Infringement of Intellectual Property. (a) The parties shall, with respect to any matters that come to their attention, provide prompt written notification to each other of (i) any infringement or other violation of any rights associated with the Intellectual Property, or (ii) any activities that could reasonably be considered to violate any right granted to a Licensee pursuant to this Agreement or that could reasonably be considered to limit, otherwise restrict, or have an adverse impact on, a Licensee’s right and ability to exercise any rights granted to a Licensee pursuant to this Agreement; provided, however, that neither party shall, unless the parties have otherwise expressly agreed, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab shall have the exclusive right to protect and defend the Assigned Intellectual Property. Henkel shall protect and defend the Ecolab Licensed Intellectual Property, but Ecolab shall have the right, in addition to any other rights or remedies available at (and subject to any limitations under) law or in equity, (i) to cause Henkel to commence any action or proceeding should Henkel fail to do so; (ii) to exercise and assert any and all rights and remedies available to a “registrant” pursuant to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as a party, in each case where permissible under applicable law; and (v) to jointly control with Henkel any such action or proceeding; provided, however, Ecolab shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights with respect to the subject Ecolab Licensed Intellectual Property. In the event Ecolab, as the case may be, fails or declines to promptly commence an action or proceeding in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence such action or proceeding and to solely control such action or proceeding; provided, however, Henkel shall not (without Ecolab’s prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Ecolab’s rights with respect to the subject Ecolab Licensed Intellectual Property. (b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled to any and all such damages, absent any judgment or agreement to the contrary. (c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) or 3 (a) are identical or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”). In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th of the then current calendar year with effect as of December 31st of that year, but not in any case with effect earlier than December 31, 2005.
Appears in 1 contract
Infringement of Intellectual Property. (a) The parties shall, provisions of this Section 13.5 shall apply solely: (i) with respect to all alleged infringements of Anti-IgE Trademarks; (ii) with respect to all alleged infringements of any Anti-IgE Patent or any alleged misappropriation with respect to any matters Company Information or Know-How, in each case by a Third Party, and (iii) with respect to all actions by any Third Party for a declaration that come any of the Anti-IgE Patents or Anti-IgE Trademarks are not infringed, are invalid or unenforceable, but with respect to (ii) and (iii), only if, and only to the extent that, the alleged infringement or misappropriation relates to the development, manufacture, use or sale of, or if and only to the extent that the party infringing or seeking such declaration is developing, manufacturing, using or selling, an Antibody which: *****.
(b) The Parties shall together use commercially reasonable efforts to monitor the applicable markets and to inform themselves of any potential infringement of any of the Anti-IgE Patents or Anti-IgE Trademarks. In the event that any Party becomes aware of any infringement of any of the Anti-IgE Patents or Anti-IgE Trademarks or any misappropriation with respect to any Company Information or Know-How, or aware of any action by any Third Party for a declaration that any of the Anti-IgE Patents or Anti-IgE Trademarks hereunder are not infringed, are invalid or unenforceable, such Party shall promptly notify the other Parties in writing, including the available evidence of such infringement or other conduct.
