CAYMAN ISLANDS Law and Practice Contributed by: Daniel Lee, Sophia Scott, Kimberly Robinson and James Turner, Maples Group
designs, numerals, letters or the shape of goods or their packaging; • “certification mark” a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, materials, mode of manufacture of goods or performance of services, quality, accu - racy or other characteristics; and • “collective mark” a mark distinguishing the goods or services of members of an association which is the proprietor of the mark from those of other undertakings. Applications are made to the CIIPO, which maintains the Trade Marks Registry, by a local registered agent. It is no longer possible to extend UK or EU Marks to the Cayman Islands. Subject to payment of relevant fees, mark registration subsists for ten years from the date of registration, with the ability to renew. Failure to pay the annual fee by 31 March will result in suspended rights until the fee and any penalty fee are paid. The owner, through their registered agent, may apply to register a Mark by submitting: • an application in the form set out in the Trade Marks Regulations; • a copy of the requested Mark; • the classes and description of the goods to be covered; and • registration and Cayman Islands Gazette fees. If the Registrar of Trade Marks is satisfied that the application is in order, they will register the Mark. All applicants for trade marks, or owners of trade mark rights which are (or will be) recorded at the CIIPO must have a registered agent in the Cayman Islands. The CIIPO maintains a list of approved registered agents for this purpose. An action for infringement may be brought by the pro - prietor (and, in certain circumstances, by licensees). Remedies include injunctions, damages, an account of profits, declarations, removal of infringing signs, delivery-up and disposal of infringing goods. Ground -
less threats of infringement may also give rise to a claim by the aggrieved party. The Cayman Islands is a “costs-shifting” or “loser pays” jurisdiction; that is, the losing party typically is obliged to pay the legal costs (or a proportion of them) of the winning party. Cayman Islands law also provides for an action in “passing off”, protecting unregistered trade marks. A passing-off action requires: (i) goodwill; (ii) misrepre - sentation; and (iii) damage. Similar relief to trade mark infringement is available when passing off is estab - lished. 7.3 Industrial Designs Designs are protected by the Design Rights Registra - tion Act (As Revised) (the “Design Rights Act”), provid - ing for the extension to the Cayman Islands of exist - ing registered UK and EU design rights. The Cayman Islands does not currently have a registrar of origin, so design rights cannot be registered directly. Rights, Subsistence, Duration The owner of an extended design has equivalent rights and remedies to those in the UK. Protection is effective from the time the right arose in the UK and subsists while in force there, though no local infringe - ment proceeding may be sustained for actions prior to local extension. Relevant local fees must be paid. In relation to EU-derived rights, caution must be exer - cised that such rights remain in force or otherwise enforceable in the UK post-Brexit as this will expressly limit their enforceability. Extension Process A design right owner, through their local registered agent, may apply to the CIIPO for extension by paying relevant fees and demonstrating the right is currently held in, and derived from registration in, the UK or the EU. If the Registrar of Design Rights is satisfied that the application is in order, they will record the extension of the design right accordingly.
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