The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation. B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was made. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit against any royalties due Licensor from sales derived in the country of such prosecution. C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto. D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein. E. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick Endorsement, Licensee promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way materially adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may materially reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's ’s request, Licensee shall execute any documents, including Registered User Agreementsregistered user agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles Licensed Products sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the samesame in accordance with this Agreement. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeLicensor. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's ’s name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit for the monies it expended in connection therewith against any royalties Sales Royalty due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles Licensed Products and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's ’s failure to own or have the rights to license the Licensed Xxxx ‘Xxxxx Xxxx’ trademark in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license ‘Xxxxx Xxxx’ trademark in the Licensed XxxxUnited States of America, and that the Licensed Xxxx ‘Xxxxx Xxxx’ trademark is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns shall promptly notify Licensor of any counterfeiting or other infringement or imitation of the Licensed Xxxx or the Roddick EndorsementXxxx, or any diversion of the Licensed Products from the Licensed Channels of Distribution, of which Licensee becomes aware. Licensor shall have the right, but not the obligation, to institute legal action or take any use other actions which it deems necessary to protect its interest in the Trademarks, and Licensee shall fully cooperate with Licensor in any such action, provided that any out-of-pocket expenses of Licensee incurred in connection therewith are paid or reimbursed by Licensor or credited against any person Sales Royalty due thereafter to Licensor. Any monetary recovery (the “Licensor Recovery”) resulting from any such action shall be allocated between Licensor and Licensee as follows: first, all out of a trademark similar pocket expenses incurred by Licensor and Licensee in prosecuting such action (the “Recovery Expenses”) shall be paid to Licensor and Licensee as actually incurred by each; second, Licensor shall be paid an amount equal to the Licensed Xxxx balance of the Licensor Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensor Recovery. If Licensor declines to institute or the Roddick Endorsementcontinue any legal action, Licensee promptly may, with the consent of Licensor, which will not be unreasonably withheld, institute or continue same in its name, at its sole expense, in which event any monetary recovery (the “Licensee Recovery”) resulting therefrom shall notify be allocated between Licensor thereofand Licensee as follows: first, the Recovery Expenses shall be paid to Licensor and Licensee in the amounts actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensee Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensee Recovery. In no eventShould the amount of the recovery under this paragraph not be sufficient to pay 100% of the Recovery Expenses, however, then the allocation hereunder shall be adjusted on a pro-rata basis in proportion to the relative amounts of Recovery Expenses incurred by each of Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . and Licensee.
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's ’s breach of the representations made and obligations assumed herein.
G. Ownership of all intellectual property rights, whether recognized currently or in the future, including, without limitation, copyright, patent, trade secret and trademark rights, in the Licensed Products and in all formulae, designs, logos, artwork, packaging, copy, literary text, advertising material and promotion material of any sort utilizing the Licensed Xxxx, including all such material developed by Licensee (collectively, the "Work"), shall vest in Licensor, and title thereof shall be in the name of Licensor. All such items and all Licensed Products shall bear the copyright and trademark notices as are reasonable and customary and any other legal notices, which Licensor may from time to time prescribe. Notwithstanding the foregoing, the parties hereto understand and agree that the formulae and scents shall be owned by a third-party fragrance house, which fragrance house shall agree directly with either Licensee or Parlux and Licensor that, during and after the Term of the Agreement such formulae and scents shall be exclusive to Licensor. Any and all additions to, and new renderings, modifications or embellishments of the Work shall, notwithstanding their invention, creation and use by Licensee and/or its representatives, affiliates and/or sub-licensees, if applicable, be and remain the property of Licensor, and Licensor may use, and license others to use the Work, subject only to the provisions of this Agreement. Licensee shall advise Licensor of specific Work to be developed, designed and/or manufactured by third parties (collectively, “Developers”) and shall provide Licensor with the names and addresses of all such Developers. Licensee shall impose restrictions on such Developers, including but not limited to having such Developers execute confidentiality, trademarks acknowledgement and anti-pirating and anti-infringement agreements and/or letter agreements guaranteeing the Developers’ compliance with the provisions of this Agreement. Licensee shall obligate each Developer to covenant in its agreement that it will not subcontract any of its obligations to develop, design or manufacture Licensed Products or Work without the prior written approval by the Licensor. The right, title and interest in and to any samples or prototypes of the Work, including any modifications or improvements thereto, that are submitted by Licensee or Parlux to Licensor for approval, but (i) which are not approved by Licensor (ii) not then used in connection with the Licensed Xxxx or the Licensed Products and (iii) are not confusingly similar to the Work ultimately approved or used by the Licensor in connection with the Licensed Xxxx (provided that any reference to or inclusion of the Licensed Xxxx is removed from such Work), shall revert to Licensee or, as applicable, to the designer or fragrance house that designed, developed prepared and provided such Work.
