CAYMAN ISLANDS Law and Practice Contributed by: Daniel Lee, Sophia Scott, Kimberly Robinson and James Turner, Maples Group
istration will subsist for ten years from the date of registration, subject to the ability to renew after the initial period. Failure to pay the annual fee by 31 March in any year will result in the rights protected by the registration being suspended from 1 April until the annual fee and any penalty fee have been paid. The owner, acting through their registered agent, may apply to the Registrar of Trade Marks to have their Mark registered by submitting and setting out: • 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 proprietor in the Cayman Islands (and, in cer - tain circumstances, by licensees of the propri - etor). Typical remedies for infringement include injunctions, damages, an account of profits, or declarations. Depending on the type of infringe - ment, a proprietor may seek further or other relief, such as removing/obliterating the infring - ing sign from infringing goods, delivery-up of infringing goods, and/or orders for disposal of infringing material. Like with patents, if ground - less threats are made of trade mark infringe -
ment, the aggrieved party may have an action against the person making the threat. 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. Apart from registered trade marks, Cayman Islands law provides for an action in “passing off”, generally considered protection of ”unregis - tered” trade marks. Typically, a passing-off action requires three elements: i) goodwill (generally created by actual trade); ii) misrepresentation; and iii) damage. Generally, the misrepresentation is that person B misrepresents that their goods are actually the goods of person A (who owns the goodwill), causing person A harm. Similar relief to that available to trade mark infringement (damages, injunctions, etc) will usually be avail - able when passing off is established. 7.3 Industrial Design Designs are protected in the Cayman Islands by the Design Rights Registration Act (As Revised) (the “Design Rights Act”) providing for the recordal in, and extension to (”extension”), the Cayman Islands of existing registered UK and EU design rights. The Cayman Islands do not currently have a registrar of origin for design rights. The Design Rights Act does not, there - fore, enable design rights to be registered direct - ly in the Cayman Islands. Rights, Subsistence, Duration The owner of an extended design has (expressly, by law) equivalent rights and remedies to those available in the UK. Such protection and rights will be effective from the time the right arose in the UK and subsist if the protections and rights remain in force in the UK, though no local infringement proceeding may be sustained for
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