LICENSE AND MARKETING AGREEMENT
Agreement dated as of July 17,1996 by and between TRB SYSTEMS INC., a
Delaware corporation with its business address at 000 Xxxxxxxxxx Xxxxxxx,
Xxxxxxxxxx, Xxx Xxxxxx 00000 (hereinafter called "LICENSOR"), and
Xx. Xxxxx X. Xxxxx, 00 Xxxxxxxx Xxxx Xxxxxxxxxxxx, Xxx Xxxxxx ("hereinafter
called Licensee").
WHEREAS, LICENSOR owns or controls patents, trademarks, tradenames and
know-how relating to bicycles with variable speed lever action drive and
their manufacture; and
WHEREAS, LICENSEE desires to obtain from LICENSOR (i) licenses under
tradenames, trademarks and proprietary know-how of LICENSOR applicable
to such bicycles, (ii) to the extent LICENSOR has or controls patents
applicable to such bicycles in the relevant territory described in this
Agreement, licenses under such patents, and (iii) technical assistance
related to such bicycles, together with the exclusive right to assemble,
use, import, sell, and distribute such bicycles within the relevant
territory in conformity with the standard quality control and design
requirements established by LICENSOR.
In consideration of the mutual covenants, terms and conditions hereinafter
set forth, the parties hereto mutually agree as follows:
ARTICLE I- DEFINITIONS
For the purposes of this Agreement, the terms listed below are defined,
whether in the singular or in the plural, as follows:
1.1 Affiliate - Any corporation or other business entity in which a
party hereto, directly or through one or more affiliates, (i) owns more
than fifty percent (50%) of the stock entitled to vote for the election
of directors, or (ii) otherwise exercises a controlling interest in the
management in such corporation or entity, LICENSOR to determine, in its
sole judgment, whether such controlling interest exists.
1.2 Agreement - This License and Marketing Agreement, including the
Appendices and Exhibits hereto, as the same may be amended from time to
time.
1.3 Anniversary Date - the date which occurs one (1) year from the
date of this Agreement and each succeeding anniversary thereof.
1.4 Gross Sales - For any period controlled by this Agreement,
the total of all sales of units of Licensed Product during the period
at invoiced prices, not reduced by discounts, allowances or other adjustments
other than defective returns. For purposes of this definition, a
transfer of a completed unit will be deemed a sale
hereunder and the invoice price will be the amount actually billed but will
be no less than the LICENSEE's wholesale list price for such a unit of the
Licensed Products as published and distributed to the trade.
1.5 Know-How - All of the ideas, concepts, technical information,
inventions. materials (including without limitation, drawings and
specifications) and processes used in the Licensed Products and the
assembly and servicing thereof.
1.6 Licensed Products - Invention(s) covered by the patents and
know-how relating to a bicycle with a variable lever action drive and
components or parts thereof. including but not limited to those listed
in Appendix I attached hereto.
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1.7 Patents - Any and all patents and patent applications in the
territory covering the Licensed Products or any component part thereof
either now or hereinafter during the duration of the patent or the term
of this Agreement, whichever is longer, owned or controlled by LICENSOR
or any Affiliate thereof, as listed in Appendix III attached hereto and/or
to be listed and added in the future.
1.8 Territory - The geographic area listed in Appendix II attached
hereto.
1.9 Trademarks - The trademark, logo, and tradename "TRB" and those
included in Appendix IV attached hereto, and any and all other trademarks,
logos and tradenames to be used, developed and obtained by LICENSOR or any
Affiliate thereof and as may be added to Appendix IV by LICENSOR during the
term of this Agreement.
ARTICLE II- LICENSE GRANTS
2.1 Patents - LICENSOR hereby grants to LICENSEE the exclusive right
and license in the Territory to assemble, use, import, sell and distribute
bicycles containing the inventions and improvements covered by the Patents
in the Territory.
2.2 Trademarks - LICENSOR hereby grants to LICENSEE the exclusive
right and license to use, and LICENSEE hereby undertakes to use, the
Trademarks in the Territory in connection with the Licensed Product.
2.3 Know-How - LICENSOR hereby grants to LICENSEE the exclusive
right and license in the Territory to use the Know-How that is now in
the possession of LICENSOR or that will be developed or acquired by
LICENSOR during the term of this Agreement.
2.4 Limitation - The licenses granted under Sections 2.1, 2.2 and
2.3 hereunder shall not include the right to manufacture Licensed
Products in or out of the Territory or export
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Licensed Products, directly or indirectly, from the Territory. The
limitation contained herein shall apply to LICENSEE and its Affiliates.
ARTICLE III- LICENSE AND ROYALTY FEES
3.1 License Fees - LICENSEE shall pay LICENSOR a license fee of seventy
five thousand United States dollars( US$75,000), payable as specified
in Appendix V attached hereto.
