This Exclusive Trademark License Agreement is essential for businesses operating in Malaysia who wish to grant exclusive rights to their trademarks to another party. The document is particularly relevant when a trademark owner wants to maintain control over their intellectual property while allowing another entity to be the sole user of the mark in specified territories or for particular goods/services. Governed by Malaysian law, particularly the Trademarks Act 2019, this agreement includes comprehensive provisions for quality control, royalty payments, enforcement rights, and termination conditions. It's commonly used in franchise arrangements, international brand expansions, or when companies want to monetize their intellectual property through exclusive licensing while ensuring their trademark rights remain protected.
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1. Parties: Identification and details of the Licensor and Licensee, including their registered addresses and company registration numbers
2. Background: Context of the agreement, including details of trademark ownership and registration, and the parties' intentions
3. Definitions: Definitions of key terms used throughout the agreement
4. Grant of License: Specific terms of the exclusive license, including scope, territory, and field of use
5. Term and Termination: Duration of the license and circumstances under which it may be terminated
6. License Fees and Royalties: Payment terms, including initial fees, ongoing royalties, and payment methods
7. Quality Control: Standards for use of the trademark and Licensor's right to monitor and approve usage
8. Protection and Enforcement: Rights and obligations regarding trademark protection and enforcement against infringement
9. Representations and Warranties: Parties' assertions regarding trademark ownership, right to license, and other material facts
10. Confidentiality: Obligations regarding confidential information shared between parties
11. Governing Law and Jurisdiction: Specification of Malaysian law as governing law and jurisdiction for dispute resolution
1. Sub-licensing Rights: Include when the Licensee is permitted to grant sub-licenses to third parties
2. Minimum Performance Requirements: Include when setting specific sales targets or market penetration requirements
3. Marketing and Promotion: Include when specifying requirements for marketing and promoting the trademarked products
4. Export Restrictions: Include when the license is territorially restricted with specific export limitations
5. Insurance: Include when requiring specific insurance coverage for trademark usage
6. Change of Control: Include when restrictions on change in ownership or control of Licensee are needed
7. Alternative Dispute Resolution: Include when parties prefer mediation or arbitration before litigation
1. Schedule 1 - Licensed Trademarks: Detailed list of licensed trademarks, including registration numbers and classes
2. Schedule 2 - Licensed Territory: Detailed description of geographic territories where license is valid
3. Schedule 3 - Quality Standards: Specific quality control requirements and standards for trademark usage
4. Schedule 4 - Royalty Calculations: Detailed formula and examples for calculating royalties
5. Schedule 5 - Approved Products: List of products/services approved for trademark usage
6. Appendix A - Brand Guidelines: Technical specifications for trademark usage, including size, color, and placement requirements
7. Appendix B - Approval Procedures: Detailed procedures for obtaining Licensor approval for trademark usage
Authors
Relevant legal definitions
Clauses
Relevant Industries
Consumer Goods
Retail
Manufacturing
Technology
Fashion and Apparel
Food and Beverage
Pharmaceuticals
Cosmetics
Automotive
Electronics
Entertainment
Hospitality
Sports and Recreation
Relevant Teams
Legal
Intellectual Property
Commercial
Business Development
Brand Management
Compliance
Corporate Affairs
Risk Management
Relevant Roles
Chief Executive Officer
Legal Counsel
Intellectual Property Manager
Brand Manager
Commercial Director
Licensing Manager
Business Development Manager
Contract Manager
Chief Legal Officer
Chief Commercial Officer
Trademark Attorney
Corporate Secretary
Risk Manager
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