Exhibit 99.4
AMENDED AND RESTATED COLLATERAL ASSIGNMENT
OF INTELLECTUAL PROPERTY
AMENDED AND RESTATED COLLATERAL ASSIGNMENT OF INTELLECTUAL PROPERTY dated
as of April 14, 2000 by PEAPOD, Inc., a Delaware corporation (the "Assignor"),
to BEW, Inc., a Delaware corporation ("BEW") and KONINKLIJKE AHOLD NV
("Ahold").
WITNESSETH:
WHEREAS, BEW has made loans in the aggregate principal amount of U.S.
$3,000,000 (collectively, the "Term Loan") to the Assignor, such Term Loan
being evidenced by a promissory note dated April 5, 2000 made by the Assignor
to the order of the BEW in the principal amount of U.S. $3,000,000 (said
promissory note, as from time to time amended, reissued or renewed, and any
promissory note issued in substitution therefor, the "Term Note");
WHEREAS, to secure the Term Loan the Debtor executed and delivered to BEW a
Collateral Assignment of Intellectual Property dated as of April 10, 2000 (the
"Existing Assignment Agreement") pursuant to which the Assignor granted to BEW
a security interest on the Assignor's rights, title and interest in the
intellectual property described therein.
WHEREAS, Xxxxx may hereafter make loans to the Assignor in an aggregate
principal amount not exceeding, together with the Term Loan, $20,000,000
(collectively, together with the Term Loan, the "Loans") pursuant to, and on
the terms and conditions set forth in, a Credit Agreement (the "Credit
Agreement") of even date herewith being entered into concurrently herewith by
Ahold with the Assignor, which loans will be first used to repay the Term Note
and all other indebtedness evidenced by the Term Note (the Term Loan and all
loans outstanding under the Credit Agreement hereinafter collectively referred
to as the "Loans").
WHEREAS, to induce the BEW and Ahold (collectively and individually
hereinafter referred to as the "Assignee") to make and maintain the Loans, the
Assignor has agreed to amend and restate the Existing Security Agreement in
its entirety pursuant hereto.
WHEREAS, the execution and delivery by the Debtor of this Agreement is one
of the conditions to the willingness of the Secured Party to make the Loans to
the Debtor;
NOW THEREFORE, in consideration of the premises and the covenants
hereinafter contained and to induce the Assignee to make and maintain the
Loans to the Assignor, the Assignor and the Assignee agree hereby that the
Existing Assignment Agreement is amended and restated to read as follows:
1. DEFINITIONS
Terms used herein that are defined in the Term Note, Security Agreement and
(when executed and delivered by the Assignor and the Assignee or, as the case
may be, by the Assignor and an affiliate of the Assignee) the Credit Agreement
shall have the meanings assigned to them therein unless otherwise defined
herein. References to this "Collateral Assignment" shall mean this Collateral
Assignment of Intellectual Property, including all amendments, modifications
and supplements and any exhibits or schedules to any of the foregoing, and
shall refer to this Collateral Assignment as the same may be in effect at the
time such reference becomes operative.
As used herein:
"Obligations" means all present and future liabilities, obligations,
covenants, duties, and debts owing by the Assignor to the Assignee under or
pursuant to or in connection with the Collateral Assignment, the Term Note or
any other Credit Documents, whether or not evidenced by any note, or other
instrument or document, whether arising from an extension of credit, loan,
advance, guaranty, indemnification or otherwise, whether direct
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or indirect, absolute or contingent, due or to become due, primary or
secondary, as principal or guarantor, and including, without limitation, all
principal, interest, charges, out-of-pocket expenses, fees, and disbursements
of counsel, filing fees and any other sums chargeable to the Assignor
hereunder or under any of the other Credit Documents.
"Credit Documents" means this Collateral Assignment, the Security
Agreement, the Credit Agreement (if executed by the Assignor and the Assignee
or, as the case may be, by the Assignor and an affiliate of the Assignee), the
Term Note and any other document or all other documents and instruments
executed and delivered by the Assignor in connection with, or to evidence or
secure, the Obligations.
"Event of Default" has the meaning specified for such term in the Security
Agreement.