H. Licensee shall not use any other tradenames, trademarks or other designations including, without limitation, Licensee's own corporate name or tradename in connection with the Licensed Xxxx in any consumer advertising and publicity, labeling, packaging or printed matter utilized by Licensee in connection with the Licensed Products. Licensee may, however, use its own corporate name or tradename in connection with the Licensed Products in transactions between and among the parties hereto, and with Manufacturers, merchants, wholesale customers and others relating to: the manufacture of Licensed Products; the creation and development of designs, styles, advertising, promotional materials, packaging, printed matter and labeling of the Licensed Products; and the wholesale sale of the Licensed Products. Licensee shall not use the Licensed Xxxx in combination with any other names or marks to form a new xxxx and shall not use the Licensed Xxxx as a tradename or in any other manner other than in connection with the manufacture, distribution, sale and promotion of Licensed Products under this Agreement. Licensee will at all times make reference on the Licensed Products and on all packaging and promotional materials used in connection therewith that the Licensed Xxxx is under license from the Licensor. For clarification purposes and avoidance of doubt, Licensee and its sub-licensees and distributors may use their corporate names on the labeling of Licensed Products to indicate the identity and location of the manufacturer and/or distributor of Licensed Products as is customary solely in order to comply with applicable labeling laws and regulations. Moreover, Licensee and its sublicensees and/or distributors shall be permitted in trade press articles and media interviews or question and answer sessions, on their websites, in their catalogues and company literature to identify the Artist and the Licensed Products as one of several licensors and brands included in Licensee’s or its sublicensees’ or distributors’ catalogue of brands and product lines.
Appears in 1 contract
Samples: Sublicense (Parlux Fragrances Inc)
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation. Licensee will use its best efforts to distribute Articles in the proper channels comparable to those of similarly situated brands as discussed in Article 7 A (i) herein.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor and Ms. Xxxxx Xxxxxx in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States shall be at in the name of Licensor or Ms. Xxxxx Xxxxxx, as they may decide, the expense of Licensee (Licensee which shall pay be paid for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeLicensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's (or Ms. Xxxxx Xxxxxx'x) name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If Licensee agrees to retain and employ on Licensor's behalf the prosecution failsfirm of Xxxxxx & Xxxxxx, Licensee shall receive no credit LLP of New York City to file and prosecute the various trademark applications around the World for the monies it expended Trademark in connection therewith; if International Class 9 for eyewear, as long as such fees charged by Xxxxxx & Xxxxxx, LLP are competitively priced to those of other intellectual property law firms and such firm utilizes the prosecution succeeds, Licensee shall be entitled services of Licensee's paralegal employee in order to receive a credit against any royalties due Licensor from sales derived in the country of reduce such prosecutioncosts.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining obtained therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick EndorsementXxxx, Licensee it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee it deems the taking of action reasonably it inadvisable to do so. . .
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.. Licensor and Ms. Xxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Xxxx in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Xxxxx Xxxxxx has pending trademark applications as shown on the annexed Exhibit A.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way materially adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may materially reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreementsregistered user agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles Licensed Products sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the samesame in accordance with this Agreement. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeLicensor. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit for the monies it expended in connection therewith against any royalties Sales Royalty due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles Licensed Products and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns shall promptly notify Licensor of any counterfeiting or other infringement of the Trademarks, or imitation any diversion of the Licensed Xxxx Products from the Licensed Channels of Distribution, of which Licensee becomes aware. Licensor shall have the right, but not the obligation, to institute legal action or take any other actions which it deems necessary to protect its interest in the Roddick EndorsementTrademarks, and Licensee shall fully cooperate with Licensor in any such action, provided that any out-of-pocket expenses of Licensee incurred in connection therewith are paid or reimbursed by Licensor or credited against any Sales Royalty due thereafter to Licensor. Any monetary recovery (the "Licensor Recovery") resulting from any such action shall be allocated between Licensor and Licensee as follows: first, all out of any use pocket expenses incurred by any person of a trademark similar Licensor and Licensee in prosecuting such action (the "Recovery Expenses") shall be paid to Licensor and Licensee as actually incurred by each; second, Licensor shall be paid an amount equal to the Licensed Xxxx balance of the Licensor Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensor Recovery. If Licensor declines to institute or the Roddick Endorsementcontinue any legal action, Licensee promptly may, with the consent of Licensor, which will not be unreasonably withheld, institute or continue same in its name, at its sole expense, in which event any monetary recovery (the "Licensee Recovery") resulting therefrom shall notify be allocated between Licensor thereofand Licensee as follows: first, the Recovery Expenses shall be paid to Licensor and Licensee in the amounts actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensee Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensee Recovery. In no eventShould the amount of the recovery under this paragraph not be sufficient to pay 100% of the Recovery Expenses, however, then the allocation hereunder shall be adjusted on a pro-rata basis in proportion to the relative amounts of Recovery Expenses incurred by each of Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . and Licensee.
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.
