Exhibit 10.4
EXHIBIT E
TRANSITIONAL TRADEMARK USE AND LICENSE AGREEMENT
This Agreement dated __________, 2000, is made by and between APPLIED POWER
INC., a Wisconsin corporation with its principal place of business at 0000 X.
Xxxxx Xxxx, Xxxxxxxxx, XX 00000 ("API"), and APW LTD., a Bermuda corporation
with its principal place of business at X00 X00000 Xxxxxxxxx Xxxxxxx Xxxx,
Xxxxxxxx, Xxxxxxxxx 53188-1013 ("APW").
1. Definitions for this Agreement:
(a) "APW" means APW and its subsidiaries (including successors) after
the contemplated restructuring as listed on Schedule 1 attached
hereto operating its electronics business.
(b) "Contribution Agreement" means the Contribution Agreement, Plan
and Agreement of Reorganization and Distribution, dated
__________, 2000, between API and APW.
(c) "Inventory Products" means the products produced by API and/or
its subsidiaries and transferred to APW under the Contribution
Agreement and that bear the Trademarks or labels that bear the
Trademarks or that are packaged in packaging that bears the
Trademarks, whether such labels are affixed or the
products are packaged in such packaging before or after such
transfer.
(d) "Inventory Materials" means the promotional materials, product
literature, and other similar materials bearing the Trademarks
produced by API and/or its subsidiaries and transferred to APW
under the Contribution Agreement, but excludes labels and product
packaging bearing the Trademarks, if any, transferred to APW.
(e) "Trademarks" means the trademarks, logos, trade dress or other
trade designations of API listed on Schedule 2, or any one or
more of same.
(f) "APW Materials" means those APW advertising and promotional
materials that use the Trademarks as permitted by paragraph 3 of
this Agreement.
2. Transitional Use Trademarks on Inventory Materials and Inventory
Products. API and APW recognize that APW possesses Inventory Materials and
Inventory Products. APW shall have the right and license to sell the Inventory
Products until June 30, 2004. APW shall have the right and license to use the
Inventory Materials in connection with the sale of Inventory Products until the
Inventory Materials are exhausted or until August 31, 2001, whichever occurs
first. APW shall not make any claims for or
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about the Inventory Products that have not been approved in advance by API or
were not made prior to August 31, 2000.
3. Transitional Trademark and Trade Name License. Solely for the purpose
of enabling APW to inform its customers of its new identity and to make a
transition from the Trademarks to APW's own trademarks and trade identity, API
grants to APW, for a period of nine (9) months from the date of the Agreement, a
royalty free, nontransferable, and nonexclusive license to use the Trademarks in
APW's advertising and promotional materials, subject to the quality control
provision of paragraph 4 of this Agreement.
4. Quality Control. APW shall distribute and sell the Inventory Products
and shall distribute the Inventory Materials without any change in their nature
or quality from that existing at the time of transfer under the Contribution
Agreement, except that, for any such products not bearing the Trademarks or not
packaged in packaging bearing the Trademarks at the time of transfer but for
which API has transferred to APW labels or packaging bearing the Trademarks, APW
can affix said labels to such products or package same in such packaging. The
use of the Trademarks on APW Materials shall be consistent with API's use
thereof prior to the transfer under the Contribution Agreement and shall be in
appearance and quality reasonably satisfactory to
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API. APW shall not use the Inventory Materials or sell the Inventory Products
with any other labels, packaging, trademarks or trade dress other than those
explicitly permitted by this Agreement. API shall have the right, on reasonable
notice, to inspect the Inventory Products, the Inventory Materials, and the APW
Materials and obtain representative samples for inspection for quality control.
5. Use of APW Trademarks on Transferred Products. To the extent API
transfers to APW under the Contribution Agreement products that do not bear the
Trademarks and do not bear any other API trademark or trade designation, APW may
xxxx said products with its own trademarks or package said products in packaging
that bears APW's trademarks, but in that case APW shall not sell said products
using the Inventory Materials.
6. Limitations. No license or rights under any other trademark, trade
name, trade dress, trade designation or any other property right of API is
granted by this Agreement. APW has no right to assign, transfer or sublicense
any of its rights acquired or obligations assumed under this Agreement. Any
such attempted assignment, transfer or sublicense shall be void. APW shall not
use or permit the use of any trademarks or trade dress that are confusingly
similar to the Trademarks. APW will promptly notify API of any conflicting use
of or acts of
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infringement concerning the Trademarks and will cooperate as API reasonably may
deem advisable to protect API's rights.
