Further to our eAlert of 7 December 2011 concerning the Patents
and Trade Marks Law, 2011, we can confirm that although the Law
came into force on 7 December 2011, the Government has now passed
the Patents and Trade Marks (Transitional Provision) Regulations
which provide that the date for implementation of the requirement
to use a local registered agent will be postponed until 31 March
click here to access the previous eAlert.
This means that on 1 April 2012, the Registry will cease to
accept instructions from overseas agents or proprietors of patents
and trade marks, so preparations to have a registered agent in
place, if not already commenced, should start now.
The reason for this short postponement is that the regulations
which make provision for the application process for registered
agents, namely the Patents and Trade Marks Regulations, 2012,
("the Regulations") were just recently passed on 3
February 2012, some time after the implementation of the Law.
As anticipated in our previous eAlert, the Regulations provide
that unless a registered agent is a firm of attorneys-at-law in the
Cayman Islands, such as Appleby, an agent will have to satisfy the
Registry that they are fit and proper to act as a registered agent,
have the relevant experience to do so, and are resident in the
Cayman Islands. The Regulations also provide that in determining
whether the proposed agent (who is not a firm of attorneys-at-law)
is fit and proper to act, the Registrar will have regard to all the
circumstances including that person's (a) honesty, integrity
and reputation; (b) competence and capability; and (c) financial
soundness. As such, agents who are not a firm of attorneys-at-law
will need some time to satisfy the Registrar that they meet these
requirements and are suitable to be registered in the Cayman
Islands as a trade mark agent.
The Law and Regulations have not changed the requirement that in
order to register a trade mark in the Cayman Islands the proprietor
must first obtain a UK or Community Trade Mark.
Everyone should be particularly alert to the fact that annual
fees are payable in the Cayman Islands in respect of registered
trade marks and patents. Those fees are due 1 January each year,
following the year of registration. Failure to pay those fees by 31
March now results in a penalty being levied by the Registry.
Failure to maintain a trade mark or patent in good standing (by
paying the annual fees) can now result in that trade mark or patent
being removed from the register. Proprietors would be well advised
to ensure that any arrears of annual fees are paid in the near
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As the above analysis has indicated trade marks are valuable corporate assets and in cases where they are correctly exploited, they provide their trade mark proprietors with more fame, distinctiveness and benefits.
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