Questions on requirement of filing recordal of assignment and license agreement

Question:

Please advice on the requirements of filing recordal of assignment and License Agreement for (1) design registrations and (2) trademarks registrations.

Answer:

	DESIGN	TRADEMARK
1.) Is recording the assignment agreement and / or the license agreement optional, or is it required for the agreements to be enforceable and effective in Malaysia.	The recording of the assignment agreement and/or the license agreement is required in order for the agreements to be enforceable and effective in Malaysia.	The recording of the assignment agreement and/or the license agreement is required in order for the agreements to be enforceable and effective in Malaysia.
2.) If it is optional, do you typically recommend clients to record such agreements? Are their particular benefits of recording that making it advisable to do so?	N/A	N/A
3.) What is required to record a license agreement? An assignment?	- A copy of the license/assignment document. - A copy of a power of attorney document (ID Form 10)	- A copy of license agreement; and - A copy of Deed of assignment
4.) Do the agreements need to contain any specific information/ provisions to be recognized, valid, and/or recorded?	No specific information or provision is needed for the agreements to be recognized. However the design application or registration number must be contained in the agreement.	No specific information or provision is needed for the agreement to be recognized. However for the Deed of Assignment, the following requirements must be provided; - Signature of both the Assignor and Assignee must be witnessed - The effective date; - The full name and address of Assignor and Assignee; - To state the value whether the assignment is with goodwill
5.) If the actual agreement must be recorded (as opposed to certain pieces of information from the agreement), is it possible to submit a redacted version?	It is possible to submit a redacted version of agreements as long as the important provisions could be found in such version.	It is possible to submit a redacted version of agreements as long as the important provisions could be found in such version.

For more information, contact us at: malaysia@mirandah.com