LICENSE AND MARKETING AGREEMENT
This agreement made as of the 9th day of March, 1994 by and between TRB
SYSTEMS INC., a New York corporation with a business address at 000
Xxxxxxxxxx Xxxxxxx, Xxxxx Xx. 00. Xxxxxxxxxx, Xxx Xxxxxx 00000 (hereinafter
called "LICENSOR"), and STELLA KUJEMBOLA, an individual with a business
address at 000 Xxxxxx Xxxxxx, Xxxxx X-0, Xxx Xxxxxxxxx, Xxx Xxxxxx 00000
(hereinafter called to as "LICENSEE").
WHEREAS, LICENSOR owns or controls patents, trademarks, tradenames and
know-how relating to bicycles with variable speed lever action drive
and their manufacture; and
WHEREAS, LICENSEE desires to obtain from LICENSOR (i) licenses under
tradenames, trademarks and proprietary know-how of LICENSOR applicable
to such bicycles, (ii) to the extent LICENSOR has or controls patents
applicable to such bicycles in the relevant territory described in
this Agreement, licenses under such patents, and (iii) technical
assistance related to such bicycles, together with the exclusive right to
assemble, use, import, sell, and distribute such bicycles within the
relevant territory in conformity with the standard quality control and
design requirements established by LICENSOR.
In consideration of the mutual covenants, terms and conditions
hereinafter set forth, the parties hereto mutually agree as follows
herein:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the terms listed below shall be defined,
whether in the singular or in the plural, as follows:
1.1 Affiliate - Any corporation or other business entity in which a
party hereto, directly or through one or more affiliates, (i) owns more
than fifty percent (50%) of the stock entitled to vote for the election
of directors, or (ii) otherwise exercises a controlling interest in the
management in such corporation or entity, LICENSOR to determine, in its
sole judgment, whether such controlling interest exists.
1.2 Agreement - This License and Marketing Agreement, including the
Appendices and Exhibits hereto, as the same may be amended from time to
time.
1.3 Anniversary Date - The date which occurs one (1) year from the
date of this Agreement and each succeeding anniversary thereof.
03/09/94/RRI/09152/001/AGREE-11/71484.1
1.4 Gross Sales - For any period controlled by this Agreement, the total
of all sales of units of Licensed Product during the period at invoiced
prices, not reduced by discounts allowances or other adjustments other
than defective returns. For purposes of this definition, a transfer of
a completed unit will be deemed a sale hereunder and the invoice price
will be the amount actually billed but will be no less than the LICENSEE's
wholesale list price for such a unit of the Licensed Products as published
and distributed to the trade.
1.5 Know-How - All of the ideas, concepts, technical information,
inventions, materials (including, without limitation, drawings and
specifications) and processes used in the Licensed Products and the
assembly and servicing thereof.
184
1.6 Licensed Products - Invention(s) covered by the patents and
know-how relating to a bicycle with a variable lever action drive
and components or parts thereof, including but not limited to those
listed in Appendix I attached hereto.
1.7 Patents - Any and all patents and patent applications in the
Territory covering the Licensed Products or any component part thereof
either now or hereinafter during the duration of the patent or the
term of this Agreement, whichever is longer, owned or controlled by
LICENSOR or any Affiliate thereof, as listed in Appendix III attached
hereto and/or to be listed and added in the future.
1.8 Territory - The geographic area listed in Appendix II attached
hereto.
1.9 Trademarks The trademark, logo, and tradename "TRB" and
those included in Appendix IV attached hereto, and any and all other
trademarks, logos and tradenames to be used, developed and obtained
by LICENSOR or any Affiliate thereof and as may be added to Appendix
IV by LICENSOR during the term of this Agreement.
ARTICLE II- LICENSE GRANTS
2.1 Patents - LICENSOR hereby grants to LICENSEE the exclusive right
and license in the Territory to assemble, use, import, sell and distribute
bicycles containing the inventions and improvements covered by the
Patents in the Territory.
2.2 Trademarks - LICENSOR hereby grants to LICENSEE the exclusive
right and license to use, and LICENSEE hereby undertakes to use, the
Trademarks in the Territory in connection with the Licensed Product.
2.3 Know-How - LICENSOR hereby grants to LICENSEE the exclusive
right and license in the Territory to use the Know-How that is now
in the possession of LICENSOR or that will be developed or acquired
by LICENSOR during the term of this Agreement.
