Tag Archives: Cayman Trademark
Many local businesses ask “Why should I file a trade mark in the Cayman Islands?” especially where there has been longstanding use of a mark in the Islands. Whilst unregistered rights acquired through use may be protectable under the common law of passing off, there are several reasons why trade mark protection is always a good idea.
- Passing off requires evidence of use and evidence preparation can be expensive
Relying on unregistered rights is likely to be more expensive if litigation becomes necessary in order to protect your brand. This is because the owner of the unregistered rights (e.g. an unregistered trade name, logo or get-up) must demonstrate that they own the requisite goodwill through use and demonstrate this through evidence. Evidence preparation can be time consuming and therefore expensive.
On the other hand, the proprietor of a registered trade mark can simply rely on its trade mark registration certificate to prove ownership and the trade mark registration will be presumed valid unless and until the infringer can successfully demonstrate otherwise through arguments.
- Exclusive rights in the trade mark
Proprietors of registered Cayman Islands trade marks have the exclusive right to use the mark and registered rights are infringed by third party use of the trade mark in the Islands without the proprietor’s consent. There are some exceptions, but this is the general principle.
- Trade mark registrations are valid from the date of filing
For those with a new brand idea, but not yet ready to start using the brand, filing a trade mark application prior to first use not only puts a flag in the sand, but it can also be a good way to alert third parties to your rights as trade mark applications are published in the Cayman Islands Gazette, Intellectual Property Edition.
Also, if any third party believes they own earlier rights to an identical/similar mark they may oppose your application based on earlier registered and/or unregistered rights. If such events occur this can be a good point to consider whether you wish to continue to pursue your chosen trade mark or rebrand. On the other hand, if no oppositions are filed, the trade mark will proceed to registration and the exclusive rights to use the trade mark will belong to you.
- Disincentive to potential infringers
It is possible to search for registered trade marks before the Cayman Islands Intellectual Property Office (CIIPO) for a small fee via a registered agent. It is always best to conduct a trade mark search before committing to a brand to ensure that a similar/identical trade mark is not already owned by a third party in respect of identical/similar goods and/or services. In-use searches are also recommended to check for any conflicting common law rights. It is common practice for businesses to conduct full trade mark clearance searches before filing a trade mark application and should their searches reveal a conflicting earlier registration this will act as a disincentive to move forward with the chosen brand.
- Defence to an infringement action
Once your trade mark is registered, it cannot be infringed by the use of another registered trade mark in relation to goods or services which the latter trade mark is registered. In order to successfully bring infringement proceedings, the owner of the later trade mark registration would first have to invalidate your earlier trade mark registration through invalidity proceedings brought before the CIIPO or the Court.
- Monetization of your brand
Your registered trade mark has an economic value. It can be sold or licensed to a third party in exchange for payment or royalties. It may also act as security before a bank or other financial institution in exchange for a loan. Third party buyers, licensees and banks are much more likely to invest in a registered trade mark than an unregistered trade mark. The basic details of their investment should also be recorded on the public register through the filing of the relevant recordal applications at CIIPO.
- Protection against trade mark trolls and cybersquatters
As you build up a reputation in your brand you may encounter trade mark trolls and cybersquatters seeking to register your brand as a trade mark or domain name with no intention to use it. Securing your registered trade mark early on will help avoid such characters. In the context of domain name dispute resolution proceedings, ownership of a registered trade mark is a stronger right to rely on than an unregistered trade mark.
The bottom line is that trade mark registration in the Cayman Islands is a good investment and that the long term protection gained is worth the initial investment.
HSM IP is listed as a top tier law firm and our own Sophie Peat is a leading trademark practitioner in the 2019 edition of WTR (World Trademark Review) 1000 – The World’s Leading Trademark Professionals.
This publication features the top trademark legal service providers in more than 70 jurisdictions. Rankings involve qualitative research to identify both firms and individuals, which have been included due to substantial positive feedback. Featured firms also take into account depth of expertise, market presence and the level of work on which they are typically instructed.
Our World Trademark Review 1000 listings can be found at:
- Sophie Peat: https://www.worldtrademarkreview.com/wtr1000/individuals/sophie-peat
- HSM IP: https://www.worldtrademarkreview.com/directories/wtr1000/firms/hsm-ip
This is our second year being featured and we are thrilled to be listed as a world-class, go-to resource for trademark services.
Key Contact:
Sophie Peat – Senior Associate
speat@hsmoffice.com
Tel: +1 345 815 7436
Our team at HSM IP reached out to Tiffany Ebanks (“TE”), Executive Director at the Cayman Islands Tourism Association (CITA) to get her feedback on trade marks and the registration process.
This month on August 1 2018, it will have been one year since The Trade Marks Law, 2016 was implemented in the Cayman Islands.
HSM IP, a specialist intellectually property law practice helped to orchestrate this revised law and is celebrating the anniversary by featuring some of the companies that have filed with them within that period.
HSM IP: What inspired you to register your trade mark?
TE: CITA had started looking into obtaining a trade mark protection overseas before it was activated locally. Once CITA learned of the new trade mark law and the ability to obtain registrations here in Grand Cayman, we took the opportunity to attend the training/information sessions that were provided to members of the general public.
