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 2012. Please 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 future.
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