EXHIBIT 2.7
Exhibit D7 to the Separation Agreement
MASTER TRADEMARK LICENSE AGREEMENT
This Master Trademark License Agreement (the "Agreement') is entered into
and effective as of March 31, 2001 (the "Effective Date"), between Millipore
Corporation, a Massachusetts corporation ("MIL"), having an office at 00 Xxxxx
Xxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000 and Millipore MicroElectronics, Inc., a
Delaware corporation ("MMI"), having an office at Xxxxxxxx Xxxx, Xxxxxxx,
Xxxxxxxxxxxxx 00000, with reference to the following:
RECITALS
WHEREAS, the Board of Directors of Millipore Corporation ("MIL") has
determined that it is in the best interest of MIL and its stockholders to
separate Millipore's existing businesses into two independent businesses;
WHEREAS, as part of the foregoing, MIL and MMI, have entered into a Master
Separation and Distribution Agreement (as defined below) which provides, among
other things, for the separation of certain MMI assets and MMI liabilities, the
initial public offering of MMI stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, MIL has previously used the xxxx MILLIPORE in association with
various fields of commercial activity, including, without limitation, the
development, manufacture and sale of high quality devices and equipment for
microelectronic devices and the manufacture of such devices;
WHEREAS, as a result of its commercial activity under the MILLIPORE xxxx,
and various variations thereof, the MILLIPORE xxxx is now distinctively
associated with goods and services made or offered by, endorsed by, distributed
by, and/or approved by MIL, and with the high quality of such goods and
services. As a further result of its activities in connection with the
MILLIPORE xxxx, MIL has acquired and owns the MILLIPORE xxxx and the variations
thereof registered on the Principal Register of the U.S. Patent & Trademark
Office and more fully described in Exhibit A, attached hereto, as well as
unregistered variations of the MILLIPORE xxxx which MIL has used in commerce as
of the Effective Date which are also described in Exhibit A;
WHEREAS, it is the intention of MMI to develop a new brand identity for its
goods and services over a commercially reasonable period, and MMI and MIL have
agreed to cooperate in such transition; and
WHEREAS in order to prevent confusion with regard to the MILLIPORE xxxx,
and variations thereof, to maintain the distinctiveness and goodwill associated
with such marks, and to permit the transition to a new brand identity by MMI,
MIL and MMI now wish to enter into a license agreement permitting MMI to make
continued use of such marks in for a reasonable period and in an appropriate
manner, as set forth below.
NOW, THEREFORE, in consideration of the mutual promises and agreements of
the parties, and of good and valuable consideration the receipt and sufficiency
of which is hereby acknowledged, it is agreed by and between the parties as
follows:
ARTICLE 1.
DEFINITIONS
Defined terms, indicated by the use of initial capitalization, shall have
the meaning ascribed to them below, or, for defined terms not defined below,
shall have the meaning ascribed to them in context upon their first occurrence
in this Agreement. Capitalized terms used herein without definition shall have
the meaning ascribed thereto in the Separation Agreement.
1.1. COLLATERAL MATERIALS. "Collateral Materials" means all packaging,
tags, labels, advertising, promotions, display fixtures, instructions, technical
briefs, data sheets, warranties and other materials of any and all types
associated with the MMI Business Products that are marked with the Licensed
Xxxx.
1.2. CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials" means
materials that make a trade name use of marks or other identifiers, including,
without limitation, trade names appearing on business cards, letterhead,
stationery, paper stock and other supplies, and signage on real property and
buildings, and excluding, without limitation trademark and service xxxx uses.
1.3. DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Separation Agreement.
1.4. LEGACY MATERIALS. "Legacy Materials" means objects or materials that
were created by MIL prior to the Separation Date which bear one or more of the
Licensed Marks and which are acquired by MMI pursuant to process by which assets
are allocated to MMI as part of MMI's separation from MIL. For example, and
without limitation, Legacy Materials includes product brochures printed by MIL
relating to products which after the separation, shall be sold by MMI.
1.5. LICENSED MARKS. "Licensed Marks" means the registered marks described
in Exhibit A attached hereto and unregistered variations of such marks in which
MMI has use-based rights.
1.6. LICENSE TERM. "License Term" means the period commencing on the
Effective Date and continuing until the earlier of the expiration of this
Agreement pursuant to Section 6.1 hereof, or the prior termination of this
Agreement by either party pursuant to the terms of this Agreement.
