Common use of Trademark Clause in Contracts

Trademark. 3.1 Subject to the terms of this Agreement, ZOGENIX hereby grants to DESITIN, its Affiliates and permitted sub-licensees a license to the Trademark for no additional consideration. 3.2 DESITIN will use the Trademark to identify the Product and in its development and commercialisation of the Product in the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in Clause 3.1 of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement of the Trademark. ZOGENIX shall determine in its sole discretion what action, if any, to take in response to the infringement or threatened infringement of the Trademark.

Appears in 2 contracts

Samples: Licensing and Distribution Agreement (Zogenix Inc), Licensing and Distribution Agreement (Zogenix Inc)

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Trademark. 3.1 Subject (a) Lexicon filed an application for registration of the name “Xermelo” with the Office for Harmonization in the Internal Market and such registration was approved by the EMA on 25 April 2014. (b) Lexicon shall be responsible for securing and for maintaining at Xxxxx’x expense the Licensed Trademark in the Licensed Territory and shall use Diligent Efforts in that regard. In the event Lexicon is unable to obtain or maintain the Licensed Trademark in some country(ies) in the Licensed Territory, the Parties shall negotiate in good faith concerning the selection of such other trademarks (i.e., back-up names) as may be available for marketing the Licensed Product in those countries. (c) All rights granted hereunder to Ipsen with respect to the terms of this AgreementLicensed Trademark shall be exercised, ZOGENIX hereby grants and all Licensed Products bearing the Licensed Trademark shall be manufactured, in accordance with quality standards established by the JCC, which quality standards shall be approved by Lexicon for consistency with the quality standards applied by Lexicon to DESITINits own products and the Parties shall reasonably cooperate to enable Lexicon to monitor Xxxxx’x compliance with such quality standards. (d) Confusion with LX1033. To avoid any confusion or association with its other small molecule inhibitor TPH LX1033, its Affiliates and permitted sub-licensees if Lexicon continues to directly or indirectly, or through any Third Party, develop, commercialize, distribute or otherwise exploit LX1033, Lexicon agrees that: (i) it will not seek Marketing Authorization for LX1033 in the Licensed Territory under: (A) the Licensed Trademark, or (B) a license tradename that is identical, similar to or is confusingly similar to the Trademark for no additional considerationLicensed Trademark. 3.2 DESITIN (ii) Following the Effective Date, Lexicon will use reasonable efforts to have the EMA approve the invented name “Xermelo” to apply to the Licensed Product designated under the INN “telotristat etiprate”. (iii) Lexicon agrees to request an INN for LX1033 other than “telotristat” with the World Health Organization (“WHO”) and a new United States Adopted Name (“USAN”) for LX1033 with the United States Adopted Name Council (“USAN Council”). (e) The Parties shall cooperate with each other and use Diligent Efforts to protect the Licensed Trademark from infringement by Third Parties in the Licensed Territory. Without limiting the foregoing, each Party shall promptly notify the other Party of any known, threatened or suspected infringement, imitation or unauthorized use of or unfair competition relating to identify the Product and Licensed Trademark in the Licensed Territory. Lexicon shall have the first right to determine in its development discretion whether to and commercialisation to what extent to institute, prosecute and/or defend any action or proceedings involving or affecting any rights relating to the Licensed Trademark. Upon Lexicon’s reasonable request, Ipsen shall cooperate with and assist Lexicon in any of Lexicon’s enforcement efforts with respect to the Licensed Trademark. Lexicon shall promptly inform Ipsen if Lexicon elects not to take action against any actual or suspected infringement of the Licensed Trademark in the Licensed Territory, in which case, Ipsen shall then have the right, but not the obligation, to bring or assume control of any such action against the allegedly infringing Third Party as Ipsen determines may be necessary, provided however, that Ipsen shall not enter into any settlement or compromise of any claim relating to the Licensed Trademark without the prior written consent of Lexicon. In the event that Ipsen brings or assumes control of any such action, then Lexicon agrees to reasonably assist Ipsen in connection therewith. In either case, the Party that initiated and prosecuted, or maintained the defense of the action shall bear all of the costs and expenses (including reasonable attorneys’ fees) incurred in connection with the action and shall be entitled to recoup those amounts in the event of recovery, by settlement or otherwise. The amount of any recovery remaining as to any such infringement in the Licensed Territory shall be shared equally by the Parties. (f) The Parties, including any future licensee of Lexicon in the Lexicon Territory, to the extent reasonably feasible shall collaborate to have a global, worldwide trademark to be used on the Licensed Product in the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX Licensed Territory and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Lexicon Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in Clause 3.1 of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement of the Trademark. ZOGENIX shall determine in its sole discretion what action, if any, to take in response to the infringement or threatened infringement of the Trademark.

