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Trademark Infringement Settlement Agreement for Malaysia

Trademark Infringement Settlement Agreement Template for Malaysia

This document is a comprehensive settlement agreement used in Malaysia to resolve trademark infringement disputes between parties without proceeding to full litigation. It is governed by Malaysian law, particularly the Trademarks Act 2019 and the Contracts Act 1950, and provides a legally binding framework for cessation of infringing activities, compensation terms, and future compliance requirements. The agreement includes detailed provisions for remedial actions, mutual releases, and confidentiality obligations, while ensuring compliance with Malaysian intellectual property regulations and enforcement mechanisms.

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What is a Trademark Infringement Settlement Agreement?

The Trademark Infringement Settlement Agreement is a crucial legal document used in Malaysia when parties wish to resolve trademark infringement disputes through settlement rather than court litigation. This document becomes relevant when a trademark owner has identified unauthorized use of their mark and the alleged infringer is willing to negotiate a resolution. It is structured under Malaysian law, particularly the Trademarks Act 2019, and includes essential provisions such as settlement terms, cessation of infringing activities, compensation, and future compliance requirements. The agreement serves as a cost-effective alternative to litigation while providing legally binding protection for both parties. It typically includes detailed schedules of the relevant trademarks, specific undertakings by the alleged infringer, and may also address future business relationships between the parties.

What sections should be included in a Trademark Infringement Settlement Agreement?

1. Parties: Identification of the trademark owner and the alleged infringer, including full legal names, registration numbers, and addresses

2. Background: Recitals explaining the trademark ownership, nature of the alleged infringement, and the parties' desire to settle

3. Definitions: Definitions of key terms used throughout the agreement, including 'Trademark(s)', 'Infringing Material', 'Effective Date', and 'Settlement Sum'

4. Settlement Terms: Core settlement provisions including payment amounts, payment schedule, and admission or non-admission of liability

5. Cessation of Infringing Activities: Specific undertakings to cease and desist from all infringing activities, including deadlines for compliance

6. Remedial Actions: Required actions such as destruction of infringing materials, modification of branded items, or withdrawal of trademark applications

7. Releases and Waivers: Mutual releases from claims related to the trademark infringement

8. Confidentiality: Obligations to keep the settlement terms and negotiations confidential

9. Representations and Warranties: Each party's assertions about their authority to enter into the agreement and other relevant matters

10. General Provisions: Standard clauses including governing law, jurisdiction, entire agreement, and amendment procedures

What sections are optional to include in a Trademark Infringement Settlement Agreement?

1. Future Business Relationship: Terms governing future business interactions, used when parties plan to have an ongoing commercial relationship

2. License Terms: Include when the settlement involves granting a limited license to use the trademark

3. International Enforcement: Required when the settlement needs to be enforced in multiple jurisdictions

4. Public Statements: Guidelines for public communications about the settlement, needed when public disclosure is anticipated

5. Monitoring and Compliance: Procedures for monitoring compliance with settlement terms, useful in complex cases

6. Alternative Dispute Resolution: Mediation or arbitration procedures for future disputes, recommended for international cases

What schedules should be included in a Trademark Infringement Settlement Agreement?

1. Schedule A - Trademark Details: Complete details of the relevant trademarks including registration numbers, classes, and jurisdictions

2. Schedule B - Infringing Materials: Detailed inventory of all materials deemed to be infringing

3. Schedule C - Payment Schedule: Detailed payment terms, installment dates, and payment methods

4. Schedule D - Compliance Timeline: Timeline for implementing all required remedial actions and cessation of infringing activities

5. Schedule E - Agreed Public Statement: If applicable, the approved format and content of any public statements about the settlement

6. Appendix 1 - Evidence of Infringement: Documentation of the alleged infringement (photos, screenshots, samples)

7. Appendix 2 - Trademark Registrations: Copies of relevant trademark registration certificates

Authors

Alex Denne

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

Jurisdiction

Malaysia

Publisher

Ƶ

Cost

Free to use
Relevant legal definitions

























Clauses





























Relevant Industries

Retail

Consumer Goods

Fashion and Luxury

Technology

Food and Beverage

Pharmaceuticals

Manufacturing

E-commerce

Media and Entertainment

Professional Services

Automotive

Telecommunications

Relevant Teams

Legal

Intellectual Property

Brand Protection

Compliance

Corporate Affairs

Risk Management

Business Development

Marketing

Executive Management

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Protection Manager

Commercial Director

Chief Legal Officer

Trademark Attorney

Compliance Officer

Business Development Manager

Chief Executive Officer

Risk Manager

Corporate Secretary

Intellectual Property Coordinator

Brand Manager

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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