Appears in 1 contract
Samples: Sublicense (Parlux Fragrances Inc)
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way materially adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may materially reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's ’s request, Licensee shall execute any documents, including Registered User Agreementsregistered user agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles Licensed Products sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the samesame in accordance with this Agreement. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee Licensor and Licensor shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeown Licensed Xxxx. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's ’s name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit for the monies it expended in connection therewith against any royalties Sales Royalty due Licensor from sales derived in the country of such prosecution. * Confidential terms omitted and provided separately to the Securities and Exchange Commission.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles Licensed Products and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's ’s failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns shall promptly notify Licensor of any counterfeiting or other infringement or imitation of the Licensed Xxxx or the Roddick EndorsementXxxx, or any diversion of the Licensed Products from the Licensed Channels of Distribution, of which Licensee becomes aware. Licensor shall have the right, but not the obligation, to institute legal action or take any use other actions which it deems necessary to protect its interest in the Trademarks, and Licensee shall fully cooperate with Licensor in any such action, provided that any out-of-pocket expenses of Licensee incurred in connection therewith are paid or reimbursed by Licensor or credited against any person Sales Royalty due thereafter to Licensor. Any monetary recovery (the “Licensor Recovery”) resulting from any such action shall be allocated between Licensor and Licensee as follows: first, all out of a trademark similar pocket expenses incurred by Licensor and Licensee in prosecuting such action (the “Recovery Expenses”) * Confidential terms omitted and provided separately to the Licensed Xxxx Securities and Exchange Commission. shall be paid to Licensor and Licensee as actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensor Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive fifty (50%) percent and Licensee shall receive fifty (50%) percent of the remaining balance of the Licensor Recovery. If Licensor declines to institute or the Roddick Endorsementcontinue any legal action, Licensee promptly may, with the consent of Licensor, which will not be unreasonably withheld, institute or continue same in its name, at its sole expense, in which event any monetary recovery (the “Licensee Recovery”) resulting therefrom shall notify be allocated between Licensor thereofand Licensee as follows: first, the Recovery Expenses shall be paid to Licensor and Licensee in the amounts actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensee Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive fifty (50%) percent and Licensee shall receive fifty (50%) percent of the remaining balance of the Licensee Recovery. In no eventShould the amount of the recovery under this paragraph not be sufficient to pay 100% of the Recovery Expenses, however, then the allocation hereunder shall be adjusted on a pro-rata basis in proportion to the relative amounts of Recovery Expenses incurred by each of Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . and Licensee.
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's ’s breach of the representations made and obligations assumed herein.
G. Ownership of all intellectual property rights, whether recognized currently or in the future, including, without limitation, copyright, patent, trade secret and trademark rights, in the Licensed Products and in all formulae, designs, logos, artwork, packaging, copy, literary text, advertising material and promotion material of any sort utilizing the Licensed Xxxx, including all such material developed by Licensee (collectively, the “Work”), shall vest in Licensor, and title thereof shall be in the name of Licensor. All such items and all Licensed Products shall bear the copyright and trademark notices as are * Confidential terms omitted and provided separately to the Securities and Exchange Commission. reasonable and customary and any other legal notices, which Licensor may from time to time prescribe. Notwithstanding the foregoing, the parties hereto understand and agree that the formulae and scents shall be owned by a third-party fragrance house, which fragrance house shall agree, using the form of agreement annexed hereto as Exhibit , directly with either Licensee or Perfumania and Licensor that, during and after the Term of the Agreement such formulae and scents shall be exclusive to Licensor. Any and all additions to, and new renderings, modifications or embellishments of the Work shall, notwithstanding their invention, creation and use by Licensee and/or its representatives, affiliates and/or sub-licensees, if applicable, be and remain the property of Licensor, and Licensor may use, and license others to use the Work, subject only to the provisions of this Agreement. Licensee shall advise Licensor of specific Work to be developed, designed and/or manufactured by third parties (collectively, “Developers”) and shall provide Licensor with the names and addresses of all such Developers. Licensee shall impose restrictions on such Developers, including but not limited to having such Developers execute confidentiality, trademarks acknowledgement and anti-pirating and anti-infringement agreements and/or letter agreements guaranteeing the Developers’ compliance with the provisions of this Agreement. Licensee shall obligate each Developer to covenant in its agreement that it will not subcontract any of its obligations to develop, design or manufacture Licensed Products or Work without the prior written approval by the Licensor. The right, title and interest in and to any samples or prototypes of the Work, including any modifications or improvements thereto, that are submitted by Licensee or Perfumania to Licensor for approval, but (i) which are not approved by Licensor (ii) not then used in connection with the Licensed Xxxx or the Licensed Products and (iii) are not confusingly similar to the Work ultimately approved or used by the Licensor in connection with the Licensed Xxxx (provided that any reference to or inclusion of the Licensed Xxxx is removed from such Work), shall revert to Licensee or, as applicable, to the designer or fragrance house that designed, developed prepared and provided such Work. Licensee agrees, if requested by Licensor, to utilize anti-counterfeiting stickers on the Licensed Products sold to customers who consent to the inclusion of such stickers on Licensed Products they purchased from Licensee or its sub-licensee or distributors. * Confidential terms omitted and provided separately to the Securities and Exchange Commission.
