Exhibit 10.11(a)
CBYNO
September 30, 1997
FOREIGN BOSS RIGHTS ACQUISITION AGREEMENT
AGREEMENT dated as of September 30, 1997, by and between Ambra Inc., a
corporation organized and existing under the laws of Delaware ("Buyer") and
I. C. Xxxxxx & Company L.P., a limited partnership organized and existing
under the laws of Delaware ("Seller").
W I T N E S S E T H :
WHEREAS, Seller has entered into a Worldwide Rights Acquisition Agreement
dated as of September 30, 1997 with Brookhurst, Inc. ("Brookhurst") and
Xxxxxxx Xxx to acquire all of Brookhurst's right, title and interest in and
to all "BOSS" trademarks and other proprietary interests, if any, related
thereto owned by Brookhurst and used in connection with its business
throughout the world together with the goodwill symbolized thereby (the
"Worldwide Rights Acquisition Agreement").
WHEREAS, Buyer desires to purchase from Seller, and Seller desires to
sell to Buyer, all of Seller's right, title and interest outside of the
United States of America and its territories and possessions (hereinafter,
the "United States of America") in and to all "BOSS" trademarks and other
proprietary interests outside of the United States of America, if any,
related thereto acquired and owned by Seller and used in connection with its
business outside of the United States of America, together with the goodwill
symbolized by such trademarks, on the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual promises contained herein
the parties hereby agree as follows:
ARTICLE I
PURCHASE AND SALE
1.1 Purchase and Sale of BOSS Assets. Upon the terms and conditions
herein set forth, Seller shall sell, convey, transfer, assign and deliver to
Buyer on the Closing Date (as hereinafter defined), and Buyer shall purchase
from Seller on the Closing Date, the following assets, properties and rights
of Seller (the "Trademark Assets"), all of which, taken together, represent
the business of Seller operating under the BOSS marks outside of the United
States of America acquired from Brookhurst:
(a) any and all right, title and interest of Seller in and to the
trademarks, service marks, trade names, logos, insignias, designs, copyrights
(if any), and other proprietary interests therein, containing the term "BOSS"
or constituting a stylized B, outside of the United States of America,
including, without limitation, all registrations and applications for
registration therefor throughout the world but not including the United
States of America (collectively, the "Trademarks"), and the goodwill
symbolized by the Trademarks relating to their use outside the United States
of America, together with all causes of action and the proceeds thereof in
favor of Seller heretofore accrued with respect to the Trademarks outside of
the United States of America;
(b) all rights of Seller under license agreements, concurrent use
agreements and other agreements listed on Schedule 1.1(b) insofar as they
relate to the Trademarks being acquired by Buyer from Seller hereunder,
including, without limitation, all rights of Seller under the Worldwide
Rights Acquisition Agreement and the Escrow Agreement referred to therein
relating to the Trademarks (the "Assumed Agreements") and all files relating
thereto, it being
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agreed that Seller shall retain all of Seller's rights under the Worldwide
Rights Acquisition Agreement and the Escrow Agreement insofar as they relate
to the trademark properties retained by Seller in the United States of
America. In clarification of the foregoing, the parties acknowledge and
agree that Buyer shall have recourse directly against Brookhurst and Xxx
under the Worldwide Rights Acquisition Agreement and the Escrow Fund as
defined and set forth in the Escrow Agreement for any matters involving the
breach of covenants, representations, warranties or conditions set forth in
the Worldwide Rights Acquisition Agreement insofar as they relate to the
Trademark Assets acquired by Buyer hereunder from Seller;
(c) all right, title and interest in and to all records and other
information the Selling Parties (as defined in the Worldwide Rights
Acquisition Agreement) or either of them have within their possession or
control applicable to the products they or either of them have previously
licensed under the Trademarks and all trademark files relating to the
Trademark Assets.
(d) any and all copyrights that Seller may own arising outside of the
United States of America as a result of designs and other works created by
Seller, Brookhurst, or any licensee, nominee or manufacturer of either of
them, in connection with the BOSS business.