Upon learning the steps and costs, although we have a few different logos for CITA’s various initiatives, we made the decision to focus available resources on our main logo, the Cayman Islands Tourism Association with our turtle mark, as well as our largest and most popular annual event, Taste of Cayman.
HSM IP: Why is registering your trade mark important to you?
TE: Our Association realises the benefits of having these basic items in place for our non-profit membership-based services as we are committed to serving and advocating for our members on an ongoing basis. We believe registering is important in order to protect our intellectual property and reputation.
Having our name and event trademarked ensures we are protected from others using our event branding or our namesake and also allows some scope for growth channels, should we review revenue streams and other possibilities to fund the Association’s operations.
HSM IP: How did you find the process of registering your trade mark?
TE: HSM IP made processing our trade marks quite effortless. There were a few decisions that needed to be made on our end, as there are numerous categories of trade marks. Their team ensured we were made aware of the different options and guided us through the process, as well as made suggestions.
HSM IP: What would you say to other businesses who are thinking about registering their trade mark?
TE: We would recommend that persons carefully evaluate their branding and determine whether this is something that would beneficial to their business or organisation. It does not hurt to seek ways to secure your intellectual property and enhance your prospects for future promotion and growth.
Our team at HSM IP reached out to Jack Copper (“JC”), Managing Director at NeuralStudio to get his feedback on trade marks and the registration process. NeuralStudio is a technology company at the forefront of automated machine learning.
This month on August 1 2018, it will have been one year since The Trade Marks Law, 2016 was implemented in the Cayman Islands.
HSM IP, a specialist intellectually property law practice helped to orchestrate this revised law and is celebrating the anniversary by featuring some of the companies that have filed a Cayman trade mark with them within that period.
HSM IP: What inspired you to register your trade mark?
JC: NeuralStudio SEZC acquired the neuralstudio.ai domain in 2017, in preparation for developing on online portal to provide the power of artificial intelligence (AI) to people working in business, academia, engineering, and scientific endeavors who likely lack expertise in mathematical model development and machine learning. The sophistication, yet ease-of-use that the neuralstudio.ai portal offers is a differentiator that we wanted to capture in a trade mark that we hope becomes synonymous with advanced artificial intelligence.
HSM IP: Why is registering your trade mark important to you?
JC: While NeuralStudio is an industry pioneer, there are many companies attempting to gain a market presence. From the outset, it was absolutely critical that the brand which represents NeuralStudio’s best-of-breed technology be fully protected, both in the Cayman Islands, where we are based, as well as in global markets where most of our customers reside.
HSM IP: How did you find the process of registering your trade mark?
JC: Our experience working with HSM IP was outstanding. In only a few iterations, they were able to distill somewhat complex descriptions of what would be offered through neuralstudio.ai and associated on-premises software products into language and terminology that matched the specific trade mark classes which were appropriate.
HSM IP: What would you say to other businesses who are thinking about registering their trade mark?
JC: I have a fairly simple and straightforward opinion: any business that is worth spending time and money on to create wealth is worth spending time and money on to identify a phrase or an image – a trade mark – that captures the essence of what the business does. It then follows that the result should be protected under available intellectual property regimes to preserve the value of the mark(s).
Jack Copper snaps a selfie in front of his domain.
On August 1 2018, it will have been one year since The Trade Marks Law, 2016 was implemented in the Cayman Islands.
This law has made it easier for businesses and brand owners to register their trade marks which may comprise of symbols, slogans, logos and other elements directly in the Cayman Islands. Previously all applications had to go through the United Kingdom or European Union before they could be extended to the Cayman Islands.
HSM IP, a specialist intellectually property law practice helped to orchestrate this revised law and is celebrating the anniversary by featuring its successes and some of the companies that have filed with them within that period.
From August 2017 to June 2018, HSM IP has remained the industry leader in Cayman and has acted as a registered agent in over 50% of all transactions according to Cayman’s Intellectual Property Gazette.
“We are passionate about protecting people’s innovations and are proud to have a wealth of intellectual property experience, particularly in the Caribbean,” shares HSM Managing Partner, Huw Moses OBE.
What People Are Saying
Local entrepreneur Jack Copper owns NeuralStudio, a technology company at the forefront of automated machine learning. He applied for a trade mark for his company in the Cayman Islands around the time this law was effected through HSM IP and knew the value it beheld since many companies were attempting to gain market presence.
“From the outset, it was absolutely critical that the brand which represents NeuralStudio’s best-of-breed technology be fully protected, both in the Cayman Islands, where we are based, as well as in global markets where most of our customers reside,” says Copper. “Having this protection helps to ensure that our clients are getting the correct, reputable service.”
The Cayman Islands Tourism Association has also shared how straightforward it was to register their logo with HSM IP as their registered agent.
“HSM IP made processing our trade marks quite effortless,” says Tiffany Ebanks, Executive Director. “There are numerous categories of trade marks and they made sure we were aware of the different options and guided us through the process, as well as made suggestions.”
Register Your Trade Mark
If you’re running a successful business and recognisable brand, chances are someone will be keen to copy your look or logo. Take that possibility away by protecting your brand identity. For more details on HSM IP’s services, visit our Intellectual Property page.
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