1.7. XXXX. "Xxxx" means any trademark, service xxxx, trade name, trade
dress, domain name, and the like, or other word, name, symbol or device, or any
combination thereof, used or intended to be used by a Person to identify and
distinguish the products or services of that Person from the products or
services of others and to indicate the source, nature, or quality of such goods
or services or endorsement, sponsorship or affiliation with such goods or
services including without limitation all registrations and applications
therefor throughout the world and all common law and other rights therein
throughout the world.
1.8. MMI BUSINESS PRODUCTS. "MMI Business Products" means any and all
products of MMI.
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1.9. PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
1.10. QUALITY STANDARDS. "Quality Standards" means standards of quality
applicable to the MMI Business Products, as in use immediately prior to the
Separation Date, unless otherwise communicated in writing by MIL from time to
time.
1.11. SELL. To "Sell" a product means to sell, transfer, lease or otherwise
dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed
thereto.
1.12. SEPARATION DATE. "Separation Date" means March 31, 2001, or such
other date as may be fixed by the Board of Directors of Millipore Corporation as
identifying that date upon which the line of business operated under the
MILLIPORE xxxx in the field of microelectronics is separated from MIL and
operated independently by MMI.
1.13. SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization whether incorporated or unincorporated of which at least a majority
of the securities or interests having by the terms thereof ordinary voting power
to elect at least a majority of the board of directors or others performing
similar functions with respect to such corporation or other organization is
directly or indirectly owned or controlled by such Person or by any one or more
of its Subsidiaries, or by such Person and one or more of its Subsidiaries;
provided, however, that no Person that is not directly or indirectly wholly-
owned by any other Person shall be a Subsidiary of such other Person unless such
other Person controls, or has the right, power or ability to control, that
Person. For purposes of this Agreement, MMI shall be deemed not to be a
subsidiary of MIL.
1.14. THIRD PARTY. "Third Party" means a Person other than Millipore, MIL
and its other Subsidiaries and MMI and its Subsidiaries.
1.15. TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means the
guidelines for proper usage of the Licensed Marks, and any of them, as such
Guidelines may be revised and updated in writing by MIL from time to time.
Without limitation, such Trademark Usage Guidelines include the Corporate
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Identity Manual, dated 1991 which has been previously provided to MMI by MIL.
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ARTICLE 2.
LICENSES
2.1. LICENSE GRANT. Subject to MMI's adherence to the terms and conditions
of this Agreement, MIL grants to MMI a personal, non-exclusive, worldwide,
fully- paid and non-transferable (except as set forth in Section 9.9) license,
with the right to sublicense set forth in Section 2.3 below, to use the Licensed
Marks subject to and pursuant to the license restrictions set forth in Section
2.2 below, each of which is both a covenant and an express restriction on the
scope of the license granted herein.
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2.2. RESTRICTIONS. MMI covenants that it shall adhere to the following
restrictions, each of which is also an express limitation on the rights granted
to MMI herein.
(a) MMI shall use the Licensed Marks only for the License Term;
(b) MMI shall use the Licensed Marks only in conjunction with the term
"Microelectronics" or such other xxxx or term as proposed by MMI and agreed to
in writing by MIL at its sole discretion;
(c) MMI shall use the Licensed Marks only in connection with MMI
Business Products, the Sale and offer for Sale of MMI Business Products, and in
the advertisement and promotion of such MMI Business Products in all fields of
use;
(d) MMI shall not mutilate or alter any Licensed Xxxx, shall always
make proper adjective use of trademarks and service marks included within the
Licensed Marks, shall always use the marks with all relevant proprietary
designations and notices including "(R)" and "(TM)" as appropriate, shall
acknowledge and disclose in all printed materials that make use of one or more
Licensed Marks that "all rights, title, and interests in and to [such Marks] is
owned by Millipore Corporation of Bedford, Massachusetts and [such Marks] are
used with permission," and shall in all other respects use the Licensed Marks in
a manner that is consistent with the Trademark Usage Guidelines, or in such
other manner as is approved in writing by MIL at MIL's sole discretion;
(e) MMI shall use the Licensed Marks in connection with the below
identified Legacy Materials subject to the below stated restrictions. MMI may
use any Millipore Corporation Corporate Identity Materials in connection with
the conduct of the MMI business, up to and including the Distribution Date, in
connection with the MMI business, but only to the extent that, as of the
Separation Date, they are in use, in inventory or on order and only to the
extent such materials exist within the assets transferred to MMI. During the
License Term only, MMI may use Millipore Corporation Collateral Materials
throughout their useful life in connection with the MMI business, but only to
the extent that, as of the Separation Date, they are in use, in inventory or on
order and only to the extent such materials exist within the assets transferred
to MMI. (For clarity, MIL will not be delegated to develop or publish or provide
new or additional Collateral Materials after the Separation Date.) During the
License Term only, MMI may use molds and other processing equipment which impart
a permanent indication of the Millipore Corporation until such molds and
equipment are replaced, modified or repaired or termination of the agreement
whichever occurs first.
