object to, the recording of a patent or a trade mark. 2.4 Timing and Renewal The recording procedure usually takes approximately four weeks from submission. After entry in the Registry, the protections and rights in the Cayman Islands are deemed to start from the time such rights arose in the United Kingdom and will continue in force so long as the protections and rights remain in force in the United Kingdom. An owner of a patent or a trade mark recorded in the Cayman Islands may, by his duly appointed registered agent, on payment of the prescribed fee, apply to renew such a recording at any time if that right has been renewed in the United Kingdom, 3 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. Page 6 of 14

7 provided that all annual fees and penalties have been paid and any change of particulars filed. The application to the Registrar for a renewal of a patent or a trade mark must be accompanied by a clear print out from the website of the appropriate authority. In the case of a trade mark this is either the Intellectual Property Offices of the United Kingdom, the Office for Harmonisation in the Internal Market or the World Intellectual Property Organisation. A penalty is payable if the application for renewal is filed more than two months after the expiry date in the Cayman Islands. Our standard fee 4 to assist in relation to the renewal of a patent or a trade mark is $850 USD. 2.5 Change of Particulars If the particulars of a patent or a trade mark recorded in the Registry are modified or changed in the United Kingdom or the European Community, the owner must, by his duly appointed registered agent, on payment of the prescribed fee, notify the Registrar with full particulars of such change so that the Registrar can update the Registry. The application to the Registrar for a change of particulars in respect of a patent or a trade mark must be accompanied by a clear print out from the website of the appropriate authority showing the change or modification. In the case of a trade mark this is either the Intellectual Property Offices of the United Kingdom, the Office for Harmonisation in the Internal Market or the World Intellectual Property Organisation. A default in notification of a change within two months shall, until the required notification is made, cause the rights protected by the entry to be held in abeyance until the date of the notification to the Registrar (and payment of the prescribed fee). 4 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. Page 7 of 14

8 Placing the patent or trade mark into abeyance will effectively prevent any enforcement action from being pursued. Our standard fee 5 to assist in relation to a change of particulars of a patent or a trade mark is $550 USD. 2.6 Assignment In the event that a trade mark is assigned, the authorised registered agent must file an application to record the assignment in the Cayman Islands. In particular, any change in the original United Kingdom or European Community registration must be recorded with the Registry within two months of the change being recorded in the United Kingdom or European Community. 2.7 Abandonment In the event that the owner of a patent or trade mark opts to abandon the patent or trade mark, the authorised registered agent must notify the Registrar of such. Once notification is provided, the rights protected by the recorded entry will be held in abeyance and the patent or trade mark will be recorded as inactive. The obligation to pay an annual fee will be suspended while the patent or trade mark is inactive. A registered agent may apply to re activate a patent or trade mark that has been abandoned upon payment of the reactivation fee and the payment of the annual fees for the period the patent or trade mark was suspended. 2.8 Annual Fees The owner of a patent or a trade mark recorded in the Registry must, by his duly appointed registered agent, pay an annual fee in January of each year. It is possible to prepay the annual fees up to the date of expiry in the Registry. A default in payment of the annual fee by 31 March causes the rights protected by the recorded entry to be held in abeyance from 1 April until the fee (and a penalty) is 5 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. Page 8 of 14

9 paid. A continuing default in payment of the annual fee (and penalties) for more than 12 months renders the record of the patent or trade mark liable to cancellation by the Registrar. Our standard fee 6 to assist in relation to the payment of annual fees for a patent is $300 USD and in relation to the annual fees for a trade mark is $300 USD (for one class) plus $150 USD for each additional class. 2.9 Certificate of Good Standing The Registrar can, when a request is made by a registered agent, issue a certificate of good standing to evidence that a patent or a trade mark has been recorded in the Registry and that all annual fees and penalties have been paid. Our standard fee 7 to obtain a certificate of good standing for a patent or a trade mark is $200 USD Searches Any member of the public can cause the Registrar to make a search in the Registry for the particulars of any entry. Our standard fee 8 to conduct a search of the Registry and issue a certificate accordingly is $250 USD. 3. MODERNIZING THE CAYMAN ISLANDS INTELLECTUAL PROPERTY REGIME As a result of global technological developments and trends, the Cayman Islands is pursuing a strategy to modernize its intellectual property protection regime. 6 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. 7 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. 8 This includes all disbursements, the Registrar s fees and attorney time but not any time spent advising on preliminary matters. Page 9 of 14