Appears in 2 contracts

Samples: License and Collaboration Agreement (Lexicon Pharmaceuticals, Inc.), License and Collaboration Agreement (Lexicon Pharmaceuticals, Inc./De)

Trademark. 3.1 Subject (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject to the terms prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this Agreementpurpose, ZOGENIX then Chiesi shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to DESITINChiesi the exclusive, its Affiliates royalty-free, perpetual, irrevocable, right and permitted sublicense (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-licensees a distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark for no additional consideration. 3.2 DESITIN will use “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark to identify the Product and in its development and commercialisation “Glybera”. Chiesi shall ensure appropriate use of the Product trademark “Glybera” at all times in the Territoryentire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). ThereforeChiesi shall not, DESITIN shall use during the Trademark as part of the Product name along with such other words as ZOGENIX Term or thereafter, register, use, or attempt to obtain any right in and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX thereintrademarks “Glybera” and “uniQure”, or (B) use any trademarks name, logo or trade names so resembling trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to be likely continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to cause confusion or deception. 3.5 DESITIN shall not havedoing so and shall, assert or acquire any upon request of Chiesi transfer all right, title or and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the goodwill pertaining “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, except as explicitly provided in Clause 3.1 after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement such Trademark anywhere inside or threatened infringement outside of the Trademark. ZOGENIX Territory it shall determine inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in its sole discretion what action, if any, such Trademark in such country or jurisdiction to take uniQure for further prosecution and maintenance by uniQure in response to the infringement or threatened infringement of the TrademarkuniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 2 contracts

Samples: Commercialization Agreement (uniQure B.V.), Commercialization Agreement (uniQure B.V.)

