1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The Trade Marks Law, 2016 (Law 31 of 2016), to be read in conjunction with the Trade Marks Regulations, 2017 and the Trade Marks (Transitional Provisions) Regulations, 2017.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark protection is acquired by registration. However, unregistered rights can be acquired through use if goodwill protectable under the common law of passing off is created.
1.3 What is the statutory or other source of the trademark registration scheme?
The Trade Marks Law, the Trade Marks Regulations and the Trade Marks (Transitional Provisions) Regulations.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Any sign that is capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of others may serve as a trademark under the Trade Marks Law. Such signs may consist of words (including personal names), designs, numerals, letters or the shape of goods or their packaging. Sound, smell and colour marks are not expressly excluded. However, it may be difficult for such marks to satisfy the graphical representation requirement.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
A designation or other identifier must be capable of distinguishing the goods or services of one undertaking from those of others in order to function as a trademark.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The following shall not be registered as trademarks under the Trade Marks Law:
- signs which are not capable of graphical representation and are not capable of distinguishing the goods or services of one undertaking from those of others;
- trademarks which are devoid of any distinctive character;
- trademarks which consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods or services;
- trademarks which consist exclusively of signs or indications which have become customary in the current language or in bona fide and established practices of the trade;
- signs which consist exclusively of a shape which results from the nature of the goods themselves;
- signs which consist exclusively of a shape of goods which is necessary to obtain a technical result;
- signs which consist exclusively of a shape which gives substantial value to the goods;
- signs which are contrary to public policy or to accepted principles of morality;
- trademarks which may deceive the public as to the nature, quality or geographical origin of the goods or services, or any other feature of the goods or services;
- trademarks which contain any word, letter or device specified by the registrar as a restricted or prohibited word, letter or device;
- trademarks whose use is prohibited in the Cayman Islands by any law;
- trademarks which are filed in bad faith; and
- trademarks which consist of or contain national flags, insignia of royalty, insignia of international organisations and national emblems or the design of such flags without consent.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Cayman Islands Intellectual Property Office (CIIPO), being a division of the Cayman Islands Government's General Registry Department (www.ciipo.ky).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
CIIPO charges CI$200 to process an application through to registration in one class and CI$75for each additional class. A publication fee of CI$50 is also applicable per mark.
3.3 Does the trademark office use the Nice Classification scheme?
The Nice Classification system is used in the Cayman Islands.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
General indications found in the class headings between semicolons will be accepted as sufficiently clear and precise. Where class headings are used, it will be assumed that the scope of cover is not intended to cover all goods in the class, but rather the ordinary meaning of the words. The applicant can choose to list specific goods or services in addition to the class heading. The following general indications of class headings will not be accepted, as they are considered to lack clarity and precision to specify the scope of protection for which the trademark is sought:
- Class 7 – Machines and machine tools;
- Class 37 – Repair;
- Class 37 – Installation services;
- Class 40 – Treatment of materials; and
- Class 45 – Personal and social services rendered by others to meet the needs of individuals.
The expression ‘all goods' or ‘all services' is considered too broad and too vague and will not be accepted.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
There is no requirement for an applicant to have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
The registrar will not refuse an application on relative grounds unless an earlier rights holder files a successful opposition against the application. The registrar will, however, conduct a search of earlier trademarks on the register to such extent as the registrar considers necessary. The purpose of the search is to ascertain whether there are on record, in respect of the same goods or services or description of goods or services, any marks that are identical to the mark applied for, or that so nearly resemble it as to render the mark applied for likely to deceive or cause confusion. Where this appears to be the case, the examiner shall notify this fact to the applicant's registered agent and the registered agent of the proprietor of the earlier right.
3.7 What types of examinations does the trademark office perform other than relative examination?
The examiner endeavours to complete a preliminary examination of the trademark application within 14 days of receipt of the application and then issues a filing date. The purpose of the preliminary examination is to check that the application form has been completed correctly. Substantive examination is generally conducted within 30 to 60 days of completion of the preliminary examination, and the focus is on examination on absolute grounds. The registrar will check that the trademark application does not fall within one of the exclusions to registration as set out in question 2.3.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
The full list of grounds on under which a mark is ineligible for registration – including public policy reasons – is set out in question 2.3. As explained in question 3.6, the examiner will not refuse an application on the basis of confusion with a senior mark.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
There is no separate or supplemental register on which descriptive marks may be registered.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
There is no provision for the submission of such a letter in the Trade Marks Law. However, where an application has been published, any person, at any time before registration of the trademark, may make observations in writing to the registrar as to whether the trademark should be registered and the registrar shall inform the applicant of those observations.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
There is no requirement for the applicant to use the trademark commercially in order to obtain a registration.