(f) Except as allowed by Section 2.2 (b) above, MMI shall not use the
Licensed Marks in direct association with another Xxxx such that the two Marks
appear to be a single Xxxx or in any other composite manner with any Marks of
MMI or any Third Party;
(g) MMI shall only use the Licensed Marks in a manner consistent with
the high standards, reputation and prestige represented by the Licensed Marks,
and, without limitation, shall not associate the Licensed Marks with any
conduct, objects, or events which are: morally repugnant or offensive to the
customers of MIL; involve alleged acts of dishonesty or fraud; involve conduct
which is the subject of criminal allegation or investigation; or involves,
causes or relates to allegations of personal injury and/or health risk to users
of products or services bearing or otherwise branded with a Licensed Xxxx;
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(h) MMI shall not use the Licensed Marks in any manner which is
deceptive or misleading, which ridicules or is derogatory to MIL or any of the
Licensed Marks, or which compromises or reflects unfavorably upon the goodwill,
good name, reputation or image of MIL or the Licensed Xxxx, or which might
jeopardize or limit MIL's proprietary interest therein.
2.3. SUBLICENSE TO SUBSIDIARIES. Subject to the terms and conditions of
this Agreement, including, without limitation, the restrictions set forth in
section 2.2 above, MIL hereby grants to MMI the right to sublicense such rights
as it has been granted in Section 2.1 above, but only to Subsidiaries of MMI,
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and only provided that: (i) such sublicense is granted pursuant to a written
agreement that is at least as protective of the rights of MIL as this Agreement;
(ii) MIL is named as an express third party beneficiary of each sublicense
agreement with standing to enforce all terms of such agreement in addition to
such other rights and remedies as MIL may have in law and/or equity; (iii) such
sublicense is effective only for so long as the license granted herein is
effective or only for so long as the sublicensee remains a Subsidiary of MMI,
whichever is shorter; (iv) such Sublicense shall not include the right to grant
any further sublicenses; (v) the sublicensee shall be provided a copy of this
Agreement and shall be required, to the extent of their sublicensed activity, to
fulfill all obligations and adhere to all restrictions set forth in this
Agreement; and (vi) MMI shall enforce the sublicense pursuant to Section 4.3
below. Copies of any and all sublicenses granted hereunder, along with all draft
and versions thereof, shall be provided to MIL by MMI upon MIL's request
therefor.
2.4. COMMUNICATION. MMI hereby consents to MIL using the trademarks,
service marks, and trade names of MMI in communications with MIL's
constitutents, shareholders, customers and others as nececesary to fairly and
accurately describe the origin of MMI, describing the products and services of
MMI, and describing MIL's relationship with MMI to the extent, if any, that it
exists at the time of the use of such marks.
2.5. RESERVATION OF RIGHTS. Any and all of MIL's rights not expressly
granted to MMI are reserved to MIL. Both parties covenant that they shall not
make any use of the names or marks of the other that is not permitted by this
Agreement.
ARTICLE 3.
ENFORCEMENT OF GUIDELINES AND QUALITY RESTRICTIONS
3.1. REVIEW. At MIL's request, MMI agrees to furnish or make available for
inspection to MIL, free of charge, representative samples of MMI Business
Products and Collateral Materials of MMI and its Subsidiaries that are marked
with one or more of the Licensed Marks. MIL may also independently conduct
customer satisfaction surveys to determine if MMI and its Subsidiaries are
meeting the Quality Standards. MMI shall cooperate with MIL fully in the
carrying out of such surveys at MIL's expense. In the event of a challenge by
MIL, MIL shall, at the request of MMI, provide MMI with copies of customer
surveys used by MIL to determine if MMI is meeting the Quality Standards. If MIL
is notified or determines that MMI or any of MMI's Subsidiaries is not complying
with any Trademark Usage Guidelines or Quality Standards, then, in addition to
and without restriction of any other rights or remedies that MIL may enjoy in
law, equity or under this Agreement, MIL may notify MMI of an event of
non-compliance and the provisions of this Article 3 shall apply.