Trademark. 3.1 Subject 7.2.1 All right, title, and interest in and to the terms Licensed Marks, other than HG’s right to use as described in Section 3.1, above, shall remain with Fallbrook. During the term of this AgreementAgreement and thereafter, ZOGENIX hereby grants to DESITINHG will not contest Fallbrook’s exclusive right, its Affiliates title and permitted sub-licensees a interest in and to, or the validity of, the Licensed Marks. In addition, HG will not in any manner represent that it has any interest in the Licensed Marks, except for the limited license to the Trademark for no additional consideration. 3.2 DESITIN will use the Trademark to identify the Product and in its development and commercialisation provided herein. Use of the Product in the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered Licensed Marks by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees HG shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire confer upon HG any right, title or interest in or to the Trademark or the goodwill pertaining theretoLicensed Marks, except for the limited license provided for herein, and all such use by HG of the Licensed Marks, including any goodwill generated therefrom, shall inure to the sole benefit of and be on behalf of Fallbrook. 7.2.2 HG may incorporate the Licensed Marks on the Transaxle at HG’s sole discretion and shall incorporate the Licensed Marks on marketing, promotional and sales literature relating to the Product. HG agrees that use by HG of the Licensed Marks, as explicitly provided herein, shall be in accordance with all applicable law and regulations, shall conform with all written style and other guidelines provided by Fallbrook from time to time, shall be of high quality and standards and shall not adversely affect the good name of Fallbrook including for example, and not limitation, usage of the Licensed Marks on Products not conforming to the quality standards provided in Clause 3.1 of this AgreementSection 5.5. HG will not use any marks or names confusingly similar to the Licensed Marks. HG shall not (i) use any other trademark, service xxxx or trade name on the materials or in close proximity to any Licensed Xxxx other than any HG trademark, service xxxx or trade name or (ii) combine the marks so as to possibly create a unitary composite xxxx. 3.6 DESITIN 7.2.3 Fallbrook shall give ZOGENIX prompt notice have the right, but not the obligation, to file in the appropriate offices, at its own expense, trademark or design applications relating to the Licensed Marks, such filings to be made in the name of Fallbrook or in the name of any infringement or threatened infringement third party selected by Fallbrook. To assist Fallbrook with its registration of the TrademarkLicensed Xxxx in the name of Fallbrook, HG, at Fallbrook’s request and expense, shall promptly perform any act necessary for Fallbrook to secure or maintain any and all Fallbrook trademark rights. ZOGENIX shall HG agrees not to register any Licensed Xxxx in HG’s name or any confusingly similar trademark in any country, in any character form, as Fallbrook may determine in its sole discretion what actiondiscretion. 7.2.4 With respect to each Product that HG proposes to offer for sale or sell under this Agreement, if anyand each marketing, to take in response promotional or sales literature relating to the infringement Product that HG intends to use and which uses or threatened infringement incorporates the Licensed Xxxx, HG shall first submit to Fallbrook a sample of the Trademarksuch Product or literature for Fallbrook’s prior review and written approval or disapproval, which review shall be based upon those standards for all Products and Licensed Marks that are promulgated by, and as may from time to time be amended by Fallbrook. If Fallbrook does not disapprove a sample within ten (10) business days after receipt from HG, then such sample shall be deemed to be approved by HG.

Appears in 1 contract

Samples: Manufacturing License Agreement (Fallbrook Technologies Inc)

