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EXHIBIT 10.47
LICENSE AGREEMENT
AGREEMENT made this twenty-eighth day of April 1998, (the "Effective
Date"), between Decora, Incorporated, d.b.a. Decora Manufacturing, a corporation
organized and existing under the laws of the State of Delaware, whose principal
place of business is located at 0 Xxxx Xxxxxx, Xxxx Xxxxxx, Xxx Xxxx
(hereinafter referred to as "Licensor"), and Xxxxxx Xxxxxxxxxx AG a company
organized under the laws of Germany (hereinafter referred to as "Licensee").
Whereas, Decora Industries, Inc., a Delaware corporation ("Decora"),
owns all of the stock of Licensor;
Whereas, Decora owns all of the stock of Decora Industries Deutschland
GmbH, which owns approximately 75% of the stock of Licensee;
Whereas, Licensor has agreed to acquire certain assets of Rubbermaid's
decorative coverings group (the "Rubbermaid Acquisition");
Whereas, in connection with the Rubbermaid Acquisition, Licensee has
agreed to make a secured loan in the amount of DM18 million to Licensor pursuant
to a loan agreement (the "Loan Agreement");
Whereas, following the Rubbermaid Acquisition, the Licensor will own the
Registered Trademark "Con-Tact" in various countries (hereinafter referred to as
"Trademark");
Whereas, in connection with the transactions contemplated by the Loan
Agreement, it is the desire and intention of the parties that the Licensee be
permitted to use the Trademark in all countries of the world where Licensor
holds a registered trademark, except (i) within North America and (ii) in
countries where there is an existing license agreement to be assumed by Licensor
pursuant to the Rubbermaid Acquisition which countries are listed on Exhibit "A"
and incorporated by reference herein (hereinafter referred to as "Territory");
and
Whereas, in connection with such transactions, Licensor and Licensee
will also enter into a Distribution Agreement pursuant to which Licensee will
provide Licensor with the exclusive right to purchase and sell in North America
certain products manufactured by Licensee (the "Distribution Agreement").
Now, therefore, in consideration of the above and other valuable
consideration, the parties hereto hereby agree as follows:
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1. LICENSE.
(a) Except as provided in paragraph (b) below, the Licensor
grants to the Licensee the exclusive right and license to use the Trademark in
the Territory in connection with the sale of self-adhesive decorative coverings
(hereinafter referred to as "Goods"). Licensee shall have the right to place the
Trademark on such Goods now existing or such similar decorative coverings
manufactured by Licensee and hereafter created. Licensee may use the Trademark
only on those Goods the quality of which is in all respects equal to or better
than the generally corresponding products manufactured and sold by Licensor in
the United States. If at any time Licensor, in the reasonable exercise of
discretion, determines that the Goods manufactured by Licensee do not comport to
these quality standards, then upon written notice giving the reasons therefor
and upon failure by Licensee within thirty (30) days to cure the defect,
permission to use the Trademark rights set forth herein may immediately be
withdrawn. Licensee hereby covenants and agrees that it will cease and desist
any and all such use, either directly or indirectly, immediately upon such
notice until notified in writing by Licensor that use may be resumed.
(b) Licensor shall be entitled to sell Goods in the Territory
with the Trademark to any of its current customers on the date of this
Agreement.
(c) Licensee shall have the right to charge such purchase prices
for the Goods as Licensee, in its sole discretion, may deem appropriate.
2. ROYALTIES. Such license granted herein shall be royalty free.
3. USE OF TRADEMARK. Whenever the Licensee uses the Trademark in
advertising or in any other manner in connection with the Goods which it sells
or distributes, the Licensee shall indicate the Licensor's ownership of the
Trademark. When using the Trademark under this Agreement, the Licensee
undertakes to comply with substantially all laws pertaining to trademarks in
force at any time in the Territory, including, but not limited to, compliance
with marking requirements. Licensee shall have the right to place its own
trademarks and manufacturing information on the Goods.
4. EXTENT OF LICENSE. The right granted in Paragraph 1 hereof shall not
be transferable or assignable.
5. MAINTENANCE OF TRADEMARK. The Licensor will use its best efforts to
register, maintain, and/or take all reasonably necessary actions, as the case
may be, to protect the Trademarks and the rights of Licensee hereunder in the
individual countries within the Territory as may be considered by the Licensor
to be necessary to enable the Goods to be distributed and sold in the Territory
under the Trademark and the License granted as provided herein. The
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Licensor will not use nor will it permit any other person, agent, employee, or
other representative to use the Trademark in the Territory in connection with
the Goods.
6. INDEMNITY. The Licensee assumes no liability for trademark
infringement and Licensor hereby indemnifies and holds harmless Licensee from
and against all losses, damages, and expenses, including attorney's fees,
incurred as a result of or related to claims of third persons involving
Licensee's proper use of the Trademark, or in any way arising out of the acts or
omission of Licensor, its agents, servants, employees, or contractors. The
Licensee hereby indemnifies and holds harmless Licensor from and against all
losses, damages, and expenses, including attorney's fees, incurred as a result
of or related to claims of third persons involving Licensee's misuse of the
Trademark, or in any way arising out of the acts or omissions of Licensee, its
agents, servants, employees, or contractors.
7. TERMINATION.
(a) Except as otherwise provided herein, this Agreement shall
remain in full force and effect for a period of three (3) years from the date of
this Agreement. The Agreement shall automatically renew for additional one-year
periods unless either party notifies the other six (6) months prior to the
scheduled expiration of its intention not to renew.