H. Licensee shall not use any other tradenames, trademarks or other designations including, without limitation, Licensee’s own corporate name or tradename in connection with the Licensed Xxxx in any consumer advertising and publicity, labeling, packaging or printed matter utilized by Licensee in connection with the Licensed Products. Licensee may, however, use its own corporate name or tradename in connection with the Licensed Products in transactions between and among the parties hereto, and with Manufacturers, merchants, wholesale customers and others relating to: the manufacture of Licensed Products; the creation and development of designs, styles, advertising, promotional materials, packaging, printed matter and labeling of the Licensed Products; and the wholesale sale of the Licensed Products. Licensee shall not use its corporate name as a brand to associate it with or promote any Licensed Products. Licensee shall not use the Licensed Xxxx in combination with any other names or marks to form a new xxxx and shall not use the Licensed Xxxx as a tradename or in any other manner other than in connection with the manufacture, distribution, sale and promotion of Licensed Products under this Agreement. Licensee will at all times make reference on the Licensed Products and on all packaging and promotional materials used in connection therewith that the Licensed Xxxx is under license from the Licensor. For clarification purposes and avoidance of doubt, Licensee and its sub-licensees and distributors may use their corporate names on the labeling of Licensed Products to indicate the identity and location of the manufacturer and/or distributor of Licensed Products as is customary solely in order to comply with applicable labeling laws and regulations. Moreover, Licensee and its sublicensee Perfumania shall be permitted in trade press articles and media interviews or question and answer sessions, on their websites, in their catalogues and company literature to identify the Artist and the Licensed Products as one of several licensors and brands included in Licensee’s or its sublicensees’ or distributors’ catalogue of brands and product lines. * Confidential terms omitted and provided separately to the Securities and Exchange Commission.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name (a) Trademark Owner has registered, or names with has applied for the Licensed Xxxx so as to form a new xxxxregistration of, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the classes and jurisdictions so indicated on Exhibit E. Any and all trademarks indicated on Exhibit E as well as those trademarks to be registered or applied for registration hereafter fall under the definition of "LICENSED XXXX". Trademark Owner represents and warrants and Licensee acknowledges that the Trademark Owner has designated in the Licensed Territory in any form or embodiment thereof Licensor as its agent for quality control and has given Licensor sole rights to authorize the goodwill attached or which shall become attached to use of the Licensed Xxxx in connection with the business Licensed Territory. The Trademark Owner and goods Licensor are entitled to all of the rights to use the Licensed Xxxx regardless of whether such use constitutes technical trademark use or some other kind of usage such as in relation a corporate or commercial name, including without limitation, the right to which register or record the same Licensed Xxxx in the Licensed Territory. The Trademark Owner has been, granted to Licensor the further right to grant the license herein granted. Trademark Owner and Licensor acknowledge that Licensee is or shall be usedduly granted exclusive rights to use the Licensed Xxxx in Japan and in the Licensed Department. Sales by Licensee shall be deemed not contest, deny or dispute the validity of such registrations, or Licensor's and Trademark Owner's title thereto, and shall not in any way, either directly or indirectly, encourage or assist others or permit its sublicensees to have been made by Licensor for purposes do so, and shall not take or permit its sublicensees to take any action of any kind inconsistent with Licensor's and Trademark Owner's ownership of all such trademark rights, including, without limitation, applying for, registering or acquiring a registration and all uses of the Licensed Xxxx by in the Licensed Territory. Nothing in this Agreement shall confer upon Licensee shall inure to the benefit or any sublicensee a proprietary interest of Licensor. Licensee shall not, at any time, do sort in or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof colorable simulations, abbreviations, combinations or which, directly or indirectly, may reduce the value derivations of the Licensed Xxxx Xxxx. Furthermore, nothing in this Agreement shall confer upon Licensee or detract from its reputation.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor sublicensee any rights or interest of any kind in or to confirm the respective rights good will of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States shall be at the expense of Licensee Trademark Owner (Licensee shall pay for any application requested in advanceexcept as licensed hereunder) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was made. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit against any royalties due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided hereintheir other trademarks.
E. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick Endorsement, Licensee promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.
Appears in 1 contract
The Licensed Xxxx. X. Notwithstanding anything to the contrary contained herein, all uses of the Licensed Xxxx, materials using or incorporating the Licensed Xxxx and items used in connection with the Licensed Xxxx are subject to Licensor's review and approval.
B. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation.
B. C. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States U.S. shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was made. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any nay such prosecution shall go forward if (ai) Licensee requests same; (bii) Licensee pays for same directly; and (ciii) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit it against any royalties due Licensor from sales derived in the country of such prosecution.
C. D. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. E. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. F. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick EndorsementXxxx, Licensee it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee it deems the taking of action reasonably it inadvisable to do so. . .
G. Notwithstanding anything contained to the contrary in this Agreement, in the event that (i) Licensee has (a) promptly notified Licensor that a third party has offered or will soon offer for sale to a third party Articles bearing the Licensed Xxxx of at least $100,000 at wholesale cost, were the Articles legitimate, which offer is made in the U.S. or, (b) of at least $150,000 at wholesale cost in another country and there is reasonable likelihood of success based on both the facts and the country's past willingness to render judgments against trademark counterfeiters operating in its territory (with proof of same presented by Licensee), and (iii) Licensee has along with such prompt notice presented Licensor with reasonable proof of the foregoing sale or offer, including without limitation the identity and address(es) of the third-party Seller, the location where the counterfeit merchandise is maintained or to be shipped, and the proposed purchaser(s), if any, so as to enable Licensor to proceed expeditiously against the purported third-party Seller and Purchaser and; (ii) Licensor, after investigation of the facts relating to the foregoing notice, which investigation does not disprove the facts in the notice, fails to take reasonably prompt diligent action, first by cease and demand letter to the third-parties (if the purported sale is to post-date the notice), and if such letter is ineffective, fails to take legal action to enjoin the sale, then Licensee shall be entitled to terminate this Agreement on written notice, whereupon, the parties shall owe no further obligations on to the other, except to the extent previously accrued or as provided in Articles 12 and 15 of this Agreement.
H. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.
Appears in 1 contract
The Licensed Xxxx. X. 7.1 Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of use the Licensed Xxxx, the secondary meaning associated with in whole or in part, as a corporate name, trade name or domain name and shall not use the Licensed XxxxXxxx in combination with any other xxxx, design or designation unless approved by Licensor in writing.
7.2 Licensee acknowledges that, as between Licensee and Licensor, Licensor is the rights owner of Licensor with respect all right, title and interest in and to the Licensed Xxxx in the Territory in any form or embodiment thereof and is also the owner of the goodwill attached or which that shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, not do or suffer cause to be done, done any act or thing which that may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or whichthat, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's request, 7.3 Licensee shall execute any documents, including Registered User Agreements, documents reasonably required by Licensor to confirm the respective Licensor’s ownership of all rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, Licensor in connection with the filing and the prosecution by Licensor of applications in Licensor’s name to register or renew the Licensed Xxxx for the Products and the maintenance and renewal of such registrations as may issue. If requested to do so by Licensor, Licensee agrees to supply Licensor with samples of the trademark usages in question and other information which will enable Licensor to complete and obtain trademark applications or registrations, or to evaluate or oppose any trademark applications, registrations, or uses of other parties. As to those countries which require applications to register the Licensee as a registered user of a Licensed Xxxx used on or in connection with the Articles or which require the recordation of this Agreement, the Licensee agrees to execute and deliver to Licensor such documents as may be necessary and as are furnished by Licensor for such purposes.
7.4 Licensee shall keep appropriate records (including copies of pertinent invoices and correspondence) relating to the dates when each of the Licensed Marks is first placed on sale or sold hereunder in each jurisdiction country, and the dates of first use in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was made. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit against any royalties due Licensor from sales derived in the each country of such prosecutioneach different Licensed Xxxx on the Articles and any advertising materials.
C. 7.5 Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the all applicable legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisionsof each country. Also, Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings markings, and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name name, or other rights therein or pertaining thereto.
D. 7.6 Licensee shall never challenge the validity of not seek to register the Licensed Xxxx or any application variation or simulation thereof for registration thereofthe Products, store services, or any trademark registration hereof, other products or any rights of Licensor thereinservices. The foregoing shall not be deemed to prevent provisions of and the obligations of Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided hereinSection 7.6 shall survive Termination.
E. 7.7 In the event that Licensee learns of any infringement infringement, imitation, or imitation counterfeiting of the Licensed Xxxx or the Roddick Endorsement, Articles or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick EndorsementXxxx, Licensee shall promptly shall notify Licensor thereof. Thereupon, Licensor may take such action as it deems advisable for the protection of its rights in and to the Licensed Xxxx and, if reasonably requested to do so by Licensor, Licensee shall cooperate with Licensor in all respects at Licensor’s sole expense, including by being a plaintiff or co-plaintiff and by causing its officers to execute pleadings and other necessary documents. Any action contemplated by this Section 7.7 shall be controlled by Licensor. In no event, however, shall Licensor be required to take any action if Licensee it deems the taking of action reasonably it inadvisable to do so. . Licensor shall so and Licensee may not be required take any action with respect to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of the Licensed Xxxx without Licensor's breach of the representations made and obligations assumed herein’s prior written approval.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation. Licensee will use its best efforts to distribute Articles in the proper channels comparable to those of the brands outlined in Article 7 A (i) herein.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor and Ms. Xxxxx Xxxxxx in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States U.S. shall be at in the name of Licensor or Ms. Xxxxx Xxxxxx, as they may decide, the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due which will be split evenly between the Licensor from sales derived in the particular country where the application was madeand Licensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's (or Ms. Xxxxx Xxxxxx'x) name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit against any royalties due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining obtained therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick EndorsementXxxx, Licensee it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee it deems the taking of action reasonably it inadvisable to do so. . .
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein. Licensor and Ms. Xxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Xxxx in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Xxxxx Xxxxxx has a pending trademark application for the Licensed Xxxx in the United States Patent and Trademark Office in International Class 3 for fragrances; Serial No. 78/412749. However, Licensor and Ms. Xxxxx Xxxxxx, to the best of their knowledge, are not aware of any registrations or pending registrations in International Class 3 or otherwise, that would preclude or restrict Licensee from selling the Articles anywhere in the Territory.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Xxxx or detract from its reputation. Licensee will use its best efforts to distribute Articles in the proper channels comparable to those of the brands outlined in Article 7 A (i) herein.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor and Ms. Xxxxx Xxxxxx in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution outside the United States U.S. shall be at in the name of Licensor or Ms. Xxxxx Xxxxxx, as they may decide, the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due which will be split evenly between the Licensor from sales derived in the particular country where the application was madeand Licensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's (or Ms. Xxxxx Xxxxxx'x) name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit against any royalties due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining obtained therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns of any infringement or imitation of the Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a trademark similar to the Licensed Xxxx or the Roddick EndorsementXxxx, Licensee it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if Licensee it deems the taking of action reasonably it inadvisable to do so. . .