3.2. INITIAL CURE PERIOD. A notice of non-compliance from MIL shall be in
writing and shall set forth with sufficient particularity to provide notice of
the nature of the non-compliance a description of
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the noncompliance and any requested action for curing such noncompliance. MMI
shall then have sixty (60) days with regard to noncompliance by MMI or any
Subsidiary after receipt of such notice ("Guideline Initial Cure Period") to
correct such noncompliance or submit to MIL a written plan to correct such
noncompliance which written plan is reasonably acceptable to MIL.
3.3. SECOND CURE PERIOD. If such noncompliance continues beyond the
Guideline Initial Cure Period, MMI and MIL shall each promptly appoint a
representative to negotiate in good faith actions that may be necessary to
correct such noncompliance. The parties shall have thirty (30) days following
the expiration of the Guideline Initial Cure Period to agree on corrective
actions, and MMI shall have thirty (30) days from the date of an agreement of
corrective actions to implement such corrective actions and cure or cause the
cure of such noncompliance ("Second Guideline Cure Period").
3.4. FINAL CURE PERIOD. If the noncompliance remains uncured after the
expiration of the Second Guideline Cure Period, then at MIL's election, MMI, or
the noncomplying Subsidiary whichever is applicable, promptly shall cease and
desist from the noncomplying activity. Nothing in this Article 3 shall be deemed
to expand the rights granted to MMI herein, to limit MMI's obligations
hereunder, or to preclude MIL from pursuing any other rights or remedies.
ARTICLE 4.
FURTHER OBLIGATIONS OF THE PARTIES
4.1. TRANSITION. During the License Term MMI shall use good faith efforts to
transition from use of the Licensed Marks to use of New Marks to be developed by
MMI. In addition to such other efforts as MMI may engage in, MMI covenants that
its efforts to transition to New Marks for itself and its products and services
shall, at a minimum, include the following efforts and meet the following
requirements:
(a) Within eighteen (18) months of the Effective Date, MMI shall have
developed New Marks and new brand identifiers for use as replacements for all
Licensed Marks (the "Replacement Marks").
(b) Within twenty four (24) months, MMI shall make regular commercial
use of the Replacement Marks and all use of the Licensed Marks shall be
subordinate to the applicable Replacement Marks. For example, and without
limitation, within twenty four (24) months of the Effective Date each product
bearing a Licensed Xxxx will also bear the relevant Replacement Marks.
(c) No later than the expiration of the License Term, MMI shall cease
and desist from any use of any kind of the Licensed Marks or any of them.
4.2. THIRD PARTY LICENSES. MIL agrees that it and its Subsidiaries shall
not license or transfer the Licensed Xxxx to Third Parties for use in connection
with products or services that compete with MMI Business Products for the term
of this Agreement.
4.3. ENFORCEMENT OF AGREEMENTS. MMI shall take all appropriate measures at
MMI's expense promptly and diligently to enforce the terms of any sublicense
agreement or other agreement with any Subsidiary and shall restrain any such
Subsidiary from violating such terms, including without limitation (i)
monitoring the Subsidiaries' compliance with the relevant Trademark Usage
Guidelines and Quality Standards and causing any noncomplying Subsidiary
promptly to remedy any failure, (ii) terminating such agreement and/or (iii)
commencing legal action, in each case, using a standard of care consistent with
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MIL's practices as of the Separation Date. In the event that MIL determines that
MMI has failed promptly and diligently to enforce the terms of any such
agreement using such standard of care, MIL reserves the right to enforce such
terms, and MMI shall reimburse MIL for its fully allocated direct costs and
expenses incurred in enforcing such agreement.
ARTICLE 5.