3.12 How much time does it typically take from filing an application to the first office action?
Substantive examination is generally conducted within 30 to 60 days of completion of the preliminary examination. If acceptable, the application will then be published in the IP Gazette for opposition purposes for a period of 60 days (the opposition period cannot be extended). If there are objections, an office action should be issued shortly after completion of the substantive examination.
3.13 How much time does it typically take from filing an application to publication?
Normally, 60 to 90 days.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Any person aggrieved by a decision of the registrar (including any act of the registrar in exercise of a discretion vested in the registrar by the Trade Marks Law) may appeal to the Appeals Tribunal.
4.2 What is the procedure for appealing a trademark office refusal?
Notice of appeal must be made on Form TM21 and shall include the appellant's grounds of appeal and the case in support of the appeal. The appeal must be filed with the chairman of the Appeals Tribunal and a copy filed with the registrar within 14 days of the date of notification of the registrar's decision.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
A further appeal may be made to the Grand Court from a decision of the Appeals Tribunal on a point of law only.
5.1 Can a third party oppose a trademark application?
Third parties can oppose trademark applications.
5.2 Who has standing to oppose a trademark application?
Any person has standing to oppose a trademark application.
5.3 What is the timeframe for opposing a trademark application?
The opposition period is open for a period of 60 days from the date of publication in the IP Gazette. A notice of opposition (Form TM4) and statement of grounds must be filed. The opposition deadline cannot be extended.
5.4 Which body hears oppositions?
The registrar shall hear the opposition proceedings.
5.5 What is the process by which an opposition proceeds?
Within 60 days of the date on which the registrar sends the notice of opposition and statement of grounds to the applicant, the applicant must send to the registrar a counterstatement (Form TM5). Where the applicant fails to file a counterstatement within the time allowed, the application –insofar as it relates to the goods and services in respect of which the opposition proceeding is directed – shall be deemed to be withdrawn, unless the registrar directs otherwise.
Where the applicant files a counterstatement, the registrar shall immediately send a copy of the same to the opponent. Within 90 days of the date on which the registrar sends the copy of the counterstatement to the opponent, the opponent shall submit to the registrar evidence by way of witness statement and any accompanying exhibits as the opponent may desire to adduce in support of the opposition proceedings, and shall deliver to the applicant a copy of such evidence. The applicant will also have the opportunity to file evidence in response.
Upon completion of the evidence rounds, the registrar shall give notice to the parties of a date on which the arguments in the case will be heard. Within seven days of the date on which the registrar sends such notice, both parties must notify the registrar as to whether they wish to be heard (Form H1) or whether, instead, they wish for a determination from the papers to be made. If neither party wishes to be heard, the registrar shall notify the parties and make a determination from the papers.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Appeals are made to the Appeals Tribunal, established for the purpose of hearing appeals from persons aggrieved by decisions of the registrar. The procedure is outlined in the question 4.2.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered rights in a mark can be acquired through use if goodwill protectable under the common law of passing off is created. The owner of the goodwill must be able to demonstrate a misrepresentation leading to damage in order to succeed in a case of passing off. The evidential burden is high.
6.2 What legal rights are conferred by a trademark registration?
The owner of a trademark has the exclusive right to use, license and sell the registration for the duration of the trademark registration.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
- award of damages or account of profits; and
- delivery up and/or destruction of infringing materials.
Criminal remedies are also available and concern unauthorised use of a trademark in relation to goods, falsification of the register and false representation of a trademark as registered.
7.2 What remedies are available against trademark dilution?
- award of damages or account of profits; and
- delivery up and/or destruction of infringing materials.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
The Trade Marks Law also considers use of a trademark that takes or would take unfair advantage of, or be detrimental to, the distinctive character or the repute of that trademark as infringement. Furthermore, the law provides that a trademark shall not be registered if, or to the extent that, its use in the Cayman Islands is liable to be prevented by virtue of the law of passing off or any law that protects an unregistered trademark or other sign used in the course of trade.
7.4 What is the procedure for pursuing claims for trademark infringement?
A claim must be filed at the Grand Court.
7.5 What typical defences are available to a defendant in trademark litigation?
A registered trademark is not infringed by:
- the use by a person of that person's own name or address;
- the use of indications concerning the kind, quality, intended purpose, value, geographical origin or production of goods or rendering of services; or
- the use of a trademark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), as long as the use is in accordance with honest practices in industrial or commercial matters.