1.2 Liabilities. Buyer shall assume the obligations of Seller arising
from and after Closing under the Assumed Agreements solely insofar as they
relate to the use of the Trademark Assets after Closing. Buyer shall assume
no liabilities or obligations, whether now existing or arising in the future,
fixed or contingent, known, or unknown, relating to the use by Seller
(including, without limitation, use by any of Seller's affiliates,
subsidiaries, predecessors or
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licensees) of the Trademarks and any other matter relating to the conduct of
any business relating thereto prior to the Closing ("Excluded Liabilities").
1.3 Encumbrances. The sale and transfer of the Trademark Assets shall
be free and clear of all pledges, security interests, mortgages and liens
made or created by Seller ("Encumbrances").
1.4 Exclusions. Notwithstanding any other provision of this Agreement,
Seller makes no representations or warranties of any kind, and shall have no
responsibility, liability or obligations whatsoever to Buyer or any affiliate
thereof (including, without limitation, for any claims for indemnity), with
respect to any matter relating to the Trademark Assets prior to the xxxx
Xxxxxx acquired the Trademark Assets, including, without limitation, the
quality of title, the condition or use of the Trademark Assets or the conduct
of the business thereunder prior to the xxxx Xxxxxx acquired the Trademark
Assets from Brookhurst except as expressly set forth in this Agreement.
ARTICLE II
CONSIDERATION
2.1 Consideration. In consideration of the sale and transfer of the
Trademark Assets to Buyer on the Closing Date, Buyer shall assume any and all
obligations of Seller under the Promissory Note in the principal amount of
U.S. $11,000,000 of Seller referred to in the Worldwide Rights Acquisition
Agreement and payable to the order of Brookhurst (the "Note").
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ARTICLE III
THE CLOSING
3.1 Time and Place of Closing. The closing of the purchase and sale of
the Trademark Assets hereunder (the "Closing") shall take place at the
offices of Coudert Brothers located at 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx,
Xxx Xxxx 00000 at 10:00 a.m. local time on a date agreed to by the parties
(the "Closing Date"), which date shall not be later than eight (8) business
days following the date on which the applicable waiting period, including any
extension thereof, under the Xxxx-Xxxxx Xxxxxx Antitrust Improvements Act of
1976, as amended, relating to the transactions contemplated by the Worldwide
Rights Acquisition Agreement shall have expired.
3.2 Deliveries To Be Made by the Seller. On the Closing Date, Seller
shall have executed and delivered to Buyer the following:
(a) executed trademark assignments in the forms attached hereto as
Exhibit A;
(b) an agreement of assignment and assumption of Assumed Agreements
in the form annexed hereto as Exhibit B (the "Assumption Agreement");
(c) a concurrent use agreement between Seller and Hugo Boss AG
("Hugo Boss") in the form annexed hereto as Exhibit C (the "Concurrent
Use Agreement");
(d) a foreign manufacturing rights agreement between Seller and
Buyer in the form annexed as Exhibit D (the "Foreign Manufacturing Rights
Agreement");
(e) an option agreement between Seller and Buyer in the form
annexed as Exhibit F (the "Option Agreement");
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(f) a secured limited recourse promissory note in the form annexed as
Exhibit F (the "ICI Note");
(g) an agreement of assumption of the Note and assignment of all rights
related thereto (the "Note Assumption Agreement") in the form annexed hereto
as Exhibit G; and
(h) such other instruments and documents as may be elsewhere herein
required.
3.3 Deliveries To Be Made by Buyer. On the Closing Date, Buyer shall
have executed or caused to be executed and delivered to Seller the following:
(a) the Note Assumption Agreement;
(b) the Assumption Agreement;
(c) the Concurrent Use Agreement, duly executed by Hugo Boss;
(d) the Foreign Manufacturing Rights Agreement;
(e) the Option Agreement;
(f) the ICI Note; and
(g) A Guaranty by Hugo Boss AG of the Note in the form annexed
hereto as Exhibit H (the "Guaranty");
(h) an Agreement regarding Consent to Release and Waiver of
Brookhurst Note Claims in the form annexed hereto as Exhibit I (the "Consent
Agreement"); and
(i) such other instruments and documents as may be elsewhere herein
required.
