TRADEMARK ASSIGNMENT

How to Assign a Trademark in Malaysia

  1. Execute a Deed of Assignment:

    • Both the original owner (Assignor) and the new owner (Assignee) must sign a legally binding Deed of Assignment.  
    • This document outlines the terms of the transfer, including the trademarks being transferred, the effective date of transfer, and the consideration (which can be a nominal sum).

  2. File with the Trademark Office:

    • Submit the Deed of Assignment, along with the prescribed form (Form TMH-1) and required fees, to the Malaysian Trademark Office.   

  3. Office Processing:

    • The Trademark Office will review the documents and record the assignment in their database. This process typically takes a few months.   

  4. Effective Date of Transfer:

    • Importantly, the ownership transfer is effective from the date of the Deed of Assignment, not the date of recordal by the Trademark Office.   

Key Takeaways:

  • The Deed of Assignment is the crucial legal document for transferring trademark ownership.   
  • Filing with the Trademark Office is necessary for official record and to protect the transfer.   
  • The transfer takes effect immediately upon signing the Deed of Assignment, regardless of the Trademark Office’s processing time.

 

Disclaimer: This information is for general guidance only and does not constitute legal advice. Consulting with a qualified trademark agent is recommended for specific situations and to ensure compliance with all applicable laws and regulations.

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