"Person" means any individual, sole proprietorship, partnership, joint
venture, trust, unincorporated organization, association, corporation, limited
liability company, governmental authority agency or instrumentality or any
other entity.
"Release Date" means the date on which the Loans, all interest thereon and
all other Obligations are irrevocably paid in full and all obligations or
commitments of the Assignee to make loans or extend credit to the Assignor are
terminated.
"Security Agreement" means that certain Amended and Restated Security
Agreement dated as of April 10, 2000 by and between Assignor and the Assignee,
as the same may be amended, restated, supplemented or otherwise modified from
time to time.
2. ASSIGNMENT OF INTEREST
2.1 Patents, Trademarks, Copyrights and Other Intellectual Property. The
Assignor hereby grants, assigns and conveys to the Assignee, as security for
the full and prompt payment of the Obligations when due, a first priority
security interest in the entire right, title and interest of the Assignor in
and to all of its now owned, existing or filed or hereafter acquired, arising
or filed:
(a) (i) all patents and patent applications of the Assignor, including,
without limitation, those listed on Exhibit A hereto and the inventions and
improvements described and claimed therein, and patentable inventions and
methods of the Assignor, (ii) all reissues, divisions, continuations,
renewals, extensions, reexamination and continuations-in-part of any of the
foregoing, (iii) all income, royalties, damages or payments now and
hereafter due and/or payable to such Assignor under any of the foregoing
with respect to any of the foregoing, including, without limitation,
damages or payments for past or future infringements of any of the
foregoing, (iv) the right of the Assignor to sue for past, present and
future infringements of any of the foregoing and (v) all rights of such
Assignor corresponding to any of the foregoing throughout the world
(collectively, the "Patents");
(b) (i) all trademarks, service marks, trademark and service mark
registrations, Internet and domain names, uniform resource locators
(including, without limitation, xxx.xxxxxx.xxx) trade and business names
and trademark and service mark applications of the Assignor, including,
without limitation, those listed on Exhibit B hereto, (ii) all renewals of
any of the foregoing, (iii) all income, royalties, damages and payments now
or hereafter due and/or payable to such Assignor under any of the foregoing
or with respect to any of the foregoing, including, without limitation,
damages or payments for past or future infringements of any of the
foregoing, (iv) the right of the Assignor to sue for past, present and
future infringements of any of the foregoing, (v) all rights of the
Assignor corresponding to any of the foregoing throughout the world, and
(vi) the goodwill of the Assignor's business connected with and symbolized
by any of the foregoing (collectively, the "Trademarks");
(c) all trade secrets and confidential business information of the
Assignor, including formulae and recipes, computations, systems, inventions
and methods (whether patentable or unpatentable and whether or not reduced
to practice), know-how, manufacturing and production processes, designs and
techniques,
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research and development information, specifications, drawings, designs,
plans, proposals, technical data, copyrightable work, financial, business,
and marketing plans, customer and supplier lists and information
(collectively, the "Trade Secrets");
(d) all copyrights, copyright applications (including, without
limitation, computer software, source and object code, databases and
related documentation) and other intellectual and proprietary property
rights of the Assignor, including, without limitation, those listed on
Exhibit C hereto (collectively, the "Other Intellectual Property Rights");
and
(e) to the extent assignable without causing a default thereunder, the
Assignor's rights in licenses and license agreements with any other Person
under or with respect to any patents, trademarks, trade secrets or other
intellectual property rights and licenses and license agreements of the
Assignor with any other Person under or with respect to any of the Patents,
Trademarks, Trade Secrets or Other Intellectual Property Rights (all
licenses and license agreements assigned to the Assignee pursuant hereto
herein collectively called the "Licenses").
All Patents, Trademarks, Trade Secrets, Licenses and Other Intellectual
Property herein collectively called the "Proprietary Rights"; provided, that
notwithstanding anything to the contrary contained herein, the Proprietary
Rights shall not include any Licenses or other agreements in respect of which
the grant of the security contemplated by this Agreement shall be prohibited
by its terms; provided, however, that upon the termination of such
prohibitions for any reason whatsoever, the provisions of this Section 2.1
shall be deemed to apply thereto automatically.