10 3.1 Copyright On 19 March 2015, the United Kingdom extended Part 1 of the Copyright, Designs and Patents Act 1988 to the Cayman Islands through the Copyright (Cayman Islands) Order, 2015 (the Copyright Order ). The Copyright Order effectively revokes the application of the 1956 Act and replaces it with Part 1 of the Copyright, Designs and Patents Act The Copyright Order will come into effect once the regulations have been finalized and issued. The main aim of the Copyright Order is to offer modern intellectual property protection for copyrights comparable to the protection offered in the United Kingdom and other countries of the European Union. 3.2 Trade Marks The Cayman Islands Government has proposed new trade mark legislation with the main aim of incorporating a local trade mark registry, thereby allowing trade mark proprietors to file for trade mark protection directly in the Cayman Islands without first registering in the United Kingdom or the European Community. 3.3 Patents The Cayman Islands Government has also proposed new patent legislation with the main aim of granting local persons access to the international patent system. In particular, joining the Patents Cooperation Treaty would allow entities in the Cayman Islands to apply for patent protection in more than 140 countries. Page 10 of 14

11 FEE SCHEDULE A summary of our standard fee (which includes all disbursements, the Registrar s fees and attorney time but not any time advising on preliminary matters which will be billed separately on a time spent plus disbursements basis) to assist in relation to the matters set out in this memorandum is set out below: US$ Our Fee (including all disbursements) US$ Of which, is the prescribed fee New registration of a patent or a trade mark (in one class) Per additional class (for a multi class trade mark) $850 Renewal of a patent or a trade mark $850 Change of particulars $550 Payment of annual fees (for 1 year/first class) 9 $ (plus $36.59 Gazette fee) $400 $ $ (plus $36.59 Gazette fee) $ (plus $36.59 Gazette fee) $300 $ Per additional class (for 1 year) $150 $ Payment of annual fee through to expiry (per mark) $360 N/A Certificate of good standing $200 $ Certificate of Recording/Search of the register $150 $60.98 Recording Change of Registered Agent Fee $ $ NOTE: Annual fees can be paid in advance. There is a penalty (currently US$121.95) if after 31 March of each year the annual fee isn t paid Page 11 of 14

12 CAYMAN ISLANDS THE PATENTS AND TRADE MARKS LAW AUTHORISATION OF REGISTERED AGENT FORM We, A company organized in the state of, doing business at the following address, do hereby appoint Conyers Dill & Pearman, of Cricket Square, PO Box 2681, Grand Cayman KY1 1111, CAYMAN ISLANDS, to act as our Agent in respect of all of our company s Trademark matters in the Cayman Islands, and request that all notices, requisitions and communications relating thereto be sent to said Agent. We hereby revoke all previous authorisations, if any. Dated this day of, 201[ ] By: TO: Trademark Registry George Town Grand Cayman Page 12 of 14

13 Form PTM 1 THE PATENTS AND TRADE MARKS LAW (NO. 30 OF 2011) (Section 7) Application for the extension to the Cayman Islands of a Trade Mark right currently registered in the United Kingdom. To: The Registrar of Patents and Trade Marks, Grand Cayman, Cayman Islands We, [proprietor name] of [address], hereby make application for the extension to the Cayman Islands of the Trade Mark as described hereunder. The [United Kingdom/European Community/International] Trade Mark particulars are as follows: No. [ ] Date of expiry [ ] Proprietor [ ] Registered agent Conyers Dill & Pearman Registered agent Cricket Square, Hutchins Drive, PO Box 2681, Grand Cayman address KY1 1111, Cayman Islands Mark [ ] Class[es] [ ] I enclose herewith: 1) Original UK certified extract of the [United Kingdom/European Community/International] Registration 2) Registration fee of CI$[200.00] 10 3) Fee of CI$30.00 for a ¼ page entry in the official gazette CONYERS DILL & PEARMAN (Registered Agent for the Applicant) 10 CI$200 + CI$100 for each additional class Page 13 of 14

14 This publication is not a substitute for legal advice nor is it a legal opinion. It deals in broad terms only and is intended merely to provide a brief overview and give general information. About Conyers Dill & Pearman Founded in 1928, Conyers Dill & Pearman is an international law firm advising on the laws of Bermuda, the British Virgin Islands, the Cayman Islands and Mauritius. With a global network that includes 140 lawyers spanning eight offices worldwide, Conyers provides responsive, sophisticated, solution driven legal advice to clients seeking specialised expertise on corporate and commercial, litigation, restructuring and insolvency, and trust and private client matters. Conyers is affiliated with the Codan group of companies, which provide a range of trust, corporate, secretarial, accounting and management services. Page 14 of 14

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