Trademark. 3.1 Subject to 8.1 Honeywell hereby grants Distributor a non-exclusive, royalty free sublicense during the terms term of this Agreement, ZOGENIX hereby grants to DESITINuse the trademarks, its Affiliates names and permitted sub-licensees a license related designs applicable to the Trademark for no additional consideration. 3.2 DESITIN will use Products set out in Schedule A (collectively, the Trademark to identify the Product and “Trademarks”) in its development and commercialisation of the Product a form approved in the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territorywriting by Honeywell. The Trademark Trademarks shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used solely in connection with sale the marketing, sale, installation, and marketing servicing of Products. Use of or linkage between any of Honeywell’s domain names, websites or URLs, or those of Honeywell’s affiliates, and any of Distributor’s must be approved by Honeywell in advance in writing. All such use will be in accordance with the Trademark Use Guidelines as set out in Schedule G and as Honeywell notifies Distributor from time to time. Upon expiration or termination of this Agreement, Distributor shall immediately cease any and all use of the Product within the Field and other activities Trademarks in any manner. The rights granted to Distributor pursuant to this Agreement are personal to Distributor and may not be transferred, assigned or sublicensed, by operation of law or otherwise, nor may Distributor delegate its obligations hereunder without the written consent of Honeywell. 8.2 All such Trademarks, trade names, other marks, product names, domain names, web sites, registrations, URLs, other proprietary information, as well as Honeywell’s patents, and those of Honeywell’s affiliates, are recognized by Distributor as the exclusive intellectual property of Honeywell International Inc. and its affiliates. All goodwill resulting from the use of the Trademarks by Distributor, including any additional goodwill that may develop because of Distributor’s use of the Trademarks shall inure solely to the benefit of Honeywell International Inc and its affiliates and Distributor shall not acquire any rights in the Territory. 3.4 DESITIN shall ensure that each Trademarks except the limited use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIXrights specifically granted in this Agreement. DESITIN, its Affiliates and permitted sub-licensees Distributor shall not (Ai) use the Trademark Trademarks in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or any manner likely to diminish their commercial value; (Bii) knowingly use any trademarks name, domain name, social media name, logo or trade names so resembling the Trademark as to be icon likely to cause confusion with the Trademarks; (iii) make any representation to the effect that the Trademarks are owned by Distributor; (iv) file or deceptionobtain, or cause any third party to file or obtain, any applications or registrations or domain names for the Trademarks or any terms confusingly similar to the Trademarks; or (v) challenge the validity of Honeywell Inc's (or its affiliates’) ownership of the Trademarks. Distributor further shall not at any time, either during the life of or after expiration of this Agreement, contest the validity of the Trademarks or assert or claim any other right to manufacture, sell or offer for sale products under the Trademarks, or any trademark confusingly similar thereto. 3.5 DESITIN 8.3 All materials of any kind which contain the Trademarks which Distributor intends to use and its proposed placement must be approved in advance and in writing (including facsimile) by Honeywell to ensure proper trademark usage by Distributor. Honeywell shall promptly review such Copy received from Distributor and shall not haveunreasonably withhold its consent. Such Copy shall be deemed disapproved if Honeywell does not provide a reply to Distributor within fifteen (15) business days of Honeywell’s receipt of such proposed Copy. Honeywell may refuse to approve, assert and Distributor shall not distribute, any materials containing or acquire any right, title or interest in or referring to the Trademark that derogates, erodes or tends to tarnish the goodwill pertaining theretoTrademark, except as explicitly provided in Clause 3.1 of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement otherwise diminish the value of the Trademark, in Honeywell’s opinion. 8.4 Distributor will promptly inform Honeywell of any actual or possible infringement of such intellectual property which comes to Distributor’s attention. ZOGENIX shall determine Honeywell may decide in its sole discretion whether and what action, if any, steps should be taken to take in response to the infringement prevent or threatened terminate infringement of the TrademarkTrademarks in the Territory, including the institution of legal proceedings and settlement of any claim or proceeding. Distributor will provide or procure reasonable assistance, such as the furnishing of documents and information and the execution of all reasonably necessary documents, as Honeywell may reasonably request.

