EXHIBIT 10.9
TRADEMARK LICENSE AGREEMENT
AGREEMENT, dated as of September __, 1999, between Xxxxx Industries, Inc.,
a Delaware corporation ("Xxxxx"), and CIRCOR International, Inc., a Delaware
corporation ("Circor").
WHEREAS, pursuant to a Distribution Agreement dated as of September 16,
1999, by and between Circor and Xxxxx (the "Distribution Agreement"), Xxxxx will
distribute to its shareholders all of the Common Stock of Circor (the
"Distribution"); and
WHEREAS, following the Distribution, Circor will operate all of the
industrial, oil and gas product lines previously operated by Xxxxx (the
"Business"); and
WHEREAS, following the Distribution, Circor will own, directly or
indirectly, all of the outstanding capital stock of KF Industries, Inc.; and
WHEREAS, in connection with the Distribution, Xxxxx has agreed to license
use of its trademark and trade name "Xxxxx" to Circor for a limited period of
time;
NOW, THEREFORE, in consideration of the mutual promises and agreements
herein contained and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto hereby agree as
follows:
1. Grant of License. Xxxxx hereby grants to Circor a non-exclusive,
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worldwide right and license (the "License") to use the trademark and trade name
"Xxxxx" (the "Trademark") in the Business, and to sublicense the Trademark to
its wholly-owned subsidiaries, all on the terms and conditions set forth herein.
Nothing in this Agreement is intended to permit Circor to use the Trademark for
any other purpose.
2. Term; Effects of Termination.
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2.1 Term. The term of this Agreement (the "Term") shall commence on
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the date hereof and shall terminate upon the earlier of (i) the mutual agreement
of Xxxxx and Circor, or (ii) eighteen (18) months after the date of the
Distribution.
2.2 Right to Terminate. Xxxxx may terminate this Agreement, on prior
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written notice to Circor, in the event that: (i) Circor is in default of the
terms of this Agreement and such default continues for more than thirty (30)
days after written notice thereof to Circor; or (ii) Circor files a petition in
bankruptcy or is adjudicated a bankrupt or insolvent, or makes an assignment for
the benefit of creditors, or an arrangement pursuant to any bankruptcy law, or
if Circor discontinues or dissolves its business or if a receiver is appointed
for Circor or for Circor's business and such receiver is not discharged within
30 days.
2.3 Effect of Termination. Upon termination or expiration of this
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Agreement: (i) Circor shall cease and desist from use in any manner of the
Trademark; and (ii) Circor shall execute and deliver to Xxxxx any documents
reasonably requested by Xxxxx to confirm Xxxxx' ownership of the Trademark and
the termination of this Agreement.
3. Restrictions on Use.
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3.1 Quality, Use, Compliance with Laws. Circor shall use the
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Trademark only in a manner and form: (i) designed to maintain the high quality
of the Trademark; (ii) consistent with the use of the Trademark by Xxxxx; (iii)
that protects Xxxxx' ownership interest therein; and (iv) that complies will all
applicable federal, state, local and foreign laws, rules and regulations,
including, without limitation, all applicable trademark laws, rules and
regulations.
3.2 Quality Control. Xxxxx shall have the right to monitor and
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inspect the facilities and goods on which the Trademark is applied for the
purpose of protecting and maintaining the standards of quality established by
Xxxxx. If Xxxxx at any time finds that Circor's use of the Trademark is not
consistent with standards of quality acceptable to Xxxxx, Xxxxx may notify
Circor in writing of such deficiencies, and if Circor fails to correct such
deficiencies within thirty (30) days after receipt of such notice, Xxxxx may, at
its election, terminate this Agreement effective immediately. Circor shall
cause to appear on all materials on or in connection with which the Trademark is
used such reasonable legends, markings and notices as Xxxxx may reasonably
request.
3.3 Use In Conjunction with KF. Circor shall use the Trademark only
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in conjunction with the "KF" and "Contromatics" trademarks and trade names and
only in such a manner that "KF" or "Contromatics," as applicable, immediately
precedes the Trademark.
3.4 Benefit. Circor expressly acknowledges that its use of the
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Trademark hereunder inures to the benefit of Xxxxx and shall not confer on
Circor any proprietary rights to the Trademark, which shall at all times remain
with Xxxxx and its assignees.
