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Trademark Registration in
Latin America:

Contact us:

Email: info@proxario.net, proxario@gmail.com

Head Office : Av. República de Colombia, Ciudad Real 2, M-D E-1 Office 101,
Santo Domingo 10605, Dominican Republic.

Tel: +212 (470) 8762 (English)

Cayman Islands

General trademark information of Cayman Islands

• Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

Registration is the principal means by which rights in a trademark are established. However, these rights may be limited by the law of passing off, which may protect unregistered trademarks or other signs used in the course of trade where goodwill has been established and there is a misrepresentation leading to damage.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

The Tobacco Act, 2008 and the Tobacco Regulations, 2017 do require the display of health warnings on packaging of a certain size (at least 30 percent of the display area and no less than that required by the country of origin), but do not go so far as to call for plain, brandless packaging. There are also certain restrictions on the sale and display of the brand element, e.g.: "Where a retailer displays the brand element, such display shall be subject to the following restrictions — (a) there shall be only one area in any business premises where such display may be permitted; (b) only one packet size of twenty cigarettes of each brand may be displayed in the display area; (c) the size of the display area shall not exceed one square meter; (d) there shall be no display of cartons; and (e) where the venue is an enclosed facility, the product displays shall not be visible from outside unless those displays are in respect of non-tobacco brand elements."

B. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

six months to one year.

C. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection;
  • it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
  • it allows the registrant access to bring actions in particular courts;
  • it helps to deter others from unlawfully using the trademark;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
  • it encourages licensees and provides the opportunity to generate royalties through licensing.
  •  The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in the Cayman Islands.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds;
  • trade dress/get-up.

• The special requirements for the registration of three-dimensional shapes are:

 It is possible to show up to six different views of the mark on the application form. A description of the mark may also be provided.

• The special requirements for the registration of colors are:

 Colors can be specified as a limitation on the application form using color names and/or PANTONE codes. Alternatively, it is possible to apply to register a mark shown in color without any specific limitations as to the color name and/or PANTONE colors on the application form. In such cases, the mark will be protected as represented on the form.

• There are no special requirements for the registration of sounds.

• There are no special requirements for the registration of trade dress.

• Marks registered in black and white or grayscale are construed narrowly to protect the mark as registered and not in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin);
  •  
    • insignia of royalty;
    • marks which consist exclusively of the word “Cayman”, “Cayman Islands”, “Grand Cayman”, “Cayman Brac”, “Brac”, or “Little Cayman”;
    • deceptive marks;
    • marks consisting exclusively of the shape which results from the nature of the goods, the shape which is necessary to obtain a technical result, or the shape which gives substantial value to the goods;
    • marks prohibited in the Cayman Islands by any law;
    • marks applied for in bad faith.

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • trademark laws, in the form of collective marks or certification marks.

• The following products or categories are subject to GI protection in this jurisdiction:

A collective or certification mark which consists of signs or indications which serve in trade to designate the geographical origin of the goods or services may be registered. No specific products or categories are specified.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law.

• The national office is accessible online at the following URL:

 www.ciipo.ky

• The official register cannot be searched online.

C. Use

• An applicant benefits from pre-filing use of a trademark.

• The benefits of pre-filing use are:
  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

Use prior to filing an application can be advantageous in that it may allow an applicant to do a number of things, including attempting to invalidate or oppose earlier third-party trademark registrations or applications if the use predates their filing date. Also, use of a mark (whether registered or not) may, if substantial, give rise to an independent unregistered right enabling the user to sue under the laws of passing off. In addition, use may establish a reputation, which affords broader protection for registered trademarks (e.g., against unfair advantage, dilution, and detriment to reputation).

• When a mark is not registered, use of that mark may provide the following benefits:
  • Courts may protect unregistered trademarks in some exceptional cases.

Use of an unregistered mark may give grounds for protection under the common law of passing off.

