By Gabriela Bodden, Eproint Partner
The Cayman Islands is a self-governing UK overseas territory where historically the intellectual property legislation has been extremely outdated (as is the case in many caribbean islands).
In 2011 new legislation was put in place, however, according to my appreciation, it is still not up to international standards.
Currently, despite the ”new” legislation that was enacted in 2011, the Cayman Islands is still not a registry of original registration, which essentially entails the need for an extension of a current registration from another jurisdiction such as the United Kingdom, Madrid Protocol (with UK designation) as well as European Community (EC).
One of the main changes introduced by the Patents and Trade Marks Law, 2011, is that only a licensed local agent, is empowered to make filing before the Trade Marks and Patents Registry.
A non-resident trademark proprietor is not entitled to conduct any business with the Registry directly.
Once an application is made, the successful recording is published in the Cayman Islands Gazette. This publication is prima facie evidence of the recording. In other words, currently the Registry only ”extends” rights to the Cayman Islands without there being a formal examination as to registrability of the rights, as it happens in the majority of countries around the world.
Government officials in the Cayman Islands are recently focusing on earning greater revenue for government and therefore viewing the opportunity to replace its current Patents and Trademarks Law 2011 with two separate pieces of legislation according to the Commerce Minister Mr. Wayne Panton.
According to Mr. Panton the new Trademarks Bill will introduce a local formal register for trade marks. It is my assumption that the Government is preparing for the hiring of highly trained individuals as formal examinations as to registrability will be necessary.
The enactment of new legislation should not only be about Cayman’s government losing out on registration fees and making more money for Government, but the Government should also focus on offering excellent service to the public and not slowing down the process altogether.
Minister Panton has also indicated that ”….the U.K. trademark regime may not be the best fit for Cayman…” and I could’t agree more with his perspective, however, the point of concern is the volume of local filings that will be made once this door is opened. The important question is that indeed the Government will be making more money, however, are they prepared to face, analyse and deal with such volume filings?
Needless to say that if the Cayman Islands is looking into the creation of a local formal register for trade marks and patents they are also considering the adhesion to certain international treaties which in turn would mean becoming a member of the World Intellectual Property Organisation (WIPO).
I have read and deeply analysed both the trade marks and patents legislation currently applicable in the Cayman Islands, and I must say that both pieces of legislation do require some hard work.
Minister Panton has mentioned the following which was published in the Cayman Compass (local newspaper on 17 April, 2015 “The focus is … to allow access by local persons to the international patent system,” the minister said. “…This access, through what is known as the Patents Cooperation Treaty, would allow entities in the Cayman Islands to apply for patent protection in more than 140 country…,”.
As an intellectual property specialist, I wish to note that putting into place the PCT Treaty is not a job that can be easily accomplished, however, it can be done and should be done by the Cayman Islands. How long will the process take is the question at hand. Not to mention the requirements that WIPO will set in order for the Cayman Islands to accomplish such duty.
Up to March 2015 copyright legislation in the Cayman Islands was based on a version of the U.K. 1956 Copyright Act extended to the Cayman Islands In March 2015 the copyright portion of the U.K.’s 1988 Copyright, Designs and Patents Act was extended to the Cayman Islands. However, it has not yet taken effect and will not do so for another six months (according to Minister Panton) and this will enable government to conduct a public education campaign about what is required under the new legislation. I find this step to be quite necessary.
The modernisation of Caymans legislation has been a necessity for many years and undoing so the economy of the Cayman Islands will become a magnet for further investments by perhaps high technology companies.
Do not hesitate to contact me with any queries that may arise.