OWNERSHIP
5.1. MMI OWNERSHIP. All rights, title, and interests in and to the Licensed
Marks is and shall be owned exclusively by MIL subject to the license granted
herein. All goodwill arising from or relating to the Licensed Marks, including
all goodwill arising from MMI's licensed use of the Licensed Marks hereunder
shall inure to the benefit of MIL. MMI shall provide MIL with written notice
each time any Licensed Xxxx is used in connection with a product, service, or
field or channel of commerce with which MMI has not previously associated such
Licensed Marks or Licensed Marks. Upon MIL's request, and at MIL's expense, MMI
shall cooperate with any effort by MIL to establish, perfect, exploit or defend
its rights in and to the Licensed Marks, including, without limitation: (i)
providing good faith testimony by declaration, affidavit, in-person or other
means whenever such testimony would, in the reasonable judgment of MIL, be
useful to the establishment, perfection, exploitation or defense of its
interests arising from or relating to the Licensed Marks; (ii) signing further
agreements or documentation, including, without limitation, assignments,
consents, and releases; (iii) providing samples, exemplars, and copies of any
and all objects or materials that make use of one or more of the Licensed Marks,
particularly, and without limitation, where such objects or materials are
necessary or useful to any effort to establish the nature or scope of use of
such Licensed Marks in connection with registration proceedings or litigation;
and (iv) providing copies of letters, e-mails, memoranda, or other
communications from MMI's customers or any third party commenting on any or all
of the Licensed Marks particularly, and without limitation, any communications
commenting critically or adverse on the quality of goods or services associated
with such Licensed Marks.
5.2. RIGHTS AND REMEDIES. MMI stipulates and agrees that the Licensed Marks
have secondary meaning and are distinctively associated with MIL and the goods
and services of MIL. To the extent not contrary to applicable law, MMI agrees
not to challenge the ownership or validity of the Licensed Marks or any of them.
MMI agrees not to use or register in any country any Xxxx that impinges on MIL's
rights in the Licensed Marks, or any element thereof. If any application for
registration is, or has been, filed in any country by MMI which relates to any
Xxxx that impinges on MIL's rights in the Licensed Marks, MMI shall immediately
abandon any such application or registration or assign it to MIL as MIL may
elect.
5.3. LIMITATION ON AUTHORITY. MMI shall not (i) misrepresent to any Person
the scope of its authority under this Agreement, (ii) incur or authorize any
expenses or liabilities chargeable to MIL , or (iii) take any actions that would
impose upon MIL any obligation or liability to a Third Party other than
obligations under this Agreement, or other obligations which MIL expressly
approves in writing for MMI to incur on its behalf. MMI shall not grant or
attempt to grant a security interest in the Licensed Marks, or to record any
such security interest in the United States Patent and Trademark Office or
elsewhere, against any trademark application or registration belonging to MIL.
MIL makes no warranty or representation that trademark registrations have been
or shall be applied for, secured or maintained in the Licensed Marks throughout,
or anywhere within, the world.
5.4. USE OF MARKS CONSISTENT WITH OWNERSHIP. MMI shall cause to appear on
all MMI Business Products, and all Collateral Materials, such legends, markings
and notices as may be
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required by applicable law or reasonably requested by MIL which are necessary or
useful to establish, perfect, defend or exploit the proprietary character of the
Licensed Marks. To the extent not contrary to applicable law, MMI shall not
challenge MIL's ownership of or the validity of the Licensed Xxxx or any
application for registration thereof throughout the world. MMI shall not use or
register in any country any domain name or any other brand identifier or
proprietary interest, whether recognized currently or in the future, or other
designation which would affect the ownership or rights of MIL in and to the
Licensed Xxxx, or otherwise to take any action which would adversely affect any
of such ownership rights, or assist anyone else in doing so. MMI shall cause its
Subsidiaries to comply with the provisions of this Article.
5.5. INFRINGEMENT PROCEEDINGS. In the event that the MMI learns of any
infringement or threatened infringement of the Licensed Marks, or any unfair
competition, passing-off or dilution with respect to the Licensed Marks, MMI
shall notify MIL or its authorized representative giving particulars thereof,
and MMI shall provide necessary information and assistance to MIL or its
authorized representatives at MIL's expense in the event that MIL decides that
proceedings should be commenced. Notwithstanding the foregoing, MMI is not
obligated to monitor or police use of the Licensed Marks by Third Parties other
than Subsidiaries. MIL shall have exclusive control of any litigation,
opposition, cancellation or related legal proceedings, relating to the use of
the licensed trademarks by third parties. The decision whether to bring,
maintain or settle any such proceedings shall be at the exclusive option and
expense of MIL, and all recoveries shall belong exclusively to MIL. MMI shall
not and shall have no right to initiate any such litigation, opposition,
cancellation or related legal proceedings in its own name, but, at MIL's
request, agrees to be joined as a party in any action taken by MIL to enforce
its rights in the Licensed Xxxx. MIL shall incur no liability to MMI or any
other Person under any legal theory by reason of MIL's failure or refusal to
prosecute or by MIL's refusal to permit MMI to prosecute, any alleged
infringement by Third Parties, nor by reason of any settlement to which MIL may
agree.