03/09/94/RRI/09152/001/AGREE-11/71484.1
2.4 Limitation - The licenses granted under Sections 2.1, 2.2 and 2.3
hereunder shall not include the right to manufacture Licensed Products in
or out of the Territory or export Licensed Products, directly or indirectly,
from the Territory. The limitation contained herein shall apply to LICENSEE
and its Affiliates.
ARTICLE III- LICENSE AND ROYALTY FEES
3.1 License Fees - LICENSEE shall pay LICENSOR a license fee of Xxx
Xxxxxxx Xxxxxxxx Xxxxxx Xxxxxx dollars (US$100,000.00), payable as specified
in Appendix V attached hereto.
3.2 Royalties In addition to the license fee payable under Section
3.1 above, LICENSEE shall pay to LICENSOR royalties for each of LICENSEE's
fiscal years during the term of this Agreement, in amounts as specified
in Appendix VI attached hereto.
3.3 Payment Terms - All payments due to LICENSOR under Sections 3.1
and 3.2 shall be made in United States dollars, when due, and via wire
transfer to the bank account in the U.S. specified by LICENSOR. The
only deduction to be made shall be for taxes imposed by the applicable
taxing authorities in the Territory on royalty payments, if any. In
calculating royalty amounts based on Gross Sales, the conversion into
United States dollars shall be at the average official rate of exchange
prevailing in the United States during the period for which Gross Sales
have been calculated. All royalty payments shall be
185
due and payable thirty (30) days after the close of each of the LICENSEE's
quarterly accounting periods commencing with the date on which Gross Sales
begin. The amount of each estimated quarterly payment shall be equal to the
greater of (i) twenty-five percent (25%) of the applicable minimum
annual royalty or (ii) the applicable percentage of Gross Sales for that
quarter. Each quarterly and final annual payment of royalty
shall be accompanied by a statement signed by LICENSEE stating
in detail satisfactory to LICENSOR the amount of Gross Sales for the
preceding quarter and in the case of the statement accompanying
each final payment, for the preceding year. LICENSEE shall pay
interest to LICENSOR upon any and all amounts overdue
and payable hereunder to LICENSOR at the rate charged to LICENSOR by its
principal commercial bank in New Jersey, plus one percent (1%) per annum,
for the due date to the date of payment. Such right to payment of interest
shall be without prejudice to any other remedies LICENSOR may have under
this Agreement or by law.
3.4 Maintenance of Books and Records - LICENSEE shall keep true and
accurate records, files and books of account, in accordance with generally
accepted accounting principles in the Territory, containing all data
required to determine the amounts to be paid hereunder and the information
to be given in statements provided herein. LICENSEE shall permit LICENSOR
and LICENSOR's representatives to inspect and examine such records, files,
books of account and facilities of LICENSEE for the purpose of determining
or verifying the amount payable to LICENSOR and to conduct or have
O3/09/94/RRI/09152/OO1/AGREE-11/71484.1
conducted an annual audit thereof, including, without limitation,
inspection of all inventory of any kind. Any expenses incurred at
the request and under the direction of LICENSOR shall be paid by
LICENSOR, provided. However, that in the event any such audit reveals
an error in any statement provided by LICENSEE, the cost of the audit
shall be borne by LICENSEE if the error equals or exceeds five percent
(5%) of the royalty amount reported due in such statement.
ARTICLE IV - TECHNICAL ASSISTANCE
4.1 Documents - As soon as practicable after the date of this Agreement
and commensurate with LICENSOR's production schedule, LICENSOR shall
deliver to LICENSEE sufficient written data and information for the
assembly and service of the Licensed Products by LICENSEE as deemed
necessary by LICENSOR.
LICENSEE shall provide to its retailers, information sufficient to
assemble and service Licensed Products to LICENSOR's agreed standards.
4.2 Training - As a further means of disclosing LICENSOR1s Know-How
to LICENSEE, LICENSOR shall arrange, on a schedule to be mutually agreed
upon, for training of a reasonable number, to be determined by LICENSOR,
of personnel employed by LICENSEE. All salaries, traveling and living
expenses and any other remuneration and expenses to which such trainees
may be entitled, and all expenses incurred by LICENSOR in the operation
of such training program, shall be paid by LICENSEE at LICENSOR's actual
cost.