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ARTICLE IV
REPRESENTATIONS AND WARRANTIES OF THE SELLER
Seller makes the following representations and warranties, each of which
is complete and correct on and as of the date hereof. As used in this
Agreement, including, without limitation, this Article IV, the term Seller
shall not be construed to include reference to Seller's
predecessor-in-interest to the Trademark Assets, namely Brookhurst.
4.1 Organization and Good Standing of the Seller. Seller is a limited
partnership duly organized, validly existing and in good standing under the
laws of the State of Delaware.
4.2 Authority; Execution. Seller has all the requisite power and
authority, corporate and otherwise, to execute, deliver and perform its
obligations under this Agreement. The execution and delivery of this
Agreement, and each of the other instruments of transfer, conveyance and
assignment delivered hereunder, have been duly and validly authorized by all
necessary corporate and other action on the part of Seller, and this
Agreement and each of such other instruments has been duly executed by
Seller. This Agreement constitutes the valid and binding agreement of Seller
enforceable against Seller in accordance with its respective terms.
4.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Agreement by Seller
and the consummation of the transactions contemplated hereby will not: (i)
violate or conflict with any provision of the charter documents or by-laws of
Seller; (ii) violate or conflict with, result in the breach or termination of
or otherwise give any other contracting party the right to terminate, or
constitute a default (or an event which, with the lapse of time, or the
giving of notice, or both, will constitute a default) under, any contract or
other instrument to which Seller is a party
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and which relate to the Trademark Assets or by which Seller is bound, or
result in the creation of any Encumbrance upon any of the Trademark Assets
pursuant to the terms of any such contract or instrument, or (iii) violate or
conflict with any judgment, order, writ, injunction or decree of any court or
governmental body of any jurisdiction applicable to Seller (excluding any
judgments, orders, writs, injunctions or decrees in any actions or
proceedings involving Hugo Boss or its affiliates) or, to the knowledge of
Seller, any law or regulation materially adversely affecting Buyer's ability
to exploit the Trademark Assets.
(b) Except as set forth on Schedule 4.3(b), there are no notices,
licenses, consents, permissions or approvals of any nature whatsoever which
are required to be obtained by Seller from any Federal, state or local
governmental or regulatory body or other third party or, to Seller's
knowledge, from any foreign governmental or regulatory body for the
consummation of the transactions contemplated by this Agreement, or as a
condition to the sale, assignment and transfer of the Trademark Assets to be
effected hereunder.
4.4 No Claims or Litigation. Except as set forth on Schedule 4.4(a), no
litigation, judicial or arbitral action, claim asserted in writing and
received by Seller within the preceding two years or, to the knowledge of
Seller, administrative or regulatory proceeding or adversarial proceeding in
any trademark office, or governmental investigation involving the Trademark
Assets or the transactions contemplated by this Agreement, including, without
limitation, any claim of conflict with or violation of any proprietary or
other right (collectively, "Litigation") is pending or, to the knowledge of
Seller, threatened against Seller. For purposes of the foregoing,
"Litigation" shall not be deemed to include any actions, proceedings or
claims involving Hugo Boss or its affiliates. Except as set forth on
Schedule 4.4(b), there is no
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judgment, order, injunction, decree or award outstanding (whether rendered by
a court, tribunal, administrative agency or arbitral tribunal and excluding
any judgments, orders, injunctions, decrees or awards in any actions or
proceedings involving Hugo Boss or its affiliates), against Seller or
referencing Seller by name or, to Seller's knowledge, by which Seller is
bound which affects the Trademark Assets or the use of the Trademark Assets
in any way.
4.5 Trademarks. Except as set forth in Schedule 4.5.A, Seller is not
currently licensing any person to use or operate under any of the Trademarks.
True and complete copies and, if not available, descriptions of all such
licenses, including all amendments or modifications, have heretofore been
delivered to Buyer. Except as set forth in Schedule 4.5.B, and except for
customary sell-off rights granted to alleged infringers, Seller has not
affirmatively agreed or consented to the non-use by Seller, or use by any
third party, of any xxxx containing the word BOSS. To Seller's knowledge
(such knowledge being based solely on Seller's actual knowledge), the
countries in which Seller currently manufactures products bearing the
Trademarks are: Hong Kong, Indonesia, Macao, Mexico, People's Republic of
China, Phillipines, Republic of South Korea, Taiwan and Thailand. Seller
has paid, or will pay within a reasonable period of time, in full (or
otherwise to the satisfaction of the invoicing party) all outstanding
invoices of domestic and foreign trademark counsel for work done and
disbursements incurred on behalf of Seller (whether or not billed on or by
the date hereof).
