Exhibit 10.23
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "AGREEMENT"), dated as of January 28,
1999, made by and between BARNEY'S, INC., a corporation organized under the laws
of the State of New York with an office at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx
00000 (hereinafter referred to as "TRADEMARK OWNER"), BNY LICENSING CORP. a
corporation organized under the laws of the State of Delaware with an office at
000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (hereinafter referred to as
"LICENSOR"), and BARNEYS JAPAN CO., LTD., a corporation organized under the laws
of Japan, with principal offices at 15-16 Shinjuku 3-Chome, Shinjuku-ku, Tokyo
000 Xxxxx (hereinafter referred to as "LICENSEE").
W I T N E S S E T H :
WHEREAS, Trademark Owner operates retail stores under the name
"BARNEYS NEW YORK", which stores sell men's, women's and children's wearing
apparel, shoes and accessories, cosmetics, jewelry, china, glassware, linens,
stationery and gift items and furniture, among other items, under the "BARNEYS
NEW YORK" name and under other brand names; and
WHEREAS, the Trademark Owner has granted to Licensor the right and
authority to grant licenses to use the "BARNEYS NEW YORK" name in certain Asian
countries, including Japan and Singapore, in connection with the operation of
retail stores and the manufacture, sale and distribution of merchandise under
the "BARNEYS NEW YORK" name (hereinafter referred to as the "BASIC LICENSE
AGREEMENT"); and
WHEREAS, an Operating License Agreement (hereinafter referred to as
the "ORIGINAL AGREEMENT") dated September 19, 1989, was entered into by and
between Licensor and ISETAN COMPANY LIMITED (hereinafter referred to as
"ISETAN"), pursuant to which Licensor granted to Isetan the exclusive right and
license to use the trademark and tradename "BARNEYS NEW YORK" in specified ways
within a licensed territory as defined in the Original Agreement; and
WHEREAS, the Original Agreement was assigned by Isetan to Licensee,
pursuant to the provisions of subparagraph 12(e) of the Original Agreement, as
of June 1, 1990; and
WHEREAS, Trademark Owner, Licensor and certain related entities filed
voluntary petitions under Chapter 11 of the United States Bankruptcy Code in the
United States Bankruptcy Court for the Southern District of New York on January
10, 1996, in the proceedings entitled IN RE BARNEY'S, INC. ET AL., Case Nos.
96-B-40113 through 40133 (JLG) (hereinafter referred to as the "CHAPTER 11
PROCEEDINGS"); and
WHEREAS, a plan of reorganization (hereinafter referred to as the
"PLAN OF REORGANIZATION") in the Chapter 11 Proceedings was confirmed on
December 21, 1998, in accordance with the Bankruptcy Code, pursuant to which all
of the assets, property and rights of BNY Licensing Corp. and Barney's, Inc.,
including their rights of ownership of the trademark, service xxxx and trade
name "BARNEYS NEW YORK," vested in Trademark Owner or Licensor (as applicable)
and which authorized Trademark Owner and Licensor to enter into this Agreement;
and
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WHEREAS, pursuant to the Plan of Reorganization and Section 365(n) of
the Bankruptcy Code, 11 U.S.C. Section 365(n), Licensor will be deemed to have
rejected the Original Agreement; and
WHEREAS, Licensor desires to continue the license relationship with
Licensee as contemplated in the Original Agreement, subject to certain
modifications; and
WHEREAS, Licensor wishes to grant to Licensee, and Licensee wishes to
obtain from Licensor, the right to use the "BARNEYS NEW YORK" name and xxxx in
Japan and, for a limited purpose, in Singapore, in connection with the operation
of retail stores and the manufacture, sale and distribution of merchandise under
the "BARNEYS NEW YORK" name and xxxx.
NOW, THEREFORE, in consideration of the mutual terms, agreements and
conditions herein contained, and for other good and valuable consideration, the
parties hereby agree as follows:
1. REJECTION AND TERMINATION OF ORIGINAL AGREEMENT. Pursuant to the
Plan of Reorganization and Section 365(n) of the Bankruptcy Code, 11 U.S.C.
Section 365(n), Licensor will be deemed to have rejected the Original
Agreement. Licensor and Licensee hereby terminate all terms, conditions and
obligations of the Original Agreement.
2. GRANT OF LICENSE. (a) Subject to the conditions hereinafter set
forth, Licensor hereby grants to Licensee, for the term of this Agreement, the
exclusive right and license in the country of Japan (hereinafter referred to as
the "LICENSED TERRITORY") to operate retail stores (hereinafter referred to as
the "FREE-STANDING STORES") and
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departments within retail stores (hereinafter referred to as the "IN-STORE
SHOPS") under the tradename "BARNEYS NEW YORK" and to operate a single in-store
shop located in an Isetan store in Singapore (hereinafter referred to as the
"LICENSED DEPARTMENT") (such free-standing stores and in-store shops, and the
Licensed Department are hereinafter referred to as the "RETAIL LOCATIONS") and
to manufacture, sell and distribute (at wholesale and at retail) in, to and
through the Retail Locations, Licensed Products (as defined below) and to use
the xxxx "BARNEYS NEW YORK" (the tradename, trademark and service xxxx "BARNEYS
NEW YORK" in English and/or Japanese are hereinafter referred to as the
"LICENSED XXXX") on and in connection with the Licensed Products and the
manufacture, sale and distribution thereof, to sublicense said rights in the
Licensed Territory pursuant to paragraph 13 hereof (subject to the
qualifications set forth therein), and to use the Licensed Xxxx as part of
Licensee's corporate name (the right to so use the Licensed Xxxx shall be
limited to Licensee and shall not be granted to any sublicensee). It is
understood by the parties that the manufacturing right hereby granted shall not
be limited to the Licensed Territory; however, the selling and distributing
rights shall be expressly limited to the Licensed Territory and the Licensed
Department.
(b) Licensee's uses of the Licensed Xxxx shall be designed to result
in the attribution to the Licensed Xxxx of, and the Licensed Xxxx shall be
promoted to represent, the qualities for which Trademark Owner's Division One
stores (as listed in Exhibit A and hereinafter referred to as the "BARNEYS
STORES") are known. Licensee shall exert its best efforts to maintain and
enhance these qualities in the Retail Locations
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and in the products which are or are caused to be designed, manufactured and/or
distributed for the purpose of, and under, this Agreement, or sold in the Retail
Locations.