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein. Licensor and Ms. Xxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Xxxx in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Xxxxx Xxxxxx has a pending trademark application for the Licensed Xxxx in the United States Patent and Trademark Office in International Class 14 for watches and jewelry; Serial No. 76/604,205 of July 27, 2004 and a CTM application in the 25 cooperating countries of Europe for jewelry, Serial No. 4059631 of October 4, 2004. However, Licensor and Ms. Xxxxx Xxxxxx, to the best of their knowledge, are not aware of any registrations or pending registrations in International Class 14 or otherwise, that would preclude or restrict Licensee from selling the Articles anywhere in the Territory. However, Licensor is aware of an existing registration owned by Xxxxxxxx International, Inc. of 00 Xxxxxxx Xxxxx, Xxxxxxxx, XX 00000 for the xxxx XXXXXX for watches in International Class 14, Reg. No. 2,218,182 of January 19, 1999.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way materially adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may materially reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's ’s request, Licensee shall execute any documents, including Registered User Agreementsregistered user agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles Licensed Products sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the samesame in accordance with this Agreement. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee Licensor and Licensor shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeown Licensed Xxxx. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's ’s name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit for the monies it expended in connection therewith against any royalties Sales Royalty due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles Licensed Products and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's ’s failure to own or have the rights to license the Licensed Xxxx in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license the Licensed Xxxx, and that the Licensed Xxxx is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns shall promptly notify Licensor of any counterfeiting or other infringement or imitation of the Licensed Xxxx or the Roddick EndorsementXxxx, or any diversion of the Licensed Products from the Licensed Channels of Distribution, of which Licensee becomes aware. Licensor shall have the right, but not the obligation, to institute legal action or take any use other actions which it deems necessary to protect its interest in the Trademarks, and Licensee shall fully cooperate with Licensor in any such action, provided that any out-of-pocket expenses of Licensee incurred in connection therewith are paid or reimbursed by Licensor or credited against any person Sales Royalty due thereafter to Licensor. Any monetary recovery (the “Licensor Recovery”) resulting from any such action shall be allocated between Licensor and Licensee as follows: first, all out of a trademark similar pocket expenses incurred by Licensor and Licensee in prosecuting such action (the “Recovery Expenses”) shall be paid to Licensor and Licensee as actually incurred by each; second, Licensor shall be paid an amount equal to the Licensed Xxxx balance of the Licensor Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive fifty (50%) percent and Licensee shall receive fifty (50%) percent of the remaining balance of the Licensor Recovery. If Licensor declines to institute or the Roddick Endorsementcontinue any legal action, Licensee promptly may, with the consent of Licensor, which will not be unreasonably withheld, institute or continue same in its name, at its sole expense, in which event any monetary recovery (the “Licensee Recovery”) resulting therefrom shall notify be allocated between Licensor thereofand Licensee as follows: first, the Recovery Expenses shall be paid to Licensor and Licensee in the amounts actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensee Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive fifty (50%) percent and Licensee shall receive fifty (50%) percent of the remaining balance of the Licensee Recovery. In no eventShould the amount of the recovery under this paragraph not be sufficient to pay 100% of the Recovery Expenses, however, then the allocation hereunder shall be adjusted on a pro-rata basis in proportion to the relative amounts of Recovery Expenses incurred by each of Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . and Licensee.
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's ’s breach of the representations made and obligations assumed herein.
G. Ownership of all intellectual property rights, whether recognized currently or in the future, including, without limitation, copyright, patent, trade secret and trademark rights, in the Licensed Products and in all formulae, designs, logos, artwork, packaging, copy, literary text, advertising material and promotion material of any sort utilizing the Licensed Xxxx, including all such material developed by Licensee (collectively, the “Work”), shall vest in Licensor, and title thereof shall be in the name of Licensor. All such items and all Licensed Products shall bear the copyright and trademark notices as are reasonable and customary and any other legal notices, which Licensor may from time to time prescribe. Notwithstanding the foregoing, the parties hereto understand and agree that the formulae and scents shall be owned by a third-party fragrance house, which fragrance house shall agree, using the form of agreement annexed hereto as Exhibit __, directly with either Licensee or Perfumania and Licensor that, during and after the Term of the Agreement such formulae and scents shall be exclusive to Licensor. Any and all additions to, and new renderings, modifications or embellishments of the Work shall, notwithstanding their invention, creation and use by Licensee and/or its representatives, affiliates and/or sub-licensees, if applicable, be and remain the property of Licensor, and Licensor may use, and license others to use the Work, subject only to the provisions of this Agreement. Licensee shall advise Licensor of specific Work to be developed, designed and/or manufactured by third parties (collectively, “Developers”) and shall provide Licensor with the names and addresses of all such Developers. Licensee shall impose restrictions on such Developers, including but not limited to having such Developers execute confidentiality, trademarks acknowledgement and anti-pirating and anti-infringement agreements and/or letter agreements guaranteeing the Developers’ compliance with the provisions of this Agreement. Licensee shall obligate each Developer to covenant in its agreement that it will not subcontract any of its obligations to develop, design or manufacture Licensed Products or Work without the prior written approval by the Licensor. The right, title and interest in and to any samples or prototypes of the Work, including any modifications or improvements thereto, that are submitted by Licensee or Perfumania to Licensor for approval, but (i) which are not approved by Licensor (ii) not then used in connection with the Licensed Xxxx or the Licensed Products and (iii) are not confusingly similar to the Work ultimately approved or used by the Licensor in connection with the Licensed Xxxx (provided that any reference to or inclusion of the Licensed Xxxx is removed from such Work), shall revert to Licensee or, as applicable, to the designer or fragrance house that designed, developed prepared and provided such Work. Licensee agrees, if requested by Licensor, to utilize anti-counterfeiting stickers on the Licensed Products sold to customers who consent to the inclusion of such stickers on Licensed Products they purchased from Licensee or its sub-licensee or distributors.
