Showing posts with label annuities. Show all posts
Showing posts with label annuities. Show all posts

10 June 2015

Trademark Annuities...

In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.

However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.



Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).

The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.

It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.

The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.

Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.

Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.

Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.

Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.

So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.

3 February 2012

Cayman Islands - trade mark developments commentary

There have been recent developments in the regulations surrounding trade marks in the Cayman Islands.

The developments will not change much for some trade mark owners. It will have its most notable impact on trade mark owners who use an agent or specialist annuity payment provider based outside the Cayman Islands who have previously been dealing with the General Registry directly. They will now need to use a local agent which will raise costs. Caymanian agents are not particularly cheap and this is not surprising as the Cayman Islands enjoy the highest standard of living in the Caribbean; the islands are a key international financial centre and luxury tourist destination.

In my experience, having an agent on the ground in the Cayman Islands is not a bad thing. The General Registry has had issues with resources and a local agent is able to go to the Registry and help out physically; something not available to non-resident agents.

The new legislation also requires a stricter requirement on the payment of annuities although it remains to see if the Registrar will be equipped enough to proactively cancel trade mark registrations for failure to pay annuities ex officio.

The law appears to maintain the current requirement to have a UK, Community or International Registration designating the UK to form the basis of a local Cayman Islands application. This will be a disappointment to some, particularly for trade mark owners with little need for UK/European protection which they will need to get in advance. This is an obvious disadvantage to local Cayman Islands applicants.

It also maintains the Cayman Islands as one of the most expensive trade mark jurisdictions in the world, especially considering it is a deposit registry. Even taking away the need to obtain registration in the UK or EU (this could be needed by a business anyway), it is the annual fees that ramp up the costs in the Cayman Islands. It is not clear if the fees will change under the new legislation, but presuming they remain the same, a three class registration will cost $4390.20 in official fees to obtain and maintain in force for its first 10-year term - and this is without the agents fees on top. It is hoped it will still be possible to bulk pay the annual fees up to the next renewal date as this can go some way to reducing the agents fees as well as reducing the administrative burden.

With an estimated population of only 55,000, the Cayman Islands do not represent the best value trade mark jurisdiction out there. When you require protection here, be sure to budget accordingly.