(c) As used herein, the term "Retail Location" may include, in
addition to retail stores, outlet stores, warehouse sales, catalog, mail order,
or other operations (hereinafter referred to as the "ADDITIONAL USES") conducted
under or using the Licensed Xxxx which involve the sale of merchandise to the
public, PROVIDED, HOWEVER, that Licensee's use of the Licensed Xxxx in
connection with any such Additional Uses shall have been approved pursuant to
paragraph 5 hereof and shall be consistent with all the terms and conditions of
this Agreement.
(d) The parties will set forth and agree upon, in good faith, an
Internet use policy, which shall contain standards and guidelines for, and set
forth the extent and limitation of, Licensee's use of the Licensed Marks on the
Internet, prior to any such use by Licensee.
3. THE LICENSED PRODUCTS. As used in this Agreement the "LICENSED
PRODUCTS" shall mean the products listed on Exhibit B hereto which may from time
to time be revised upon mutual agreement and which are manufactured, sold and/or
distributed by Licensee under or in conjunction with the Licensed Xxxx or are
sold and/or distributed by Licensee from a Retail Location (whether or not such
products bear the Licensed Xxxx). Licensed Products which carry only a
designer's or manufacturer's label or such a label in conjunction with a label
bearing the Licensed Xxxx are referred to herein as "BRANDED PRODUCTS."
Licensed Products which carry only a label bearing the Licensed Xxxx, or which
carry no label, are referred to herein as "PRIVATE LABEL
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PRODUCTS." A label bearing the Licensed Xxxx shall be added to all Branded
Products unless it is not practical to do so.
4. TERM. The initial term (hereinafter referred to as the "BASE
TERM") of this Agreement shall continue until December 31, 2015, unless sooner
terminated in accordance with the provisions of this Agreement. Licensee shall
have the right, at the end of the Base Term and the first and second Extended
Terms (if any) to renew this Agreement for an optional ten (10) year term (each
term hereinafter referred to as an "EXTENDED TERM"), on the condition that at
the end of the then effective term, (i) there is no outstanding material breach
by Licensee, (ii) in addition to the existing free-standing Retail Locations in
Shinjuku and Yokohama (hereinafter referred to as the "EXISTING STORES"),
stores, Licensee shall have opened prior to the end of the Base Term one (1) or
more free-standing stores which shall be substantially equivalent in size to, or
larger than, the Licensee's existing store in Shinjuku; (iii) Licensee shall
have maintained two (2) free-standing stores comparable to the Existing Stores
unless agreed to by the parties; (iv) the parties shall have agreed upon the
Annual Minimum Net Sales (as defined below) which shall be maintained for each
Extended Term; (v) not later than six (6) months prior to the scheduled
commencement date of such renewal term, the parties shall have agreed upon a
royalty rate and schedule of Annual Minimum Royalties (as defined below) or
other performance criteria and related issues applicable for each Extended Term,
and (vi) Licensee and Isetan shall have met a net worth or other financial test
as reasonably agreed among the parties (it being agreed that in the
determination of such test Isetan shall not be obligated to disclose any
non-public information to Licensor or Trademark Owner).
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5. OPERATION AND OPENING OF RETAIL LOCATIONS: ADDITIONAL USES.
(a) Licensor and Licensee recognize and confirm that the Existing
Stores were opened pursuant to the Original Agreement. Pursuant to paragraph 2
of this Agreement, Licensee agrees to use its best efforts to continuously
operate such Existing Stores under the Licensed Xxxx throughout the term of this
Agreement. Pursuant to paragraph 2 of this Agreement, Licensee shall have the
right to open additional Retail Locations or to relocate the Existing Stores to
stores with at least comparable sizes and locations to those of the Existing
Stores and in accordance with the specifications set forth in Exhibit C.
(b) Licensee may continue to operate the Licensed Department in the
currently existing Isetan store in Singapore. Upon prior written approval of
Licensor, which shall not be unreasonably withheld, taking into account all
relevant factors, including, without limitation, the size and location of any
proposed relocation, Licensee shall have the right to relocate or move the
Licensed Department to another location in Singapore.
(c) Trademark Owner, Licensor and Licensee recognize that it is in
their interest to increase sales under the Licensed Xxxx in a manner which will
ensure maintenance of the high standards of quality, taste and image symbolized
by the Licensed Xxxx. Licensor understands that Licensee is interested in using
the Licensed Xxxx in connection with sales through Additional Uses. Licensor
will cooperate with Licensee in good faith to consider and implement these
Additional Uses of the Licensed Xxxx by Licensee, including appropriate
standards of design, merchandise and service for such Additional Uses. Licensee
shall not implement any Additional Uses without the prior
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written approval of Licensor. Licensee shall provide written notice to Licensor
of Licensee's desire to implement such Additional Uses and Licensor shall
respond in writing to Licensee's written notice within thirty (30) days of
receipt thereof. However, Licensee recognizes that it is Licensor's decision to
approve or disapprove of any of these Additional Uses if Licensor considers that
these Additional Uses are likely to be conducted or are being conducted in a
manner inconsistent with the high standards of quality, taste and image
symbolized by the Licensed Xxxx.
6. STANDARDS AND DESIGN OF RETAIL LOCATIONS. Licensee acknowledges
that the Licensed Xxxx is associated with a very high quality of retail store
design and that the Trademark Owner enjoys a reputation for the style and
quality of its stores. Licensee agrees and covenants that it will use its best
efforts to maintain and enhance such reputation in selection of Retail
Locations, and in the level of physical design, construction and appearance of
each Retail Location and the type and location of each department therein and in
the remodeling and renovation of each Retail Location so that the Retail
Location and each department therein will meet at least the standard of the
Barneys Stores, or such other standard as may be applicable to an Additional
Use. Licensor and Licensee shall mutually agree upon the location (such
agreement to be made either before or after selection and determination of the
location by Licensee) and the architectural and interior designs for all Retail
Locations and on the procedures for creating such designs.
7. ROYALTIES; OTHER PAYMENTS. (a) Licensee shall pay to Licensor
and to Isetan of America, Inc., or its designee (hereinafter referred to as
"IOA"), as applicable,
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the following payments calculated on Net Sales (as hereinafter defined) of
Licensee and its sublicensee(s) made from Retail Locations:
(i) Licensee shall pay to Licensor a minimum royalty
(hereinafter referred to as the "ANNUAL MINIMUM ROYALTY") for each royalty year
(i.e., the twelve-month period ending each last day of the month of February)
during the Base Term equal to 0.25% of the Annual Minimum Net Sales as set forth
in Exhibit D. In addition, Licensee shall pay to IOA a payment for each royalty
year during the Base Term equal to 2.25% of the Annual Minimum Net Sales as set
forth in Exhibit D. During any Extended Terms, Licensee shall pay to Licensor
or IOA, as the case may be, an amount to be determined pursuant to paragraph
4(v).