ARTICLE 6.
TERMINATION
6.1. TERM. This Agreement shall remain in effect for a period of three (3)
years from the Effective Date which shall be automatically renewed for
additional one (1) year period unless earlier terminated as provided below in
6.2.
6.2. VOLUNTARY TERMINATION. By written notice to MIL, MMI may voluntarily
terminate all or a specified portion of the licenses and rights granted to it
hereunder by MIL. Such notice shall specify the effective date of such
termination and shall clearly specify any affected Licensed Xxxx, MMI Business
Products or services.
6.3. SURVIVAL. Any termination of licenses and rights of MMI under Section
6.2 shall not affect MMI's licenses and rights with respect to any MMI Business
Products made or sold prior to such termination. In addition, the following
provisions shall survive any expiration or termination of this Agreement and
remain in full force and effect: _____________________.
6.4. OTHER TERMINATION. This Agreement, the Separation Agreement and all
other ancillary agreements may be terminated at any time prior to the IPO
Closing Date by and in the sole discretion of MIL without the approval of MMI.
This Agreement may be terminated at any time after the IPO Closing Date and
before the Distribution Date by mutual consent of MIL and MMI. In the event of
termination pursuant to this Section 6.4, no party shall have any liability of
any kind to the other party.
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ARTICLE 7.
DISPUTE RESOLUTION
7.1. USE AND INITIATION OF PROCEDURE. Except for and expressly excluding
Actions in Equity (as defined in Section 7.15 below), in the event of a dispute
between the parties arising out of or related to this Agreement (the "Dispute")
the parties hereto agree to use the alternative dispute resolution procedures
specified in this section (the "Procedure") in good faith in order to resolve
such dispute. The Procedure may be modified by written agreement of the parties
at the time the Dispute arises. A party seeking to initiate the Procedure shall
give written notice to the other party, describing briefly the nature of the
dispute and its claim and identifying an individual with authority to settle the
dispute on its behalf. The party receiving such notice shall have five (5) days
within which to designate, in a written notice given to the initiating party, an
individual with authority to settle the dispute on its behalf. Neither of such
authorized individuals shall have had direct substantive involvement in the
matters involved in the Dispute.
7.2. UNASSISTED SETTLEMENT. The authorized individuals shall make such
investigation as they deem appropriate and thereafter promptly (but in no event
later than thirty (30) days from the date of the initiating party's notice)
shall commence discussions concerning resolution of the Dispute. If the Dispute
has not been resolved within thirty (30) days from the commencement of
discussions, it shall be submitted to alternative dispute resolution ("ADR") in
accordance with the provisions of Sections 7.3 through 7.10 hereof.
7.3. SELECTION OF NEUTRAL. The parties shall have ten (10) days following
the submission of the Dispute to ADR in accordance with Section 7.2 above to
agree upon a mutually-acceptable person not affiliated with either of the
parties (the "Neutral"). If no Neutral has been selected within such time, the
parties agree jointly to request the American Arbitration Association, the
Center for Public Resources, or another mutually agreed-upon provider of neutral
services to supply within ten (10) days a list of potential Neutrals with
qualifications as specified by the parties in the joint request. Within five (5)
days of receipt of the list, the parties shall independently rank the proposed
candidates, shall simultaneously exchange rankings, and shall select as the
Neutral the individual receiving the highest combined ranking who is available
to serve.
7.4. TIME AND PLACE FOR ADR. In consultation with the Neutral, the parties
shall promptly designate a mutually convenient time and place for the ADR (and
unless circumstances require otherwise, such time to be not later than forty-
five (45) days after selection of the Neutral).
7.5. EXCHANGE OF INFORMATION. In the event either of the parties has
substantial need for information in the possession of the other party in order
to prepare for the ADR, the parties shall attempt in good faith to agree on
Procedures for the expeditious exchange of such information, with the help of
the Neutral if required.
7.6. SUMMARY OF VIEWS. One week prior to the first scheduled session of the
ADR, each party shall deliver to the Neutral and to the other party a concise
written summary of its views on the matter in Dispute.
7.7. STAFFING THE ADR. In the ADR, each party shall be represented by the
authorized individual and by counsel. In addition, each party may bring such
additional persons as needed to respond
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to questions, contribute information and participate in the negotiations, the
number of such additional persons to be agreed upon by the parties in advance,
with the assistance of the Neutral, if necessary.