4.3 Other Technical Assistance - LICENSOR agrees to provide technical
assistance upon the written request of LICENSEE. The cost of such
assistance shall be borne by LICENSEE and shall be approved by LICENSEE
in writing prior to such technical assistance being provided.
ARTICLE V - TRADEMARKS AND GOODWILL
186
5.1 Use of Trademarks - All Licensed Products assembled or sold by
LICENSEE shall bear the Trademarks. The permitted use by LICENSEE of the
Trademarks shall be made only on Licensed Products that conform strictly
to the standards, quality and specifications furnished by LICENSOR to
LICENSEE. Component parts of the Licensed Products shall be purchased
by LICENSEE only from LICENSOR or suppliers approved by LICENSOR in
writing to LICENSEE.
5.2 Inspection - LICENSEE shall at all reasonable times permit LICENSOR,
by representatives designated by LICENSOR, to inspect all of LICENSEE's
facilities and properties relating to the Licensed Products, at LICENSOR's
cost.
03/09/94/RRI/09152/001/AGREE-11/71484.1
5.3 Labels - All labels and promotional materials used by LICENSEE
shall be submitted to and approved by LICENSOR prior to use.
Such approval will not be unreasonably withheld or delayed. All
labels shall have to meet the legal requirements applicable in the
Territory.
5.4 Title to Trademarks - LICENSEE shall refrain from any act or
acts that may prejudice the validity of the title of LICENSOR to the
Trademarks. After termination of this Agreement, LICENSEE will not
use at any time for bicycles or bicycle parts any trademark, tradename
or label bearing any resemblance to the Trademarks. LICENSOR shall
retain ownership and the exclusive right to Trademarks except as
permitted to LICENSEE pursuant to the conditions of this Agreement
during the term of this Agreement.
5.5 Promotional Activities - LICENSEE will use its best efforts and
means to meet the needs of the Territory for the Licensed Products, to
promote, advertise and otherwise further the sale and distribution of
the Licensed Products in the Territory, particularly in population
centers, and to further and preserve the goodwill and reputation of
the Licensed Products sold under the Trademarks and meet the standards
and conditions as set forth in Appendix VII attached hereto. LICENSOR
shall make available to LICENSEE, at prices equal to LICENSOR's actual
cost, promotional materials used by LICENSOR in the United States in
connection with the sale of Licensed Products sold under the Trademarks.
LICENSEE shall submit to LICENSOR all advertising materials proposed to
be used by LICENSEE in connection with the Licensed Products for
LICENSEE's prior written approval, such approval not to be
unreasonably withheld or delayed.
5.6 Customer Service - LICENSEE shall inform and forward to LICENSOR
all correspondence or communications with customers relating to the
quality of or defects or malfunction in the Licensed Products and shall
handle all inquiries or complaints expeditiously and courteously.
LICENSEE and its distribution chain shall at all times maintain adequate
facilities for the repair, service and storage of the Licensed Products
and components and any parts thereof.
LICENSEE shall at all times maintain a staff of adequately trained
personnel to properly insure the mechanical integrity of the Licensed
Products, service the Licensed Products when necessary and to train
service personnel in the LICENSEE's distribution chain. LICENSEE shall
provide literature and parts to properly support the sale and service
of the Licensed Products and shall provide LICENSOR with service reports
on a quarterly basis. Such reports shall be on a form provided by LICENSOR
and shall specify models requiring service during the period, the type
of service, parts found defective, reason service is required, date
service is performed, bicycle serial number and name and address of
consumer.
03/09/94/RRI/09152/001/AGREE-11/71484.1
5.7 Distributor and Dealer network - LICENSEE shall provide to LICENSOR
an updated list of subdistributors and dealers constituting LICENSEE's
distribution chain in the Territory on the first day of
187
each calendar year quarter. The list will include company name, address,
principals, and fax, telex, and telephone numbers.
ARTICLE VI- IMPROVEMENTS
6.1 Inventions Improvement - LICENSEE shall require each of its
employees and consultants having access to technical information, data
and Know-How relating to the Licensed Products or component parts thereof
to enter into an agreement with LICENSEE in form and substance satisfactory
to LICENSOR, whereby each such employee or consultant agrees to assign to
LICENSEE the entire right, title and interest in and to any and all
inventions relating to the Licensed Products, or relating to or useful
in the manufacture thereof, made by him whether during or after the
course of his employment or engagement by LICENSEE. If during the term
of this Agreement, LICENSEE, or any of its Affiliates or employees makes
or acquires any invention or claim in any patent that in use would infringe
any Patent or that constitutes an improvement of a Licensed Product,
LICENSEE shall promptly assign to LICENSOR such invention or claim.
