On 16 November 2016, the Cayman Islands Government passed two IP laws: (1) The Design Rights Registration Law, 2016 and (2) The Patents and Trade Marks (Amendment) Law, 2016. Copies of the laws were published with Gazette No. 25 dated 5 December 2016. The long-awaited new Trade Marks Law has also been approved by Government and is expected to be published shortly. We anticipate that the laws will be implemented on or before 1 April 2017.

What is the impact of The Design Rights Registration Law, 2016?

The new law provides owners of original UK registered designs (UKRD) and registered Community designs (RCDs) with the opportunity to extend their rights to the Cayman Islands. The extension / re-registration process affords the owner with all the equivalent rights and remedies available to them in respect of that design right in the UK. The Cayman Islands does not have its own unregistered design right regime, so protection should be sought through the registration process.

In order to obtain protection, applications must be made via a registered agent in the Cayman Islands. No power of attorney is required. All that is needed to proceed are the particulars of the UKRD or RCD to be re-registered, along with the applicable fee. The official fee is US$182.93, which is reasonable, but more expensive than in the UK for example, where it costs £60 (around US$76) to file a paper application and £50 (around US$64) to file an application electronically.

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. Examination will be limited to checking the particulars of the UKRD/RCD 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 accepted only if the Registrar 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. The duration and validity of the Cayman registration will be entirely dependent on the duration and validity of the underlying UKRD or RCD. The Cayman re-registration will have the same expiry/renewal date as the underlying UKRD or RCD.

Annual maintenance fees will become payable on 1 January 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 31 March 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. Furthermore, it will not be possible to process renewals until all outstanding annual fees are paid up to date. Moreover, default in the payment of the annual fees and penalties for more than twelve months renders the record of a design right liable to cancellation by the Registrar.

What is the impact of The Patents and Trade Marks (Amendment) Law, 2016?

The primary purpose of the Amendment Law is to essentially strip out all references to "trade marks" in the existing Patents and Trade Marks Law in order to make way for the new Trade Marks Law expected to come into force in 2017. Whilst under the new Trade Marks Law only national trade mark applications will be accepted in the Cayman Islands, the Patents law will continue only to provide for the re-registration / extension of UK Registered Patents to Cayman; there is no national registration route.

One interesting addition to the existing law concerns the assertion of patent infringement in bad faith. Section 15A of the new Patents Law provides that "A person shall not make an assertion of patent infringement in bad faith [...]" in the Cayman Islands. The Court will not recognize or enforce a foreign judgment or give effect to an estoppel based on a foreign judgement insofar as the claim is based on an assertion of patent infringement made in bad faith. Given that Cayman has not to date been a target jurisdiction for patent trolls it is doubtful whether the new provision will be utilized.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.