New Patent & Trade Mark Law in the Cayman Islands

On Wednesday 7 December 2011, the new  Patents and Trade Marks Law 2011 took effect in the Cayman Islands.  Please click here  to view the new law.

Registered Agent  required

Proprietors of patents and trade marks can now only  transact business with the Registry of Patents and Trade Marks in the Cayman  Islands (“the Registry”) via a registered agent who must be resident in the  Cayman Islands.

The Registry will now maintain a register of  registered agents who may transact business with the Registry in the Cayman  Islands.  We can confirm that for clients on whose behalf Appleby already  deals with the Registry, Appleby will be a registered agent for the purposes  of this new legislation and will be able to conduct business with the Registry  going forward.

Although many proprietors and overseas trade mark firms  have in the past dealt directly with the Registry, this is no longer possible.   Appleby will not charge any fee for recording itself as the registered  agent of any trade mark or patent at the request of a proprietor or overseas  trade mark agent if an application is being made to the  Registry.

Proprietors who do not have a registered agent must now  appoint one when they next deal with the Registry in relation to their patent  or trade mark or when they next pay their annual fee, whichever is sooner  (please see below in respect of the changes to the payment of annual fees).

Proprietors should also be aware that if their registered agent  resigns, unless a new registered agent is appointed within 60 days, the  protected patent or trade mark could be cancelled by the Registry for failing  to have an appointed registered agent.  Re-application will be possible,  but it is obviously a step that a proprietor will want to  avoid.

Certificates of Good Standing will now be  available

The new legislation provides that the Registry, upon  request by a registered agent, may issue a certificate of good standing to  evidence that a patent or trade mark has been recorded in the Cayman Islands  and that all applicable fees have been paid.  This will enhance the  ability of proprietors to evidence their recorded rights.

Annual  fees and penalty fees

In the past, a default in the payment of the  annual fee due on 1 January for one month resulted in the rights protected by  the recorded entry being held in abeyance.  A default for more than two  months rendered the owner liable to a penalty fee.   Now, the new  legislation provides that if the annual fee is not paid by 31 March of the  relevant year, the right protected will be held in abeyance from 1 April until  the annual fee and penalty fee is paid.  A penalty is payable when the  annual fee is paid after 31 March.  It should also be noted that in the  event that an annual fee and the applicable penalty fee is not paid for more  than twelve months, the patent or trade mark in question may be cancelled by  the Registrar.  Again, re-application will be possible, but proprietors  will want to avoid having to take that step.

Renewal of  expired patents or trade marks

Proprietors should also be aware  that whilst their registered agent may apply for an expired patent or trade  mark to be renewed, a renewal application which is made more than two months  after expiry will attract a late renewal fee in addition to the renewal fee  and any outstanding annual and penalty fees.

Abandoned patents or  trade marks

Finally, the new legislation provides that proprietors  shall inform the Registry, via their registered agent, if a patent or trade  mark has been abandoned when the Registry will record the protected right as  inactive.  Upon payment of a re-activation fee and annual fees the  protected right may be revived.

For more  information, please contact:

Appleby  Intellectual Property Services Limited
http://www.applebyglobal.com

    • March 2024
      Mon Tue Wed Thu Fri Sat Sun
      « Jan    
       123
      45678910
      11121314151617
      18192021222324
      25262728293031
  • IP4all Weekly Bulletin

    You can subscribe to the weekly IP4ALL Bulletin.

  • IP Consulting Ltd. - Intellectual Property Consulting Agency
  • Landmark-TP
  • Ivan Georgiev - Rembrand
  • Global IP Attorneys - The world's leading address guide for patent,  trademark, copyright, intellectual property and IP attorneys. In just a few steps you can find your agency for registration and protection of your intellectual property, patent, design, copyright or trademark.
  • The Professional Sector Network is a referral and networking group that caters exclusively to leading firms with a history of excellence in the business, advisory and investment sectors.
  • Online source of information for the events and developments in the field of intellectual property worldwide
  • Jobs in USA
  • Become our partners
  • IP Basis®

  • IP Guide®