7.8. CONDUCT OF ADR. The parties, in consultation with the Neutral, shall
agree upon a format for the meetings, designed to assure that both the Neutral
and the authorized individuals have an opportunity to hear an oral presentation
of each party's views on the matter in Dispute, and that the authorized parties
attempt to negotiate a resolution of the matter in Dispute, with or without the
assistance of counsel or others, but with the assistance of the Neutral. To this
end, the Neutral is authorized to conduct both joint meetings and separate
private caucuses with the parties. The Neutral shall keep confidential all
information learned in private caucus with either party unless specifically
authorized by such party to make disclosure of the information to the other
party.
7.9. THE NEUTRAL'S VIEWS. The Neutral (I) shall, unless requested not to do
so by both parties, provide his opinion to both parties on the probable outcome
should the matter be litigated, and (II) shall make one or more recommendations
as to the terms of a possible settlement, upon any conditions imposed by the
parties (including, but not limited to, a minimum and maximum amount). The
Neutral shall base his opinions and recommendations on information available to
both parties, excluding such information as may be disclosed to him by the
parties in confidence. The opinions and recommendations of the Neutral shall not
be binding on the parties.
7.10. TERMINATION OF PROCEDURE. The parties agree to participate in the ADR
in good faith to its conclusion (as designated by the Neutral) and not to
terminate negotiations concerning resolution of the matters in Dispute until at
least ten (10) days thereafter. Each party agrees not to commence any other
proceeding or to seek other remedies prior to the conclusion of the ten-day
post-ADR negotiation period; PROVIDED, HOWEVER, that either party may commence
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litigation within five (5) days prior to the date after which the commencement
of litigation could be barred by an applicable statute of limitations or in
order to request an injunction to prevent irreparable harm, in which event, the
parties agree (except as prohibited by court order) to nevertheless continue to
participate in the ADR to its conclusion.
7.11. FEES OF NEUTRAL; DISQUALIFICATION. The fees of the Neutral shall be
shared equally by the parties. The Neutral shall be disqualified as a witness,
consultant, expert or counsel for either party with respect to the matters in
Dispute and any related matters in any subsequent litigation or other proceeding
with respect to the Dispute.
7.12. CONFIDENTIALITY. The parties agree that the Procedure and the ADR are
compromise negotiations for purposes of the Federal Rules of Evidence and the
Rules of Evidence of any state of competent jurisdiction. The entire of the
Procedure and the ADR are confidential, and no stenographic, visual or audio
record shall be made. All conduct, statements, promises, offers, views and
opinions, whether oral or written, made in the course of the Procedure or the
ADR by either of the parties, their agents, employees, representatives, or other
invitees and by the Neutral (who shall be the parties' joint agent for purposes
of these compromise negotiations) are confidential and shall, in addition and
where appropriate, be deemed to be work product and privileged. Such conduct,
statements, promises, offers, views and opinions shall not be discoverable or
admissible for any purposes, including impeachment, in any litigation or other
proceeding involving the parties, and shall not be disclosed to anyone not an
agent, employee, expert, witness, or representative of either of the parties;
provided, however, that evidence otherwise discoverable or admissible is not
excluded from discovery or admission as a result of its use in the ADR.
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7.13. ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days following the commencement of the Procedure,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of he American
Arbitration Association ("AAA"), by three (3) arbitrators in Boston,
Massachusetts. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators shall be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior ADR, negotiation or mediation). The
decision of the arbitrator shall be final and non-appealable and may be enforced
in any court of competent jurisdiction. The use of any ADR procedures shall not
be construed under the doctrine of laches, waiver or estoppel to adversely
affect the rights of either party.
7.14. CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties shall continue to provide service and honor all other
commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 7 with respect to all matters not
subject to such dispute, controversy or claim.
7.15. ACTIONS IN EQUITY. "Actions in Equity" means actions for specific
performance, temporary, preliminary or permanent injunctive relief, or for other
equitable remedies. Notwithstanding any provision of this Agreement, Actions in
Equity may be brought by MIL against MMI and its sublicensees in any court of
competent subject matter and personal jurisdiction.
ARTICLE 8.
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER
PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL
OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER CAUSED AND ON
ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS
AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH
PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN THE MASTER SEPARATION AND DISTRIBUTION
AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY
IN ANY EVENT.
ARTICLE 9.