• Famous and/or well-known marks are protected via the following mechanism(s):
  •  There is no specific protection for famous and/or well-known marks under the legislation, but there is protection for marks that have a "reputation" and where use of a later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

D. International Treaties

• This jurisdiction is not a member of any international treaties relating to intellectual property,

with the exception of the Berne Convention.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

Even if the applicant is domiciled in the Cayman Islands, a registered agent must be appointed to transact business with the Registry.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

However, in the case of an application for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Registrar may refuse to accept the application unless the Registrar is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make, if and when it is registered.

• The following information is required to COMPLETE an application:
  • name and address of applicant

must specify whether person, registered company/LLC, partnership, or other);

• state or country of incorporation;
• representation of trademark (a depiction of the mark an applicant seeks to register);
• list of goods/services;
• official filing fee;
•  
  • a translation and/or transliteration of any non-English word(s) and/or non-Roman character(s) (If the trademark is a coined word and does not have any meaning, this should also be stated on the application form.);
  • optional: trademark description, limitation (e.g., of color), disclaimer.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee.

• The list of goods and services in this jurisdiction may specify:
  • the relevant class heading

(subject to the terms of Practice Note No. 2 of 2017, which excludes certain class headings for lack of clarity and precision);

• the relevant entire (long) alphabetical class listing

(with the exception that terms with asterisks in the alphabetical list of the Nice Classification database should be made more precise).

•  According to Practice Note No. 2 of 2017: "Specifications for trade mark applications received will be examined using the WIPO NICE Classification database. If no reference is found in the WIPO database, the EUIPO TMclass database will be consulted. Where an indication is not accepted by the WIPO, the indication will be accepted without objection, if it is listed in the TMclass database as accepted by the Harmonised offices. Where the indication does not appear to be accepted by the WIPO nor the Harmonised offices, the indication may be subject to objections by the Registrar."

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:
  • goods and/or services.

• The following number of copies of the trademark must be submitted:

one.

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  •  none.

• In this jurisdiction, the following types of registration are available:
  • national

(Prior to August 1, 2017, it was possible to re-register UK or EU Trade Marks in the Cayman Islands. As of August 1, 2017, such registrations moved on to the national Register and are no longer dependent on the underlying UK and/or EU Trade Mark registration.).

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications cannot be filed online.

• The official file cannot be accessed online.

• Applications are officially searched as to prior trademarks.

The Registrar shall carry out a search of earlier trademarks to such extent as the Registrar considers necessary, for the purpose of ascertaining whether there are on record, in respect of the same goods or services or description of goods or services, any marks identical with the mark applied for, or so nearly resembling it so as to render the mark applied for likely to deceive or cause confusion. Earlier trademarks are not cited as a bar to registration in the form of an office action. However, where it appears to the Registrar that there may be relative grounds for refusal of the registration under Section 25 of the Law, the Registrar shall notify this fact to (a) the applicant's agent; and (b) the agent of the proprietor of the earlier right.

B. Priority

• Priority cannot be claimed in this jurisdiction.

C. Classification

• This jurisdiction uses the Nice Classification System.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes:

 one.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication and online

(Gazettes Intellectual Property).

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • application number;
  • application date;
  • goods/services;
  • representation of trademark.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services).
  •  A search of prior marks is carried out and the results of such a search and the existence of prior third-party rights are communicated to the applicant's agent and to the third party's agent. However, they do not form the basis of an objection to registration by the IP Office.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • examination, publication, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application

(When a trademark is registered, the filing date is deemed to be the date of registration. The rights conferred by a registered trademark have effect from the filing date provided that: (i) infringement proceedings may not be launched before the date of registration; and (ii) an offense of unauthorized use of a trademark in relation to goods is not committed before the publication of registration.).

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • registered design rights;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  •  ◦ unauthorized use of specially protected emblems or national insignia;
    ◦ passing off (also in relation to company names and personal names);
    ◦ the mark was filed in bad faith.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

date of publication in the Gazette.

• The opposition period ends on the following date:

60 days from the date of publication in the Gazette.