(ii) Licensee shall pay to Licensor a percentage royalty
(hereinafter referred to as the "ANNUAL PERCENTAGE ROYALTY") for each royalty
year during the Base Term equal to 2.50% of actual Net Sales (as defined below)
in excess of the Annual Minimum Net Sales shown in Exhibit D from the Existing
Stores, one additional free-standing store and the Licensed Department
(hereinafter referred to as, collectively, the "CORE OPERATIONS"), plus 2.50% of
actual Net Sales (if any) generated by stores or approved sales activities other
than the Core Operations. During any Extended Terms, Licensee shall pay to
Licensor a percentage royalty to be determined pursuant to paragraph 4(v).
(iii) The term "NET SALES" means the entire amount charged,
whether wholly or partly for cash, on credit or otherwise, for all merchandise
sold, and all charges made for, at or from any Retail Location by Licensee or
anyone acting on Licensee's behalf or under any sublicense, sublease or
concession from Licensee in which case the
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amount charged to the concessionaire should be the Net Sales (the amount of Net
Sales by any one acting under any sublease shall be the full retail price of the
merchandise sold by such person, but Net Sales shall not include the wholesale
price of merchandise sold to such person by Licensee), including without
limiting the generality of the foregoing, the amount allowed upon any
"trade-in", the cost of sale of any merchandise in exchange for any premium or
promotion and to the extent accounted for in the financial statements of
Licensee under generally accepted accounting principles in Japan. No deduction
shall be made for any uncollected or uncollectible credit accounts. Every
transaction on a deferred payment basis shall be treated as a sale for the full
price at the time such transaction is entered into, irrespective of the time for
payment or the time when title passes. The term "Net Sales" shall not include
(u) sales from any restaurant operated and/or services performed (such as sale
of tickets to concerts, sporting events and the like which are not related to
business activities of Trademark Owner, but Net Sales shall include sales from
alterations of merchandise and the like to the extent the same is accounted for
as sales of the Licensee excluding the case in which an outside manufacturer is
employed by the Licensee for this purpose) as part of any Retail Location, (v)
the amount of any cash or credit refund in fact made upon sales from a Retail
Location which were previously included in net gross sales, where the
merchandise sold or some part thereof is returned by the purchaser and accepted
by Licensee, (w) sales of fixtures or equipment after their use in the conduct
of Licensee's business at a Retail Location, or (x) the amount of any sales,
luxury, excise or consumption taxes on sales from a Retail Location, where such
taxes are both added to the selling price (or absorbed therein) and paid to the
taxing authorities by Licensee (but
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not by any vendor of Licensee). The wholesale price charged by Licensee or any
sublicensee for the sale of any Licensed Products to any Retail Location or to
any Affiliate of Licensor or Trademark Owner shall not be included in Net Sales,
but the sale of such Licensed Products at retail shall be included in Net Sales
at the full retail price thereof. If any taxing authority in Japan shall
increase the net sales reported by Licensee on any tax return and as a result
the net sales so increased are required to be restated by Chuo Audit Corporation
in accordance with generally accepted accounting principles in Japan, Licensee
shall notify Licensor promptly and pay additional Annual Percentage Royalty due
(calculated on a basis of the Net Sales after taking into account deductions
above stated) due at that time. In the event that retail sales to be included
in Net Sales are made in a currency other than Japanese yen, the amount of such
retail sales shall be converted to Japanese yen using the telegraphic transfer
selling rate quoted by The Bank of Tokyo-Mitsubishi, Ltd. in Tokyo on the last
business day of each month during which each such merchandise is sold.
(iv) All payments hereunder shall be made in Japanese Yen unless
Licensor or IOA shall notify Licensee in writing that such royalty payments
shall be made in a different currency. Any royalty payment made in a currency
other than Japanese Yen shall be converted from Japanese Yen to the currency of
payment using the telegraphic transfer selling rate quoted by The Bank of
Tokyo-Mitsubishi, Ltd. in Tokyo on the date on which remittance is actually made
by Licensee and any fees or costs associated with any such conversion shall be
borne by the party requesting such payment in other currency, either Licensor or
IOA as the case may be. All royalty payments hereunder shall be paid without
any set off, claim, counterclaim or delay whatsoever.
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(b) The royalties due hereunder shall be paid as follows:
(i) The Annual Minimum Royalty shall begin to accrue as of the
effective date of the Plan of Reorganization. The initial payment, to be made
on the last day of March, 1999, will be prorated for the number of days from the
effective date of the Plan of Reorganization to the last day of February, 1999,
and thereafter all payments shall be paid in equal quarterly installments
occurring on the last day of each June, September and December of the royalty
year and on the last day of March following the end of the royalty year
(hereinafter referred to as "PAYMENT DATES"), and shall be paid directly to
Licensor or IOA, as the case may be. The payments for the time period from
March 1, 2015 to December 31, 2015 shall be as set forth in Note 4 of
Exhibit D.
(ii) The Annual Percentage Royalty for each royalty year shall be
determined in the manner hereinafter set forth. On June 30 of each year,
beginning with June 30, 1999, Licensee shall submit to Licensor an annual report
of Net Sales for the royalty year ended the preceding last day of the month of
February, which report shall be in reasonable detail and shall be certified by
the appropriate senior financial officer of Licensee as having been prepared in
accordance with Licensee's internal regulations and with generally accepted
accounting principles in Japan. Any Annual Percentage Royalty shall become due
each June 30 and shall accompany the annual report of Net Sales. In the event
that Net Sales for the first six month period of any royalty year exceed Minimum
Net Sales of the relevant year in Exhibit D, Licensee shall pay Licensor the
Annual Percentage Royalty calculated on the Net Sales in excess of the Minimum
Net Sales, which shall become due December 31 of the same year. However, at the
time of submission of an annual report, the Annual Percentage Royalty for the
relevant whole
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royalty year shall be adjusted taking into account the Annual Percentage Royalty
paid in respect of such first six month period.
(iii) Licensee shall send to Licensor, on or before the 20th day
of each month, a sales report showing in reasonable detail, prepared in
accordance with Licensee's internal regulation, the Net Sales at or from the
Retail Locations for the preceding calendar month. Licensee shall keep and
shall require its sublessees, concessionaires and sublicensees, if any, to keep
at Licensee's or, as the case may be, their respective corporate offices,
complete and accurate books of account and records of, but not limited to, all
sales and other transactions from which Net Sales can be determined. Licensee
shall keep all pertinent original sales books and records which would normally
be required to be kept and examined by an independent accountant in accordance
with accepted auditing practices in performing an audit of Net Sales.