3.2 Royalties - In addition to the license fee payable under Section
3.1 above. LICENSEE shall pay to LICENSOR royalties for each of LICENSEE's
fiscal years during the term of this Agreement, in amounts as specified
in Appendix VI attached hereto.
3.3 Payment Terms - All payments due to LICENSOR under Sections 3.1
and 3.2 shall be made in United States dollars, when due, and via wire
transfer to the bank account in the U.S. specified by LICENSOR. The only
deduction to be made shall be for taxes imposed by the applicable taxing
authorities in the Territory on royalty payments, if any. In calculating
royalty amounts based on Gross Sales, the conversion into United States
dollars shall be at the average official rate of exchange prevailing in
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the United States during the period for which Gross Sales have been
calculated. All royalty payments shall be due and payable thirty (30)
days after the close of each of the LICENSEE'S quarterly accounting
periods commencing with the date on which Gross Sales begin. The amount
of each estimated quarterly payment shall be equal to the greater of (i)
the applicable percentage of Gross Sales for that quarter. The quarterly
and final annual payment of royalty shall be accompanied by a statement
signed by LICENSEE stating in detail satisfactory to LICENSOR the amount
of Gross Sales for the preceding year. LICENSEE shall pay interest to
LICENSOR upon any and all amounts overdue and payable hereunder to
LICENSOR at the rate charged to LICENSOR by its principal commercial
bank in New Jersey, plus one percent (1 %) per annum, for the due date
to the date of payment. Such right to payment of interest shall be without
prejudice to any other remedies LICENSOR may have under this Agreement or
by law.
3.4 Maintenance of Books and Records - LICENSEE shall keep true and
accurate records, files and books of account, in accordance with generally
accepted accounting principles in the Territory, containing all data
required to determine the amounts to be paid hereunder and the information
to be given in statements provided herein. LICENSEE shall permit LICENSOR
and LICENSOR'S representatives to inspect and examine such records, files,
books of account and facilities of LICENSEE for the purpose of determining
or verifying the amount payable to LICENSOR and to conduct or have conducted
in an annual audit thereof, including, without limitation, inspection of
all inventory of any kind. Any expenses incurred at the request and under
the direction of LICENSOR shall be paid by LICENSOR; provided, however, that
in the event any such audit reveals an error in any statement
provided by LICENSEE, the cost of the audit shall be borne by LICENSEE
if the error equals or exceeds five percent (5%) of the royalty
amount reported due in such statement.
ARTICLE IV - TECHNICAL ASSISTANCE
4.1 Documents - As soon as practicable after the date of this Agreement
and commensurate with LICENSOR's production schedule, LICENSOR shall deliver
to LICENSEE sufficient written data and information for the assembly and
service of the Licensed Products by LICENSEE as deemed necessary by LICENSOR.
LICENSEE shall provide to its retailers, information sufficient to assemble
and service Licensed Products to LICENSOR's agreed standards.
4.2 Training - As a further means of disclosing LICENSOR's Know-How to
LICENSEE, LICENSOR shall arrange, on a schedule to be mutually agreed upon,
for training of a reasonable number, to be determined by LICENSOR, of
personnel employed by LICENSEE. All salaries, traveling and living expenses
and any other remuneration and expenses to which such trainees may be
entitled, and all expenses incurred by LICENSOR in the operation of such
training program, shall be paid by LICENSEE at LICENSOR's actual cost.
4.3 Other Technical Assistance - LICENSOR agrees to provide technical
assistance upon the written request of LICENSEE. The cost of such assistance
shall be borne by LICENSEE and shall be approved by LICENSEE in writing
prior to such technical assistance being provided.
ARTICLE V - TRADEMARKS AND GOODWILL
5.1 Use of Trademarks - All Licensed Products assembled or sold by
LICENSEE shall bear the Trademarks. The permitted use by LICENSEE of the
Trademarks shall be made only on Licensed Products that conform strictly
to the standards, quality and specifications furnished by LICENSOR to
LICENSEE. Component parts of the Licensed Products shall be purchased by
LICENSEE only from LICENSOR or suppliers approved by LICENSOR in writing
to LICENSEE.
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5.2 Inspection - LICENSEE shall at all reasonable times permit LICENSOR,
by representatives designated by LICENSOR, to inspect all of LICENSEE's
facilities and properties relating to the Licensed Products, at LICENSOR's
cost.
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5.3 Labels - All labels and promotional materials used by LICENSEE shall
be submitted to and approved by LICENSOR prior to use. Such approval will
not be unreasonably withheld or delayed. All labels shall have to meet the
legal requirements applicable in the Territory
5.4 Title to Trademarks - LICENSEE shall refrain from any act or acts
that may prejudice the validity of the title of LICENSOR to the Trademarks.
After termination of this Agreement, LICENSEE will not use at any time for
bicycles or bicycle parts any trademark, tradename or label bearing any
resemblance to the Trademarks. LICENSOR shall retain ownership and the
exclusive right to Trademarks except as permitted to LICENSEE pursuant
to the conditions of this Agreement during the term of this Agreement.