2.2 Restriction on Future Agreements. The Assignor agrees that until the
Release Date, the Assignor will not, without the Assignee's prior written
consent, enter into any agreement, including, without limitation, any license
agreement, that grants to any Person other than the Assignee rights to or
interests in any Proprietary Rights that is inconsistent with the Assignor's
obligations under this Collateral Assignment. The Assignor further agrees that
until the Release Date it will not take any action, or permit any action to be
taken by any affiliate of the Assignor or other Person subject to the
Assignor's control, including, without limitation, licensees, or fail to take
any action, that would affect the validity or enforcement of the rights
granted to the Assignee under this Collateral Assignment.
2.3 New Patents, Trademarks and Other Intellectual Property Rights. The
Assignor represents and warrants that the Patents, Trademarks and Other
Intellectual Property Rights listed in Exhibits A, B and C hereto are owned by
the Assignor and such Patents, Trademarks and Other Intellectual Property
Rights constitute all of the material Patents, Trademarks and Other
Intellectual Property Rights that the Assignor now owns which are registered
with the United States Patent and Trademark Office and the United States
Copyright Office or an accredited and appropriate domain name registrar, as
applicable. If, before the Release Date the Assignor shall (i) obtain any new
Patents, Trademarks, Other Intellectual Property Rights or Trade Secrets or
rights thereto or (ii) become entitled to the benefit of any new Patent,
Trademark, Trade Secret, License or Other Intellectual Property Rights, the
Assignor shall give to the Assignee prompt written notice thereof. Each
Assignor hereby authorizes the Assignee to modify this Collateral Assignment
by amending any or all the Exhibits attached hereto, as applicable, to include
any such Patents, Trademarks or Other Intellectual Property Rights.
2.4 Royalties and Terms. The Assignor hereby agrees that upon the
occurrence and during the continuance of an Event of Default, the Assignee, or
any designee of the Assignee, may, subject to applicable law and to any then
existing Licenses granted by such Assignor in respect of any Patent, Trademark
or Other Intellectual Property of such Assignor, use any or all of the
Patents, Trademarks, Trade Secrets, Licenses or Other Intellectual Property
Rights worldwide without any liability to such Assignor for royalties or other
related charges. The term of the assignments granted in this Section 2.4 shall
extend until the earlier of (i) the expiration of all rights under each of the
respective Patents, Trademarks, Trade Secrets and Licenses and Other
Intellectual Property Rights assigned hereunder or (ii) the Release Date.
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2.5 Reassignment to Assignor. On the Release Date, the Assignee shall
execute and deliver to the Assignor, at the Assignor's request and at such
Assignor's sole cost and expense, such releases, deeds, assignments and other
instruments as may be necessary to relinquish, without any representations or
warranties whatsoever (other than a representation that the Assignee has not
assigned or transferred the Proprietary Rights covered by such releases, or
its security interests therein, except as contemplated or permitted hereby or
by the other Credit Documents), all of the Assignee's rights in such of the
Proprietary Rights as shall not have been sold or disposed of pursuant to the
terms of this Collateral Assignment.
2.6 Duties of Assignors. Subject to the rights of the Assignee, until the
Release Date the Assignor shall (i) prosecute diligently any patent, trademark
or copyright application and licenses of the Assignor pending as of the date
hereof or thereafter, (ii) make application on unpatented but patentable
inventions of the Assignor and on trademarks and copyrights, as appropriate,
of the Assignor (iii) preserve and maintain all rights in the Proprietary
Rights of the Assignor and (iv) possess all Trade Secrets of the Assignor. Any
out-of-pocket expenses incurred in connection with such applications by the
Assignor shall be borne by the Assignor. The Assignor shall not abandon any
Patent, Trademark, Trade Secret, License, or Other Intellectual Property
Rights or the right to file any patent application unless the Assignor, in its
reasonable discretion, determines that to take such action in a particular
instance would be in the best commercial interest of the Assignor.
2.7 Assignee's Right to Xxx. If an Event of Default shall have occurred and
be continuing, the Assignee shall have the right, but shall in no way be
obligated, to bring suit on behalf of the Assignor to enforce any of the
Assignor's rights in any Proprietary Rights in the event the Assignor declines
to bring such suit and, if the Assignee shall commence any such suit, the
Assignor shall, at the request of the Assignee, do any and all lawful acts and
execute any and all proper documents requested by the Assignee in aid of such
enforcement and the Assignor shall promptly pay, or reimburse and indemnify
the Assignee upon demand, for all reasonable out-of-pocket costs and expenses
incurred by the Assignee in the exercise of its rights under this Section 2.7.