(iv) The acceptance by Licensor of payments of Annual Percentage
Royalty shall be without prejudice to Licensor's right to an examination of
Licensee's books and records of its Net Sales in order to verify the amount of
Licensee's Net Sales. At any reasonable time and upon five (5) days prior
written notice to Licensee, Licensor may cause a special audit to be made of
Licensee's business affairs and records relating to the Retail Locations for the
period covered by such statement. Except as provided below, the cost of such
audit shall be paid by Licensor. Any such special audit performed by a
certified public accountant selected by Licensor in accordance with generally
accepted accounting principles in Japan shall be binding upon the parties. If
it shall be determined as a result of such audit that there has been a
deficiency or, as the case may be, surplus in the payment of Annual Percentage
Royalty, then such deficiency or, as the
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case may be, surplus shall become immediately due and payable and shall be paid
immediately by Licensee or, as the case may be, Licensor to the other party,
respectively. If the aforementioned deficiency is in excess of three and a half
percent (3.5%) of the Annual Percentage Royalty theretofore computed and paid by
Licensee for the period covered by the audit, Licensee shall also pay to
Licensor the cost of the audit.
(c) Licensee shall make all reasonable and timely efforts to obtain
from the proper authorities in the Licensed Territory appropriate permits for
effecting remittance into the United States, filing such applications,
certificates, or other instruments as may be required to obtain all necessary
governmental approvals. Nevertheless, Licensee's obligation to make payments to
Licensor shall not depend in any way on Licensee's receipt in, or ability to
make remittance into, the United States of America of funds, from proceeds of
sales or otherwise; PROVIDED, HOWEVER, that Licensee shall not be required to
take any action in violation of Japanese laws but this provision shall not limit
Licensee's obligations under the immediately preceding sentence.
(d) Licensee shall withhold from each royalty payment payable
hereunder the appropriate amount of taxes due to the government(s) of the
Licensed Territory in respect of such royalty payments. Promptly upon receipt
thereof, Licensee shall forward to Licensor all receipts, tax returns and other
documents evidencing payment of such taxes.
(e) Trademark Owner, Licensor and Licensee shall each bear its own
costs of performance under this Agreement.
(f) Any financial, accounting, business or other information provided
by or on behalf of Licensee to Licensor, including without limitation
information contained
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in an annual or other report and information obtained by Licensor in the course
of or in connection with the audit pursuant to this paragraph 7, shall be kept
confidential, and shall not be disclosed to any third party or used for any
purpose other than as provided herein without the prior written consent of
Licensee, except as required by law or court order.
8. STANDARDS FOR LICENSED PRODUCTS. The quality standard, taste and
image of the Licensed Products shall be at least equal to that of the
merchandise offered for sale in the Barneys Stores, and Licensee shall not
display, offer for sale or sell any merchandise which does not meet such quality
standard, taste and image. In order to assure that such quality standard, taste
and image are maintained, prior to the selection of any specific products to be
offered for sale at the Retail Locations each season, Trademark Owner, Licensor
and Licensee shall consult, develop and implement a seasonal merchandising plan
for each product category which shall take account of special considerations
affecting merchandise selection within the Licensed Territory. To the extent
practicable, Trademark Owner, Licensor and Licensee shall coordinate buying
appointments. Trademark Owner, Licensor and Licensee shall work together to
develop and design Private Label Products. As much as practically possible,
Trademark Owner and Licensor shall review Licensee's product development and
samples during trips to Japan, on Licensee's trips to New York or on joint
buying trips. To the extent not so reviewed, Licensee will, to the extent
practically possible, furnish samples to Trademark Owner and Licensor. Samples
furnished by one party to another and returned by the receiving party shall be
at the expense of the furnishing party. Samples furnished by one party to
another and kept by the receiving party shall be at the expense of the
receiving
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party. The parties will, to the extent practicable, keep one another informed
regarding development of merchandising plans, arrangement, location and display
of merchandise within stores, development and sourcing of new products,
discontinuance of products or product lines, customer control and similar
matters so as to facilitate consistent and timely merchandise selection and
merchandising activities.
9. MARKETING AND ADVERTISING. (a) All uses of the Licensed Xxxx,
including without limitation, packaging, advertising, marketing and store
materials, labels, price tickets, hang tags, stationery, use on the Internet
(only after such Internet use policies are set forth pursuant to paragraph 2(d))
and in-store graphics, shall conform as nearly as practicably possible to the
uses thereof by the Trademark Owner after taking into consideration the
characteristics peculiar to each locality and shall be agreed upon in advance,
to the extent practically possible, between the parties. Variations required to
conform to legal requirements (e.g., labeling requirements) shall be permitted.
(b) Licensee shall develop a marketing, advertising and promotion
campaign for each season, after consultation, to the extent practically
possible, with the Trademark Owner's advertising department. The campaign
material concept shall be agreed upon in advance by Trademark Owner, Licensor
and Licensee prior to implementation and shall be consistent with and shall
maintain and enhance reputation and standard of Trademark Owner while taking
account of differing market conditions between the Licensed Territory and the
United States. Licensee agrees to expend on advertising and promotion such a
percentage of Net Sales as is reasonably necessary to promote the image of
Licensed Xxxx and Net Sales in the Licensed Territory. Promptly after any
advertisement shall first be run, Licensee shall send to Trademark Owner and
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Licensor a tear sheet (in the case of print advertising), a screen print out (in
the case of Internet advertising only after such Internet use policies are set
forth pursuant to paragraph 2(d)) or a video or audio tape (in the case of
television or radio advertising).
10. PERSONNEL, TRAINING AND OPERATIONAL POLICIES. Licensee shall
educate and train its employees so that the quality of customer service in the
Retail Locations meets in all respects the standard of the Barneys Stores.
Trademark Owner and Licensor shall provide reasonable information regarding the
appropriate customer service standards and methods sufficient to enable Licensee
to meet this obligation. In addition, Trademark Owner and Licensee shall
negotiate in good faith towards the execution of an agreement relating to the
training in the United States of employees of Licensee, Isetan or their
affiliates concerning the operation of the Retail Locations.
11. CONSULTATIONS. Trademark Owner and Licensor shall have the right
to cause their designated representative(s) to visit Licensee at Licensee's
offices in the Licensed Territory or at one or more Retail Locations to discuss
and review all aspects of the license herein granted, including without
limitation, the selection of Licensed Products and the merchandising, marketing,
and promotion of the Retail Locations. The timing of such visits shall be
selected upon mutual agreement between Trademark Owner, Licensor and Licensee.
Trademark Owner, Licensee and Licensor shall use their best efforts to meet in
Tokyo, New York or other mutually agreed-upon location during each season to
review the activities under this Agreement. The foregoing provisions of this
paragraph 11 shall also apply to sublicensees and concessionaires permitted
under subparagraphs 13(b) and 13(c).