5.5 Promotional Activities - LICENSEE will use its best efforts and
means to meet the needs of the Territory for the Licensed Products, to
promote, advertise and otherwise further the sale and distribution of the
Licensed Products in the Territory, particularly in population centers, and
to further and preserve the goodwill and reputation of the Licensed Products
sold under the Trademarks and meet the standards and conditions as set forth
in Appendix VII attached hereto. LICENSOR shall make available to LICENSEE,
at prices equal to LICENSOR's actual cost, promotional materials used by
LICENSOR in the United States in connection with the sale of Licensed
Products sold under the Trademarks. LICENSEE shall submit to LICENSOR all
advertising materials proposed to be used by LICENSEE in connection with
the Licensed Products for LICENSEE's prior written approval, such approval
not to be unreasonably withheld or delayed.
5.6 Customer Service - LICENSEE shall inform and forward to LICENSOR all
correspondence or communications with customers relating to the quality of
or defects or malfunction in the Licensed Products and shall handle all
inquiries or complaints expeditiously and courteously. LICENSEE and its
distribution chain shall at all times maintain adequate facilities for the
repair, service and storage of the Licensed Products and components and any
parts thereof.
LICENSEE shall at all times maintain a staff of adequately trained personnel
to properly insure the mechanical integrity of the Licensed Products,
service the Licensed Products when necessary and to train service personnel
in the LICENSEE's distribution chain. LICENSEE shall provide literature and
parts to properly support the sale and service of the Licensed Products and
shall provide LICENSOR with service reports on a quarterly basis. Such
reports shall be on a form provided by LICENSOR and shall specify models
requiring service during the period, the type of service, parts found
defective, reason service is required, date service is performed, bicycle
serial number and name and address of consumer.
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5.7 Distributor and Dealer network - LICENSEE shall provide to LICENSOR
an updated list of subdistributors and dealers constituting LICENSEE's
distribution chain in the Territory on the first day of each calendar year
quarter. The list will include company name, address. principals, and fax,
telex, and telephone numbers.
ARTICLE VI - IMPROVEMENTS
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6.1 Inventions Improvement - LICENSEE shall require each of its
employees and consultants having access to technical information, data and
Know-How relating to the Licensed Products or component parts thereof to
enter into an agreement with LICENSEE, in form and substance satisfactory
to LICENSOR, whereby each such employee or consultant agrees to assign to
LICENSEE the entire right. title and interest in and to any and all
inventions relating to the Licensed Products, or relating to or useful
in the manufacture thereof, made by him whether during or after the
course of his employment or engagement by LICENSEE. If during the term
of this Agreement, LICENSEE, or any of its Affiliates or employees makes
or acquires any invention or claim in any patent that in use would
infringe any Patent or that constitutes an improvement of a Licensed
Product, LICENSEE shall promptly assign to LICENSOR such invention or
claim. LICENSOR shall have the exclusive right and option to file and
perfect any and all patent applications embodying or arising out of such
invention or claim, in the Territory and elsewhere, in the name of
LICENSOR and to that end shall have the right to receive and/or
inspect all drawings, plans, models, specifications and worksheets
relating thereto and to interview any and all of LICENSEE's employees
and associated personnel and organizations having knowledge thereof.
LICENSEE shall retain an exclusive license in the Territory to use such
invention or claim on the Licensed Product, free of additional royalty
charges.
6.2 Know-How Improvements - During the term of this Agreement,
each party shall promptly inform and transfer to the other Know-How
that is developed or acquired by such party. The method of such transfer
shall be such as the transferor, acting in good faith and with due
diligence, deems appropriate. LICENSOR shall have the right to receive
and/or inspect all drawings, plans, models, specifications and worksheets
relating thereto and to interview any and all of LICENSEE's employees and
associated personnel and organizations having knowledge thereof. LICENSEE
shall retain an exclusive license in the Territory to use such Know-How,
in connection with Licensed Products, free of additional royalty charges.