LICENSOR shall have the exclusive right and option to file and perfect
any and all patent applications embodying or arising out of such
invention or claim, in the Territory and elsewhere, in the name of
LICENSOR and to that end shall have the right to receive and/or
inspect all drawings, plans, models, specifications and worksheets
relating thereto and to interview any and all of LICENSEE's employees
and associated personnel and organizations having knowledge thereof.
LICENSEE shall retain an exclusive license in the Territory to use
such invention or claim on the Licensed Product, free of additional
royalty charges.
6.2 Know-How Improvements - During the term of this Agreement, each
party shall promptly inform and transfer to the other Know-How that is
developed or acquired by such party. The method of such transfer shall
be such as the transferor, acting in good faith and with due diligence,
deems appropriate. LICENSOR shall have the right to receive and/or
inspect all drawings, plans, models, specifications and worksheets relating
thereto and to interview any and all of LICENSEE's employees and associated
personnel and organizations having knowledge thereof. LICENSEE shall
retain an exclusive license in the Territory to use such Know-How, in
connection with Licensed Products, free of additional royalty
charges.
ARTICLE VII- CONFIDENTIALITY AND COMPETITION
7.1 Confidentiality Obligation - LICENSEE shall hold, and shall
cause its Affiliates to hold, all Know-How disclosed to it under this
Agreement in confidence at all times during and after the term of this
Agreement and each party shall require each of its employees and
03/09/94/RRI/09152/001/AGREE-11/71484.1
consultants, and the employees and consultants of its Affiliates, having
access to Know-How relating to the Licensed Products or component parts
thereof to enter into an agreement whereby each such employee or
consultant agrees to hold such Know-How in confidence at all times, and
agrees not to compete with LICENSOR or LICENSEE either during his
employment or engagement and for a three (3) year period thereafter, or,
in the event such time period is not enforceable, then a reasonable period
as agreed by a judicial body within the Territory. Other measures to be
taken by LICENSEE and its Affiliates to hold Know-How in confidence shall
be subject to the review and approval of LICENSOR. LICENSOR shall have the
right, in the event of a violation or breach of this Section 7.1 by
LICENSEE, its Affiliates, employees, or consultants, to seek and obtain
specific enforcement of the provisions of this Section; and to commence
an action, in LICENSEE's name and stead, against any party with whom
LICENSEE has a confidentiality agreement as required by this Section
if such party breaches any provision of such
188
agreement and if LICENSEE for any reason elects not to enforce such
provision. The obligations regarding confidentiality contained hereinabove
shall not apply to any Know-How that;
(i) is at the time of disclosure generally available to the public;
(ii) becomes generally available to the public through no breach of
confidentiality obligations by the party to whom the disclosure is made
or by any of its Affiliates or the employees or consultants of any of them;
or
(iii) is disclosed to the receiving party by another party not bound by
any confidentiality obligation.
An individual feature of Know-How shall not be considered within the
above exceptions merely because the feature is embraced by more
general information within the exceptions. A combination of features
of Know-How shall not be considered within the above exceptions unless
the combination itself and its principle of operation are within the
exceptions.
7.2 Restriction on Competition by LICENSEE - In consideration of
LICENSEE's receiving the exclusive rights conferred under this Agreement,
LICENSEE shall not, during the term of this Agreement, sell or deal in
any manner in bicycles or parts or components thereof not constituting
Licensed Products, but may deal in bicycle accessories approved by
LICENSOR. In addition, for a period of three (3) years after the
termination of this Agreement, LICENSEE shall not become involved
or associated with any other person or business entity engaged in
the manufacture or sale of lever propelled bicycles; provided, that
if such time period is held to be unenforceable, then the restrictive
period shall be such reasonable period as may be agreed by a judicial
body within the Territory.
