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Trademark Concurrent Use Agreement Template for Malaysia

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Key Requirements PROMPT example:

Trademark Concurrent Use Agreement

"I need a Trademark Concurrent Use Agreement for my Malaysian food products company to coexist with a similar trademark holder in Singapore, where we'll be restricted to our respective countries but both allowed to sell online, with the agreement starting from March 2025."

Document background
The Trademark Concurrent Use Agreement is a crucial document in Malaysian intellectual property practice, typically employed when two or more parties discover they are using similar or identical trademarks but determine that peaceful coexistence is preferable to litigation. This agreement, governed by Malaysian law including the Trademarks Act 2019 and Trademarks Regulations 2019, provides a framework for parties to formally agree on how their similar marks can coexist in the marketplace without causing consumer confusion. It becomes particularly relevant in situations where both parties have legitimate claims to their marks, whether through long-term use, registration in different classes, or operation in distinct geographical areas. The agreement typically includes detailed provisions about territorial restrictions, market segments, quality control measures, and mutual obligations to maintain the distinct identity of each brand while respecting the other's rights.
Suggested Sections

1. Parties: Identification of all parties to the agreement, including their full legal names, registration numbers, and registered addresses

2. Background: Recitals explaining the context of the agreement, including each party's trademark rights and the reason for entering into a concurrent use arrangement

3. Definitions: Definitions of key terms used throughout the agreement, including specific trademark descriptions, territories, and technical terms

4. Grant of Rights: Specific terms of the concurrent use arrangement, including mutual recognition of rights and permissions granted

5. Territory and Scope: Detailed specification of geographical territories and business scope where each party may use their respective marks

6. Quality Control: Standards and specifications for maintaining quality of goods/services associated with the marks to preserve their reputation

7. Restrictions and Limitations: Specific limitations on how each party may use their marks and prohibited activities

8. Registration and Protection: Provisions regarding trademark registration rights and cooperation in protecting the marks

9. Term and Termination: Duration of the agreement and circumstances under which it may be terminated

10. Dispute ReºìÐÓÖ±²¥: Procedures for resolving disputes between the parties

11. General Provisions: Standard contractual clauses including notices, amendments, assignment, and governing law

Optional Sections

1. Royalties and Payments: Include when there are financial compensations involved in the concurrent use arrangement

2. Marketing and Promotion: Include when specific guidelines for marketing and advertising need to be established

3. Online Usage: Include when the agreement needs to address specific terms for digital and social media use of the marks

4. Third Party Infringement: Include when parties wish to establish specific procedures for jointly addressing third-party infringement

5. Export Restrictions: Include when international trade is relevant and needs to be regulated

6. Technology Transfer: Include when technical knowledge or proprietary methods are part of the concurrent use arrangement

7. Confidentiality: Include when sensitive business information will be shared between parties

Suggested Schedules

1. Schedule A - Trademark Specifications: Detailed descriptions and representations of all relevant trademarks, including registration numbers and classes

2. Schedule B - Territory Maps: Detailed maps or descriptions of geographical territories assigned to each party

3. Schedule C - Approved Products/Services: Comprehensive list of products or services covered under the agreement for each party

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

5. Schedule E - Brand Guidelines: Specific guidelines for visual representation and usage of the marks

6. Appendix 1 - Contact Details: List of key contacts and authorized representatives for each party

7. Appendix 2 - Reporting Templates: Standard forms for any required reporting between parties

Authors

Alex Denne

Head of Growth (Open Source Law) @ ºìÐÓÖ±²¥ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions


































Clauses






























Relevant Industries

Retail

Consumer Goods

Manufacturing

Technology

Food and Beverage

Fashion and Apparel

Pharmaceuticals

Financial Services

Entertainment

Media

Healthcare

Education

Professional Services

Hospitality

E-commerce

Relevant Teams

Legal

Intellectual Property

Brand Management

Marketing

Business Development

Compliance

Corporate Affairs

Commercial Operations

International Trade

Risk Management

Relevant Roles

Chief Legal Officer

Intellectual Property Counsel

Trademark Attorney

Legal Director

Brand Protection Manager

Commercial Lawyer

Corporate Counsel

Licensing Manager

Business Development Director

Chief Executive Officer

Chief Marketing Officer

Brand Manager

Intellectual Property Manager

Compliance Officer

General Counsel

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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