ARTICLE VII - CONFIDENTIALITY AND COMPETITION
7.1 Confidentiality Obligation - LICENSEE shall hold, and shall cause
its Affiliates to hold, all Know-How disclosed to it under this Agreement
in confidence at all times during and after the term of this Agreement and
each party shall require each of its employees and
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consultants, and the employees and consultants of its Affiliates, having
access to Know-How relating to the Licensed Products or component parts
thereof to enter into an agreement whereby each such employee or consultant
agrees to hold such Know-How in confidence at all times, and agrees not to
compete with LICENSOR or LICENSEE either during his employment or engagement
and for a three (3) year period thereafter, or, in the event such time
period is not enforceable, then a reasonable period as agreed by a judicial
body within the Territory. Other measures to be taken by LICENSEE and its
Affiliates to hold Know-How in confidence shall be subject to the review
and approval of LICENSOR. LICENSOR shall have the right, in the event of a
violation or breach of this Section 7.1 by LICENSEE, its Affiliates,
employees, or consultants, to seek and obtain specific enforcement of
the provisions of this Section; and to commence an action, in LICENSEE's
name and stead. against any party with whom LICENSEE has a confidentiality
agreement as required by this Section if such party breaches any provision
of such agreement and if LICENSEE for any reason elects not to enforce such
provision. The obligations regarding confidentiality contained hereinabove
shall not apply to any Know-How that;
(i) is at the time of disclosure generally available to the public;
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(ii) becomes generally available to the public through no breach of
confidentiality obligations by the party to whom the disclosure is made
or by any of its Affiliates or the employees or consultants of any of them;
or
(iii) is disclosed to the receiving party by another party not bound by
any confidentiality obligation.
An individual feature of Know-How shall not be considered within the above
exceptions merely because the feature is embraced by more general
information within the exceptions. A combination of features of Know-How
shall not be considered within the above exceptions unless the combination
itself and its principle of operation are within the exceptions.
7.2 Restriction on Competition by LICENSEE - In consideration of
LICENSEE's receiving the exclusive rights conferred under this Agreement,
LICENSEE shall not, during the term of this Agreement, sell or deal in any
manner in bicycles or parts or components thereof not constituting Licensed
Products, but may deal in bicycle accessories approved by LICENSOR. In
addition, for a period of three (3) years after the termination of this
Agreement, LICENSEE shall not become involved or associated with any other
person or business entity engaged in the manufacture or sale of lever
propelled bicycles; provided, that if such time period is held to be
unenforceable, then the restrictive period shall be such reasonable period
as may be agreed by a judicial body within the Territory.
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ARTICLE VIII- TERMS AND TERMINATION
8.1 Term - Except to the extent provided herein with respect to the
survival of certain provisions following the term of this Agreement, and
unless earlier terminated pursuant to Sections 8.2 and 8.3 hereof,
the term of this Agreement shall commence on the date of this Agreement
and shall upon the mutual consent of the parties be renewed at the
third year Anniversary' Date, and renewed at each Anniversary Date
thereafter without the payment of any additional licensing fees, unless
either party' breaches any material term of this Agreement.
8.2 Termination by LICENSEE - LICENSEE may terminate this Agreement
on any Anniversary Date hereof by giving ninety (90) days prior written
notice of termination.
8.3 Termination by LICENSOR - LICENSOR may terminate this Agreement
at any time:
(i) by giving LICENSEE thirty (30) days prior written notice if
LICENSEE shall have committed a material breach of any of its obligations
hereunder, including without limitation, the prompt and timely payment of
license fee and royalties hereunder and failure to fill customers orders
for Licensed Products, or to perform service orders, in a timely fashion;
provided that LICENSEE shall have been previously advised of the alleged
material breach and has been given fifteen (15) days to cure such breach.
It is further provided that no such breach shall be deemed to have occurred
or be continuing (as applicable) if and to the extent LICENSEE's failure to
perform its obligations is due to acts beyond the reasonable control of
LICENSEE, including but not limited to strikes, lock-outs or civil
insurrection or lack of material including component or part supplied by
LICENSOR, any of its Affiliates or suppliers generally.
(ii) upon (a) the filing of a petition in bankruptcy by or against
LICENSEE; (b) the appointment of a referee, trustee or receiver for a
substantial portion of the property or assets of the LICENSEE; (c) the
insolvency of LICENSEE; (d) the consolidation, merger or other business
combination of the LICENSEE or its Affiliates with. or the sale of a
substantial portion of the LICENSEE'S assets to, another corporation,
business entity or person, or the execution of an agreement by LICENSEE
to that effect, or a change in control of LICENSEE or its Affiliates
without the prior written consent of the LICENSOR, such consent not to
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be unreasonable withheld; or (e) if LICENSEE is an individual, the death
or incapacity of LICENSEE.
8.4 Termination - Should a termination of this Agreement occur:
(i) LICENSEE shall cease all use of Trademarks and return to
LICENSOR all materials supplied by LICENSOR and deliver to LICENSOR
all materials title to which has been acquired by LICENSOR pursuant
to this Agreement; and
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(ii) any agreements entered into by LICENSEE with third parties in the
Territory, including but not limited to subdistributors and dealers, shall
be assignable to LICENSOR and LICENSEE shall assign to LICENSOR all such
agreements and other documents regarding such subdistributors and dealers
and will do all that is reasonable to have them continue as LICENSOR's
subdistributors and dealers. In the event of Termination, LICENSEE shall
submit a full inventory (including costs) of parts and stock on hand, within
five (5) days. LICENSOR shall have the option to purchase within thirty
(30) days all or part thereof at LICENSEE's cost or market value, whichever
is less. Any such purchase shall be F.O.B. LICENSEE's warehouse.