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12. THE LICENSED XXXX. (a) Trademark Owner has registered, or has
applied for the registration of, the Licensed Xxxx in the classes and
jurisdictions so indicated on Exhibit E. Any and all trademarks indicated on
Exhibit E as well as those trademarks to be registered or applied for
registration hereafter fall under the definition of "LICENSED XXXX". Trademark
Owner represents and warrants and Licensee acknowledges that the Trademark Owner
has designated in the Licensed Territory Licensor as its agent for quality
control and has given Licensor sole rights to authorize the use of the Licensed
Xxxx in the Licensed Territory. The Trademark Owner and Licensor are entitled
to all of the rights to use the Licensed Xxxx regardless of whether such use
constitutes technical trademark use or some other kind of usage such as in a
corporate or commercial name, including without limitation, the right to
register or record the Licensed Xxxx in the Licensed Territory. The Trademark
Owner has granted to Licensor the further right to grant the license herein
granted. Trademark Owner and Licensor acknowledge that Licensee is duly granted
exclusive rights to use the Licensed Xxxx in Japan and in the Licensed
Department. Licensee shall not contest, deny or dispute the validity of such
registrations, or Licensor's and Trademark Owner's title thereto, and shall not
in any way, either directly or indirectly, encourage or assist others or permit
its sublicensees to do so, and shall not take or permit its sublicensees to take
any action of any kind inconsistent with Licensor's and Trademark Owner's
ownership of all such trademark rights, including, without limitation, applying
for, registering or acquiring a registration of the Licensed Xxxx in the
Licensed Territory. Nothing in this Agreement shall confer upon Licensee or any
sublicensee a proprietary interest of any sort in or to the Licensed Xxxx or
colorable simulations, abbreviations, combinations or
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derivations of the Licensed Xxxx. Furthermore, nothing in this Agreement shall
confer upon Licensee or any sublicensee any rights or interest of any kind in or
to the good will of Licensor or Trademark Owner (except as licensed hereunder)
or any of their other trademarks.
(b) Trademark Owner and Licensor represent and warrant that Trademark
Owner is the owner of the Licensed Xxxx and that neither Trademark Owner nor
Licensor has taken any action inconsistent with the rights granted hereunder.
Trademark Owner and Licensor assume no liability with respect to the status of,
or freedom from, infringement of the Licensed Xxxx in the Licensed Territory,
although Trademark Owner and Licensor have no present knowledge of any such
infringement. Trademark Owner and Licensor further represent and warrant that,
to either of their present knowledge, the use and exercise by Licensee of the
rights granted hereunder will not violate currently applicable laws or the
rights of third parties.
(c) Except as specifically provided below, Licensor shall have the
right, but shall not be obliged, to determine the means and manner of the
institution, maintenance and defense and disposition of any and all claims,
suits, controversies or proceedings arising out of or relating to challenges of
third party uses of the Licensed Marks in every jurisdiction throughout the
world, including, without limitation, the Licensed Territory. In each such
claim, suit, controversy and proceeding, Licensee agrees to render its fullest
cooperation and assistance, to the extent reasonably requested, to Licensor, and
Licensor shall have the right to assert such claim on behalf of itself and
Licensee, and to commence any action or proceeding in its own name or in the
name of both of them.
19
(d) Licensee shall promptly notify Licensor in writing of attempts by
anyone to register, copy, use, infringe upon or imitate the Licensed Xxxx, or
any design features of the Licensed Products within the Licensed Territory which
come to Licensee's attention. Licensee shall not, however, institute any suit
or take any legal action on account of such claimed infringements or imitations,
except as provided below.
(e) If Licensee desires to assert a claim or to commence an action or
proceeding against a third party involving infringement of its (or Licensor's or
Trademark Owner's) rights to the Licensed Marks, Licensee shall give written
notice thereof to Licensor, together with the details of each such claim.
Licensor shall have the right, within thirty (30) days of receipt of such
notice, to elect to assert such claim or to initiate action or proceedings
against such third party. If Licensor elects not to assert such claim or
commence such action or proceeding within the applicable time period, Licensor
shall advise Licensee in writing whether Licensee is granted permission to
initiate such action or proceeding, such permission to be reasonably granted or
denied by Licensor. If, and only if, such request for permission is granted,
Licensee shall have the right to assert the claim or commence such action or
proceeding, provided that (i) no such claim, action or proceeding may be settled
in a manner which would involve any disposition other than the payment of money
damages without the prior written consent of Licensor; and (ii) Licensor and
Trademark Owner may thereafter participate through counsel of their own choosing
and at their own expense in any such claim, action or proceeding. If Licensee
asserts such a claim or commences such action or proceeding, Trademark Owner and
Licensor shall render their fullest cooperation and assistance to the extent
reasonably requested by Licensee and shall, to the extent required by law, be
20
named a party, or parties, to such action or proceeding. Notwithstanding the
foregoing, if Licensee reasonably believes in good faith that immediate action
and injunctive relief are necessary to prevent irreparable injury, Licensee may
commence legal proceedings to obtain emergency injunctive relief against such
infringement. Licensee shall notify Licensor in writing as soon after the
commencement of any such proceedings as possible, and Licensor shall have the
right but not the obligation to assume the prosecution of such proceeding, or to
grant or deny permission to the Licensee to continue such proceeding, such
permission to be reasonably granted or dened. If Licensor shall elect to deny
such permission to Licensee, Licensee shall immediately cease such proceeding.
(f) The expense of any claim, action or proceeding involving the
Licensed Marks, including reasonable attorneys' fees and disbursements, shall be
borne solely by the party who undertakes the prosecution or defense of such
claim, action or proceeding.
(g) Any damages or other sums received by any of the parties in
connection with the prosecution of any claim, action or proceeding hereunder,
involving a third party, shall first be applied to the payment of the costs and
expenses thereof including reasonable attorneys' fees and disbursements. The
balance, if any, shall be allocated, in good faith by the parties, by percentage
of the overall award, according to damages or sums awarded as compensation for
lost revenue or awarded as compensation for other losses. Any damages or sums
awarded as compensation for lost revenue shall be allocated according to the
lost revenue, including royalties, of the respective parties resulting from the
infringement. Any damages or sums awarded as compensation for other losses
shall be divided evenly between the parties.
21
(h) The parties agree that they will maintain the existing image of
the BARNEYS NEW YORK name and xxxx as representing leadership in high quality,
high fashion specialty retailing of men's and women's apparel and other
merchandise consistent with this image.