(c) As soon as reasonably practicable after the receipt of such notice, the Parties shall cause a reasonable number of their attentionrespective representatives with responsibility for the prosecution, provide prompt written notification enforcement and/or defense of the Anti-IgE Patents, Anti-IgE Trademarks, Company Information or Know-How, as applicable, to each other meet and consider the appropriate course of action with respect to such infringement, misappropriation or action for declaratory relief; provided, however, that:
(i) with respect to any infringement or other violation Anti-IgE Trademarks outside the United States, ***** shall control the prosecution of any rights associated lawsuits against Third Parties relating to infringement thereof if it elects in its sole discretion to prosecute any such suit and shall be deemed to be the Lead Litigating Party with the Intellectual Property, or respect thereto *****; and
(ii) with respect to any activities that could Anti-IgE Patent which is not: *****, any action to enforce or defend such Anti-IgE Patent shall require the consent of the owner (or all joint owners, if applicable) of such Anti-IgE Patent. The owner (or owners) shall meet with the other Parties to discuss, and shall consider in good faith, any action to enforce or defend any such Anti-IgE Patent;
(iii) with respect to: *****, any action to enforce or defend such Anti-IgE Patent shall *****, and the owner (or all joint owners, if applicable) shall reasonably cooperate in any action to enforce or defend such Anti-IgE Patent (including joining in any such action if necessary to establish or maintain standing or to claim damages); and
(iv) With respect to Company Information or Know-How misappropriated by a Third Party as identified in Section 13.5(b) (or implicated in any action brought under Section 13.5(d)), the Party(ies) Controlling such Company Information or Know-How shall confer with the other Parties and give due and reasonable consideration under the circumstances to bringing or participating in an action or proceeding for misappropriation with respect to such Company Information or Know-How (whether or not combined with a patent proceeding under Section 13.5(d) as may be considered appropriate) *****. Such actions may include, but are not limited to, bringing an action, suit or other appropriate proceeding or threatening to violate bring an action suit or other appropriate proceeding, to prevent or eliminate the infringement or misappropriation of any right granted to a Licensee pursuant to this Agreement such Anti-IgE Patent, Anti-IgE Trademark or that could reasonably be considered to limit, otherwise restrictany Know-How. At such meeting, or have an adverse impact onat such later time as may be unanimously agreed by the Parties, each Party shall provide notice to the other Parties as to whether it intends participating as a Licensee’s right party to any action to protect and ability enforce the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How in such territory (and each Party electing to exercise be a party to any rights granted such action shall be a “Litigating Party” and together such Parties shall be the “Litigating Parties” with respect to a Licensee pursuant to this Agreementsuch action; provided, however, that neither any Party which does not elect to be a party shall, unless the parties have otherwise expressly agreed, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab shall have the exclusive right to protect and defend the Assigned Intellectual Property. Henkel shall protect and defend the Ecolab Licensed Intellectual Property, but Ecolab shall have the right, in addition to any other rights or remedies available at (and subject to any limitations under) law or in equity, (i) to cause Henkel to commence any action or proceeding should Henkel fail to do so; (ii) to exercise and assert any and all rights and remedies available to a “registrant” pursuant to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as shall not be a party, in each case where permissible under applicable law; and (v) “Litigating Party” with respect thereto regardless of whether it is required to jointly control with Henkel any join such action in order to establish or proceedingmaintain standing for the action).
(d) The Litigating Parties shall nominate one of their number to be the Lead Litigating Party; provided, however, Ecolab that unless otherwise unanimously agreed by the Litigating Parties for a particular action: (A) as set forth above, Novartis shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights Lead Litigating Party with respect to the subject Ecolab Licensed Intellectual Propertyprosecution of any lawsuits against Third Parties relating to infringement of any Anti-IgE Trademarks outside the United States; (B) if the owner (or if jointly owned, the Controlling Party) of the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How is a Litigating Party for the applicable action, then it shall be the Lead Litigating Party for such action; (C) if the owner (or if jointly owned, the Controlling Party) of the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How is not a Litigating Party for the applicable action, then ***** shall be the Lead Litigating Party; and (D) if there is only one Litigating Party, then it shall be the Lead Litigating Party. In The Lead Litigating Party shall control the event Ecolabprosecution and settlement (if any, as and only to the case may beextent such settlement does not materially affect the rights of any other Party (including, fails without limitation, by the grant of a covenant-not-to-xxx, dismissal with prejudice, license or declines release)) of such action, suit or proceedings, and shall select and engage legal counsel reasonably acceptable to promptly commence an action or proceeding the other Litigating Parties to represent the Litigating Parties in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence any such action or proceeding and to solely control such action or proceedingaction; provided, however, Henkel shall not (without Ecolab’s prior written consentthat each other Party may also engage separate legal counsel to represent it with respect to such action, suit or proceeding, which consent representation shall be at the sole cost and expense of such Party *****. Each other Party, regardless of whether or not it is a Litigating Party, agrees to cooperate with the Litigating Parties in any reasonable manner in any such action, suit or proceeding, at the expense of the Litigating Parties, including, without limitation, joining as a party to such action, suit or proceeding, if necessary to maintain standing or to claim damages; provided, however, that
(iii) if any Party which is not a Litigating Party is subject to a Third Party counterclaim, action, suit or proceeding in connection with an action brought against such Third Party by the Litigating Parties under this Section 13.5, such Party may join (and the Litigating Parties shall reasonably assist in such joinder) the action brought by the Litigating Parties (and thereby become a Litigating Party with respect thereto for all purposes of this Section 13.5), by, at its option and in its sole discretion, providing written notice to the Litigating Parties within ***** of the initiation of such counterclaim, action, suit or proceeding and agreeing to pay to the Litigating Parties that portion of the amount of costs and expenses incurred by the Litigating Parties as of such date as such joining Party would have owed under Section 13.5(e) had such Party been a Litigating Party at the outset of such action.