(b) If Licensee makes any assignment of assets or business for
the benefit of creditors, or if a trustee or receiver is appointed to administer
or conduct its business or affairs, or if it is adjudged in legal proceeding to
be either a voluntary or involuntary bankrupt, then all the rights granted
herein shall forthwith cease and terminate without prior notice of legal action
by the Licensor.
(c) Either party may terminate this Agreement by written, thirty
(30) day notice to the other party, commencing on the date of such written
notice, in the event that the other party fails to perform any term or condition
of this Agreement and such failure to perform is not cured prior to the
expiration of such thirty (30) day notice.
8. OWNERSHIP OF TRADEMARK. Licensor warrants and represents that
following the Rubbermaid Acquisition, it will be the owner of the Trademark,
that no other person or entity has any rights therein and that it has all
rights, powers and authority to license same to Licensee pursuant to the
provisions hereof. The Licensee acknowledges the representations of Licensor
that Licensor owns the exclusive right, title, and interest in and to the
Trademark, and Licensee will not at any time knowingly do or cause to be done
any act or thing in any way impairing or tending to impair any part of such
right, title, and interest. In connection with the use of the Trademark, the
Licensee shall not in any manner represent that it has any ownership in the
Trademark or registration thereof, or is an agent of the Licensor and the
Licensee acknowledges that except as granted herein, use of the Trademark shall
not create in
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the Licensee's favor any right, title, or interest in or to the Trademark, but
all uses of the Trademark by the Licensee shall inure to the benefit of the
Licensor. Upon termination of this Agreement in accordance with Section 7
hereof, the Licensee will cease and desist from all use of the Trademark, and
will return or destroy, as appropriate, all artwork of the Trademark provided by
Licensor.
9. REPRESENTATIONS: AGENTS. Neither Licensor not Licensee shall
represent to the other's customers or third parties that it is acting as agent,
partner or joint venturer to or with the other, other than as owner or Licensee
of the Trademark, respectively.
10. ASSIGNMENT. This Agreement or any right hereunder may not be
assigned by the Company without the express written approval of Licensor, which
may be granted or withheld in Licensor's sole discretion.
11. NOTICES. Any notice or other communication required or permitted to
be given by either party shall be given in writing by registered certified mail,
postage prepaid or air courier addressed to each respective party at the address
shown below:
Licensor
Decora Incorporated
0 Xxxx Xxxxxx
Xxxx Xxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxx
With Copy to:
Xxxxxx & Xxxxxxx
0000 Xxxxxxx Xxxx Xxxx, Xxxxx 000
Xxx Xxxxxxx, XX 00000
Attention: Xxxx X. Xxxxxx, Esq.
Licensee
Xxxxxx Xxxxxxxxxx
Xxxxxxxx
Xxxxxxxx
Xxxxxxx 00000
Attn: Hans Xxxxx Xxxxxxx
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or to such other address as either party shall indicate by proper notice to the
other in the same manner as provided above. All notices will be deemed effective
three business days after mailing in accordance with the above provisions.
12. ARTICLE HEADINGS. Article headings contained in this Agreement are
included for convenience only, and are not a part of the agreement between the
parties.
13. INVALID OR VOID PROVISIONS. If any provision of this Agreement is or
becomes or is deemed invalid, illegal, or unenforceable in any jurisdiction,
such provision shall be deemed amended to conform to applicable law so as to be
valid, legal and enforceable in such jurisdiction so deeming and the validity,
legality and enforceability of such provision shall not in any way be affected
or impaired thereby in any other jurisdiction, or if such provision cannot be so
amended without materially altering the intention of the parties, it shall be
stricken and the remainder of this Agreement shall remain in full force and
effect.
14. CHOICE OF LAW, VENUE. This Agreement shall be governed by the laws
of the State of New York. Both parties agree that they shall submit to personal
jurisdiction to courts in New York and shall accept and agree to venue in New
York, New York.
15. COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be identical and may be introduced in evidence
or used for any other purpose without any other counterpart, but all of which
shall together constitute one and the same agreement.
16. ENTIRE AGREEMENT. This Agreement, including the Exhibits attached
hereto, the Secrecy Agreement, the Loan Agreement and the related Security
Agreement and the Distribution Agreement constitute the entire understanding and
agreement of the parties hereto with respect to the matters described herein and
supersede all prior agreements or understandings, written or oral, between the
parties with respect thereto.
17. AMENDMENT OR WAIVER. Neither this Agreement nor any provision hereof
may be amended or waived, except by an instrument in writing properly executed
by the party against which enforcement of such change or waiver is sought.
18. BINDING UPON SUCCESSORS AND ASSIGNS. Subject to and unless otherwise
provided in this Agreement, each and all of the covenants, terms, provisions and
agreements herein contained shall be binding upon and inure to the benefit of
the successors and permitted assigns of the respective parties hereto.
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IN WITNESS WHEREOF, this Agreement has been executed as of the day and
year first above written.
DECORA, INCORPORATED
("Licensor")
By: /s/ [Signature Illegible]
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XXXXXX XXXXXXXXXX AG
("Licensee")
By: /s/ [Signature Illegible]
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EXHIBIT "A"
Countries with Existing License Agreements
1. Brazil
2. Columbia
3. Venezuela
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