Appears in 1 contract

Samples: Distributor Agreement

Trademark. 3.1 Subject The Parties agree that Group A transfers and licenses the trademarks of which it has ownership and full right of disposition and are related to Group B’s business (“Trademark”) and Trademark under registration application on the effective date of this Agreement (“Trademark Application”) to Group B with a total consideration of RMB 10.9 million (tax inclusive) (including the consideration of transfer and the fees of license). Party B shall pay or procure Group B to pay within ten working days upon receipt of a valid tax invoice from Group A. And: 1.1 Group A transfers the Trademarks of which it has ownership and full right of disposition and are solely related to Group B’s business, which is allowed to be transferred independently in accordance with relevant laws and regulations (“Transferred Trademark”) and the Trademark Applications (“Transferred Application”) to Group B. The exclusive right to use the Trademarks of the Transferred Trademarks shall be enjoyed by Group B from the announcement date of State Administration of Industry and Commerce after its approval (“Announcement Date”). From the effective date of this Agreement to the terms Announcement Date (“Trademark Transition Period”), Group A grants an irrevocable license of this Agreementthe Transferred Trademarks to Group B, ZOGENIX hereby grants allowing Group B to DESITIN, its Affiliates and permitted sub-licensees a license to the Trademark for no additional consideration. 3.2 DESITIN will use the Trademark to identify by any means as permitted by the Product law. Group B shall undertake all the rights and in its development and commercialisation obligations of the Product in Transferred Applications and its relevant Trademark since the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in Clause 3.1 effective date of this Agreement. 3.6 DESITIN 1.2 Group A exclusively authorizes Group B to use the Trademarks and Trademark Applications of which it has ownership and full right of disposition and are solely related to Group B’s business, which is not allowed to be transferred independently in accordance with relevant laws and regulations (“Exclusively Licensed Trademark”), including but not limited to “Kingsoft Network”, “Kingsoft Duba Antivirus” and etc., by any means as permitted by the law, and without Party B’s prior written consent, Group A shall give ZOGENIX prompt notice not use the Exclusively Licensed Trademark under circumstances other than advertising, introducing or presenting Group A and Group B. However, Group A is entitled to use or authorize a third party to use the Exclusive Licensing Trademarks related to Information Security within Japan. 1.3 With respect to the Trademarks and Trademark Applications of which Group A has ownership and full right of disposition and are related to both of Group A and Group B’s business (“General License Trademark”), including but not limited to “ ” (Note: Chinese version of “Kingsoft”) and “Kingsoft”, Group A authorizes Group B to use within the field of Group B’s business and its relevant products and services (including but not limited to Information Security, computer software, browser, mobile internet applications, internet advertisement and value-added service) which are not in competition with Group A’s other business lines, within the approved region(s) of Trademarks or regions covered by the Trademark Applications by any infringement means as permitted by the laws. Such authorization shall be non-exclusive and shall not be sub-licensed. However, Group A shall not use nor authorize a third party to use the General License Trademarks in products or threatened infringement services (except for advertising or introducing Group A and Group B) major in antivirus, antimalware, personal firewall, system cleaning and optimization software for PC and security and system optimization software of mobile internet (“Information Security”). However, Group A is entitled to use or authorize a third party to use the General License Trademark related to Information Security within Japan. 1.4 With regard to the term of license under Clause 1.2 and 1.3 of Article One (1) hereof, it shall be its validity period for Trademarks (including those become Trademarks after approval which are under application presently) and it shall be the valid period of the Trademark. ZOGENIX shall determine in its sole discretion what action, if any, to take in response to Trademarks under application until the infringement applications are rejected or threatened infringement of the Trademarkbecome invalid.

Appears in 1 contract

Samples: Intellectual Property Transfer and License Framework Agreement (Cheetah Mobile Inc.)

Trademark. 3.1 Subject (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject to the terms prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this Agreementpurpose, ZOGENIX then Chiesi shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [†] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to DESITINChiesi the exclusive, its Affiliates royalty-free, perpetual, irrevocable, right and permitted sublicense (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-licensees a distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark for no additional consideration. 3.2 DESITIN will use “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark to identify the Product and in its development and commercialisation “Glybera”. Chiesi shall ensure appropriate use of the Product trademark “Glybera” at all times in the Territoryentire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). ThereforeChiesi shall not, DESITIN shall use during the Trademark as part of the Product name along with such other words as ZOGENIX Term or thereafter, register, use, or attempt to obtain any right in and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX thereintrademarks “Glybera” and “uniQure”, or (B) use any trademarks name, logo or trade names so resembling trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country [†] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to be likely continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [†] days prior to cause confusion or deception. 3.5 DESITIN shall not havedoing so and shall, assert or acquire any upon request of Chiesi transfer all right, title or and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the goodwill pertaining “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, except as explicitly provided in Clause 3.1 after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement such Trademark anywhere inside or threatened infringement outside of the Trademark. ZOGENIX Territory it shall determine inform uniQure at least [†] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in its sole discretion what action, if any, such Trademark in such country or jurisdiction to take uniQure for further prosecution and maintenance by uniQure in response to the infringement or threatened infringement of the TrademarkuniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 1 contract

Samples: Sublicense and Research Agreement (Xenon Pharmaceuticals Inc.)