(e) All costs and expenses of, and all amounts awarded as damages, profits or otherwise in connection with any action pursuant to Section 13.5(d) above, to the extent relating to Anti-IgE Antibodies or Anti-IgE Products, *****:
(iv) A Litigating Party may, if it so chooses, withdraw from (but not settle) an action under this Section 13.5 (and thereby be relieved from continuing to fund its allocable cost of the action), provided that, such Party thereby forfeits its rights to any proceeds from such action and shall not be unreasonably withheldentitled to recover any of its cost spent to the date of its withdrawal, and such Party shall continue to cooperate (including by remaining a named party to such action, if necessary) have with any remaining Litigating Parties as necessary for such Litigating Parties to continue to pursue such action. ***** In the right event that an injunction is awarded in an action pursuant to settle paragraph (d) above and that injunction prohibits an activity which is alleged to be an infringement of an Anti-IgE Patent or otherwise resolve Anti-IgE Trademark or a misappropriation of any Company Information or Know-How, each non-Litigating Party shall pay to the Litigating Party or Parties an aggregate amount equal to ***** of the share of costs and expenses of such action or proceeding as would have been payable by such Party if it had elected to be a Litigating Party, and such payment shall be shared between the Litigating Parties in a manner that would result in proportion to the forfeiture, loss or material restriction share of Ecolab’s rights the costs and expenses paid by them with respect to the subject Ecolab Licensed Intellectual Property.
(b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled to any and all such damages, absent any judgment or agreement to the contrary.
(c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) or 3 (a) are identical or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”)action. In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th of the then current calendar year with effect as of December 31st of that year, but not in any case with effect earlier than December 31, 2005.*****
Appears in 1 contract
Infringement of Intellectual Property. (a) The parties shall, provisions of this Section 13.5 shall apply solely: (i) with respect to all alleged infringements of Anti-IgE Trademarks; (ii) with respect to all alleged infringements of any Anti-IgE Patent or any alleged misappropriation with respect to any matters Company Information or Know-How, in each case by a Third Party, and (iii) with respect to all actions by any Third Party for a declaration that come any of the Anti-IgE Patents or Anti-IgE Trademarks are not infringed, are invalid or unenforceable, but with respect to (ii) and (iii), only if, and only to the extent that, the alleged infringement or misappropriation relates to the development, manufacture, use or sale of, or if and only to the extent that the party infringing or seeking such declaration is developing, manufacturing, using or selling, an Antibody which: *****.
(b) The Parties shall together use commercially reasonable efforts to monitor the applicable markets and to inform themselves of any potential infringement of any of the Anti-IgE Patents or Anti-IgE Trademarks. In the event that any Party becomes aware of any infringement of any of the Anti-IgE Patents or Anti-IgE Trademarks or any misappropriation with respect to any Company Information or Know-How, or aware of any action by any Third Party for a declaration that any of the Anti-IgE Patents or Anti-IgE Trademarks hereunder are not infringed, are invalid or unenforceable, such Party shall promptly notify the other Parties in writing, including the available evidence of such infringement or other conduct.