ARTICLE IX - INFRINGEMENT ACTIONS
9.1 Trademark Claims Against LICENSEE - On Licensed Products, LICENSOR
shall defend, indemnify and hold LICENSEE harmless against claims of
trademark infringement brought against LICENSEE pursuant to this Agreement;
provided, nothing hereunder shall be construed to obligate LICENSOR to
defend, indemnify or hold LICENSEE harmless against claims of trademark
infringement brought against LICENSEE arising out of acts taken by LICENSEE
not required by this Agreement or approved by LICENSOR in writing.
LICENSOR may, however, elect to defend any such action at its own expense. If
LICENSOR elects not to so defend, LICENSEE may, with the consent of
LICENSOR, defend such action at its own expense. LICENSEE shall not settle a
ny such action without the consent of LICENSOR.
9.2 Patent Infringement & Wrongful Use Claims Against LICENSEE -
LICENSOR will assume the defense of any suit brought against LICENSEE
for infringement of any patent or for wrongful use of proprietary
information of any third party insofar as such suit is based upon a
claim that the infringement or wrongful use is attributable to LICENSEE's
application without substantial modification of technology supplied under
this Agreement. In any such suit, LICENSOR will indemnify LICENSEE against
any money damages or costs awarded in such suit in respect to such a claim.
The obligations of LICENSOR stated in this Section 9.2 apply only if (i)
LICENSEE promptly informs LICENSOR in writing of any claim within the
scope of this Section 9.2; (ii) LICENSOR is given exclusive control of
the defense of such claim and all negotiations relating to its settlement;
and (iii) LICENSEE provides all reasonable assistance to LICENSOR in all
necessary respects in conduct of the suit.
LICENSOR's total liability in out-of-pocket costs in the defense of
any suit or suits and to pay damages awarded in any suit or suits shall
be limited to the amount theretofore paid to LICENSOR by LICENSEE under
this Agreement, and LICENSEE will advance to LICENSOR any amount required
to be expended by LICENSOR in excess of that
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limit. Amounts So advanced shall be credited to future payments due from
LICENSEE to LICENSOR as a result of LICENSEE's operations under this
Agreement.
The provisions of this Section 9.2 state the entire liability of LICENSOR
to LICENSEE in respect of LICENSEE's use of the technology granted herein,
and, except as specifically provided in this Section, LICENSOR shall not be
liable either directly or as indemnitor of LICENSEE for or on account of any
claim arising in any way' from LICENSEE's use of the technology.
9.3 Claims by LICENSEE or LICENSOR - In case Trademarks or any of the
Patents are infringed by any third party in the Territory, LICENSEE shall
notify LICENSOR, and LICENSOR may, if it chooses, bring suit to enjoin such
infringement. In the event LICENSOR elects not to bring such suit. LICENSEE
may bring such suit upon advice to, and with the consent of, LICENSOR.
Neither party shall settle any such suit without the consent of the other,
which consent shall not be unreasonably withheld. Since actions by LICENSEE
or LICENSOR hereunder are for the protection of LICENSEE's rights within the
Territory, the costs of any actions brought under this Section 9.2 shall be
borne equally by LICENSEE and LICENSOR.
9.4 Indemnification of LICENSOR - Except as otherwise provided in this
Article IX, LICENSEE will hold LICENSOR harmless against all liabilities,
demands, damages, expenses, or losses arising (i) out of use by LICENSEE
or its transferees of inventions licensed or information furnished under
this Agreement or (ii) out of any use, sale or other disposition by LICENSEE
of its inventions or information.
ARTICLE X - SUPPLY AGREEMENT
10.1 Ordering of Licensed Products - LICENSOR agrees to provide the
Licensed Products to LICENSEE. LICENSEE shall be entitled to order and
receive Licensed Products, provided that LICENSEE shall give written
notice of such order to the LICENSOR within the mutually agreed upon lead
time as stated on order acknowledgments. Payment for goods ordered shall
be a confirmed Irrevocable (transferable and divisible) letter of credit
(allowing partial shipments and transshipments) confirmed by the LICENSOR's
U.S. Bank, payable upon the presentation of shipping documents.
10.2 Terms and Conditions of Sale - LICENSEE agrees to assemble, use,
import, sell and distribute such components, parts, and/or completely
assembled items of the Licensed Products and other products as may be
necessary for the LICENSEE's use and/or distribution, from LICENSOR, its
Affiliates and/or LICENSOR's suppliers as may be agreed upon in accordance
with such of LICENSOR's forms of Purchase and Terms and Conditions of Sales
as LICENSOR may from time to time establish. Such Terms and Conditions of
Sale shall include provisions relating to price, limited warranty,
delivery,
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title of goods, freight and insurance charges, subrogation of claims and
such other items as are customarily expressed in such documents.