03/09/94/RRI/09152/001/AGREE-11/71484.1
ARTICLE VIII- TERM AND TERMINATION
8.1 Term - Except to the extent provided herein with respect to the
survival of certain provisions following the term of this Agreement,
and unless earlier terminated pursuant to Sections 8.2 and 8.3 hereof,
the term of this Agreement shall commence on the date of this Agreement
and shall upon the mutual consent of the parties be renewed at the third
year Anniversary Date, and renewed at each Anniversary Date thereafter
without the payment of any additional licensing fees, unless either
party breaches any material term of this Agreement.
8.2 Termination by LICENSEE LICENSEE may terminate this Agreement
on any Anniversary Date hereof by giving ninety (90) days prior written
notice of termination.
8.3 Termination by LICENSOR - LICENSOR may terminate this Agreement
at any time:
(i) by giving LICENSEE thirty (30) days prior written notice if
LICENSEE shall have committed a material breach of any of its obligations
hereunder, including without limitation, the prompt and timely payment of
license fee and royalties hereunder and failure to fill customers orders
for Licensed Products, or to perform service orders, in a timely fashion;
provided that LICENSEE shall have been previously advised of the alleged
material breach and has been given fifteen (15) days to cure such breach.
It is further provided that no such breach shall be deemed to have occurred
or be continuing (as applicable) if and to the extent LICENSEE's failure to
perform its obligations is due to acts beyond the reasonable control of
LICENSEE, including but not limited to strikes, lock-outs or civil
insurrection or lack of material including component or part supplied
by LICENSOR, any of its Affiliates or suppliers generally.
189
(ii) upon (a) the filing of a petition in bankruptcy by or against
LICENSEE; (b) the appointment of a referee, trustee or receiver for a
substantial portion of the property or assets of the LICENSEE; (c) the
insolvency of LICENSEE; (d) the consolidation, merger or other business
combination of the LICENSEE or its Affiliates with, or the sale of a
substantial portion of the LICENSEE'S assets to, another corporation,
business entity or person, or the execution of an agreement by LICENSEE
to that effect, or a change in control of LICENSEE or its Affiliates w
ithout the prior written consent of the LICENSOR, such consent not to
be unreasonable withheld; or (e) if LICENSEE is an individual, the death
or incapacity of LICENSEE.
8.4 Termination - Should a termination of this Agreement occur:
(i) LICENSEE shall cease all use of Trademarks and return to LICENSOR
all materials supplied by LICENSOR and deliver to LICENSOR all materials
title to which has been acquired by LICENSOR pursuant to this Agreement;
and
03/09/94/RRI/09152/001/AGREE-11/71484.1
(ii) any agreements entered into by LICENSEE with third parties in the
Territory, including but not limited to subdistributors and dealers,
shall be assignable to LICENSOR and LICENSEE shall assign to LICENSOR
all such agreements and other documents regarding such subdistributors
and dealers and will do all that is reasonable to have them continue as
LICENSOR's subdistributors and dealers. In the event of Termination,
LICENSEE shall submit a full inventory (including costs) of parts and
stock on hand, within five (5) days LICENSOR shall have the option to
purchase within thirty (30) days all or part thereof at LICENSEE's cost
or market value, whichever is less. Any such purchase shall be F.O.B.
LICENSEE's warehouse.
ARTICLE IX - INFRINGEMENT ACTIONS
9.1 Trademark Claims Against LICENSEE - On Licensed Products,
LICENSOR shall defend, indemnify and hold LICENSEE harmless against
claims of trademark infringement brought against LICENSEE pursuant to t
his Agreement; provided, nothing hereunder shall be construed to obligate
LICENSOR to defend, indemnify or hold LICENSEE harmless against claims of
trademark infringement brought against LICENSEE arising out of acts taken
by LICENSEE not required by this Agreement or approved by LICENSOR in
writing.
LICENSOR may, however, elect to defend any such action at its own expense.
If LICENSOR elects not to so defend, LICENSEE may, with the consent of
LICENSOR, defend such action at its own expense. LICENSEE shall not
settle any such action without the consent of LICENSOR.
9.2 Patent Infringement & Wrongful Use Claims Against LICENSEE -
LICENSOR will assume the defense of any suit brought against LICENSEE
for infringement of any patent or for wrongful use of proprietary
information of any third party insofar as such suit is based upon a
claim that the infringement or wrongful use is attributable to LICENSEE's
application without substantial modification of technology supplied under
this Agreement. In any such suit, LICENSOR will indemnify LICENSEE against
any money damages or costs awarded in such suit in respect to such a claim.
