In the previous issue of our series of legal insights on owning intellectual property (IP) through a Cayman Islands corporate structure, we presented a brief overview of the new trademark registration process introduced by the new Cayman Islands Trade Marks Law, 2016 and the Trade Marks Regulations, 2017 (see The New Cayman Islands Trademarks Regime). The new regime has now become effective as at 1st August 2017 (the "Effective Date"), and additional guidance has been released with respect to transitional provisions:
1. Existing Trade Marks: All existing trade marks will be considered as transferred to the new Register of Trade Marks until their scheduled renewal date, when they should be renewed in accordance with the New Trade Marks Regime. However, the Registrar is required to take the necessary steps to ensure that these existing trade marks are not inconsistent with the criteria for accepting registration of trade marks under the new law, i.e. that there are no absolute or relative grounds for refusal of registration. If there are grounds for refusal of registration, the registration of an existing trade mark may be declared invalid under Section 45 of the Trade Marks Law, 2016.
2. Expired or In-Abeyance Trade Marks: The trade marks which have expired prior to the Effective Date, and any trade marks currently held in abeyance for non-payment of annual fees will not be automatically transferred to the Register of Trade Marks, and owners of such trade marks are required to reapply to have their trade marks registered under the New Trade Marks Regime.
3. Transitional Provisions: All matters pending before the Court or the Registrar as at the Effective Date, for a decision on the basis of the previous trade mark registration regime will remain governed by the old law, as well as any infringement of a registered trade mark committed before the Effective Date.