(c) As soon as reasonably practicable after the receipt of such notice, the Parties shall cause a reasonable number of their attentionrespective representatives with responsibility for the prosecution, provide prompt written notification enforcement and/or defense of the Anti-IgE Patents, Anti-IgE Trademarks, Company Information or Know-How, as applicable, to each other meet and consider the appropriate course of action with respect to such infringement, misappropriation or action for declaratory relief; provided, however, that:
(i) with respect to any infringement or other violation Anti-IgE Trademarks outside the United States, ***** shall control the prosecution of any rights associated lawsuits against Third Parties relating to infringement thereof if it elects in its sole discretion to prosecute any such suit and shall be deemed to be the Lead Litigating Party with the Intellectual Property, or respect thereto *****; and
(ii) with respect to any activities that could Anti-IgE Patent which is not: *****, any action to enforce or defend such Anti-IgE Patent shall require the consent of the owner (or all joint owners, if applicable) of such Anti-IgE Patent. The owner (or owners) shall meet with the other Parties to discuss, and shall consider in good faith, any action to enforce or defend any such Anti-IgE Patent;
(iii) with respect to: *****, any action to enforce or defend such Anti-IgE Patent shall *****, and the owner (or all joint owners, if applicable) shall reasonably cooperate in any action to enforce or defend such Anti-IgE Patent (including joining in any such action if necessary to establish or maintain standing or to claim damages); and
(iv) With respect to Company Information or Know-How misappropriated by a Third Party as identified in Section 13.5(b) (or implicated in any action brought under Section 13.5(d)), the Party(ies) Controlling such Company Information or Know-How shall confer with the other Parties and give due and reasonable consideration under the circumstances to bringing or participating in an action or proceeding for misappropriation with respect to such Company Information or Know-How (whether or not combined with a patent proceeding under Section 13.5(d) as may be considered appropriate) *****. Such actions may include, but are not limited to, bringing an action, suit or other appropriate proceeding or threatening to violate bring an action suit or other appropriate proceeding, to prevent or eliminate the infringement or misappropriation of any right granted to a Licensee pursuant to this Agreement such Anti-IgE Patent, Anti-IgE Trademark or that could reasonably be considered to limit, otherwise restrictany Know-How. At such meeting, or have an adverse impact onat such later time as may be unanimously agreed by the Parties, each Party shall provide notice to the other Parties as to whether it intends participating as a Licensee’s right party to any action to protect and ability enforce the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How in such territory (and each Party electing to exercise be a party to any rights granted such action shall be a “Litigating Party” and together such Parties shall be the “Litigating Parties” with respect to a Licensee pursuant to this Agreementsuch action; provided, however, that neither any Party which does not elect to be a party shall, unless the parties have otherwise expressly agreed, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab shall have the exclusive right to protect and defend the Assigned Intellectual Property. Henkel shall protect and defend the Ecolab Licensed Intellectual Property, but Ecolab shall have the right, in addition to any other rights or remedies available at (and subject to any limitations under) law or in equity, (i) to cause Henkel to commence any action or proceeding should Henkel fail to do so; (ii) to exercise and assert any and all rights and remedies available to a “registrant” pursuant to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as shall not be a party, in each case where permissible under applicable law; and (v) “Litigating Party” with -64- respect thereto regardless of whether it is required to jointly control with Henkel any join such action in order to establish or proceedingmaintain standing for the action).
(d) The Litigating Parties shall nominate one of their number to be the Lead Litigating Party; provided, however, Ecolab that unless otherwise unanimously agreed by the Litigating Parties for a particular action: (A) as set forth above, Novartis shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights Lead Litigating Party with respect to the subject Ecolab Licensed Intellectual Propertyprosecution of any lawsuits against Third Parties relating to infringement of any Anti-IgE Trademarks outside the United States; (B) if the owner (or if jointly owned, the Controlling Party) of the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How is a Litigating Party for the applicable action, then it shall be the Lead Litigating Party for such action; (C) if the owner (or if jointly owned, the Controlling Party) of the applicable Anti-IgE Patent, Anti-IgE Trademark, Company Information or any Know-How is not a Litigating Party for the applicable action, then ***** shall be the Lead Litigating Party; and (D) if there is only one Litigating Party, then it shall be the Lead Litigating Party. In The Lead Litigating Party shall control the event Ecolabprosecution and settlement (if any, as and only to the case may beextent such settlement does not materially affect the rights of any other Party (including, fails without limitation, by the grant of a covenant-not-to-xxx, dismissal with prejudice, license or declines release)) of such action, suit or proceedings, and shall select and engage legal counsel reasonably acceptable to promptly commence an action or proceeding the other Litigating Parties to represent the Litigating Parties in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence any such action or proceeding and to solely control such action or proceedingaction; provided, however, Henkel shall not (without Ecolab’s prior written consentthat each other Party may also engage separate legal counsel to represent it with respect to such action, suit or proceeding, which consent representation shall be at the sole cost and expense of such Party *****. Each other Party, regardless of whether or not it is a Litigating Party, agrees to cooperate with the Litigating Parties in any reasonable manner in any such action, suit or proceeding, at the expense of the Litigating Parties, including, without limitation, joining as a party to such action, suit or proceeding, if necessary to maintain standing or to claim damages; provided, however, that
(iii) if any Party which is not a Litigating Party is subject to a Third Party counterclaim, action, suit or proceeding in connection with an action brought against such Third Party by the Litigating Parties under this Section 13.5, such Party may join (and the Litigating Parties shall reasonably assist in such joinder) the action brought by the Litigating Parties (and thereby become a Litigating Party with respect thereto for all purposes of this Section 13.5), by, at its option and in its sole discretion, providing written notice to the Litigating Parties within ***** of the initiation of such counterclaim, action, suit or proceeding and agreeing to pay to the Litigating Parties that portion of the amount of costs and expenses incurred by the Litigating Parties as of such date as such joining Party would have owed under Section 13.5(e) had such Party been a Litigating Party at the outset of such action.