10.3 Force Majeure - LICENSOR shall not be liable for any damage or
penalty for delays in delivery, or complying with the warranty provisions
hereunder, due to acts of God, acts or omissions of LICENSEE, acts of
civil or military authorities, government regulations, or priorities, fire,
floods, epidemics, quarantine restrictions, war, riots, strikes, differences
with suppliers, inability of suppliers to perform, accidents to machinery,
inability to obtain material, delays in transportation, failure or delay in
furnishing complete or correct information by LICENSEE, impossibility or
impracticability of
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performance or any other cause or causes beyond the
control of LICENSOR, whether or not similar to the foregoing.
LICENSOR SHALL UNDER NO CIRCUMSTANCES BE LIABLE FOR SPECIAL OR
CONSEQUENTIAL DAMAGES FOR DELAYS OR FMLURE TO GIVE NOTICE OF
DELAY.
ARTICLE XI- DOCUMENTS DELIVERED UPON
CONTRACT EXECUTION
11.1 On the signing of this Agreement, LICENSOR shall deliver to LICENSEE
an affidavit of LICENSOR stating that it has full power and authority to
confer the rights being granted hereunder and no encumbrances of any nature
exist therein, nor are there any agreements of options in existence which
would in any way prohibit the written granting of rights described in this
Agreement.
11.2 The parties agree to do or execute or cause to be done or executed
all such further acts, deeds, instruments or transfer as may be reasonably
required from time to time to effect the rights between the parties hereto.
ARTICLE XII- MISCELLANEOUS
12.1 Survival of Provisions - The provisions of Sections 3.4,5.4,7.1,7.2,
8.4,9.1, 9.2, 9.4, and 12.8 shall survive any termination of this
Agreement.
12.2 Assignment and Sublicensing - LICENSEE may not sublicense, assign or
transfer this Agreement or any license granted hereunder; provided, that
LICENSEE shall sublicense the Trademarks to any of its subdistributors and
dealers selling the Licensed Products, the sublicense agreements to contain
provisions substantially similar to the provisions of Article V of this
Agreement relating to the protection of Trademarks and to be in form and
substance satisfactory to LICENSOR.
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12.3 No Agency - Nothing contained in this Agreement shall be construed
so as to make either LICENSOR or LICENSEE the agent or partner of the other,
it being the intention of the parties to deal as principals with one
another.
12.4 Entire Agreement - This Agreement sets forth the entire Agreement
between the parties as to the subject matter hereof and merges all prior
discussions and writings between them. This Agreement may be amended only
by written instrument duly signed by both parties hereto.
12.5 No Implied Right - Nothing in this Agreement shall be construed
as conferring any right by implication, estoppel or under any patent, patent
applications or trademarks, except as herein expressly provided.
12.6 All notices, communications, and correspondence required under
this Agreement, or pursuant to the activities which it governs, or
associated with it shall be in writing, shall use United States English
only and shall become effective either when served by personal delivery or
by certified mall addressed as follows (or to such other address for a party
as that party may designate by notice to the other party):
If to LICENSOR: TRB Systems, Inc.
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000 Xxxxxxxxxx Xxxxxxx
Xxxxx Xx.00
Xxxxxxxxxx, Xxx Xxxxxx 00000
X.X.X.
Fax: (000) 000-0000
If to LICENSEE: XX. XXXXX X. XXXXX
00 Xxxxxxxx Xxxx
Xxxxxxxxxxxx, Xxx Xxxxxx 00000
12.7 Severability - Should any provision of this Agreement or the
application thereof, to any extent, be held invalid or unenforceable,
the remainder of this Agreement and the application thereof shall not be
affected thereby and shall continue valid and enforceable to the fullest
extent permitted by law or equity.
12.8 Arbitration - Any controversy or claim arising out of or relating to
this Agreement, or the breach thereof, shall be settled by arbitration
before one or more arbitrators in New York City, in accordance with the
Commercial Arbitration rules of the American Arbitration Association.
Furthermore, if any controversy or claim arises out of the provisions of
Section 7.1 of this Agreement, LICENSOR may apply to the federal or state
courts located in the State and County of New York for injunctive or interim
relief in aid of arbitration. Judgment upon the award rendered by the
arbitrator(s) in accordance with the aforesaid rules may be entered in
any court having jurisdiction thereof. LICENSEE hereby consents to the
nonexclusive jurisdiction of the federal and state courts located in the
State and County of New York for the sole purpose of the issuance of any
injunctive or interim relief or for the entry of any award as hereinabove
provided.
All trade terms used herein shall have the meaning defined in the International
Chamber of Commerce publication "International Rules for Interpretation of
Trade Terms".
12.9 This agreement supercedes any and all other agreements either oral
or in writing between the parties hereto with respect to the engagement of
"TRB" and "LICENCEE".
ARTICLE XIII - GOVERNING LAW
13.1 This Agreement shall be governed by and construed in accordance with
the substantive law of the State of New York and the United States without
regard to principles of conflicts of laws.