The obligations of LICENSOR stated in this Section 9.2 apply only if (i)
LICENSEE promptly informs LICENSOR in writing of any claim within the
scope of this Section 9.2; (ii) LICENSOR is given exclusive control of the
defense of such claim and all negotiations relating to its settlement; and
(iii) LICENSEE provides all reasonable assistance to LICENSOR in all
necessary respects in conduct of the suit.
190
LICENSOR's total liability in out-of-pocket costs in the defense of any
suit or suits and to pay damages awarded in any suit or suits shall be
limited to the amount theretofore paid to LICENSOR by LICENSEE under
this Agreement, and LICENSEE will advance to LICENSOR any amount
required to be expended by LICENSOR in excess of that
03/09/94/RRI/09152/001/AGREE-11/71484.1
limit. Amounts so advanced shall be credited to future payments due from
LICENSEE to LICENSOR as a result of LICENSEE's operations under this
Agreement.
The provisions of this Section 9.2 state the entire liability of
LICENSOR to LICENSEE in respect of LICENSEE's use of the technology
granted herein, and, except as specifically provided in this Section,
LICENSOR shall not be liable either directly or as indemnitor of
LICENSEE for or on account of any claim arising in any way from LICENSEE's
use of the technology.
9.3 Claims by LICENSEE or LICENSOR - In case Trademarks or any of
the Patents are infringed by any third party in the Territory, LICENSEE
shall notify LICENSOR, and LICENSOR may, if it chooses, bring suit to
enjoin such infringement. In the event LICENSOR elects not to bring
such suit, LICENSEE may bring such suit upon advice to, and with the
consent of, LICENSOR. Neither party shall settle any such suit without
the consent of the other, which consent shall not be unreasonably withheld.
Since actions by LICENSEE or LICENSOR hereunder are for the protection of
LICENSEE's rights within the Territory, the costs of any actions brought
under this Section 9.2 shall be borne equally by LICENSEE and LICENSOR.
9.4 Indemnification of LICENSOR - Except as otherwise provided in this
Article IX, LICENSEE will hold LICENSOR harmless against all liabilities,
demands, damages, expenses, or losses arising (i) out of use by LICENSEE
or its transferees of inventions licensed or information furnished under
this Agreement or (ii) out of any use, sale or other disposition by
LICENSEE of its inventions or information.
ARTICLE X - SUPPLY AGREEMENT
10.1 Ordering of Licensed Products - LICENSEE agrees to purchase from
LICENSOR, and LICENSOR agrees to supply to LICENSEE, Licensed Products
in the minimum amounts set forth in Appendix VIII attached hereto.
LICENSEE shall be entitled to order and receive Licensed Products,
provided that LICENSEE shall give written notice of such order to the
LICENSOR within the mutually agreed upon lead time as stated on order
acknowledgments. Payment for goods ordered shall be a confirmed
irrevocable (transferable and divisible) letter of credit (allowing
partial shipments and transshipments) confirmed by the LICENSOR's U.S.
Bank, payable upon the presentation of shipping documents.
10.2 Terms and Conditions of Sale - LICENSEE agrees to assemble,
use, import, sell and distribute such components, parts, and/or
completely assembled items of the Licensed Products and other
products as may be necessary for the LICENSEE's use and/or distribution,
from LICENSOR, its Affiliates and/or LICENSOR's suppliers as may be
agreed upon in accordance with such of LICENSOR's forms of Purchase
and Terms and Conditions of Sales as LICENSOR may from time to time
establish. Such Terms and
03/09/94/RRI/09152/001/AGREE-11/71484.1
Conditions of Sale shall include provisions relating to price, limited
warranty, delivery, title of goods, freight and insurance charges,
subrogation of claims and such other items as are customarily
expressed in
191
such documents. The price for Licensed Products and components thereof
shall be the invoiced factory cost to LICENSOR plus fifteen percent (15%).
10.3 Force Majeure - LICENSOR shall not be liable for any
damage or penalty for delays in delivery, or complying with the
warranty provisions hereunder, due to acts of God, acts or omissions
of LICENSEE, acts of civil or military authorities, government
regulations, or priorities, fire, floods, epidemics, quarantine
restrictions, war, riots, strikes, differences with suppliers,
inability of suppliers to perform, accidents to machinery,
inability to obtain material, delays in transportation, failure or
delay in furnishing complete or correct information by LICENSEE,
impossibility or impracticability of performance or any other
cause or causes beyond the control of LICENSOR, whether or not
similar to the foregoing.
