Cayman Islands: Trade marks in the Caribbean - at a glance
Trade mark activity is growing in the Caribbean, both as regards protection and enforcement. Yet there is still a great deal of uncertainty. This is the first in our series of country-specific updates. Here we focus on the Cayman Islands.
This autonomous British Overseas Territory is, of course, a major international financial centre - it is, in fact, the fifth largest banking centre in the world. With financial services generating 55% of the total GDP, the GDP per capita is the 14th highest in the world. The 60 000 or so people who call these islands home (there are more registered companies) enjoy the highest standard of living in the Caribbean. There is modern legislation, with the Trade Marks Law 2016 having come into effect on 1 August 2017.
The new law does not have a specific intent-to-use provision - it simply provides that a registered trade mark is a ‘property right obtained by registration’, and that ‘an application shall contain a request for registration.’ There is, however, provision for refusal if ‘the application is made in bad faith.’
The legislation provides for the registration of ordinary trade marks, certification marks and collective marks. The term ‘trade mark’ is defined in fairly broad terms and includes words, designs, numerals, letters and shapes of goods or their packaging.
There are absolute and relative grounds of refusal. Absolute grounds include lack of distinctiveness, descriptiveness and deceptiveness. Disclaimers can be accepted and an objection of non-distinctiveness can be overcome by proof of acquired distinctiveness. In the case of shape marks, an application can be refused if the shape results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods.
Relative grounds must be raised in opposition proceedings. A prior rights objection can be defeated on the basis of honest concurrent use.
The proprietor’s right to prevent third party usage extends to similar marks and similar goods or services.There is dilution-style protection for registered trade marks with a reputation, and there are criminal offences relating to trade mark infringement.
The old system of extending UK registrations fell away in 2017 and was replaced by a direct registration system - old registrations remain in force until the renewal date, when they can be renewed in accordance with the new law. Priority claims are not possible. There is provision for multi-class filing and the 11th edition of the Nice Classification applies. Applications are advertised and there is an opposition term of 60 days.
The registration term is 10 years, as is the renewal term. Annual maintenance fees are payable. There is no use requirement but registrations can be revoked on other grounds, for example on the basis that the mark has become generic.