The Trademark Cease and Desist Letter is a critical legal instrument used in Malaysia when a trademark owner discovers unauthorized use of their protected mark. This document, governed by the Malaysian Trademarks Act 2019 and related legislation, serves as a formal warning and demand to stop infringing activities. It is typically employed as the first formal step in trademark enforcement, before initiating costly court proceedings. The letter must clearly establish the sender's rights, detail the infringement, and specify required remedial actions with deadlines. In the Malaysian context, these letters often reference both statutory law and common law principles, particularly in cases involving passing off. The document should be carefully drafted to ensure enforceability while maintaining professionalism, as it may later be presented as evidence in court proceedings if the matter escalates to litigation.
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1. Sender and Recipient Details: Full legal names and addresses of both parties, including the trademark owner/representative and the alleged infringer
2. Subject Line: Clear identification that this is a cease and desist notice regarding trademark infringement
3. Trademark Ownership Statement: Details of the trademark ownership, including registration numbers, classes, and date of registration or first use
4. Description of Infringement: Specific details of how the recipient is infringing the trademark, including dates, locations, and specific uses
5. Legal Basis: Citation of relevant trademark laws and legal rights being violated
6. Demands: Clear statement of specific actions required from the recipient, including deadlines for compliance
7. Consequences of Non-Compliance: Statement of legal actions that will be taken if demands are not met
8. Response Requirements: Specific instructions for how and when the recipient should respond to the letter
1. Previous Communications: Reference to any prior attempts to resolve the matter, used when there has been previous correspondence
2. Damage Assessment: Description of actual or potential damages suffered, used when quantifiable damage has occurred
3. Settlement Terms: Proposed terms for amicable resolution, included when the trademark owner is open to negotiation
4. Undertaking: Draft undertaking for the recipient to sign, included when seeking formal written commitments
5. Reservation of Rights: Statement preserving additional legal rights, used in more formal or serious cases
1. Trademark Registration Certificates: Copies of trademark registration certificates or other proof of ownership
2. Evidence of Infringement: Screenshots, photographs, or other documentation showing the alleged infringement
3. Prior Communications: Copies of previous relevant correspondence between parties
4. Draft Undertaking: Template of undertaking document for signature, if required
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