(e) All costs and expenses of, and all amounts awarded as damages, profits or otherwise in connection with any action pursuant to Section 13.5(d) above, to the extent relating to Anti-IgE Antibodies or Anti-IgE Products, *****:
(iv) A Litigating Party may, if it so chooses, withdraw from (but not settle) an action under this Section 13.5 (and thereby be relieved from continuing to fund its allocable cost of the action), provided that, such Party thereby forfeits its rights to any proceeds from such action and shall not be unreasonably withheldentitled to recover any of its cost spent to the date of its withdrawal, and such Party shall continue to cooperate (including by remaining a named party to such action, if necessary) have with any remaining Litigating Parties as necessary for such Litigating Parties to continue to pursue such action. ***** In the right event that an injunction is awarded in an action pursuant to settle paragraph (d) above and that injunction prohibits an activity which is alleged to be an infringement of an Anti-IgE Patent or otherwise resolve Anti-IgE Trademark or a misappropriation of any Company Information or Know-How, each non-Litigating Party shall pay to the Litigating Party or Parties an aggregate amount equal to ***** of the share of costs and expenses of such action or proceeding as would have been payable by such Party if it had elected to be a Litigating Party, and such payment shall be shared between the Litigating Parties in a manner that would result in proportion to the forfeiture, loss or material restriction share of Ecolab’s rights the costs and expenses paid by them with respect to the subject Ecolab Licensed Intellectual Property.
(b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled to any and all such damages, absent any judgment or agreement to the contrary.
(c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) or 3 (a) are identical or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”)action. In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th of the then current calendar year with effect as of December 31st of that year, but not in any case with effect earlier than December 31, 2005.*****
Appears in 1 contract
Samples: Tripartite Cooperation Agreement
Infringement of Intellectual Property. (a) 9.1 LICENSEE and LICENSOR agree to notify each other, in writing, of any acts of infringement relating to the PATENTS immediately after any such acts are brought to its attention or it has otherwise acquired knowledge thereof. The parties shall, Parties agree to consult with each other as to how to respond to each infringement. If the Parties jointly conclude that legal action should be taken with respect to such infringement, LICENSOR and LICENSEE shall promptly and diligently prosecute such action and shall each pay one-half ( 1/2) of all costs and expenses and receive one-half ( 1/2) of all recoveries and awards with respect to said action. If LICENSEE advises LICENSOR that it does not intend to participate in any matters legal action, then LICENSOR shall be free to prosecute said action on its behalf and it shall pay all costs and expenses and receive all recoveries and awards therefrom. In the event LICENSOR advises LICENSEE that come it will not participate in such legal action, then LICENSEE shall be free to their attentionprosecute such action as LICENSEE may deem advisable and in that connection, provide prompt written notification LICENSOR shall assist LICENSEE in all reasonable ways and at all reasonable times, and LICENSEE shall have the right to each other use the name of (i) any infringement LICENSOR as a party to the proceedings, either solely or other violation of any rights associated jointly with the Intellectual PropertyLICENSEE's own name, or (ii) any activities provided that could reasonably be considered to violate any right granted to a Licensee pursuant to this Agreement or that could reasonably be considered to limit, otherwise restrict, or have an adverse impact on, a Licensee’s right LICENSEE shall pay all costs and ability to exercise any rights granted to a Licensee pursuant to this Agreement; expenses and receive all recoveries and awards in connection with such proceedings and further provided, however, that neither party shallLICENSOR shall always be free, unless at his own cost and expense, to subsequently join in any pending action. In any event, the parties hereby agree to cooperate fully with each other in the prosecution of any such action.