13. ASSIGNMENT AND SUBLICENSE. (a) Except as otherwise provided in
this xxxxxxxxx 00, xxxx of the parties hereto shall, without prior written
consent of the other parties hereto, (i) sublicense, assign or otherwise
transfer its rights or obligations under this Agreement, except to an Affiliate
provided that if a party assigns or otherwise transfers its rights or
obligations to an Affiliate, such assigning party shall provide to the other
parties an unconditional guaranty of performance of all of the obligations of
its Affiliate hereunder substantially in the form of the guaranty attached
hereto as Exhibit F; (ii) sublicense, assign or otherwise transfer the rights to
use the Licensed Xxxx herein granted or any part thereof in the Licensed
Territory; or (iii) authorize any other person, firm or corporation to use the
Licensed Xxxx or any trademarks, service marks or tradenames colorably or
confusingly similar thereto, or any abbreviations, combinations or derivations
thereof in the Licensed Territory. Notwithstanding the foregoing, Trademark
Owner and Licensor may assign their rights and obligations under this Agreement,
without Licensee's consent, in connection with the sale of all or substantially
all of the assets of Trademark Owner and Licensor or in connection with a merger
or consolidation in which Trademark Owner or Licensor is not the surviving
party, provided that such purchaser of the assets or such surviving entity, as
the case may be, shall assume all obligations of Trademark Owner and Licensor
hereunder and shall cause any parent company to execute a guaranty, similar to
that set forth in paragraph 13(d),
22
whereby the guaranty executed by Barneys New York, Inc. and Trademark Owner,
pursuant to paragraph 13(d), shall terminate. This Agreement shall not prohibit
Trademark Owner from selling the Licensed Marks unrelated to a sale of
substantially all of its assets, without Licensee's consent; provided that
Trademark Owner and Licensor shall remain in a position to fulfill their
respective obligations under this Agreement, which shall continue for the term
of this Agreement. Notwithstanding the foregoing, Trademark Owner and Licensor
shall have the right to xxxxx x xxxx on, or security interest in, this Agreement
and their rights herein; it being understood, however, that this shall not be
deemed to constitute a consent to an assignment in violation of this paragraph
13, whether by foreclosure, foreclosure sale or otherwise .
(b) Subject to the prior written approval of Licensor, Licensee shall
have the right to sublicense to other retail store operators of a very high
quality, the right to operate in-store Retail Locations. The request for such
approval shall include the identity of the sublicensee, the nature and the
location of the stores in which the Retail Locations are to be operated, the
location of the Retail Locations within each store, the proposed line of
merchandise, the type of merchandise and such other information as Licensor may
reasonably request. Licensee shall require each sublicensee to comply with all
of the provisions of this Agreement regarding the design of the Retail
Locations, the merchandising, marketing and operation thereof, the selection of
Licensed Products for sale therein and, including, without limitation, the
requirements of at least paragraph 17. No sublicensee shall have any right
other than to operate an in-store Retail Location in the store specified and to
sell approved Licensed Products in such Retail Locations.
23
(c) Licensee (but not any sublicensee) shall have the right to grant
concessions to other operator(s) for the operation of departments within any
free-standing Retail Location operated by Licensee to the extent necessitated by
the retail business practice in Japan and consistent with the seasonal
merchandising plan developed by Licensor and Licensee pursuant to paragraph 9.
The merchandising, marketing and operation of such departments and the selection
of Licensed Products for sale therein shall at all times be under the direction
and control of Licensee and shall comply with all of the provisions of this
Agreement as if such departments were operated by Licensee.
(d) Upon execution of this Agreement, Licensor shall cause Barneys
New York, Inc. and Trademark Owner to execute an unconditional guaranty of the
performance of all of the obligations of Licensor hereunder in the form attached
hereto as Exhibit F.
(e) Upon execution of this Agreement, Licensee shall cause Isetan to
execute an unconditional guaranty of the performance of all of the obligations
of Licensee hereunder and the payment of all amounts required to be paid by
Licensee hereunder in the form attached hereto as Exhibit G, PROVIDED, HOWEVER,
that such guaranty shall continue until Licensee is no longer a subsidiary
company of Isetan if, and only if, the successor parent company to Licensee
executes a similar unconditional guaranty of Licensee's performance AND such
successor parent company has a credit rating equal to or superior to that of
Isetan. If Isetan or Licensee desires to effectuate an initial public offering
of the capital stock of Licensee, the parties will negotiate in good faith
whether the Isetan guaranty will be released and, if so, the mutually agreeable
terms
24
for such release; it being understood however that Trademark Owner and Licensor
have no obligation to release the Isetan guaranty.
14. CONFIDENTIALITY. All information, plans, designs, specifications
and the like supplied by any of the parties hereto or their agents or
representatives to another party, its sublicensees or their respective agents or
representatives with respect to the design, merchandising, marketing or
operation of the Retail Locations or with respect to Licensed Products shall be
held in confidence, except as otherwise required by law or in connection with
any proceeding between the parties hereto relating to an alleged breach of this
Agreement, and shall be used only to further the operation of the Retail
Locations pursuant to this Agreement. The party receiving confidential
information shall take all necessary precautions to prevent all other parties
from obtaining access to such information, except to the extent necessary to
fulfill the purposes of this Agreement and for the purpose of this paragraph
Trademark Owner, Licensor and Licensee shall be deemed to include their
Affiliates respectively. Upon termination of this Agreement, each party shall
return to the other party all such information in its possession or in the
possession of its sublicensees or their respective agents or representatives,
and thereafter no party nor any sublicensee nor any of their respective agents
or representatives shall make use of any such information gained from the other
party prior to such termination. Any "Affiliate" of Trademark Owner, Licensor
or Licensee under this Agreement shall mean any person or entity which, directly
or indirectly, owns, is owned by or is under common ownership with, any other
person or entity to the extent of greater than fifty percent (50%) of the issued
and outstanding capital stock of Trademark Owner, Licensor or Licensee, as the
case may be.