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Trademark. 3.1 Subject (a) During the Term, Licensee shall be the sole owner of the Assigned Trademarks and solely responsible, at its own cost, for the registration, filing, and maintenance of the Assigned Trademarks. Licensee shall keep Lipocine reasonably informed with respect to such activities, consult in good faith with Lipocine regarding such activities, and provide Lipocine with copies of all of material communications and filings with the trademark authority. Licensee shall not abandon the Assigned Trademark without Lipocine’s prior written consent. In the event Licensee materially fails to fulfill its obligations under this Section 5.9 and such failure materially adversely affects Lipocine or the Assigned Trademarks, Licensee shall assign back to Lipocine the Assigned Trademark and all associated goodwill therein within [***] days following notice of such failure from Lipocine if Licensee fails to cure such failure within such [***] day notice period. In the event the Assigned Trademark and all associated goodwill is assigned back to Lipocine, such Assigned Trademark and all associated goodwill shall automatically be deemed licensed to Licensee and shall be considered Licensed Technology, subject to the terms and conditions of this Agreement, ZOGENIX hereby grants to DESITIN, its Affiliates and permitted sub-licensees a license including Section 5.9(c). (b) In addition to the Trademark Assigned Trademark, Licensee shall have the right to use and apply for no additional considerationtrademarks for Licensed Products (including for the Second Product if applicable) for use in the Field in the Territory (“Additional Trademarks”). Licensee shall be the sole owner of any Additional Trademarks and shall be solely responsible, at its own cost, for the registration, filing, and maintenance of any Additional Trademark. For avoidance of doubt, subject to Section 5.9(c), Lipocine shall have the right to use and apply for any trademark for Licensed Products outside the Field in the Territory and outside the Territory inside or outside the Field. 3.2 DESITIN will (c) Neither Party shall, directly or indirectly: (i) use in their respective businesses, any trademark that is confusingly similar to, misleading or deceptive with respect to or that dilutes any Assigned Trademark or Additional Trademark, (ii) do any act which endangers, destroys, or similarly affects, in any material respect, the Trademark to identify the Product and in its development and commercialisation value of the Product goodwill pertaining to the Assigned Trademark or Additional Trademark, or (iii) attack, dispute, or contest the validity of or ownership of the Assigned Trademark or Additional Trademark. Licensee shall conform to the customary industry standards for the protection of the Assigned Trademark and Additional Trademark with respect to manner of use of the Assigned Trademark and Additional Trademark in the Territory. Therefore, DESITIN shall use the Trademark as part of the Product name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN (d) Licensee shall ensure that each use by itinclude, its Affiliates and permitted sub-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark extent permitted by Applicable Law, on the label or package insert of each unit of Licensed Product intended for sale a statement that such Licensed Product (but not the goodwill pertaining theretoAssigned Trademark) “is produced under license from Lipocine, except Inc.” or a similar phrase as explicitly provided in Clause 3.1 mutually agreed by the Parties. Licensee shall mxxx the Licensed Products with the patent numbers of this Agreementall applicable Licensed Patents, consistent with Applicable Laws, including patent marking statutes. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement of the Trademark. ZOGENIX shall determine in its sole discretion what action, if any, to take in response to the infringement or threatened infringement of the Trademark.

Appears in 1 contract

Samples: License Agreement (Lipocine Inc.)