4.6 No Alienation of Rights By Seller. Except as set forth in the
Assumed Agreements or any other documents identified on Schedule 4.5.A or B
or Schedule 4.6, Seller has not transferred, assigned, licensed (which
license is currently outstanding) or otherwise encumbered with Encumbrances
any of its rights in any Trademark Asset.
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4.7 Ownership Trademark Assets. As between Seller and all affiliates
and other persons or entities who have an ownership interest in Seller (or
any affiliate thereof) or who may have been expressly authorized by Seller to
use the Trademark Assets, Seller owns all rights in and to the Trademark
Assets (as defined in the Worldwide Rights Acquisition Agreement and as
acquired from Brookhurst under said agreement).
4.8 Knowledge. Whenever a statement regarding the existence or absence
of facts in this Agreement is qualified by a phrase such as to Seller's
knowledge or words to similar effect, it is intended by the parties that the
information attributed to Seller be actually known, or information which
should have been known based on reasonable inquiry by the Chairman and
Co-Chief Executive Officer, President and Co-Chief Executive Officer or Chief
Financial Officer of Seller.
4.9 Materiality. The phrase "materially adversely affecting Buyer's
ability to exploit the Trademark Assets" or words of similar effect, shall be
deemed to mean (i) the existence or occurrence at any time from and after the
date hereof of any actual harm, or the existence of any reasonably
anticipated actual harm, to Buyer's ability to exploit the Trademark Assets
or (ii) either (x) the failure of Seller to remedy the breach in question
assuming the breach is remediable or (y) the inability of Seller to remedy
the breach in question without prejudice to Buyer's ability to exploit the
Trademark Assets. For purposes of this Section 4.10, no "actual
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harm" shall be deemed to exist as to any of the first three claims of harm
unless any such claim of harm reasonably involves at least the following
amounts in damage or loss:
First Claim $35,000
Second Claim $25,000
Third Claim $25,000
it being agreed that, without prejudice to, or limitation of, Seller's
ability to claim that any subsequent claim involves no "actual harm", no such
monetary threshold applies to any subsequent claims.
ARTICLE V
REPRESENTATIONS AND WARRANTIES OF BUYER
Buyer hereby makes the following representations and warranties each of
which is complete and correct on and as of the date hereof:
5.1 Organization and Good Standing of Buyer. Buyer is a corporation
duly organized and validly existing under the laws of Delaware. Buyer is a
wholly-owned direct subsidiary of Hugo Boss AG, a corporation organized and
existing under the laws of the Federal Republic of Germany ("Hugo Boss").
5.2 Authority; Execution. Buyer has all requisite power and authority,
corporate and otherwise, to execute, deliver and perform its obligations
under this Agreement. The execution and delivery of this Agreement, and each
of the other instruments of transfer, conveyance and assignment delivered
hereunder, by Buyer have been duly and validly authorized by all necessary
corporate and other action on the part of Buyer, and this Agreement and each
of such other
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instruments has been duly executed by Buyer, as applicable. This Agreement
constitutes the valid and binding agreement of Buyer, enforceable against
Buyer in accordance with its terms.
5.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Agreement by Buyer
and the consummation of the transactions contemplated hereby will not: (i)
violate or conflict with any provision of the Certificate of Incorporation or
by-laws of Buyer; (ii) violate or conflict with, result in the breach or
termination of or otherwise give any other contracting party the right to
terminate, or constitute a default (or an event which, with the lapse of
time, or the giving of notice, or both, will constitute a default) under, any
contract or other instrument to which Buyer is a party; or (iii) violate or
conflict with any judgment, order, writ, injunction or decree of any court or
governmental body of any jurisdiction applicable to Buyer (excluding any
judgments, orders, injunctions, decrees or awards in any actions or
proceedings involving Seller or its affiliates) or, to the knowledge of
Buyer, any law or regulation materially adversely affecting Buyer's ability
to consummate the transaction contemplated by this Agreement.