MISCELLANEOUS PROVISIONS
9.1. DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE LICENSED XXXX
AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER ARE PROVIDED ON AN "AS
IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKE ANY
REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the
generality of the foregoing, neither MIL nor any of its Subsidiaries makes any
warranty or representation as to the
11
validity of any Licensed Xxxx licensed by it to MMI or any warranty or
representation that any use of any Licensed Xxxx with respect to any product or
service shall be free from infringement of any rights of any Third Party.
9.2. NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Xxxx. Neither party is required hereunder
to furnish or disclose to the other any information (including copies of
registrations of the Licensed Marks), except as specifically provided herein.
9.3. INFRINGEMENT SUITS. MIL shall have no obligations hereunder to
institute any action or suit against Third Parties for infringement of the
Licensed Marks or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of the Licensed Marks.
9.4. NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries is obligated to (i) file any application for
registration of any Licensed Xxxx, or to secure any rights in any Licensed Xxxx,
(ii) to maintain any Licensed Xxxx registration, or (iii) provide any
assistance, except for the obligations expressly assumed in this Agreement.
9.5. ENTIRE AGREEMENT. This Agreement, the Separation and Distribution
Agreement and the other Ancillary Agreements (as defined in the Separation and
Distribution Agreement) and the Exhibits and Schedules referenced or attached
hereto and thereto constitute the entire agreement between the parties with
respect to the subject matter hereof and thereof and shall supersede all prior
written and oral and all contemporaneous oral agreements and understandings with
respect to the subject matter hereof and thereof. To the extent there is a
conflict between this Agreement and the Master Assignment and Assumption
Agreement between the parties, the terms of this Agreement shall govern.
9.6. GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the Commonwealth of
Massachusetts as applied to transactions taking place wholly within
Massachusetts between Massachusetts residents. The Superior Court of Middlesex
County and/or the United States District Court for the District of Massachusetts
shall have jurisdiction and venue over all Disputes between the parties that are
permitted to be brought in a court of law pursuant to Article 7 above.
9.7. DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in any
Exhibit or Schedule hereto and in the table of contents to this Agreement are
for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
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9.8. NOTICES. Notices, offers, requests or other communications required or
permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to MIL:
Millipore Corporation
00 Xxxxx Xxxx
Xxxxxxx, Xxxxxxxxxxxxx 00000
With a copy :
General Counsel
Millipore Corporation
00 Xxxxx Xxxx
Xxxxxxx, Xxxxxxxxxxxxx 00000
if to MMI:
Millipore MicroElectronics, Inc.
Patriots Park
Xxxxxxx, Xxxxxxxxxxxxx 00000
With a copy :
General Counsel
Millipore MicroElectronics, Inc.
Patriots Park
Xxxxxxx, Xxxxxxxxxxxxx 00000
Or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices shall be
deemed to have been given and received on the earlier of actual delivery or
three (3) days from the date of postmark.
9.9. NONASSIGNABILITY. MMI shall not, directly or indirectly, in whole or
in part, whether by operation of law or otherwise, assign or transfer this
Agreement or any Licensed Xxxx except to MIL and any attempted assignment,
transfer or delegation shall be voidable at the sole option of MIL.
9.10. SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule or law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
13
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
9.11. FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
9.12. AMENDMENT. No change or amendment shall be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such Agreement.
9.13. COUNTERPARTS. This Agreement, including the Ancillary Agreements and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein or therein, may be executed in counterparts, each of which shall be
deemed to be an original but all of which shall constitute one and the same
agreement.
9.14. AUTHORITY. Each of the parties hereto represents to the other that
(a) it has the corporate or other requisite power and authority to execute,
deliver and perform this Agreement, (b) the execution, delivery and performance
of this Agreement by it have been duly authorized by all necessary corporate or
other actions, (c) it has duly and validly executed and delivered this
Agreement, and (d) this Agreement is a legal, valid and binding obligation,
enforceable against it in accordance with its terms subject to applicable
bankruptcy, insolvency, reorganization, moratorium or other similar laws
affecting creditors' rights generally and general equity principles.
WHEREFORE, the parties have signed this Trademark License Agreement
effective as of the date first set forth above.
Millipore Corporation Millipore MicroElectronics, Inc.
By:_____________________ By:____________________
Name:___________________ Name:__________________
Title:____________________ Title:___________________
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EXHIBIT A
"LICENSED MARKS"
[DESCRIBE ALL MARKS THAT IT IS THE INTENTION OF MIL TO LICENSE TO MMI, INCLUDING
REGISTRATION NUMBERS AND, FOR GRAPHIC MARKS, DEPICTIONS.]
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