2.8 Assignee Appointed Attorney-in-Fact. During the existence of a Default,
the Assignor appoints the Assignee or the Assignee's designee as its attorney-
in-fact to do all things necessary to carry out or enforce this Collateral
Assignment. The Assignor ratifies and approves to the fullest extent permitted
by law all acts of the Assignee as attorney-in-fact taken in accordance
herewith. The Assignee as attorney-in-fact will not be liable for any acts or
omissions, or for any error of judgment or mistake of fact or law, except for
gross negligence or willful misconduct. This power, being coupled with an
interest, is irrevocable until the Release Date.
3. FILINGS AND CONSENTS
The Assignor shall, at the cost and expense of the Assignor deliver to the
Assignee, upon the execution and delivery of this Collateral Assignment and at
any time and from time to time thereafter, such instruments and documents, in
form and substance satisfactory to the Assignee, and take such other action,
as the Assignee shall reasonably specify as being necessary or appropriate, in
the reasonable opinion of the Assignee, to perfect the Security interests and
other interests granted by the Assignor to the Assignee hereby in the
Proprietary Rights, including, without limitation, filings with the United
States Patent and Trademark Office and the Copyright Office of the United
States. The Assignor will also, at its own expense, from time to time
hereafter make, execute, endorse, acknowledge, file and/or deliver to the
Assignee all documents or instruments and take such further steps reasonably
requested by the Assignee to perfect Assignee's security interests in all
Proprietary Rights.
4. COVENANTS
The Assignor agrees that until the Release Date, unless the Assignee agrees
otherwise in writing: (a) the Assignor will, at its sole cost and expense,
warrant and defend the Proprietary Rights from any and all material claims and
demands of any other Person; (b) the Assignor will not grant, create or permit
to exist any Lien on any of the Proprietary Rights in favor of any other
Person; (c) the Assignor will pay, and indemnify and hold the Assignee
harmless from and against any and all liabilities, obligations, losses,
damages, penalties, actions, judgments, suits, costs, expenses or
disbursements of any kind or nature whatsoever with respect to any
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Proprietary Rights, including (without limitation) claims of patent or
trademark or Other Intellectual Property Right infringement, and any claim of
unfair competition or antitrust violation, (i) provided that Assignor shall
not have any obligation hereunder with respect to such indemnification arising
from the Assignee's gross negligence or willful misconduct in the use,
assignment and sublicensing of the Patents, Trademarks and Licenses that are
covered by this Collateral Assignment; (ii) which is for reimbursement for
amounts paid by an Indemnified Person on any final, non-appealable judgment in
the Assignor's favor against the Assignee by a court of competent
jurisdiction; or (iii) which is for reimbursement of amounts paid by the party
seeking indemnification in any settlement with a party other than the Assignee
which has been properly effected by the Assignee without the prior consent of
the Assignor, unless either (x) the Assignor has had a reasonable opportunity
to assume responsibility and has not diligently prosecuted a defense of such
indemnified obligation; or (y) the Assignor has failed to provide reasonable
evidence of its financial ability to satisfy its indemnity obligations
hereunder; (d) the Assignor will not enter into any agreement that is
inconsistent in any material respect with the Assignor's obligations under
this Collateral Assignment; and (e) all Proprietary Rights of the Assignor
shall be subsisting, valid and enforceable in all material respects against
third Persons, except to the extent otherwise disclosed in writing to the
Assignor prior to the date hereof.
5. DEFAULT
5.1 Remedies. (a) Upon the occurrence and during the continuance of an
Event of Default, the Assignee, in addition to any rights and remedies under
the Credit Documents or applicable law, may, in its discretion:
(i) collect, receive, appropriate and realize upon all or any of the
Proprietary Rights or any part thereof;
(ii) enter, with or without process of law and without breach of the
peace, any premises where any of the Proprietary Rights or the books and
records related thereto are or may be located, and without charge or
liability to the Assignee seize and remove the Proprietary Rights (and
copies of the Assignor's books and records in any way relating to the
Proprietary Rights) from said premises and/or remain upon said premises and
use the same (together with said books and records) for the purpose of
collecting, preparing and disposing of the Proprietary Rights; or
(iii) sell or otherwise dispose of, including without limitation the
granting of licenses, any Proprietary Rights at public or private sale for
cash or credit.
