HSM

Cayman Islands Trade Mark Guide

Registered Agent
Under section 6 of The Trade Marks Law, 2016 only a registered agent may transact business with the Cayman Islands Registry of Trade Marks. A registered agent must be legally and ordinarily resident in the Cayman Islands.

The owner of a trade mark must appoint a registered agent upon the next dealing with the Registry or upon payment of the next annual fee.

Registration
A trade mark can be registered in the Cayman Islands pursuant to The Trade Marks Law, 2016 which provides for national trade mark applications. As of 1 August 2017 applications for registration can no longer be based on existing United Kingdom (UK) or European Union (EU) registrations. Trade Marks registered under the previous law (The Patents and Trade Marks Law, 2011) will be treated in the same manner as marks registered under the new law.

The following information and documentation is required:

  1. a request for the registration of the trade mark
  2. name, address and e-mail address of the applicant
  3. type of applicant (e.g. person, registered company, LLC, partnership, trust or “other”)
  4. name, address and e-mail address of the appointed registered agent
  5. type of trade mark (e.g. standard trade mark, certification mark or collective mark)
  6. one representation of the trade mark
  7. statement of goods and/or services
  8. classification of goods and/or services
  9. English translation of any words or non-Roman characters

It usually takes six months or less for the Registry to process an application for registration. Paris Convention priority cannot be claimed. Once the registration is complete the Registry will issue a Certificate of Registration.

Classes
The International Classification system is used. Multi-class applications are allowed.

Searches
In order to conduct a search the only documentation required is the name of the trade mark, the name of the proprietor or the number of the trade mark. The result can usually be provided within a week.

Annual Fees
Once a trade mark has been registered in the Cayman Islands there is an annual fee payable to the Cayman Islands Government on 1 January each year. The first annual fee accrues from the filing date of the mark, but payment is not due until 1 January following the date of registration.

Unless otherwise instructed we will send you a reminder in October of the preceding year in relation to the annual fee due the following January. If instructed to pay the annual fee we will then issue an invoice and upon payment we will pay the annual fee to the Registry and forward the official receipt.

Failure to pay an annual fee will result in the rights protected by the registration being placed in abeyance. This will effectively prevent any enforcement action being taken. A penalty will be incurred for the late payment of annual fees where payment has not been received by the Registry before 1 April each year.

Renewal
A trade mark registration is valid for 10 years after which it can be renewed for like periods. Two months before the renewal date we will send you an Expiry Notice asking whether you wish us to renew the registration or allow the mark to lapse.

The application for renewal should be filed prior to the expiration date of the registration. A grace period of six months, however, is allowed from the expiration date for the filing of the application for renewal upon payment of a late fee.

It usually takes two months or less for the Registry to process an application for renewal. Once the renewal is complete the Registry will issue a Renewal Certificate.

If you do not wish to renew the mark please inform us so that we can advise the Registry accordingly.

Surrender or Lapse
Please inform us as soon as possible if you wish to surrender your trade mark or allow it to lapse so that we can update our records and advise the Registry accordingly. This will avoid us sending out unnecessary Reminder Notices regarding annual fees etc.

Restoration
It is possible to make an application to the Registry to restore a trade mark that has been allowed to lapse upon payment of a restoration fee and any unpaid annual fees and penalties.

Assignment
Please inform us as soon as possible if the trade mark has been assigned so that we can file an application to record the assignment in the Cayman Islands.

To record the assignment of a trade mark registration the only documentation required is the Deed of Assignment or the Assignment agreement. Alternatively both parties’ registered agents can sign Form TM10 authorising the transfer of ownership.

It usually takes two months or less for the Registry to process an application to record an assignment. Once the recording is complete the Registry will issue a Certificate of Assignment.

Change of Particulars
Please inform us as soon as possible if there is any change to the registration so that we can file an application to record the change in the Cayman Islands.

To record a change of name and/or address for a trade mark registration no documentation is required. We only require details of the change(s).

It usually takes two months or less for the Registry to process an application to record a Change of Particulars. Once the recording is complete the Registry will issue a Certificate of Recording.

Change of Agent
The proprietor of a trade mark has 180 days from the receipt of notice of resignation from the registered agent of a mark in which to appoint a new registered agent. After this time the registration will be held in abeyance until a new registered agent has been appointed.

Security Interests
It is possible to register the grant of a Security Interest, fixed or floating, over a registered trade mark or any right in or under it.

To record a Security Interest against a trade mark registration the only documentation required is a copy of the document establishing the Security Interest and Form TM12. Alternatively the grantor’s registered agent can complete and sign Form TM12 to record the Security Interest.

It usually takes two months or less for the Registry to process an application to record a Security Interest. Once the recording is complete the Registry will issue a Certificate of Recording.

Licences
The proprietor of a trade mark can grant a general or limited exclusive or non-exclusive licence to use the trade mark. A limited licence may apply in relation to some but not all of the goods and/or services for which the trade mark is registered.

To record a licence against a trade mark registration the only documentation required is a copy of the document evidencing the licence and Form TM11. Alternatively the licensor’s registered agent can complete and sign Form TM11 to record the licence.

It usually takes two months or less for the Registry to process an application to record a licence. Once the recording is complete the Registry will issue a Certificate of Recording.

Contact

E-mail: ip@hsmoffice.com

Tel: +1 (345) 949-4766

 

Mail:

PO Box 31726, Grand Cayman KY1-1207

Cayman Islands

 

Courier:

HSM, 68 Fort Street, George Town

Grand Cayman, Cayman Islands

MEMBERSHIPS

The firm is a member of INTA, CITMA, AIPLA and IPCA