IN WITNESS WHEREOF the parties hereto have executed this Agreement as of the
date first above written.
LICENSEE: LICENSOR:
TRB SYSTEMS INC.
/s/ Xxxxx X. Xxx /s/
/s/ Xxxxx Xxxxx /s/
Xxxxx Xxxxx Xxxxx X. Xxx, President
WITNESS: WITNESS:
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/s/ X.X. Xxxxxxx /s/ /s/ X.X. Xxxxxxx /s/
Name: Name:
Company or Address: Company or Address:
Xxxxxxxx Xxxxxx Xxxxxxx and Co. Xxxxxxxx Xxxxxx Xxxxxxx and Co.
Livingston, N.J. Livingston, N.J.
J.E. Xxxxxxx X.X. Xxxxxxx
Notary Public of New Jersey Notary Public of New Jersey
Notary No.2054646 Notary No. 205464
My Commission Expires Dec.27, 1998 My Commission Expires Dec.27,1998
APPENDIX I
Licensed Products
All Transbar Bicycles including but not limited to those listed below:
(1) TRB 190
(2) TRE 240
(3) TRE 250
(4) TRE 500
(5) TRE 1000
(6) TRE 100 (BMX)
(7) TRE 300 (Cruiser)
Also includes but not limited to all special parts listed below:
(a) Rear hub assembly
(b) See-saw idler assembly
(c) Lever and Transbar assembly
(d) Gearshift lever
(e) Special chain connecting cable
(f) All service parts of above assemblies
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APPENDIX II
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TERRITORY
THE COUNTRY OF TANZANIA
APPENDIX III
PATENTS
A patent application in the Territory for an improvement in the Licensed
Products is in the course of preparation.
APPENDIX IV
TRADEMARKS
APPENDIX V
License Fees
(i) Payment of the $75,000 (Seventy five thousand U.S. dollars) License
Fee set forth in the License and marketing Agreement shall be made by
LICENSEE on behalf of LICENSOR:
$10,000 (ten thousand U.S. dollars) is due upon execution of this
Agreement;
$10,000 (ten thousand U.S. dollars) is due by November 17,1996.
$15,000 (fifteen thousand U.S. dollars) is due by March 17, 1997.
$40,000 (forty thousand U.S. dollars) is due by July 17, 1997 or before
Indian domestic marketing and sales is ready, whichever comes
first.
(ii) In addition to the License Fee, the Joint Venture Company shall
pay to TRB the royalties set forth in the Licensing and Marketing Agreement
which shall be paid to TRB's account (or MOTIONPLUS INT'L Corporation)
in the United States or as otherwise instructed in writing by TRB from time
to time.
Royalties
Year 1- Five percent (5%) of Gross Sales or minimum
U.S. $10,000 (Ten thousand U.S. dollars)
whichever is greater.
Year 2- Five percent (5%) of Gross Sales or minimum
U.S. $20,000 (Twenty thousand U.S. dollars)
whichever is greater.
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Year 3-and every year -Four percent (4%) of Gross Sales or minimum
thereafter U.S. $30,000 (Thirty thousand U.S. dollars)
whichever is greater.
APPENDIX VII
Promotional Activities
LICENSEE must provide and participate in such promotional activities and
production of materials to support, promote, and generate full sales
potential of Licensed Product.
LUCENSOR will make available to LICENSEE at its cost all promotional and
advertising materials and printed service literature.
APPENDIX V
Terms and Conditions of Sale
Payment- By irrevocable (transferable and devisable) letter of credit
allowing partial shipments and transshipment in favor of
LICENSOR, payable upon presentation of shipping documents to
LICENSOR'S bank.
Remarks- All orders are subject to final confirmation of LICENSOR.
Sales Forecast- LICENSEE will provide LICENSOR twelve (12) month sales
forecast by month by model with sixty (60) day lead time
updated by month.
MINIMUM PURCHASE PER YEAR:
Year 1: 1,000 Bicycles
Year 2: 2,000 Bicycles
Year 3:
every year thereafter: 3,000 Bicycles
EXHIBIT 1 CONFIDENTIALITY AGREEMENT-PROPIETARY INFORMATION
PRODUCT IMPROVEMENT AND CONFIDENTIALITY AGREEMENT
Gentlemen:
The following confirms an agreement between me and ____________ hereinafter
referred to as "LICENSEE" which is a material part of the consideration for
my employment or affiliation with LICENSEE:
1. I recognize that the LICENSEE has entered into an agreement with TRB
Systems Inc., hereinafter referred to as the "Company", which
Company is engaged in a continuous program of
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research, development
and production respecting its products, patents and know-how,
hereinafter referred to as "Proprietary Information."
2. I understand that my employment or affiliation with LICENSEE
creates a relationship of confidence and trust between me and the
LICENSEE with respect to any Proprietary Information.