• Anyone may initiate an opposition.

• Oppositions cannot be filed online.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • signature by assignor;
  • consideration (either actual or nominal).
  •  A trademark assignment is not effective unless it is in writing.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • signature by assignor;
  • consideration (either actual or nominal).
  •  A trademark assignment is not effective unless it is in writing.

• Legal verification of a written assignment document of an application is not required.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of an application need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment

or against a person acquiring a conflicting interest in the trademark in ignorance of the assignment.

• An assignment of a registration need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment

or against a person acquiring a conflicting interest in the trademark in ignorance of the assignment.

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application must be for the entire territory covered by the application.

• A license of a registration must be for the entire territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner).
• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded).
• A license of a registration can be sole (only one licensee and the owner).
• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed.

• Use by a related company of a registered mark need not be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • term of the license;
  • territory of the license;
  • signature by licensor;
  • express permission to sublicense, if appropriate.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • term of the license;
  • simple signature by licensor (see below for execution requirements).

• Legal verification of a written agreement to license an application is not required.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is not required.

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • deed of assignment, without further formalities;
  • certificate of proof of change of name, without further formalities;
  • certificate of merger, without further formalities.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

by completion and submission of Form TM9B, without the need to submit any supporting documentation.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 by completion and submission of Form TM12. The grantor (register owner) or his/her recorded representative must sign the form. If this cannot be done, a copy of the security interest agreement must be submitted with the form.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • never.

• The territorial limit of registration is:

the Cayman Islands.

C. Term

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the application date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it puts others on notice that the trademark is registered and may deter them from unlawful use.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  •  Use of such symbols as TM and ® is not compulsory, and as such, there is no specific form that must be used. However, TM and ® are commonly used in the Cayman Islands.

• The use of ® is not legally recognized, but it is recognized in practice.

• The legal consequences of false or misleading marking are:

It is a criminal offense to falsely represent that a mark is a registered trademark. This includes use of the word "registered" or of any other word or symbol importing a reference (express or implied) to registration.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is not available.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • registered design rights;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark includes a badge or emblem of particular public interest;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

• Anyone may bring a cancellation action.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:
  • none.

• The first renewal date of a registration is:
  • 10 years from the application filing date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

 six months.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

Once the grace period for late renewal has expired, it is possible to late-renew and "restore" the registration to the Register at any time on the payment of all outstanding renewal fees and an additional "restoration" fee.

• The penalty for late renewal is:
  • a fine.

Once the grace period for late renewal has expired, it is possible to late-renew and "restore" the registration to the Register at any time on the payment of all outstanding renewal fees and an additional "restoration" fee.

• Renewal cannot be effected online.

• At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

• There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

While the Trade Marks Act, 2016 provides for customs recordals, the accompanying regulations have not yet been brought into effect.

IX. Domain Names

A. Domain Names

• Any domain name may be protected as a trademark.

• The following approved registrars can register a domain name in this jurisdiction:

Uniregistry.

• Availability of domain names in this jurisdiction can be searched through the following website(s):

Information on WHOIS Database - OfReg, Cayman Islands

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.ky

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned

with the consent of the Registrar.

• Domain name registrations can be licensed

with the consent of the Registrar.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through the following locally approved domain-name dispute resolution service provider(s) in the jurisdiction:

 OfReg (formerly ICTA) - Domain Name Dispute Resolution Policy - OfReg, Cayman Islands

• If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 on payment of the restoration fee.

• The application to register a domain name as a trademark will not be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

• In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:
  • There is no case law on the point in the Cayman Islands, but it is likely the relevant UK case law would be applied.
  • Claims of trademark infringement in relation to a domain name will be considered using the same tests as for any other trademark dispute. There are some unique considerations relating to a passing-off claim based on a domain name.
  • The claim should still be analyzed on the traditional bases of goodwill, misrepresentation, and damage, but consideration will also be given to whether the domain name constitutes an "instrument of fraud" in the hands of anyone other than the "true" owner.

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