Trademark. 3.1 Subject The Licensed Products sold in the Territory shall bear a trademark ("Trademark") chosen and owned by Peninsula. Peninsula, at its reasonable discretion, may use the trademark (if any) owned by Shionogi for the marketing of the Licensed Products (the "Shionogi Trademark") for so long as Peninsula markets the Licensed Products. If Peninsula desires to use the Shionogi Trademark, then to the terms extent legally permitted, Shionogi shall grant the right to use the Shionogi Trademark for such purpose free of charge during the term of this Agreement. The Licensed Products sold in the Territory shall bear the Shionogi name or logo (the "Marks"), ZOGENIX hereby as provided in Subsection 6.3(b), and Shionogi grants Peninsula the right to DESITIN, its Affiliates and permitted sub-licensees a license use the Marks to the Trademark extent necessary for no additional consideration. 3.2 DESITIN will use Peninsula to fulfill the Trademark obligations set forth in Subsection 6.3(b) applicable to identify the Product and in its development and commercialisation of the Product Licensed Products sold in the Territory. ThereforePeninsula will have no obligation to pay royalties for such use of the Marks and Shionogi Trademark during the term the Agreement. If Shionogi desires to use the Trademark owned or Controlled by Peninsula to market products containing the Compound outside the Territory, DESITIN then to the extent legally permitted, Peninsula shall grant the right to use the Trademark for such purpose free of charge for so long as Shionogi (or its licensee) markets and sells any products containing the Compound outside the Territory. Shionogi shall not use the [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. Trademark outside the scope of this Agreement and shall use the Trademark as part of the Product name along in accordance with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted subPeninsula's then-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in Clause 3.1 of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement of the Trademark. ZOGENIX shall determine in its sole discretion what actioncurrent reasonable trademark guidelines, if any, as provided to take Shionogi in response writing in advance of any such use as they may be updated from time to the infringement time by Peninsula, or threatened infringement of the Trademarkalternatively, with Peninsula's prior written approval for such use.

Appears in 1 contract

Samples: License Agreement (Peninsula Pharmaceuticals Inc)

Trademark. 3.1 Subject The Licensed Products sold in the Territory shall bear a trademark ("Trademark") chosen and owned by Peninsula. Peninsula, at its reasonable discretion, may use the trademark (if any) owned by Shionogi for the marketing of the Licensed Products (the "Shionogi Trademark") for so long as Peninsula markets the Licensed Products. If Peninsula desires to use the Shionogi Trademark, then to the terms extent legally permitted, Shionogi shall grant the right to use the Shionogi Trademark for such purpose free of charge during the term of this Agreement. The Licensed Products sold in the Territory shall bear the Shionogi name or logo (the "Marks"), ZOGENIX hereby as provided in Subsection 6.3(b), and Shionogi grants Peninsula the right to DESITIN, its Affiliates and permitted sub-licensees a license use the Marks to the Trademark extent necessary for no additional consideration. 3.2 DESITIN will use Peninsula to fulfill the Trademark obligations set forth in Subsection 6.3(b) applicable to identify the Product and in its development and commercialisation of the Product Licensed Products sold in the Territory. ThereforePeninsula will have no obligation to pay royalties for such use of the Marks and Shionogi Trademark during the term the Agreement. If Shionogi desires to use the Trademark owned or Controlled by Peninsula to market products containing the Compound outside the Territory, DESITIN then to the extent legally permitted, Peninsula shall grant the right to use the Trademark for such purpose free of charge for so long as Shionogi (or its licensee) markets and sells any products containing the Compound outside the Territory. Shionogi shall not use the Trademark outside the scope of this Agreement and shall use the Trademark as part of the Product name along in accordance with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. 3.4 DESITIN shall ensure that each use by it, its Affiliates and permitted subPeninsula's then-licensees of the Trademark is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, its Affiliates and permitted sub-licensees shall not (A) use the Trademark in a way that might materially prejudice its distinctiveness or validity or the goodwill of ZOGENIX therein, or (B) use any trademarks or trade names so resembling the Trademark as to be likely to cause confusion or deception. 3.5 DESITIN shall not have, assert or acquire any right, title or interest in or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in Clause 3.1 of this Agreement. 3.6 DESITIN shall give ZOGENIX prompt notice of any infringement or threatened infringement of the Trademark. ZOGENIX shall determine in its sole discretion what actioncurrent reasonable trademark guidelines, if any, as provided to take Shionogi in response writing in advance of any such use as they may be updated from time to the infringement time by Peninsula, or threatened infringement of the Trademarkalternatively, with Peninsula's prior written approval for such use. [*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.

Appears in 1 contract

Samples: License Agreement (Peninsula Pharmaceuticals Inc)