The Trademark License Agreement is essential for businesses seeking to legally utilize another entity's trademark rights in Malaysia. This document is particularly relevant when a trademark owner wishes to grant another party the right to use their registered marks while maintaining control over their reputation and goodwill. The agreement must comply with Malaysian trademark legislation, particularly the Trademarks Act 2019, and includes crucial elements such as quality control measures, territory restrictions, and royalty structures. It's commonly used in brand expansion strategies, franchise operations, and international business ventures where Malaysian market presence is desired. The document provides comprehensive protection for both licensor and licensee while ensuring compliance with local intellectual property and commercial laws.
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1. Parties: Identification of the Licensor and Licensee with full legal names and registered addresses
2. Background: Context of the agreement, including trademark ownership details and parties' intentions
3. Definitions: Definitions of key terms used throughout the agreement
4. Grant of License: Scope of the license granted, including territory, exclusivity/non-exclusivity, and sublicensing rights
5. Term and Renewal: Duration of the license and conditions for renewal
6. License Fees and Royalties: Financial terms, payment schedules, and calculation methods for royalties
7. Quality Control: Standards for trademark usage and licensor's right to inspect and approve use
8. Protection of the Trademark: Obligations regarding trademark protection, infringement actions, and cooperation
9. Representations and Warranties: Parties' assertions about trademark ownership, right to license, and other material facts
10. Termination: Grounds for termination, termination process, and post-termination obligations
11. Confidentiality: Protection of confidential information exchanged during the license relationship
12. Governing Law and Jurisdiction: Applicable law and courts/tribunal having jurisdiction
13. General Provisions: Standard boilerplate clauses including notices, entire agreement, and amendments
1. Minimum Performance Requirements: Used when licensor wants to ensure minimum sales or usage levels
2. Marketing and Promotion: Include when parties want to specify marketing obligations and approval processes
3. Supply of Materials: Relevant when licensor provides materials or specifications for trademark usage
4. Export Restrictions: Include when there are territorial restrictions or export controls
5. Right of First Refusal: Used when licensee is granted priority rights for additional territories or products
6. Insurance: Include when specific insurance coverage is required for trademark usage
7. Change of Control: Used when agreement needs to address ownership changes in licensee company
8. Compliance with Laws: Detailed compliance obligations when operating in regulated industries
1. Schedule 1 - Licensed Trademarks: Detailed list of licensed trademarks including registration numbers and classes
2. Schedule 2 - Licensed Territory: Detailed description of geographical territories where license is valid
3. Schedule 3 - Licensed Products/Services: Comprehensive list of products/services covered by the license
4. Schedule 4 - Quality Control Standards: Detailed quality standards and specifications for trademark usage
5. Schedule 5 - Royalty Calculations: Detailed methodology for calculating royalties and examples
6. Schedule 6 - Brand Guidelines: Technical specifications and guidelines for trademark usage
7. Schedule 7 - Approved Sub-contractors: List of approved manufacturers or service providers if applicable
8. Appendix A - Trademark Specimens: Visual representations of the licensed trademarks
Relevant legal definitions
Clauses
Relevant Industries
Retail
Manufacturing
Consumer Goods
Fashion and Apparel
Food and Beverage
Technology
Entertainment
Sports
Pharmaceuticals
Automotive
Franchising
Media and Publishing
Electronics
Cosmetics and Personal Care
Telecommunications
Relevant Teams
Legal
Intellectual Property
Commercial
Business Development
Compliance
Marketing
Finance
Quality Assurance
Brand Management
Operations
Relevant Roles
Intellectual Property Counsel
Commercial Director
Brand Manager
Licensing Manager
Legal Counsel
Chief Legal Officer
Business Development Manager
Compliance Officer
Contract Manager
Chief Executive Officer
Chief Commercial Officer
Trademark Attorney
Quality Assurance Manager
Marketing Director
Finance Director
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