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License To Use Trademark for Malaysia

License To Use Trademark Template for Malaysia

A comprehensive legal agreement governed by Malaysian law that grants permission to use one or more registered trademarks owned by the licensor. This document establishes the terms and conditions under which the licensee may use the trademark(s), including territorial limitations, quality control requirements, and financial obligations. It incorporates provisions from the Malaysian Trademarks Act 2019 and related legislation, ensuring compliance with local intellectual property laws while protecting both parties' interests through clearly defined rights, obligations, and remedies.

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License To Use Trademark

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What is a License To Use Trademark?

The License To Use Trademark agreement is a crucial document for businesses seeking to expand their brand presence or monetize their intellectual property rights in Malaysia. This agreement is typically used when a trademark owner (licensor) wishes to grant another party (licensee) the right to use their registered trademark(s) while maintaining control over their intellectual property. The document is structured according to Malaysian legal requirements, particularly the Trademarks Act 2019, and includes essential provisions for quality control, payment terms, and usage restrictions. It's commonly used in franchise arrangements, manufacturing partnerships, or brand expansion strategies, providing a legal framework that protects the trademark owner's interests while enabling commercial exploitation of the brand.

What sections should be included in a License To Use Trademark?

1. Parties: Identification of the Licensor and Licensee with full legal names and registered addresses

2. Background: Context of the agreement, including details of trademark ownership and business relationship

3. Definitions: Definitions of key terms used throughout the agreement

4. Grant of License: Scope and nature of the license (exclusive/non-exclusive), permitted use, and territorial limits

5. Term and Renewal: Duration of the license and conditions for renewal

6. License Fees and Royalties: Payment terms, calculation of royalties, and payment schedules

7. Quality Control: Standards for trademark usage and quality control requirements

8. Protection of the Trademark: Obligations regarding trademark protection and infringement

9. Representations and Warranties: Basic warranties regarding trademark ownership and right to license

10. Termination: Circumstances and procedures for termination

11. Post-Termination Obligations: Obligations of parties after agreement ends

12. Governing Law and Jurisdiction: Application of Malaysian law and jurisdiction for disputes

What sections are optional to include in a License To Use Trademark?

1. Sub-licensing Rights: Include when licensee is permitted to grant sub-licenses

2. Minimum Performance Requirements: Include when licensor requires minimum sales or usage levels

3. Marketing and Promotion: Include when specific marketing obligations are required

4. Export Restrictions: Include for international licensing with territorial restrictions

5. Audit Rights: Include when detailed financial oversight is required

6. Insurance Requirements: Include when specific insurance coverage is mandatory

7. Non-Competition: Include when restricting licensee's competing activities

8. Dispute Resolution: Include when specific alternative dispute resolution procedures are preferred

What schedules should be included in a License To Use Trademark?

1. Schedule 1 - Licensed Trademarks: Detailed list of licensed trademarks including registration numbers and classes

2. Schedule 2 - Licensed Territory: Detailed description of geographical areas where license is valid

3. Schedule 3 - Quality Standards: Detailed quality control specifications and requirements

4. Schedule 4 - Royalty Calculations: Detailed methodology for calculating royalties

5. Schedule 5 - Approved Usage Guidelines: Specific guidelines for trademark usage and brand standards

6. Appendix A - Trademark Specimens: Visual representations of licensed trademarks

7. Appendix B - Approval Procedures: Detailed procedures for obtaining approval for trademark usage

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

Malaysia

Publisher

Genie AI

Document Type

Use Agreement

Cost

Free to use
Relevant legal definitions























Clauses






























Relevant Industries

Retail

Consumer Goods

Fashion and Apparel

Food and Beverage

Technology

Manufacturing

Pharmaceuticals

Automotive

Entertainment

Sports and Recreation

Hospitality

Education

Professional Services

Media and Publishing

Relevant Teams

Legal

Intellectual Property

Commercial

Brand Management

Marketing

Business Development

Compliance

Finance

Operations

Corporate Affairs

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Commercial Director

Licensing Manager

Business Development Manager

Compliance Officer

Contract Manager

Chief Legal Officer

Chief Commercial Officer

Trademark Attorney

General Counsel

Marketing Director

Operations Manager

Finance Director

Industries





Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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