(b) Upon the occurrence of an Event of Default, the Assignee, in its
discretion, may exercise any one or more of the rights and remedies accruing
to a secured party under the UCC as adopted in the relevant state or states
and any other applicable law upon default by a debtor. The Assignor recognizes
that in the event the Assignor fails to perform, observe or discharge any of
its obligations or liabilities under this Collateral Assignment, no remedy of
law will provide adequate relief to the Assignee, and the Assignor agrees that
the Assignee shall be entitled to temporary and permanent injunctive relief in
any such case without the necessity of proving actual damages.
(c) Any notice required to be given by the Assignee of a sale, lease, other
disposition of any of the Proprietary Rights or any other intended action by
the Assignee, delivered by telex, facsimile transmission or overnight mail,
postage prepaid and duly addressed to the Assignor at its address set forth
beside its signature hereto, not less than ten (10) days prior to such
proposed action, shall constitute commercially reasonable and fair notice
thereof to the Assignor.
(d) Upon the occurrence of an Event of Default, the Assignee shall have the
right at any time and from time to time thereafter, in its discretion, without
notice thereof to the Assignor, to take control, in any manner, of any item of
payment for or proceeds of any of the Proprietary Rights.
(e) The Assignee may, if the Assignee deems it reasonable, postpone or
adjourn any sale of Proprietary Rights of the Assignor, or any part thereof,
from time to time by an announcement at the time and place of sale or by
announcement at the time and place of such postponed or adjourned sale,
without being required to give a new notice of sale.
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(f) All cash proceeds received by the Assignee in respect of any sale of,
collection from, or other realization upon all or any part of the Proprietary
Rights shall be applied (after payment of any amounts payable to the Assignee
as reimbursement for the costs and expenses incurred by it in connection with
the sale of any of the Proprietary Rights) by the Assignee against all or any
part of the Obligations in such order as the Assignee shall elect. Any surplus
of such cash or cash proceeds held by the Assignee and remaining after payment
in full of all the Obligations shall be paid over to the Assignor or to
whomsoever may be lawfully entitled to receive such surplus and any deficiency
remaining after application of such cash or cash proceeds to the Obligations
shall continue to be an Obligation of the Assignor, for which the Assignor
shall remain liable.
5.2 Waivers by Assignors. Except as otherwise provided for in this
Collateral Assignment and to the extent permitted under applicable law, the
Assignor waives (i) presentment, demand and protest and notice of presentment,
dishonor, protest, default, nonpayment, maturity, release, compromise,
settlement, extension or renewal of any or all Obligations and of any
accounts, contract rights, documents, instruments, chattel paper and
guaranties at any time held by the Assignee on which the Assignor may in any
way be liable and hereby ratifies and confirms whatever the Assignee may do in
this regard, (ii) all rights to notice and a hearing prior to the Assignee's
taking possession or control of, or to the Assignee's replevy, attachment or
levy upon, any of the Proprietary Rights or any bond or security that might be
required by any court prior to allowing the Assignee to exercise any of the
Assignee's remedies, and (iii) the benefit of all valuation, appraisal and
exemption laws. The Assignor acknowledges that it has been advised by its
counsel with respect to this Collateral Assignment and the transactions
evidenced by this Collateral Assignment.
5.3 Cumulative Remedies. All of the Assignee's rights and remedies with
respect to the Proprietary Rights, whether established hereby or by any of the
other Credit Documents, or by any other agreements or by law, shall be
cumulative and may be exercised singularly or concurrently. The Assignor
acknowledges and agrees that this Collateral Assignment is not intended to
limit or restrict in any way the rights and remedies of the Assignee under the
Term Note or any other Credit Document but rather is intended to facilitate
the exercise of such rights and remedies.