LICENSOR SHALL UNDER NO CIRCUMSTANCES BE LIABLE FOR SPECIAL OR
CONSEQUENTIAL DAMAGES FOR DELAYS OR FAILURE TO GIVE NOTICE OF
DELAY.
ARTICLE XI - DOCUMENTS DELIVERED UPON
CONTRACT EXECUTION
11.1 On the signing of this Agreement, LICENSOR shall deliver to
LICENSEE an affidavit of LICENSOR stating that it has full power and
authority to confer the rights being granted hereunder and no
encumbrances of any nature exist therein, nor are there any agreements
of options in existence which would in any way prohibit the written
granting of rights described in this Agreement.
11.2 The parties agree to do or execute or cause to be done or
executed all such further acts, deeds, instruments or transfer as may be
reasonably required from time to time to effect the rights between the
parties hereto.
ARTICLE XII- MISCELLANEOUS
12.1 Survival of Provisions-The provisions of Sections 3.4, 5.4,7.1,7.2,
8.4,9.1,9.2,9.4, 12.1 and 12.8 shall survive any termination of this
Agreement.
12.2 Assignment and Sublicensing - LICENSEE may not sublicense,
assign or transfer this Agreement or any license granted hereunder;
provided, that LICENSEE shall sublicense the Trademarks to any of
its subdistributors and dealers selling the Licensed Products, the
sublicense agreements to contain provisions substantially similar
to the provisions of
03/09/94/RRI/09152/001/AGREE-11/71484.1
Article V of this Agreement relating to the protection of Trademarks and
to be in form and substance satisfactory to LICENSOR.
12.3 No Agency- Nothing contained in this Agreement shall be construed
so as to make either LICENSOR or LICENSEE the agent or partner of the
other, it being the intention of the parties to deal as principals with
one another.
12.4 Entire Agreement - This Agreement sets forth the entire
Agreement between the parties as to the subject matter hereof and
merges all prior discussions and writings between them. This Agreement
may be amended only by written instrument duly signed by both parties
hereto.
192
12.5 No Implied Right - Nothing in this Agreement shall be
construed as conferring any right by implication, estoppel or under
any patent, patent applications or trademarks, except as herein
expressly provided.
12.6 Notices - All notices, communications, and correspondence
required under this Agreement, or pursuant to the activities which
it governs, or associated with it shall be in writing, shall use
United States English only and shall become effective either when
served by personal delivery or by certified mail addressed as
follows (or to such other address for a party as that party may
designate by notice to the other party):
If to LICENSOR: TRB Systems Inc.
000 Xxxxxxxxxx Xxxxxxx
Xxxxx Xx.00
Xxxxxxxxxx, Xxx Xxxxxx 00000
U.S.A.
Fax: (000) 000-0000
If to LICENSEE: Stella Kujembola
c/o New Brunswick Physical Therapy
000 Xxxxxx Xxxxxx, Xxxxx X-0
Xxx Xxxxxxxxx, Xxx Xxxxxx 00000
Fax: (000) 000-0000
12.7 Severability - Should any provision of this Agreement or the
application thereof, to any extent, be held invalid or unenforceable,
the remainder of this Agreement and the application thereof shall not
be affected thereby and shall continue valid and enforceable to the
fullest extent permitted by law or equity.
12.8 Arbitration - Any controversy or claim arising out of or
relating to this Agreement, or the breach thereof, shall be settled
by arbitration before one or more arbitrators in New York City, in
accordance with the Commercial Arbitration Rules of the American
Arbitration Association. Furthermore, if any controversy or claim
arises out of the
03/09/94/RRI/09152/001/AGREE-11/71484.1
provisions of Section 7.1 of this Agreement, LICENSOR may apply to the
federal or state courts located in the State and County of New York for
injunctive or interim relief in aid of arbitration. Judgment upon the
award rendered by the arbitrator(s) in accordance with the aforesaid
rules may be entered in any court having jurisdiction thereof. LICENSEE
hereby consents to the non-exclusive jurisdiction of the federal and
state courts located in the State and County of New York for the sole
purpose of the issuance of any injunctive or interim relief or for the
entry of any award as hereinabove provided.