(b) Except as provided in Schedule 5.3(b), there are no notices,
licenses, consents, permissions or approvals of any nature whatsoever which
are required to be obtained by Buyer from any Federal, state or local
governmental or regulatory body or other third party or, to Buyer's
knowledge, from any foreign governmental or regulatory body for the
consummation of the transactions contemplated by this Agreement, or as a
condition to the sale, assignment and transfer of the Trademark Assets to be
effected hereunder.
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ARTICLE VI
COVENANTS
6.1 Further Assurances.
(a) From time to time until the expiration of six (6) years from
the Closing Date, upon the request and at the expense of Buyer but without
further consideration, Seller shall:
(i) do, execute, acknowledge, deliver and file, or shall cause
to be done, executed, acknowledged, delivered and filed, all such further
acts, deeds, transfers, conveyances, assignments or assurances (including,
without limitation, for purposes of transferring record ownership of the
Trademark Assets to Buyer) as may be reasonably requested by Buyer for
transferring, conveying, assigning and reducing to Buyer's possession,
ownership and use of the Trademark Assets, including, without limitation,
executing on the Closing Date any assignments of Trademarks in recordable
form requested by Buyer; and
(ii) deliver to Buyer such other records, documentation and
information in Seller's possession or control as may be reasonably requested
by Buyer to assist Buyer in the use and protection of the Trademark Assets.
(b) Seller shall keep and preserve any and all invoices, letters of
credit, bills of lading, and purchase orders which relate to the Trademark
Assets for three (3) years from and after the Closing Date, except as
otherwise provided herein. Seller may dispose or destroy any such records,
documentation and information at any time, provided that Seller first shall
notify Buyer so that Buyer may, at its expense and within a reasonable time
after receipt of such notice, obtain from Seller any or all of said records,
documentation and information. Seller
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shall not be responsible for (i) destruction of records caused by an Act of
God or other "Force Majeure" event, or (ii) any immaterial non-intentional
destruction of records.
6.2 Mail and Communications. From and after the Closing Date, Seller
shall promptly remit or refer to Buyer any mail or other communications,
including, without limitation, any written inquiries, relating solely to the
Trademark Assets, and copies of any such mail or communications which relate
to the Trademark Assets and other matters, which are received by Seller from
and after the Closing for a period of six (6) years from the date hereof.
ARTICLE VII
CONDITIONS PRECEDENT TO OBLIGATIONS OF BUYER AND SELLER
7.1 Conditions Precedent to Obligations of Buyer. The obligation of
Buyer to consummate the transactions contemplated under this Agreement is
subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Buyer):
(a) the representations and warranties of Seller set forth in
Article IV hereof shall be true and correct in all material respects as of
the Closing Date;
(b) Seller shall have performed and complied in all material
respects with all covenants, obligations and undertakings required by this
Agreement to be performed or complied with on or prior to the Closing Date:
(c) Buyer shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Seller, certifying to the
fulfillment of the conditions specified in Sections 7.1(a) and (b);
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(d) a settlement agreement by and among Hugo Boss AG, Hugo Boss
USA, Inc., Hugo Boss Fashions, Inc., Brookhurst, Inc., I.C. Xxxxxx & Company
L.P. and Boss Golf Company, Inc. shall have been entered into by all parties
thereto including, among other things, (i) settling the action commenced by
the filing of a complaint dated February 11, 1993, which complaint was
subsequently amended and superseded by Amended Complaint dated November 5,
1993, (ii) providing for the payment by defendants therein to Hugo Boss of
U.S. $2,000,000, (iii) settling any and all proceedings between Hugo Boss and
Brookhurst or Seller throughout the world (except Canada, Hong Kong and
Mexico) and (iv) including the provisions set forth on Exhibit J and
otherwise on terms mutually satisfactory to all parties thereto (the
"Settlement Agreement") ;
(e) settlement agreements by and between Hugo Boss and Brookhurst
shall have been entered into settling any and all proceedings in Canada, Hong
Kong and Mexico on terms mutually satisfactory to all parties thereto (the
"Foreign Settlement Agreements");
(f) stipulated resolutions of all proceedings in Hong Kong by and
between Hugo Boss, on the one hand, and third party agents or manufacturers