9.2 In the event that any suit, action, or other proceeding shall be brought against LICENSEE involving any claim of Patent infringement based upon LICENSEE's manufacture, production, use and/or sale of any PRODUCTS, and as often as the same shall occur, LICENSEE shall promptly send to LICENSOR a copy of all proceedings which have otherwise expressly agreedbeen served in such suit, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab shall have the exclusive right to protect and defend the Assigned Intellectual Property. Henkel shall protect and defend the Ecolab Licensed Intellectual Property, but Ecolab shall have the right, in addition to any other rights or remedies available at (and subject to any limitations under) law or in equity, (i) to cause Henkel to commence any action or proceeding should Henkel fail other proceeding. In the defence of any such claim, LICENSOR will cooperate fully with LICENSEE, and will, from time to do so; (ii) time, make available to exercise LICENSEE all relevant records, papers, information, samples, specimens and assert other similar material. However, LICENSOR shall bear no obligation to hold harmless LICENSEE from and against any and all rights and remedies available to a “registrant” pursuant to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as a partyliabilities, in each case where permissible under applicable law; and (v) to jointly control with Henkel any such action or proceeding; provideddamages, however, Ecolab shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights with respect to the subject Ecolab Licensed Intellectual Property. In the event Ecolab, as the case may be, fails or declines to promptly commence an action or proceeding in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence such action or proceeding and to solely control such action or proceeding; provided, however, Henkel shall not (without Ecolab’s prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Ecolab’s rights with respect to the subject Ecolab Licensed Intellectual Property.
(b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled of any nature whatsoever (including but no limited to any and all such damages, absent any judgment or agreement to the contraryattorney's fees) incurred by LICENSEE in connection therewith.
(c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) 9.3 LICENSEE agrees and undertakes not to contest, directly or 3 (a) are identical indirectly, the ownership or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”). In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th validity of the then current calendar year with effect as Patents and acknowledges that same are the exclusive property of December 31st of that year, but not in any case with effect earlier than December 31, 2005LICENSOR.
Appears in 1 contract
Infringement of Intellectual Property. (a) The parties shall, with respect to any matters that come to their attention, provide prompt written notification to each other Upon a Party learning of (i) any infringement or other violation threatened infringement of any rights associated Licensed Technology in the Territory, such Party shall promptly inform the other Party in writing of any such infringement and shall supply such other Party with all evidence pertaining to such infringement in such Party’s possession. In the Intellectual Propertyevent of any infringement or threatened infringement of the Licensed Technology by a Third Party in the Territory, or (ii) any activities that could reasonably be considered to violate any right granted to a Licensee pursuant to this Agreement or that could reasonably be considered to limit, otherwise restrict, or have an adverse impact on, a Licensee’s right and ability to exercise any rights granted to a Licensee pursuant to this Agreement; provided, however, that neither party shall, unless the parties have otherwise expressly agreed, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab Xxxxxx shall have the exclusive first right to protect file an action against any such infringing Third Party or seek abatement of the infringement by such Third Party at Xxxxxx’ sole cost and defend the Assigned Intellectual Property. Henkel shall protect expense and defend the Ecolab Licensed Intellectual Propertyby counsel of its own choice, but Ecolab and Adamis shall have the right, at its own expense, to be represented in addition any such action by counsel of its own choice. Adamis shall fully cooperate with Xxxxxx in any action brought by Xxxxxx, including by being joined as a party. In the event Xxxxxx does not file an action or seek abatement within (a) seventy-five (75) days following the notice of alleged infringement or (b) ten (10) days before the time limit, if any, set forth in the Applicable Laws, whichever comes first, then Adamis shall have the right, but not the obligation, to file an action against any other rights such infringing Third Party or remedies available seek abatement of the infringement by such Third Party at Adamis’ sole cost and expense and by counsel of its own choice, and Xxxxxx shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. Xxxxxx shall make reasonable efforts to promptly notify Adamis in writing if Xxxxxx