EXHIBIT 10.6
USE OF NAME LICENSE AGREEMENT
-----------------------------
THIS USE OF NAME LICENSE AGREEMENT (the "Agreement") is made March 14, 2001
("the Effective Date") by and between IVAX Diagnostics, Inc. ("Diagnostics"),
formerly known as X0XXXXXXX.XXX INC. ("B2B"), a Delaware corporation, and IVAX
Corporation ("IVAX"), a Florida corporation.
RECITALS
WHEREAS, on November 21, 2000, IVAX Corporation and B2B entered into a
merger agreement whereby IVAX Diagnostics, Inc. a Florida corporation and wholly
owned subsidiary of IVAX, would, through a statutory merger, be merged with and
into B2B (the "Merger") and B2B was to become the surviving corporation
following the Merger;
WHEREAS, as part of the Merger, and with the consent of IVAX, B2B changed
its name to Diagnostics and B2B is to be known as "IVAX Diagnostics, Inc."
Diagnostics desires to use the name "IVAX" in its name and in connection with
the offering of its products and services post merger and IVAX is agreeable to
allow Diagnostics to use its name in such manner;
AGREEMENT
NOW THEREFORE IN CONSIDERATION of the mutual promises, covenants and
agreements contained herein, the parties agree as follows:
1. License. In consideration of the payment of $1 and other good and
valuable consideration the sufficiency and receipt of which are hereby
acknowledged, IVAX grants to Diagnostics a fully paid, royalty free,
non-exclusive license (the "License") to use the name "IVAX" (the "Name") and
any stylized logos or marks associated with the name (collectively, the Name,
stylized logos and marks are referred to herein as the "Licensed Property") (i)
in its name, promotional literature and product and service descriptions and
(ii) for other general commercial purposes all in accordance with the terms and
conditions set forth in this Agreement.
2. Rights and Title to Licensed Property. Diagnostics acknowledges that,
unless and until IVAX transfers to Diagnostics all rights, title and interest in
and to all of the Licensed Property, as provided in Section 4 below, all rights,
title and interest in and to the Licensed Property shall remain with IVAX.
Unless and until such transfer occurs, other than the license granted in this
Agreement, Diagnostics disclaims any right or interest to the Licensed Property
or the good will derived therefrom.
3. Protection of the Name. Diagnostics agrees that during the term of this
Agreement it shall use commercially reasonable efforts to protect the Licensed
Property, use the Licensed Property only in accordance with IVAX' written
instructions and prevent its unauthorized use by third parties. Diagnostics
shall promptly provide IVAX
written notice of all such unauthorized uses and a written description of the
actions Diagnostics has taken or is taking to prevent such unauthorized use.
Where IVAX in the exercise of its sole discretion deems appropriate, IVAX will
permit Diagnostics to intervene in any litigation brought by or against IVAX
concerning the Licensed Property. Diagnostics agrees that it will take all
commercially reasonable actions requested by IVAX that IVAX, in good faith,
reasonably believes are necessary for the protection of the Licensed Property.
Diagnostics covenants that it will not take any actions that will damage or harm
the Licensed Property.
4. Abandonment of Licensed Property. If IVAX decides that it no longer
wishes to the Licensed Property for any commercial purpose whatsoever, and it
determines to abandon the same, then, IVAX agrees that upon making such
determination it shall provide written notice of such determination immediately
to Diagnostics and upon payment by Diagnostics of $1, shall transfer all of
IVAX' rights, title and interest in and to the Licensed Property to Diagnostics.
IVAX and Diagnostics shall execute any and all documents necessary to effectuate
such transfer. The date that this transfer becomes effective shall be known as
the "Transfer Date."
5. Term of Agreement. This Agreement shall commence on the Effective Date
and continue thereafter until the Transfer Date, unless earlier terminated
pursuant to Section 8 below.
6. Sublicensing and Assignment. Diagnostics may not sublicense this License
to any third party. Neither party may assign their rights and obligations under
this Agreement to any third party without the express written consent of the
other party. Notwithstanding the foregoing Diagnostics may sublicense, and
either party may assign, this Agreement to a wholly owned subsidiary.
7. Representations and Warranties of IVAX. IVAX represents and warrants to
Diagnostics that to its knowledge it owns the Licensed Property and has the
right to license the Licensed Property to Diagnostics. IVAX further represents
that to its knowledge its use of the Licensed Property and the License hereunder
do not infringe upon the rights of any other person and no person has made any
claim related thereto.