of Seller, on the other, shall have been entered into on terms satisfactory
to Hugo Boss (the "Hong Kong Resolutions");
(g) no judgment, order or decree shall have been rendered which has
the effect of enjoining the consummation of the transactions contemplated by
this Agreement;
(h) the closing under the Worldwide Rights Acquisition Agreement
shall have been completed;
(i) Seller and all other parties thereto shall have executed and
delivered the Foreign Manufacturing Rights Agreement;
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(j) Seller shall have delivered to Buyer possession of (i) an
original of each of Seller's Trademark registrations currently in effect;
(ii) an original of any other registrations for the Trademarks to the extent
in Seller's possession, custody or control; and (iii) Seller's original
trademark application and registration files relating to the Trademarks
including, for example, letters or other materials from each of Seller's
domestic and foreign trademark counsel showing deadlines for trademark office
actions to the extent in Seller's possession, custody or control; provided,
however, if any of such items apply to both the Trademark Assets and the
trademark properties retained by Seller with respect to its BOSS business in
the United States of America, then such information may be provided to Buyer
by photocopy rather than original;
(k) Seller and all other parties thereto shall have executed and
delivered the Concurrent Use Agreement;
(l) Brookhurst and Xxxxxxx Xxx shall have consented to the
assignment and assumption by Buyer of all rights and obligations of Seller
under the Note and of all rights and obligations of Seller under the
Worldwide Rights Acquisition Agreement (except all "intent-to-use" trademark
applications) and Escrow Agreement relating to the Trademark Assets;
(m) Buyer and Seller shall have entered into a license agreement,
consistent with the terms of Exhibit C, providing for an exclusive
royalty-free license to Buyer of the right to use the Trademarks which are
the subject of intent-to-use applications in the U.S. Patent & Trademark
Office ("PTO") which were acquired by Seller from Brookhurst, on the products
referred to in said applications, together with the right to have such
trademarks transferred to Buyer upon such marks becoming registered with the
PTO, and on such other terms as shall be mutually agreed by the parties (the
"BOSS GOLF et al. License Agreement"); and
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(n) Hugo Boss and Xxxxxx shall have executed and delivered the
Indemnification Agreement in the form annexed hereto as Exhibit L.
7.2 Conditions Precedent to Obligations of Seller. The obligations of
Seller to consummate the transactions contemplated under this Agreement are
subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Seller):
(a) the representations and warranties of Buyer set forth in
Article V shall be true and correct in all material respects as of the
Closing Date;
(b) Buyer shall have performed and complied in all material
respects with all obligations and undertakings required by this Agreement to
be performed or complied with by Buyer on or prior to the Closing Date;
(c) Seller shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Buyer certifying to the
fulfillment of the conditions specified in Sections 7.2(a) and (b);
(d) the Settlement Agreement shall have been entered into by all
parties thereto;
(e) the Foreign Settlement Agreements shall have been entered into
by all parties thereto;
(f) The Hong Kong Resolutions shall have been entered into;
(g) no judgment, order or decree shall have been rendered which has
the effect of enjoining the consummation of the transactions contemplated by
this Agreement;
(h) the closing under the Worldwide Rights Acquisition Agreement
shall have been completed;
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(i) Buyer and all other parties thereto shall have executed and
delivered the Foreign Manufacturing Rights Agreement;
(j) Hugo Boss and all other parties thereto shall have executed and
delivered the Concurrent Use Agreement; and
(k) Brookhurst and Xxxxxxx Xxx shall have consented to the
assignment and assumption by Buyer of all rights and obligations of Seller
under the Note and of all rights and obligations of Seller under the
Worldwide Rights Acquisition Agreement (except all "intent-to-use" trademark
applications) and Escrow Agreement relating to the Trademark Assets and
Brookhurst and Xxxxxxx Xxx shall have fully and unconditionally released
Seller from such obligations in the form attached hereto as Exhibit K;
(l) the BOSS GOLF et al License Agreement shall have been entered
by all Parties thereto; and
(m) Hugo Boss and Xxxxxx shall have executed and delivered the
Indemnification Agreement in the form annexed hereto as Exhibit L.