decides not to file an action or seek abatement. Xxxxxx shall fully cooperate with Adamis in such action, including by being joined as a party. Except as otherwise agreed to by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Technology shall be used first to reimburse the documented Out-of-Pocket Expenses relating to the action or proceeding that were incurred by the Party that brought and controlled the action or proceeding, any remaining compensatory damages relating to the Product (including lost sales or lost profits with respect to the Product) shall be retained by the Party that brought and subject to controlled such action or proceeding, , and any limitations under) law or in equitypunitive damages shall be equally shared by the Parties. Notwithstanding the foregoing, (i) the Party bringing such action shall indemnify and reimburse the other Party for all reasonable Out-of-Pocket Expenses incurred by the other Party in connection with the action initiated pursuant to cause Henkel to commence any action or proceeding should Henkel fail to do so; this Section 7.3, and (ii) to exercise if Xxxxxx brought and assert any controlled the proceeding, the remaining compensatory damages (i.e., after reimbursement of its documented Out-of-Pocket Expenses) shall be included in Net Profits and all rights and remedies available to a “registrant” pursuant subject to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as a party, in each case where permissible under applicable law; and (v) to jointly control with Henkel any such action or proceeding; provided, however, Ecolab shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights with respect to the subject Ecolab Licensed Intellectual Property. In the event Ecolab, as the case may be, fails or declines to promptly commence an action or proceeding in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence such action or proceeding and to solely control such action or proceeding; provided, however, Henkel shall not (without Ecolab’s prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Ecolab’s rights with respect to the subject Ecolab Licensed Intellectual PropertySection 5.5.
(b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled to any and all such damages, absent any judgment or agreement to the contrary.
(c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) or 3 (a) are identical or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”). In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th of the then current calendar year with effect as of December 31st of that year, but not in any case with effect earlier than December 31, 2005.
Appears in 1 contract
Samples: Development, License and Commercialization Agreement
Infringement of Intellectual Property. (a) The parties shall, with respect to any matters that come to their attention, provide prompt written notification to each other Upon a Party learning of (i) any infringement or other violation threatened infringement of any rights associated Licensed Technology in the Territory, such Party shall promptly inform the other Party in writing of any such infringement and shall supply such other Party with all evidence pertaining to such infringement in such Party’s possession. In the Intellectual Propertyevent of any infringement or threatened infringement of the Licensed Technology by a Third Party in the Territory, or (ii) any activities that could reasonably be considered to violate any right granted to a Licensee pursuant to this Agreement or that could reasonably be considered to limit, otherwise restrict, or have an adverse impact on, a Licensee’s right and ability to exercise any rights granted to a Licensee pursuant to this Agreement; provided, however, that neither party shall, unless the parties have otherwise expressly agreed, be affirmatively obligated to monitor for such infringements, violations or activities. Ecolab Wxxxxx shall have the exclusive first right to protect file an action against any such infringing Third Party or seek abatement of the infringement by such Third Party at Wxxxxx’ sole cost and defend the Assigned Intellectual Property. Henkel shall protect expense and defend the Ecolab Licensed Intellectual Propertyby counsel of its own choice, but Ecolab and Adamis shall have the right, at its own expense, to be represented in addition any such action by counsel of its own choice. Adamis shall fully cooperate with Wxxxxx in any action brought by Wxxxxx, including by being joined as a party. In the event Wxxxxx does not file an action or seek abatement within (a) seventy-five (75) days following the notice of alleged infringement or (b) ten (10) days before the time limit, if any, set forth in the Applicable Laws, whichever comes first, then Adamis shall have the right, but not the obligation, to file an action against any other rights such infringing Third Party or remedies available seek abatement of the infringement by such Third Party at Adamis’ sole cost and expense and by counsel of its own choice, and Wxxxxx shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. Wxxxxx shall make reasonable efforts to promptly notify Adamis in writing if Wxxxxx decides not to file an action or seek abatement. Wxxxxx