A registered trademark is also not infringed by use in relation to goods which have been put on the market under that trademark by the owner or with the owner's consent. However, this rule does not apply where legitimate reason exists for the owner to oppose further dealings in the goods – in particular, where the condition of the goods has been changed or been impaired after they have been put on the market.
A registered trademark is also not infringed by use by a person in the course of trade in the Cayman Islands of an unregistered trademark or other sign in relation to goods or services, if the unregistered trademark or other sign has been so used in the Cayman Islands by that person or a predecessor in title continuously from a date preceding the earlier of:
- the date of first use in the Cayman Islands of the trademark which is registered; or
- the date of registration in the Cayman Islands of that trademark.
7.6 What is the procedure for appealing a decision in trademark litigation?
Permission of the Grand Court is required in order to appeal to the Court of Appeal. Permission will be granted only where the Grand Court concludes that the appeal would have a real prospect of success or there is some other compelling reason for the appeal to be permitted. The Court of Appeal will generally allow an appeal where the decision of the lower court was wrong due to an error of law or to a more limited extent, a question of fact, or due to wrongful exercise of discretion.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The initial term of registration is 10 years from the date of filing, renewable every 10 years thereafter.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
An application must be filed on Form TM6, accompanied by the renewal fee. In addition to the renewal fee, which is due every 10 years, annual fees must be paid every 1 January in order to keep a trademark registration in good standing.
8.3 What are the grounds for cancelling a trademark registration?
A third party may apply to cancel a trademark registration on grounds of invalidity and/or revocation. The registration of a trademark may be revoked if:
- the use made of the trademark by the owner or by another person with the owner's consent, in relation to the goods or services for which it is registered, is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services; or
- as a consequence of the action or inaction of the owner, the trademark has become the common name in the respective trade for a product or service for which it is registered.
A trademark may be invalidated if it can be shown that it should never have been registered on absolute or relative grounds.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The registrar may, subject to the provisions of the Trade Marks Law, remove from the register any matter which appears to the registrar to have ceased to have effect and have the fact of its removal published by way of notice in the IP Gazette.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
An application for revocation or invalidity may be made to the registrar or the court. If filed with the registrar, Form TM15 (revocation) or TM14 (invalidity) should be used. The grounds for revocation/invalidity should be stated on the form. The registered owner will then have the opportunity to file arguments and evidence. The applicant will also have the opportunity to file agreements and evidence in reply. At the conclusion of the evidence rounds, either a hearing will be set or a decision on the papers will be handed down.
8.6 What is the procedure for appealing a decision cancelling a registration?
Appeals are made to the Appeals Tribunal, established for the purpose of hearing appeals from persons aggrieved by decisions of the registrar. A further appeal may be made to the Grand Court from a decision of the Appeals Tribunal on a point of law only.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
There is no quality control requirement, although it would be prudent to include this in the licence agreement. A licence is not effective unless it is in writing signed by or on behalf of the grantor. Unless the licence provides otherwise, the licence is binding on a successor in title to the grantor's interest.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
Form TM11 is used to record a licence. A copy of the licence need not be filed if the application is validated by the agent of the licensor or the licensor. All transactions with the Cayman Islands Intellectual Property Office must be made by a registered agent. Until an application has been made for registration, the prescribed particulars of a licence are ineffective as against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the licence; and a person claiming to be a licensee by virtue of the licence does not have the protection provided by Section 42 of the Trade Marks Law. Where a person becomes the owner or a licensee of a registered trademark by virtue of a licence, then unless an application for registration of the prescribed particulars of the licence is made before the end of the six-month period beginning on the date of the licence – or the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter – that person is not entitled to damages or an account of profits in respect of any infringement of the registered trademark occurring after the date of the transaction and before the prescribed particulars of the licence are registered.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
There is no provision in the Trade Marks Law for this, but it is prudent for licensors and licensees to abide by the terms of their licence agreements.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Where there is use of a foreign trademark in the Cayman Islands that amounts to protectable goodwill, that mark may be protected under the common law of passing off and rights enforceable under the same. However, the foreign trademark registration itself is not protected under the law in the Cayman Islands.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
As of 1 August 2017, the Cayman Islands Intellectual Property Office no longer permits registration of a mark based on a UK or EU trademark or international (Madrid) registration designating the United Kingdom or European Union.
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.