3.5 Ownership of Trademark. Xxxxx expressly reserves the sole and
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exclusive ownership of the Trademark and all rights relating thereto. Circor
hereby acknowledges that Xxxxx is the sole and exclusive owner of the Trademark
and agrees not to challenge at any time, directly or indirectly, the rights of
Xxxxx thereto or the validity or distinctiveness thereof. Use of the Trademark
by Circor under this Agreement shall inure to the benefit of Licensor.
3.6 Protection of Trademark. Nothing in this Agreement is intended
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to nor shall it limit or impair Xxxxx' rights, during or after the Term, to
protect the Trademark from infringement by any person or party, including
without limitation, Circor. During and after the Term Xxxxx may, but shall not
be obligated to, take such action as it deems necessary or appropriate to
prevent or stop such infringement. Circor shall promptly notify Xxxxx in writing
of any infringement or suspected infringement involving the Trademark.
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3.7 No Impairment. Nothing in this Agreement is intended to nor
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shall it limit or impair Xxxxx' rights, during or after the Term, to use or
otherwise license the Trademark in any manner whatsoever.
4. Infringement; Limitation of Liability.
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4.1 Maintenance of Trademark. Circor shall use its best efforts not
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to do or permit to be done any act calculated or likely to prejudice, affect,
impair or destroy the title and interest of Xxxxx in and to the Trademark. If
Circor knows that any person, firm or corporation is infringing the Trademark,
Circor will promptly notify Xxxxx and cooperate fully with Xxxxx in the defense
and protection of the Trademark, provided that Circor will not be required to
make any payments to Xxxxx for costs incurred by Xxxxx in the defense and
protection of the Trademark. Xxxxx reserves the right to prosecute or defend,
at its own expense, all suits involving the Trademark and the protection
thereof.
4.2 Limitation of Liability. XXXXX MAKES NO REPRESENTATION OR
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WARRANTY WHATSOEVER, WHETHER EXPRESS OR IMPLIED, WITH RESPECT TO THE TRADEMARK.
XXXXX HEREBY DISCLAIMS ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
ANY PARTICULAR PURPOSE. IN NO EVENT SHALL XXXXX BE LIABLE TO Circor HEREUNDER
FOR ANY DIRECT OR INDIRECT, SPECIAL, CONSEQUENTIAL, PUNITIVE OR INCIDENTAL
DAMAGES.
5. Injunctive Relief. Circor acknowledges that money damages would not
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adequately compensate Xxxxx in the event of a breach by Circor of its
obligations hereunder, and that injunctive relief would be essential for Xxxxx
to adequately protect itself hereunder. Accordingly, Circor agrees that, in
addition to any other remedies available to Xxxxx at law or in equity, Xxxxx
shall be entitled to injunctive relief in the event Circor is in breach of any
covenant or agreement contained herein.
6. Miscellaneous.
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6.1 Governing Law. This Agreement shall be construed in accordance
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with, and governed by, the laws of the Commonwealth of Massachusetts, without
regard to the conflicts of law rules of such Commonwealth.
6.2 Entire Agreement. This Agreement sets forth the entire agreement
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between the parties hereto with respect to the subject matter hereof and is
intended to supersede all prior negotiations, understandings and agreements. No
provision of this Agreement may be waived or amended, except by a writing signed
by Xxxxx and Circor.
6.3 Counterparts. This Agreement may be executed in one or more
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counterparts, each of which shall be deemed an original and together which shall
constitute one and the same instrument.
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6.4 Waiver. The failure of any party to exercise any right or remedy
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provided for herein shall not be deemed a waiver of any right or remedy
hereunder.
6.5 Severability. If any provision of this Agreement is determined by
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a court of competent jurisdiction to be invalid or otherwise unenforceable, such
determination shall not affect the validity or enforceability of any remaining
provisions of this Agreement. If any provision of this Agreement is invalid
under any applicable statute or rule of law, it shall be enforced to the maximum
extent possible so as to effect the intent of the parties, and the remainder of
this Agreement shall continue in full force and effect.
6.6 Notices. All notices or other communications required or
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permitted to be given by either party to the other party hereunder shall be
given in the manner and to the addresses specified in the Distribution
Agreement.
6.7 Assignment. This Agreement shall be binding upon and inure to the
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benefit of each of the parties hereto and their respective successors and
assigns, provided that Circor may not assign any of its rights hereunder without
the prior written consent of Xxxxx.
6.8 Section Headings. The section headings used herein are for the
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convenience of the parties only, are not substantive and shall not be used to
interpret or construe any of the provisions contained herein.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first set forth above.
XXXXX INDUSTRIES, INC. CIRCOR INTERNATIONAL, INC.
By ________________________ By __________________________
Title: Title:
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