All trade terms used herein shall have the meaning defined in the
International Chamber of Commerce publication "International Rules
for Interpretation of Trade Terms".
ARTICLE XIII- GOVERNING LAW
13.1 This Agreement shall be governed by and construed in accordance
with the substansive law of the State of New York and the United States
without regard to principles of conflicts of laws.
IN WITNESS WHEREOF the parties hereto have executed this Agreement as of
the date first above written.
193
LICENSEE: LICENSOR:
TRB SYSTEMS INC.
/s/ STELLA KUJEMBOLA /s/ By /s/ Xxxxx Xxx /s/
STELLA KUJEMBOLA Xxxxx Xxx, President
WITNESS:
/s/ Xxxxxxx X. Xxxxx /s/ /s/Xxxxxxx X. Xxxxx /s/
Name: Xxxxxxx X. Xxxxx Name: Xxxxxxx X. Xxxxx
Xxxx & Priest Reid & Priest
New York, New York New York, New York
03/09/94/RRI/09152/001/AGREE-11/71484.1
APPENDIX I
Licensed Products
All Transbar Bicycles including but not limited to those listed below:
(1) TRE 190
(2) TRE 240
(3) TRE 250
(4) TRE 500
(5) TRE 1000
(6) TRE 100 (BMX)
(7) TRE 300 (Cruiser)
Also includes but not limited to all special parts listed below:
(a) Rear hub assembly
(b) See-saw idler assembly
(c) Lever and transbar assembly
(d) Gearshift lever
(e) Special chain connecting cable
194
(f) All service parts of above assemblies
03/09/94/RRI/09152/001/AGREE-11/71484.1
APPENDIX II
Territory
Benin and Nigeria
APPENDIX III
Patents
A patent application in the Territory for an improvement in the
Licensed Products is in the course of preparation
APPENDIX-IV
Trademarks
03/09/94/RRI/09152/001/AGREE-11/71484.1
APPENDIX V
License Fees
Xxx Xxxxxxx Xxxxxxxx Xxxxxx Xxxxxx dollars (US$100,000.00), of which Ten
Thousand United States dollars (US$10,000.00) shall be paid upon
execution of this Agreement and the balance of which shall be
payable in installments according to the following schedule:
(i) the first installment shall take the form of an automobile (to
be selected by LICENSOR) having a purchase cost (including applicable
sales and excise taxes) from the dealer of up to Forty Thousand United
States dollars (US$40,000.00) to be purchased in LICENSOR's name on
LICENSEE's account and available for delivery to LICENSOR at the dealer's
lot by April 15, 1994;
(ii) Twenty-five Thousand United States dollars (US$25,000.00) shall
be due and payable nine (9) months after the date of this Agreement; and
(ii) Twenty-five Thousand United States dollars (US$25,000.00) shall
be due and payable one (1) year after the date of this Agreement.
195
APPENDIX VI
Royalties
Year 1- Four percent (4%) of Gross Sales, but not less than
US$15,000.00
Year 2 Four percent (4%) of Gross Sales, but not less than
US$25,000.00
Year 3 Four percent (4%) of Gross Sales, but not less than
year thereafter - US$40,000.00
03/09/94/RRI/09152/001/AGREE-11/71484.1
APPENDIX VII
Promotional Activities
LICENSEE must provide and participate in such promotional activities and
production of materials to support, promote, and generate full sales
potential of Licensed Product.
LICENSOR will make available to LICENSEE at its cost all promotional
and advertising materials and printed service literature.
APPENDIX VIII
Terms and Conditions of Sale
Payment - By irrevocable (transferable and devisable) letter of credit
allowing partial shipments and transshipments in favor of LICENSOR,
payable upon presentation of shipping documents to LICENSOR's
bank.
Remarks - All orders are subject to final confirmation by LICENSOR.
Sales Forecast - LICENSEE will provide LICENSOR twelve (12) month sales
forecast by month by model with sixty (60) day lead time updated by
month.
Minimum Purchase Amounts-
Year 1 - 5,000 Units
Year 2 - 9,000 Units
Year 3 - 10,000 Units
03/09/94/RRI/09152/001/AGREE-11/71484.1
196