8. Termination; Effect of Termination. IVAX may terminate this Agreement;
at any time after the first anniversary of the Effective Date and prior to the
Transfer Date (i) upon providing Diagnostics ninety (90) day's prior written
notice of its intent to terminate and the date upon which the Agreement shall
terminate; or (ii) upon providing Diagnostics thirty days written notice of any
breach of this Agreement by Diagnostics, which breach remains uncured at the end
of the thirty (30) day period. The parties acknowledge that upon termination of
the Agreement pursuant to this Section 8 Diagnostics will have to amend its
Certificate of Incorporation to change its name and that such action will
require the affirmative vote of its stockholders. Diagnostics agrees that it
shall take all steps as are reasonably necessary to change its name as soon as
is practicable following receipt of written notice from IVAX.
2
9. Entire Agreement; No Oral Modifications. This Agreement contains the
entire agreement among the parties hereto with respect to the subject matter
hereof and supersedes all prior agreements and understandings with respect
thereto and may not be amended or modified except in a writing signed by all of
the parties hereto.
10. Binding Effect; Benefits. This Agreement shall inure to the benefit of
and be binding upon the parties hereto and their respective heirs, successors
and assigns; however, nothing in this Agreement, expressed or implied, is
intended to confer on any other than the parties hereto, or their respective
heirs, successors or assigns, any rights, remedies, obligations or liabilities
under or by reason of this Agreement.
11. Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original and all of which
together shall be deemed to be one and the same instrument.
12. Governing Law. This Agreement shall be governed by, and construed and
enforced in accordance with the laws of the United States and the State of
Florida, both substantive and remedial. Exclusive venue and jurisdiction for any
action arising hereunder shall lie in a competent court of jurisdiction located
in Dade County, Florida, and the parties specifically agree to submit to such
jurisdiction and waive any objections to such venue.
13. Notices. All notices, requests, demands and other communications called
for or contemplated hereunder shall be in writing and shall be deemed to have
been duly given if personally delivered against written receipt or by facsimile
transmission or mailed first class certified mail, return receipt requested, or
mailed by overnight courier prepaid to the parties at the following addresses or
facsimile numbers:
(a) If to IVAX to:
0000 Xxxxxxxxx Xxxxxxxxx
Xxxxx,Xxxxxxx 00000
Attention:General Counsel
Facsimile:(000)000-0000
(b)If to Diaganostics
0000 Xxxxx Xxxxx Xxxxxx
Xxxxx,Xxxxxxx 00000
Attention:President and Chief Executive Officer
Facsimile:(000)000-0000
14. Headings. The section headings herein are included for convenience only
and are not to be deemed a part of this Agreement.
15. Remedies. Each of the parties to this Agreement shall be entitled to
enforce its rights under this Agreement specifically to recover damages and
costs
3
(including reasonable attorneys' fees) for any breach of any provision of this
Agreement and to exercise all other rights existing in its favor. The parties
agree that money damages may not be an adequate remedy for either party in the
event of a breach of the material provisions of this Agreement, and that either
party may apply to any court of law or equity of competent jurisdiction for
specific performance and/or injunctive relief (without posting any bond or
deposit) in order to enforce or prevent any violations of the provisions of this
Agreement. The rights and remedies given in this Agreement to a non-defaulting
party shall be deemed cumulative, and the exercise of one of such remedies shall
not operate to bar the exercise of any other rights and remedies reserved to a
non-defaulting party under this Agreement or given to a non-defaulting party at
law or in equity.
16. Attorneys' Fees. In the event of any dispute or controversy arising out
of this Agreement, the prevailing party shall be entitled to recover from the
other party all costs and expenses, including reasonable attorneys' fees and
accountant fees, incurred in connection with such dispute or controversy.
17. Construction. Where specific language is used to clarify by example a
general statement contained herein, such specific language shall not be deemed
to modify, limit or restrict in any manner the construction of the general
statement to which it relates. The language used in this Agreement shall be
deemed to be the language chosen by the parties to express their mutual intent,
and no rule of strict construction shall be applied against any party.
18. Nouns and Pronouns. Whenever the context may require, any pronouns used
shall include the corresponding masculine, feminine or neuter forms, and the
singular shall include the plural and vice versa.
REMAINDER OF THIS PAGE LEFT INTENTIONALY BLANK
4
IN WITNESS WHEREOF, the parties have executed this Agreement by their authorized
representatives effective as of the date first above written.
IVAX CORPORATION
By:/s/Xxxxx.X.Xxxxxxxxx.
---------------------------
Name:XXXXX.X.XXXXXXXXX.
-------------------------
Title:SENIOR VICE PRESIDENT.
------------------------
IVAX DIAGNOSTICS, INC., F/K/A X0XXXXXXX.XXX, INC.
By: /s/Xxxxxxx X'xxxx
---------------------------
Name: XXXXXXX X'XXXX
-------------------------
Title:PRESIDENT +CEO.
------------------------
SIGNATUIRE PAGE TO NAME LICENSE AGREEMENT
5
