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Trademark Sublicense Agreement for Malaysia

Trademark Sublicense Agreement Template for Malaysia

A comprehensive legal agreement governed by Malaysian law that enables a trademark licensee to grant specific trademark usage rights to a third party (sublicensee). The document operates within the framework of Malaysia's Trademarks Act 2019 and related legislation, establishing detailed terms for trademark usage, quality control requirements, territorial restrictions, and financial arrangements. It includes provisions for compliance with Malaysian intellectual property laws while protecting the interests of all parties involved, including the original trademark owner, primary licensee, and sublicensee.

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What is a Trademark Sublicense Agreement?

The Trademark Sublicense Agreement is essential in situations where a primary trademark licensee wishes to extend trademark usage rights to another party while maintaining compliance with Malaysian intellectual property law. This document type is commonly used in franchise expansion, international brand collaborations, or when businesses want to leverage existing trademark rights in specific territories or market segments. The agreement must align with the primary license agreement's terms and Malaysia's Trademarks Act 2019, ensuring proper quality control measures and protecting the trademark's integrity. It typically includes detailed provisions for usage rights, territorial limitations, royalty structures, and quality control mechanisms, making it crucial for businesses expanding their brand presence through third-party relationships.

What sections should be included in a Trademark Sublicense Agreement?

1. Parties: Identification of the sublicensor (who holds the primary license) and sublicensee, including full legal names and registered addresses

2. Background: Context of the agreement, including confirmation of the sublicensor's right to sublicense under the main license agreement

3. Definitions: Defined terms used throughout the agreement, including the Licensed Marks, Territory, and Licensed Products/Services

4. Grant of Sublicense: Scope of the sublicense, including territory, exclusivity/non-exclusivity, and permitted uses of the trademark

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

6. Quality Control: Standards and requirements for maintaining trademark quality, inspection rights, and approval processes

7. Royalties and Payments: Financial terms, payment schedules, and reporting requirements

8. Use of the Mark: Specific requirements and restrictions for trademark usage, including format, placement, and brand guidelines

9. Representations and Warranties: Statements of fact and guarantees from both parties

10. Protection and Infringement: Obligations regarding trademark protection and procedures for dealing with infringement

11. Termination: Circumstances allowing termination and post-termination obligations

12. General Provisions: Standard clauses including notices, governing law, assignment, and entire agreement

What sections are optional to include in a Trademark Sublicense Agreement?

1. Minimum Performance Requirements: Used when the sublicensor wants to establish specific performance targets or minimum sales requirements

2. Sublicensee Improvements: Include when the sublicensee might develop improvements or modifications to the licensed products

3. Export Restrictions: Necessary when there are specific territorial restrictions or export controls

4. Insurance Requirements: Include when specific insurance coverage is required from the sublicensee

5. Marketing and Promotion: Used when specific marketing obligations or restrictions need to be imposed

6. Audit Rights: Include for complex royalty structures or when detailed financial oversight is required

7. Parent Company Guarantee: Used when additional security is required from the sublicensee's parent company

What schedules should be included in a Trademark Sublicense Agreement?

1. Schedule 1 - Licensed Marks: Detailed list and images of all trademarks covered by the sublicense, including registration numbers

2. Schedule 2 - Licensed Products/Services: Comprehensive list of products or services for which the trademark can be used

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

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

5. Schedule 5 - Brand Guidelines: Visual guidelines and requirements for trademark usage

6. Schedule 6 - Territory Definition: Detailed description of geographical areas covered by the sublicense

7. Appendix A - Main License Agreement: Copy or relevant excerpts of the main license agreement confirming sublicensing rights

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

Document Type

License Agreement

Sector

IP

Cost

Free to use
Relevant legal definitions

























Clauses


























Relevant Industries

Retail

Manufacturing

Consumer Goods

Technology

Food and Beverage

Fashion and Apparel

Automotive

Electronics

Pharmaceuticals

Hospitality

Entertainment

Software and Digital Services

Franchising

Professional Services

Relevant Teams

Legal

Intellectual Property

Brand Management

Commercial

Business Development

Compliance

International Business

Licensing

Marketing

Finance

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Licensing Director

Commercial Director

Business Development Manager

Franchise Manager

Compliance Officer

Chief Legal Officer

Contract Manager

Head of Intellectual Property

Chief Commercial Officer

Brand Protection Manager

International Business 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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