The Cayman Islands is getting new design rights legislation. The Design Rights Bill 2019 (the Bill), which was published on 19 February 2019, will replace the current legislation, the Design Rights Registration Law 2016.
The Bill involves a modernisation of design right protection in the Cayman Islands and is therefore a welcome development. It is unclear at this stage, when the Bill will come into effect.
The current legislation provides for the extension of design rights held in the United Kingdom. When the Bill comes into force it will no longer be necessary to first register the design right in the United Kingdom.
In the Bill, a ‘design’ is defined as the shape or configuration (whether internal or external) of the whole or part of an article. The provisions of the Bill apply to a kit, namely a complete or substantially complete set of components intended to be assembled into an article, in the same way that it applies to the assembled article.
When it comes to registrability, there are exclusions, namely:
- a method or principle of construction
- features of shape or configuration of an article that either enable the article to be connected to, or placed in, around or against another article so that either article may perform its function, or are dependent on the appearance of another article of which the article is intended by the designer to form an integral part
- surface decoration
The novelty requirement is that the design must be original. A design will be not original if it is commonplace in the design field in question at the time of its creation.
The owner of a design right has the exclusive right to reproduce the design for commercial purposes by making articles to that design, or by making a design document recording the design for the purpose of enabling such articles to be made. Reproduction of a design by making articles to the design is defined as copying the design so as to produce articles exactly or substantially to that design.
There are exceptions to the exclusive right of the owner and a design right is not infringed by the following:
- an act done privately and for non-commercial purposes
- an act done for experimental purposes
- an act of reproduction for teaching purposes or for the purpose of making citations, provided that the act of reproduction is compatible with practice and does not unduly prejudice the normal exploitation of the design, and mention is made of the source
There is a provision that deals with the possible overlap of copyright and design right in a design.
On the procedural side, the filing language is English and online filing is not an option (although this will apparently be looked at). Examination is limited to formalities. The registration term is 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first. Annuities are payable annually in January of each year, after the year of the initial registration – there is a grace period with a surcharge fee. During the last five years of a design right any person is entitled (as of right) to a licence to do anything that would otherwise infringe the design right.
There are transitional provisions. As of the commencement date, existing design rights that were recorded under the repealed law will be transferred to the new Register, and they will be deemed to be registered until the renewal date under the repealed law, except where steps are taken to cancel the design right. As for any matter that was pending before the Court or the Registrar at the commencement date, this will continue to be dealt with under the repealed provisions, unless otherwise provided for in the Bill.
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