3. In consideration of my employment or affiliation with the
LICENSEE, I hereby agree as follows:
(a) I understand and agree that I have no rights in any Proprietary
Information of the Company or the LICENSEE. At all times, both
during my employment or affiliation with the years, I will keep
in confidence and trust all Proprietary Information, and I will
not use or disclose any Proprietary Information, and I will not
use or disclose any Proprietary Information or anything relating
to it without the written consent of the LICENSEE and the Company,
except as may be necessary in the ordinary course of performing
my duties with the LICENSEE. I will at all times fully and
accurately document any Proprietary Information or Inventions
(as hereinafter defined) developed by me so that at all times
the LICENSEE shall have in its possession descriptions and
directions with respect thereto that will enable the LICENSEE
and its assigns to utilize such Proprietary Information and
Inventions to their full benefit.
(b) All documents, records, apparatus, equipment and other physical
property, whether or not pertaining to Proprietary Information,
furnished to me by the LICENSEE or produced by myself or others
in connection with my employment or affiliation shall be and
remain the sole property of the LICENSEE or its assigns and shall
be returned to it immediately as and when requested by the LICENSEE.
Even if the LICENSEE does not so request, I shall return and
deliver all such property upon termination of my employment or
affiliation by
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me or by the LICENSEE for any reason and I will not take with me any such
property or any reproduction of such termination. I will keep all
information relating to the Proprietary Information confidential during
my employment or affiliation and for three years thereafter.
(c) I will promptly disclose to the LICENSEE or any persons designated
by it, all improvements, inventions, ideas, formulas, processes,
techniques, know-how and data, whether or not patentable, made or
conceived or reduced to practice or learned by me, either alone or jointly
with others, during the term of my employment or affiliation (all said
improvements, inventions, formulas, processes, techniques, know-how and
data shall be hereinafter collectively called "Inventions").
(d) I agree that all Inventions which I developed in whole or in part,
either alone or jointly with others utilizing equipment, supplies,
facilities or Proprietary In formation of the LICENSEE or its assigns
or during my periods of employment or affiliation with the LICENSEE
shall be the sole property of the LICENSEE and its assigns, and the
LICENSEE and its assigns shall be the sole owner of all patents and
other rights in connection therewith. I hereby assign to the LICENSEE
and its assigns any rights I may have to acquire in such Inventions.
I further agree as to all such Inventions to assist the LICENSEE and
its assigns in every proper way but shall not bear the expenses involved)
to obtain and from time to time enforce patents on said Inventions in
any and all countries, and to that end I will execute all documents
for use in applying for and obtaining such patents thereon and enforcing
same, as the LICENSEE or its assigns may desire, together with any
assignments thereof to the LICENSEE or persons designated by it.
My obligations to assist the LICENSEE or its assigns in obtaining of and
enforcing patents for such inventions in any and all countries shall
continue beyond the termination of my employment or affiliation for
a period of three years, but the LICENSEE or its assigns shall compensate
me at a reasonable rate after such termination for time actually spent by
me on such assistance.
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In the event that the LICENSEE is unable for any reason whatsoever to
secure my signature to any lawful and necessary document required to apply
for or execute any patent applications with respect to such an Invention
(including renewals, extensions, continuations, divisions or continuations
in part thereof), I hereby irrevocably designate and appoint the LICENSEE
and its duly authorized officers and agents, to its assigns, as my agents
and attorneys-in-fact to act for and in my behalf and instead of me,
to execute and file any such application and to do all other lawfully
permitted acts to further the prosecution and issuance of patents thereon
with the same legal force and effect as if executed by me.
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(e) I represent that my performance of all terms of this Agreement will
not breach any agreement to keep in confidence any proprietary information
acquired by me in confidence or in trust prior to my employment or
affiliation with the LICENSEE. I have not entered into, and agree I will
not enter into, any agreement either written or oral in conflict with the
obligations set forth in this Agreement.
(f) I represent that I did not learn during my prior employment or
affiliation any ideas or information which the LICENSEE indicated were
considered confidential and proprietary or which were disclosed to me in
a manner which should have made me realize they were so considered.
(g) If I cannot make the representation provided in (f) I approve,
I will check the following box:
( ) I cannot make the representation in paragraph (f) above.
If I checked the above box, I hereby represent that I will not make use of
any such confidence and proprietary information or ideas during my
employment or affiliation with the LICENSEE unless such information or
ideas during my employment by the LICENSEE or become publicly available for
reasons other than actions on my part.
4. This Agreement shall be effective as of the first day of my
employment or affiliation with the LICENSEE.
5. This Agreement shall be binding upon me, my heirs, executors,
assigns, and administrators and shall insure to the benefit of the Company,
its successors.
Accepted and Agreed to (date):
SIGNED:
NAME AND TITLE:
COMPANY NAME:
WITNESS:
LICENSEE:
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