25
15. EXCLUSIVITY. (a) During the term of this Agreement, Trademark
Owner and Licensor jointly and severally agree that Trademark Owner, Licensor
and their respective Affiliates, licensees or sublicensees shall not (i)
directly or indirectly sell or distribute the Licensed Products and other
products similar or competitive thereto within the Licensed Territory without
the permission of Licensee or (ii) license the Licensed Xxxx for use in
connection with the operation of retail stores or on Licensed Products to any
other licensee in the Licensed Territory. Trademark Owner and Licensor shall
not be construed to be in breach of this subparagraph (a) by reason of its or
any of their Affiliates', licensees' or sublicensees' advertising on the
Internet for sales outside the Licensed Territory, or in magazines, newspapers
or trade papers, which may reach the Licensed Territory or by reason of
subsequent resales of the Licensed Products within the Licensed Territory by
customers of Trademark Owner and Licensor to whom sales were originally made
outside the Licensed Territory, unless Trademark Owner, Licensor or their
respective Affiliates, licensees or sublicensees were aware, or with reasonable
investigation should have been aware, that such customers intended to resell the
Licensed Products within the Licensed Territory. Trademark Owner and Licensor
shall have the right to produce Licensed Products within the Licensed Territory
for sale outside of the Licensed Territory, provided that Trademark Owner and
Licensor shall first consult in good faith with Licensee on the possibility of
establishing joint production and of wholesale distribution outside the Licensed
Territory for such Licensed Products.
(b) Licensee agrees that it shall not operate Retail Locations or
sell or distribute Licensed Products or directly or indirectly export, promote
or market Licensed Products outside of the Licensed Territory with the exception
of the Licensed Department
26
without the permission of Licensor. Licensee shall not be construed to be in
breach of this subparagraph (b) by reason of its advertising on the Internet for
sales outside the Licensed Territory (only after such Internet use policies are
set forth pursuant to paragraph 2(d)), or in magazines, newspapers or trade
papers, which may reach beyond the Licensed Territory or by reason of subsequent
sales of Licensed Products outside the Licensed Territory by customers to whom
sales were originally made within the Licensed Territory unless Licensee or its
sublicensee was aware or, with reasonable investigation should have been aware,
that such customers intended to resell Licensed Products outside the Licensed
Territory.
16. DEFAULT. (a) An event of default shall be deemed to have
occurred under this Agreement if: (i) Licensee fails to make any royalty
payment due hereunder and such default continues for more than thirty (30) days
after notice from Licensor; (ii) any party defaults in the performance of any of
its obligations hereunder and such default is material and continues for more
than thirty (30) days after notice from another party; or (iii) a receiver,
trustee or liquidator (or other similar official) for Trademark Owner, Licensee,
Licensor or any guarantor of Licensee is appointed under the laws of any
jurisdiction and is consented to by such party or is not withdrawn within
seventy five (75) days, or such party is named as debtor in any proceeding under
any bankruptcy or similar law and such proceeding is either voluntary or is not
discharged within seventy five (75) days, or such party makes an assignment for
the benefit of creditors or admits in writing its inability to pay its debts
generally as they become due.
(b) Upon the occurrence and during the continuance of an event of
default, the aggrieved party or parties shall have the right to terminate this
Agreement by sending
27
written notice of such termination to the other parties, specifying the
effective date of termination (hereinafter referred to as the "TERMINATION
DATE"). Such Termination Date shall be no less than sixty (60) days after the
date on which written notice of termination is sent. On such Termination Date,
this Agreement shall terminate as fully as if the Termination Date had been the
date set for the expiration of the term of this Agreement. Notwithstanding such
termination, in the event that this Agreement is terminated by Licensor pursuant
to this paragraph due to a breach by Licensee, Licensee shall continue to be
liable for, at Licensor's or IOA's election as the case may be, (i) the
payments, as and when due, of such entity's portion of the payments scheduled to
become due pursuant to paragraphs 7(a)(i) and 7(b)(i) from the Termination Date
to the stated expiration date of this Agreement, or (ii) the present value of
such payments, determined using a discount rate of four percent (4%) per annum.
(c) Failure to exercise any right or option hereunder, including any
right or option of termination, shall not constitute a waiver of such right or
option.
17. EFFECT OF TERMINATION. (a) Termination of this Agreement for
any reason shall not relieve Licensee of any and all of its obligations and
payments that accrued prior to the Termination Date, including, without
limitation, its obligation to pay to Licensor the Annual Percentage Royalty with
respect to the Net Sales having accrued prior to such termination. Licensee
and/or its sublicensee(s), as the case may be, shall have the right to complete
the manufacture of and sell such unsold Licensed Products in its possession at
the Termination Date for which royalties would be due during the twelve (12)
month period following the Termination Date of this Agreement and shall pay to
Licensor or IOA any royalty for such sales, pursuant to paragraph 7.
28
(b) Except as provided in subparagraph 17(a), any sublicense granted
by Licensee shall terminate automatically upon the termination of this
Agreement.
(c) After the termination of this Agreement, each of Trademark Owner,
Licensor and Licensee shall have the right to engage in business with all
accounts and customers provided by Licensee or any sublicensee, or Licensor or
Trademark Owner, as the case may be, during the term of this Agreement, without
any liability or accountability to Licensee or such sublicensee, Licensor or
Trademark Owner, as the case may be.
(d) In the event of termination of this Agreement for any reason,
Licensee shall permit Licensor, its agents, attorneys, and accountants to
inspect its accounting records and books of account which are normally required
to be held for the specified period under Japanese law, and to investigate
generally all transactions of business carried on by it under and pursuant to
this Agreement, for a period of eighteen (18) months following such
termination. Licensee agrees not to destroy any of such records prior to the
expiration of said eighteen (18) months, PROVIDED, HOWEVER, that Licensee shall
not be required to retain such records for more than five (5) years beyond the
end of the royalty year to which they relate.
(e) Upon the termination of this Agreement in accordance with the
terms hereof, Licensee shall not have acquired and shall not claim any right to
use the Licensed Xxxx and Licensee agrees that, except as permitted in paragraph
17(a) hereof, it shall not thereafter use, adopt, apply for a registration of,
or acquire a registration of the Licensed Xxxx or any colorable simulation
thereof or any confusingly similar trademarks or tradenames or any
abbreviations, combinations or derivations thereof. Promptly after
29
termination of this Agreement, Licensee shall change its corporate name to
remove any reference to the Licensed Xxxx or colorable simulation thereof or any
confusingly similar trademarks and tradenames or any abbreviations, combinations
or derivations thereof. In addition, if Licensee owns any application to
register, or registration of, the Licensed Marks, Licensee shall promptly
transfer such ownership to Licensor upon termination of this Agreement at no
cost to Licensor. Licensee shall, after termination of this Agreement, refrain
from using any distinctive features of labeling or design of (i) the Retail
Locations without such modifications resulting in losing such outstanding
distinctive features being effected (in the case of obsolescence which results
in the loss of such outstanding distinctive features, such modification being
deemed to have been made) or (ii) the Licensed Products theretofore employed in
carrying out the provisions of this Agreement, provided, however, that the
foregoing shall in no event prevent Licensee from using the then existing Retail
Locations for its retail operation or otherwise if they have been modified or
deemed to be modified as provided herein.