6. MISCELLANEOUS
6.1 Waivers. No course of dealing between the Assignor and the Assignee,
nor any failure to exercise, nor any delay in exercising, on the part of the
Assignee, any right, power or privilege hereunder, under the Term Note or
under any other Credit Document shall operate as a waiver thereof; nor shall
any single or partial exercise of any right, power or privilege hereunder or
thereunder preclude any other or further exercise thereof or the exercise of
any other right, power or privilege.
6.2 Severability. The provisions of this Collateral Assignment are
severable, and if any clause or provision shall be held invalid and
unenforceable in whole or in part as to the Assignor in any jurisdiction, then
such invalidity or unenforceability shall affect only such clause or provision
or part thereof as to such Assignor in such jurisdiction and shall not in any
manner affect such clause or provision in any other jurisdiction, or any other
clause or provision of this Collateral Assignment in any jurisdiction.
6.3 Modification. This Collateral Assignment cannot be altered, amended or
modified in any way, except by a writing signed by the party to be charged
therewith.
6.4 Binding Effect; Benefits. This Collateral Assignment shall be binding
upon the Assignor and its successors and assigns, and shall inure to the
benefit of the Assignee and its successors and assigns. No Assignor may assign
its rights or obligations hereunder or its interest in any Proprietary Rights
without the consent of the Assignee.
6.5 Governing Law. This Collateral Assignment shall be governed by and
construed in accordance with the laws of the State of New York, without regard
to its choice of law rules which would make the laws of any other jurisdiction
applicable to this Collateral Assignment.
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6.6 Notices. (a) Any notice, demand or communication hereunder shall be
given in writing (including facsimile transmission) and mailed or delivered to
each party at its address set forth beside its signature hereto, or, as to any
party, at such other address as shall be designated by such party by a prior
notice to the other parties in accordance with the terms of this Section 6.6.
(b) Each notice hereunder shall be effective (i) five (5) business days
after such notice is mailed, by registered or certified mail, postage prepaid
(return receipt requested), (ii) upon delivery by hand or (iii) in the case of
any notice or communication by facsimile transmission, on the date when sent;
provided, however, that notices to the Assignee shall not be effective until
actually received by it.
6.7 Headings. The Section titles and headings in this Collateral Assignment
are and shall be without substantive meaning or context of any kind whatsoever
and are for convenience of reference only.
6.8 References. Unless and until the Credit Agreement is executed by Xxxxx
and the Assignor and loans are made to Assignor thereunder, all references to
the "Secured Party" shall be to BEW. Upon execution of the Credit Agreement by
Xxxxx and Assignor and the repayment of the Term Loan and all other
indebtedness owing to BEW by Assignor under the Credit Documents, all
references herein to the "Secured Party" (except in Section 6.5) shall refer
to Ahold; provided, however, in the event BEW is required to return any such
payments to Assignor or trustee or receiver therefor, all references to the
"Secured Party" shall again include BEW.
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IN WITNESS WHEREOF, the parties hereto have caused this Collateral
Assignment to be duly executed by their authorized officers on the day and year
first above written.
Address: Peapod, Inc.
0000 Xxxxx Xxxxx /s/ Xxx Xxxxxxxxxx
Skokie, Illinois 60077 By __________________________________
Attention: Xxx Xxxxxxxxxx Name: Xxx Xxxxxxxxxx
Fax No.: (000) 000-0000 Title:Senior VP and Chief
Financial Officer
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IN WITNESS WHEREOF, the parties hereto have caused this Collateral
Assignment to be duly executed by their authorized officers on the day and year
first above written.
Address: BEW, Inc.
00 Xxxxxxx Xxx. /s/ Xxxx X. Xxxxx
Xxxxxxxx, MA 02189 By __________________________________
Attention: Xxxx X. Xxxxx Name: Xxxx X. Xxxxx
Fax No.: (000) 000-0000 Title:President
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IN WITNESS WHEREOF, the parties hereto have caused this Collateral
Assignment to be duly executed by their authorized officers on the day and year
first above written.
Address: Koninklijke Ahold NV
Albert Heijnweg 1 /s/ Xxxxxx X. Xxxxx
1507 EH Zaandam, The Netherlands By __________________________________
Attention: Ton van Tielraden, Esq. Name: Xxxxxx X. Xxxxx
Fax No.: (00-00) 000-0000 Title:
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