shall fully cooperate with Adamis in such action, including by being joined as a party. Except as otherwise agreed to by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Technology shall be used first to reimburse the documented Out-of-Pocket Expenses relating to the action or proceeding that were incurred by the Party that brought and controlled the action or proceeding, any remaining compensatory damages relating to the Product (including lost sales or lost profits with respect to the Product) shall be retained by the Party that brought and subject to controlled such action or proceeding, , and any limitations under) law or in equitypunitive damages shall be equally shared by the Parties. Notwithstanding the foregoing, (i) the Party bringing such action shall indemnify and reimburse the other Party for all reasonable Out-of-Pocket Expenses incurred by the other Party in connection with the action initiated pursuant to cause Henkel to commence any action or proceeding should Henkel fail to do so; this Section 7.3, and (ii) to exercise if Wxxxxx brought and assert any controlled the proceeding, the remaining compensatory damages (i.e., after reimbursement of its documented Out-of-Pocket Expenses) shall be included in Net Profits and all rights and remedies available to a “registrant” pursuant subject to the provisions of the intellectual property laws of a particular country or jurisdiction; (iii) to commence or join any such action or proceeding in its own name and add Henkel as a party, in each case where permissible under applicable law; and (v) to jointly control with Henkel any such action or proceeding; provided, however, Ecolab shall not (without Hxxxxx’x prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Hxxxxx’x rights with respect to the subject Ecolab Licensed Intellectual Property. In the event Ecolab, as the case may be, fails or declines to promptly commence an action or proceeding in its own name or to join an action or proceeding commenced by Henkel, Henkel shall have the right to commence such action or proceeding and to solely control such action or proceeding; provided, however, Henkel shall not (without Ecolab’s prior written consent, which consent shall not be unreasonably withheld) have the right to settle or otherwise resolve any such action or proceeding in a manner that would result in the forfeiture, loss or material restriction of Ecolab’s rights with respect to the subject Ecolab Licensed Intellectual PropertySection 5.5.
(b) In any and all such actions or proceedings, the parties shall (i) reasonably cooperate and assist each other in good faith to protect and defend the subject Intellectual Property, (ii) take reasonable account of any legitimate commercial interest, such as availability of a counterclaim, of the other party, and (iii) notwithstanding anything in Section 16 hereof to the contrary, agree on an equitable allocation of costs, expenses and damages for such actions and proceedings, although it is generally intended that (a) a party solely controlling any such action or proceeding shall reimburse the party providing assistance for such assisting party’s reasonable outside counsel fees and reasonable internal costs and (b) as between the parties, a party that has solely paid all costs and expenses shall be solely entitled to any and all such damages, absent any judgment or agreement to the contrary.
(c) Certain Ecolab Licensed Trademarks identified on Exhibits 1 (i) or 3 (a) are identical or substantially similar to certain Trademarks of Henkel which are listed on Exhibit 12 (c) hereto that Henkel may continue to maintain, expand or use outside the Cleaning and Sanitizing Field in its own interest (the “Henkel Neighboring Trademarks”). In order to enhance the protection and defense of both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, Henkel shall institute actions or proceedings (i) against confusingly similar Trademarks of third parties and (ii) in defense of those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks, in each case with the goal of protecting both those certain Ecolab Licensed Trademarks and the Henkel Neighboring Trademarks in a coordinated manner. Section 16 hereof shall not apply, and the costs and expenses for the foregoing actions or proceedings shall be borne by: (i) by Henkel, if such confusingly similar Trademark or the defense of one or more of those certain Ecolab Licensed Trademarks and Henkel Neighboring Trademark relates to a third party that operates outside the Cleaning and Sanitizing Field; (ii) by Ecolab, if such third party operates in the Cleaning and Sanitizing Field; or (iii) by Henkel and Ecolab equitably, if such third party operates both outside and in the Cleaning and Sanitizing Field (or if the field(s) of such third party’s operations cannot reasonably be determined or allocated). The provisions of this Section 12(c) can be terminated by either party on notice to the other on or before June 30th of the then current calendar year with effect as of December 31st of that year, but not in any case with effect earlier than December 31, 2005.
Appears in 1 contract
Samples: Development, License and Commercialization Agreement (Adamis Pharmaceuticals Corp)