(f) Subject to paragraph 17(a), Licensee shall return or cause to be
returned all Licensed Products which are the property of Licensor then in its
possession. Trademark Owner and Licensor shall have the option to purchase at
cost any remaining Licensed Products.
(g) Subject to paragraphs 17(a) and 17(d) Licensee shall return,
cause to be returned or, at Licensor's direction, destroy all materials relating
to the Retail Locations which are the property of Trademark Owner or Licensor
then in its possession.
18. RELATIONSHIP OF THE PARTIES; INDEMNITY. This Agreement shall not
in any way be deemed or construed to establish any relationship between the
parties other
30
than as licensor or licensee, and Licensee shall have no authority to bind or
obligate Trademark Owner or Licensor. Licensee further agrees to indemnify and
hold harmless Trademark Owner or Licensor, their agents and employees, from any
liability which may be imposed upon it or them by virtue of any representation,
agency, or breach of this Agreement made by or on the part of Licensee or any of
Licensee's agents or employees. Licensee further agrees to indemnify and hold
harmless Trademark Owner, Licensor, their agents and employees, from any
liability, claim or action, excluding actions relating to Licensee's use of
Licensed Xxxx, brought by a third party arising out of Licensee's operation and
maintenance of Retail Locations, including, without limitation, attorney's fees
and costs relating thereto. Trademark Owner and Licensor agree to indemnify and
hold harmless Licensee, its agents and employees, from any liability which may
be imposed upon it or them by virtue of any representation or breach of this
Agreement made by or on the part of Trademark Owner, Licensor or any of their
agents or employees.
19. ENGLISH TRANSLATIONS. All material information to be furnished
hereunder to Trademark Owner and Licensor by Licensee shall, if prepared in a
language other than English, be accompanied by an English translation thereof.
Except in the case of notices, Licensee may submit a summarized English
translation if the substance of the information is conveyed thereby.
20. CHOICE OF LAW; ARBITRATION. (a) This Agreement shall be deemed
to have been made in, and shall be governed by and construed in accordance with,
laws of Japan applicable to contracts made and to be performed in Japan.
31
(b) All disputes, differences or claims, which the parties have not
been able to resolve by mutual agreement, arising out of or relating to this
Agreement, its performance or termination shall be settled and finally
determined by arbitration. Wherever under this Agreement any party is required
to give its consent or approval or the parties are required to reach mutual
agreement, the arbitration shall be limited to a determination whether the
parties are acting in good faith as required in paragraph 22, it being agreed
that the substantive matters to which the consents, approvals or mutual
agreements relate are within the special knowledge and ability of the parties
and are not within the jurisdiction of the arbitrators. Unless otherwise agreed
to by all of the parties, the following provisions shall apply to the
arbitration. The arbitration shall be conducted pursuant to the Japan-America
Trade Arbitration Agreement of September 16, 1952, by which each party hereto
agrees to be bound. Such arbitration (i) shall be held in Tokyo or New York, as
determined by the party which brings the arbitration proceeding; (ii) shall be
conducted in accordance with the rules of the country in which the arbitration
is held; (iii) shall be submitted under the applicable rules for expedited
procedures, with the intent that a final non-appealable award be made and in
effect no later than six (6) months after the initial submission; and (iv)
judgments upon the award rendered by the arbitrator(s) may be entered in any
court having jurisdiction thereof.
21. NOTICE. Any notice, payment, report or other communication
(hereinafter referred to as a "Notice") required or permitted by this Agreement,
unless otherwise provided for herein, shall be in writing, in English, sent by
registered or certified mail, by telecopy or personally delivered, and addressed
as follows:
32
Trademark Owner 000 Xxxxx Xxxxxx
and Licensor: Xxx Xxxx, Xxx Xxxx 00000
Attention: General Counsel
Telecopy No.: (000) 000-0000
with a copy to: WEIL, GOTSHAL & XXXXXX LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxx X. Xxxxxxx, Esq.
Telecopy No.: (000) 000-0000
Licensee: 00-00 Xxxxxxxx 0-Xxxxx
Xxxxxxxx-xx, Xxxxx 00
XXXXX
Attention: President Xxxxxxxxx Xxxxxxx
Telecopy No.: 011-81-3-5269-1055
with a copy to: XXXXXX, XXXXXXX & XXXX LLP
Xxx Xxxxxxx Xxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000-0000
Attention: Xxxxx Xxxxxxxxxx, Esq.
Telecopy No.: (000) 000-0000
unless another address for any party is substituted by written notice. All
Notices given hereunder shall be deemed to be given and received fifteen (15)
calendar days after the date of mailing thereof if sent by registered or
certified air mail or, if earlier, when actually received. All costs and
expenses incurred in sending notice shall be borne by the party dispatching such
notice.
22. MUTUAL COOPERATION. All actions required or permitted to be
taken by the parties hereunder shall be taken in good faith. At the request of
any party, the other parties shall execute such documents and agreements as may
be necessary to further confirm the terms and provisions hereof and the
intentions of the parties hereto. Whenever the party is required to make a
submission for another party's approval, such submission shall be made in a
timely fashion which will allow for proper review and execution of the matter
being submitted. Trademark Owner and Licensor shall cooperate
33
together with Licensee whenever practical to minimize any duplication of the
performance of an obligation by Licensee pursuant to this Agreement, including
without limitation, such obligations under paragraphs 8, 9 and 11 hereof. The
parties have taken or shall promptly take such actions as may be required to
comply with applicable government regulations including the completion of all
required ministerial filings and registration required or permitted under
Japanese law.
23. AUTHORITY. Each of Trademark Owner, Licensor and Licensee
represents and warrants that it has due power and authority to execute, deliver
and perform its obligations in accordance with this Agreement, and that its
execution, delivery and performance will not violate currently applicable laws
or the rights of third parties.
24. ENTIRE AGREEMENT. This Agreement embodies the entire
understanding among the parties regarding the subject matter hereof, all prior
correspondence, conversations or memorandum being merged herein and replaced
hereby and being without effect hereon, and no change, alteration or
modification hereof may be made, except in writing, signed by the parties
hereto.
34
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
28 day of January, 1999.
Trademark Owner: BARNEY'S, INC.
By /s/ Xxxxxx X. Xxxxx
---------------------------------
Name: Xxxxxx X. Xxxxx
Title: President
Licensor: BNY LICENSING CORP.
By /s/ Xxxxxx X. Xxxxx
---------------------------------
Name: Xxxxxx X. Xxxxx
Title: President
Licensee: BARNEYS JAPAN CO., LTD.
By /s/ Xxxxxxxxx Xxxxxxx
---------------------------------
Name: Xxxxxxxxx Xxxxxxx
Title: President