ARTICLE VIII
SURVIVAL OF REPRESENTATIONS AND WARRANTIES
INDEMNIFICATION
8.1 All representations and warranties contained in or made pursuant to
this Agreement shall be continuing and shall survive and remain in full force
and effect after the date hereof for a period of five (5) years
notwithstanding any investigation conducted by any party hereto. All claims
for indemnification under this Agreement shall be brought by the parties
exclusively
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pursuant to, and shall be disposed of exclusively in accordance with the
terms of, this Article VIII.
8.2 Indemnity Obligations of the Selling Parties. The Seller hereby
agrees to indemnify and hold Buyer and its parent corporations, subsidiaries,
shareholders, affiliates, directors, officers, employees, agents, successors
and assigns (collectively, "Buyer Affiliates") harmless from, and to
reimburse Buyer and each Buyer Affiliate for, any Buyer Indemnity Claims (as
that term is hereinafter defined) arising under this Agreement. For
purposes of this Agreement, the term "Buyer Indemnity Claim" shall mean any
loss, damage, deficiency, claim, liability, obligation, suit, action, fee,
cost or expense of any nature whatsoever arising out of, based upon or
resulting from (i) the breach by Seller of any representations and warranties
of Seller which are contained in or made pursuant to this Agreement; (ii) any
breach or nonfulfillment of, or any failure to perform, any of the covenants,
agreements, obligations or undertakings made by Seller in or pursuant to this
Agreement which shall not be deemed for purposes of this Section 8.2 to
include covenants, agreements, obligations or undertakings made by Seller in
the agreements attached as Exhibits C, D, E, F and G hereto; (iii) any
liabilities or obligations arising out of any and all actions, claims, suits,
proceedings, demands, assessments, judgments, recoveries, damages, costs and
expenses or deficiencies incident to the disposal of any matter which is the
subject of indemnification under this Section 8.2; and (iv) all interest,
penalties, costs and expenses (including, without limitation, all
out-of-pocket expenses, reasonable investigation expenses and reasonable fees
and disbursements of accountants and counsel) arising out of any matter which
is the subject of indemnification under this Section 8.2 and in which and to
the proportionate extent Buyer Affiliates prevail.
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8.3 Indemnity Obligations of Buyer. Buyer hereby agrees to indemnify
and hold Seller, and its respective subsidiaries, partners, shareholders,
affiliates, directors, officers, employees, agents, successors and permitted
assigns (collectively, "Seller Affiliates"), harmless from, and to reimburse
Seller and each Seller Affiliate for, any Seller Indemnity Claims (as that
term, is hereinafter defined) arising under this Agreement which shall not be
deemed for purposes of this Section 8.3 to include covenants, agreements,
obligations or undertakings made by Buyer in the agreements attached as
Exhibits C, D, E, F and G hereto. For purposes of this Agreement, the term
"Seller Indemnity Claims" shall mean any loss, damage, deficiency, claim,
liability, suit, action, fee, cost or expense of any nature whatsoever
arising out of, based upon or resulting from (i) the breach of any
representations and warranties of Buyer which are contained in or made
pursuant to this Agreement; (ii) any breach of nonfulfillment of, or failure
to perform, any of the covenants, agreements, obligations or undertakings
made by Buyer in or pursuant to this Agreement; (iii) any liabilities or
obligations assumed by Buyer pursuant to the terms hereof; (iv) any
obligations or liabilities arising out of any and all actions, claims, suits,
proceedings, demands, assessments, judgments, recoveries, damages, costs and
expenses or deficiencies incident to the disposal of any matter which is the
subject of indemnification under this Section 8.3; and (v) all interest,
penalties, costs and expenses (including, without limitation, all
out-of-pocket expenses, reasonable investigation expenses and reasonable fees
and disbursements of counsel and accountants) arising out of any matter which
is the subject of indemnification under this Section 8.3 and in which and to
the proportionate extent Seller Affiliates prevail.