H. Licensee shall not use any other tradenames, trademarks or other designations including, without limitation, Licensee’s own corporate name or tradename in connection with the Licensed Xxxx in any consumer advertising and publicity, labeling, packaging or printed matter utilized by Licensee in connection with the Licensed Products. Licensee may, however, use its own corporate name or tradename in connection with the Licensed Products in transactions between and among the parties hereto, and with Manufacturers, merchants, wholesale customers and others relating to: the manufacture of Licensed Products; the creation and development of designs, styles, advertising, promotional materials, packaging, printed matter and labeling of the Licensed Products; and the wholesale sale of the Licensed Products. Licensee shall not use its corporate name as a brand to associate it with or promote any Licensed Products. Licensee shall not use the Licensed Xxxx in combination with any other names or marks to form a new xxxx and shall not use the Licensed Xxxx as a tradename or in any other manner other than in connection with the manufacture, distribution, sale and promotion of Licensed Products under this Agreement. Licensee will at all times make reference on the Licensed Products and on all packaging and promotional materials used in connection therewith that the Licensed Xxxx is under license from the Licensor. For clarification purposes and avoidance of doubt, Licensee and its sub-licensees and distributors may use their corporate names on the labeling of Licensed Products to indicate the identity and location of the manufacturer and/or distributor of Licensed Products as is customary solely in order to comply with applicable labeling laws and regulations. Moreover, Licensee and its sublicensee Perfumania shall be permitted in trade press articles and media interviews or question and answer sessions, on their websites, in their catalogues and company literature to identify the Artist and the Licensed Products as one of several licensors and brands included in Licensee’s or its sublicensees’ or distributors’ catalogue of brands and product lines.
Appears in 1 contract
The Licensed Xxxx. X. Licensee shall not join any name or names with the Licensed Xxxx so as to form a new xxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Xxxx, the secondary meaning associated with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed Xxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Xxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Xxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way materially adversely affect any rights of Licensor in and to the Licensed Xxxx or any registrations thereof or which, directly or indirectly, may materially reduce the value of the Licensed Xxxx or detract from its reputation.
B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreementsregistered user agreements, reasonably required by Licensor to confirm the respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Xxxx for Articles Licensed Products sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the samesame in accordance with this Agreement. Such filings and prosecution outside the United States shall be at the expense of Licensee (Licensee shall pay for any application requested in advance) subject to a credit given on a country by country basis for such payments against any royalties due Licensor from sales derived in the particular country where the application was madeLicensor. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the United States U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. If the prosecution fails, Licensee shall receive no credit for the monies it expended in connection therewith; if the prosecution succeeds, Licensee shall be entitled to receive a credit for the monies it expended in connection therewith against any royalties Sales Royalty due Licensor from sales derived in the country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtaining therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles Licensed Products and on all materials on or in connection with which the Licensed Xxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own or have the rights to license the Licensed Xxxx `Xxxxx Xxxx' trademark in the United States of America, provided that it is established in a court of law that Licensor does not own or have the rights to license `Xxxxx Xxxx' trademark in the Licensed XxxxUnited States of America, and that the Licensed Xxxx `Xxxxx Xxxx' trademark is owned by a third party so as to preclude the grant of the license provided herein.