7. Ownership of Trademarks. APW acknowledges that API is the owner of and
has acquired substantial goodwill in the Trademarks and agrees that every use
thereof in connection with the Inventory Products and Inventory Materials shall
inure solely to the benefit of API. Upon API's request, APW shall place on APW
Materials reasonable notices of such ownership. APW shall not dispute or assist
in disputing directly or indirectly API's rights in the Trademarks.
8. API Warranty. API warrants that it has full power to make this
Agreement and to grant the rights as provided herein and that it has no actual
knowledge that the Trademarks violate the valid rights of any third party. API
agrees to indemnify and defend APW against any claims of third parties (and to
pay any damages and attorneys' fees awarded) based on a breach of the foregoing
express warranty. The parties agree to generally utilize the notice and payment
provisions and defense of third-party claims as set forth in Article V and VI of
the General Assignment, Assumption and Agreement Regarding Litigation, Claims
and Other Liabilities, dated __________, 2000 (hereinafter the "General
Assignment").
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9. Product Liability Claims. APW shall comply with all laws and
regulations applicable to the sale and distribution of Inventory Products. APW
will defend, indemnify and hold API harmless against all loss, expense, and
damage occasioned by any claim, action or recovery (including all personal
injury and product liability claims) by any party (including any government
agency) against API arising out of any sale, distribution, or use of the
Inventory Products both during and after expiration or termination of this
Agreement, except for those claims based on the breach of the API warranty of
paragraph 8 of this Agreement. To the extent not inconsistent with the
foregoing, the parties agree to generally utilize the notice and payment
provisions and defense of third-party claims as set forth in Article V and VI of
the General Assignment.
10. Termination. Either party may terminate this Agreement upon written
notice to the other party with cause for any material breach of this Agreement
by the other party, unless within a period of thirty days after written notice
the other party remedies the breach in all material respects. This Agreement
will terminate automatically (to the extent permitted by law at the time) in the
event APW files a petition in bankruptcy, becomes insolvent, makes an assignment
for the benefit of creditors or an arrangement pursuant to any bankruptcy
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law, discontinues its business or has a receiver appointed for it.
11. Post Termination/Expiration Rights. Upon expiration or termination,
all rights of APW under this Agreement will cease and immediately revert to API,
and APW will destroy all Inventory Materials and all products, labels,
packaging, and promotional and other material in its possession that bear the
Trademarks. APW shall discontinue and use its best efforts to require its
distributors to discontinue forthwith the use of any Inventory Materials and the
Trademarks and any and all products, packaging, advertising and promotional
materials using and/or making reference in any manner to the Trademarks.
12. Survival of Terms. The parties' obligations under paragraphs 6, 7, 8,
9, 11, and 12 of this Agreement shall survive expiration or termination of this
Agreement and they shall not be relieved of any of their continuing obligations
thereunder.
13. Miscellaneous.
This Agreement shall be construed in accordance with the internal laws
of the State of Wisconsin.
The parties intend to enter into a license agreement only and this
Agreement shall not in any way be deemed to
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establish any other relationship between them. APW agrees that it does not have
the authority and will not directly or indirectly contract any obligations of
any kind in the name of or chargeable against API or agents or employees of API.
This Agreement supersedes all prior and contemporaneous agreements
between the parties in connection with the matters set forth herein and may only
be amended in a writing signed by both parties.
14. Notices. All demands, notices and communications under this
Agreement shall be in writing and shall be deemed to have been duly given if
personally delivered or sent by certified or registered United States Mail,
postage prepaid, to:
(a) in the case of API:
Applied Power Inc.
0000 X. Xxxxx Xxxx
Xxxxxxxxx, XX 00000
Attention: __________
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(b) in the case of APW:
APW LTD.
N22 X00000 Xxxxxxxxx Xxxxxxx Xxxx
Xxxxxxxx, Xxxxxxxxx 00000-0000
Attention: __________
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
as of the date first above written by their duly authorized officers.
APPLIED POWER INC.
By:__________________________________
President and Chief Executive Officer
APW LTD.
By:__________________________________
President and Chief Executive Officer
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