E. In the event that Licensee learns shall promptly notify Licensor of any counterfeiting or other infringement or imitation of the Licensed Xxxx or the Roddick EndorsementXxxx, or any diversion of the Licensed Products from the Licensed Channels of Distribution, of which Licensee becomes aware. Licensor shall have the right, but not the obligation, to institute legal action or take any use other actions which it deems necessary to protect its interest in the Trademarks, and Licensee shall fully cooperate with Licensor in any such action, provided that any out-of-pocket expenses of Licensee incurred in connection therewith are paid or reimbursed by Licensor or credited against any person Sales Royalty due thereafter to Licensor. Any monetary recovery (the "Licensor Recovery") resulting from any such action shall be allocated between Licensor and Licensee as follows: first, all out of a trademark similar pocket expenses incurred by Licensor and Licensee in prosecuting such action (the "Recovery Expenses") shall be paid to Licensor and Licensee as actually incurred by each; second, Licensor shall be paid an amount equal to the Licensed Xxxx balance of the Licensor Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensor Recovery. If Licensor declines to institute or the Roddick Endorsementcontinue any legal action, Licensee promptly may, with the consent of Licensor, which will not be unreasonably withheld, institute or continue same in its name, at its sole expense, in which event any monetary recovery (the "Licensee Recovery") resulting therefrom shall notify be allocated between Licensor thereofand Licensee as follows: first, the Recovery Expenses shall be paid to Licensor and Licensee in the amounts actually incurred by each; second, Licensor shall be paid an amount equal to the balance of the Licensee Recovery, after deducting the Recovery Expenses, times the Royalty Rate; and third, Licensor shall receive twenty-five (25%) percent and Licensee shall receive seventy-five (75%) percent of the remaining balance of the Licensee Recovery. In no eventShould the amount of the recovery under this paragraph not be sufficient to pay 100% of the Recovery Expenses, however, then the allocation hereunder shall be adjusted on a pro-rata basis in proportion to the relative amounts of Recovery Expenses incurred by each of Licensor be required to take any action if Licensee deems the taking of action reasonably inadvisable to do so. . and Licensee.
F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein.
G. Ownership of all intellectual property rights, whether recognized currently or in the future, including, without limitation, copyright, patent, trade secret and trademark rights, in the Licensed Products and in all formulae, designs, logos, artwork, packaging, copy, literary text, advertising material and promotion material of any sort utilizing the Licensed Xxxx, including all such material developed by Licensee (collectively, the "Work"), shall vest in Licensor, and title thereof shall be in the name of Licensor. All such items and all Licensed Products shall bear the copyright and trademark notices as are reasonable and customary and any other legal notices, which Licensor may from time to time prescribe. Notwithstanding the foregoing, the parties hereto understand and agree that the formulae and scents shall be owned by a third- party fragrance house, which fragrance house shall agree directly with either Licensee or Parlux and Licensor that, during and after the Term of the Agreement such formulae and scents shall be exclusive to Licensor. Any and all additions to, and new renderings, modifications or embellishments of the Work shall, notwithstanding their invention, creation and use by Licensee and/or its representatives, affiliates and/or sub-licensees, if applicable, be and remain the property of Licensor, and Licensor may use, and license others to use the Work, subject only to the provisions of this Agreement. Licensee shall advise Licensor of specific Work to be developed, designed and/or manufactured by third parties (collectively, "Developers") and shall provide Licensor with the names and addresses of all such Developers. Licensee shall impose restrictions on such Developers, including but not limited to having such Developers execute confidentiality, trademarks acknowledgement and anti-pirating and anti-infringement agreements and/or letter agreements guaranteeing the Developers' compliance with the provisions of this Agreement. Licensee shall obligate each Developer to covenant in its agreement that it will not subcontract any of its obligations to develop, design or manufacture Licensed Products or Work without the prior written approval by the Licensor. The right, title and interest in and to any samples or prototypes of the Work, including any modifications or improvements thereto, that are submitted by Licensee or Parlux to Licensor for approval, but (i) which are not approved by Licensor (ii) not then used in connection with the Licensed Xxxx or the Licensed Products and (iii) are not confusingly similar to the Work ultimately approved or used by the Licensor in connection with the Licensed Xxxx (provided that any reference to or inclusion of the Licensed Xxxx is removed from such Work), shall revert to Licensee or, as applicable, to the designer or fragrance house that designed, developed prepared and provided such Work.
H. Licensee shall not use any other tradenames, trademarks or other designations including, without limitation, Licensee's own corporate name or tradename in connection with the Licensed Xxxx in any consumer advertising and publicity, labeling, packaging or printed matter utilized by Licensee in connection with the Licensed Products. Licensee may, however, use its own corporate name or tradename in connection with the Licensed Products in transactions between and among the parties hereto, and with Manufacturers, merchants, wholesale customers and others relating to: the manufacture of Licensed Products; the creation and development of designs, styles, advertising, promotional materials, packaging, printed matter and labeling of the Licensed Products; and the wholesale sale of the Licensed Products. Licensee shall not use the Licensed Xxxx in combination with any other names or marks to form a new xxxx and shall not use the Licensed Xxxx as a tradename or in any other manner other than in connection with the manufacture, distribution, sale and promotion of Licensed Products under this Agreement. Licensee will at all times make reference on the Licensed Products and on all packaging and promotional materials used in connection therewith that the Licensed Xxxx is under license from the Licensor. For clarification purposes and avoidance of doubt, Licensee and its sub-licensees and distributors may use their corporate names on the labeling of Licensed Products to indicate the identity and location of the manufacturer and/or distributor of Licensed Products as is customary solely in order to comply with applicable labeling laws and regulations. Moreover, Licensee and its sublicensees and/or distributors shall be permitted in trade press articles and media interviews or question and answer sessions, on their websites, in their catalogues and company literature to identify the Artist and the Licensed Products as one of several licensors and brands included in Licensee's or its sublicensees' or distributors' catalogue of brands and product lines.
Appears in 1 contract
Samples: Sublicense (Parlux Fragrances Inc)