8.4 Notification of Claims. In the event of the occurrence of any event
which any party asserts constitutes a Buyer Indemnity Claim or Seller
Indemnity Claim, as applicable, the
-20-
indemnified party shall provide the indemnifying party with prompt notice of
such event, including, without limitation, any facts and circumstances which
give rise to such claim, and shall otherwise make available to the
indemnifying party all relevant information which is material to the claim
and which is in the possession of the indemnified party. If such event
involves the claim of any third party (a "Third-Party Claim"), the
indemnifying party shall have the right to elect to join in the defense,
settlement, adjustment or compromise of any such Third-Party Claim, and to
employ counsel to assist such indemnifying party in connection with the
handling of such claim, at the sole expense of the indemnifying party, and no
such claim shall be settled, adjusted or compromised, or the defense thereof
terminated, without the prior consent of the indemnifying party unless and
until the indemnifying party shall have failed, after the lapse of a
reasonable period of time, but in no event more than 30 days after written
notice to it of the Third-Party Claim, to join in the defense, settlement,
adjustment or compromise of the same. An indemnified party's failure within a
reasonable time to give notice or to furnish the indemnifying party with any
relevant data and documents in its possession in connection with any
Third-Party Claim shall not constitute a defense (in part or in whole) to any
claim for indemnification by such party, except and only to the extent that
such failure shall result in any material prejudice to the indemnifying
party. If so desired by any indemnifying party, such party may elect, at
such party's sole expense, to assume control of the defense, settlement,
adjustment or compromise of any Third-Party Claim, insofar as the claim
relates to the liability of the indemnifying party, provided that such
indemnifying party shall obtain the consent of all indemnified parties before
entering into any settlement, adjustment and compromise of such claim, or
ceasing to defend against such claim, if as a result thereof, or pursuant
thereto, there
-21-
would be imposed on an indemnified party any liability or obligation not
covered by the indemnification obligations of the indemnifying party under
this Agreement (including, without limitation, any injunctive relief or other
remedy).
8.5 Termination. This Agreement may be terminated, and the transactions
contemplated herein may be abandoned, (a) by mutual written agreement of the
parties hereto at any time or (b) by either party by written notice to the
other party if the Closing Date shall not have occurred on or before December
31, 1997, provided that the right to terminate this Agreement hereunder shall
not be available to any party whose breach of any representation or warranty
or failure to perform or comply with any obligation under this Agreement has
been the cause of, or resulted in, the failure of the Closing to occur on or
before such date.
ARTICLE IX
GENERAL
9.1 Waiver. Any failure of Buyer, on the one hand, or the Seller, on
the other, to comply with any of the obligations or agreements set forth in
this Agreement or to fulfill any condition set forth in this Agreement may be
waived only by written instrument signed by the other party. No failure by
any party to exercise, and no delay in exercising, any right hereunder shall
operate as a waiver of such right, nor shall any single or partial exercise
of any right hereunder by any party preclude any other or future exercise of
that right or any other right hereunder by that party.
9.2 Notices. All notices, requests or other communications required or
permitted hereunder (excluding, however, mail and/or communications covered
under paragraph 6.2 hereof) shall be given or made in writing and shall be
(i) delivered personally (including
-22-
commercial carrier), (ii) sent by registered or certified airmail, return
receipt requested, postage prepaid or (iii) sent by telecopier, addressed to
the party to whom they are directed at the following addresses, or at such
other address as may from time to time be designated by such party to the
others in accordance with this Section 9.2:
If to Seller, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: President and Co-Chief Executive Officer
Telecopier: 410/558-2096
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attention: Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1604
If to Buyer, to:
Ambra Inc.
c/o Hugo Boss USA Inc.
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxxxx XxXxxx
Telecopier: 212/940-0619
-23-
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
If to Hugo Boss, to:
Hugo Boss AG
12 Xxxxxxxxxxxxx
00000 Xxxxxxxxx, Xxxxxxx
Attention: General Counsel
Telecopier: 49/7123-942018
With a copy to:
Coudert Brothers
(as specified above)
and
Howrey & Simon
(as specified above)
Any notice, request or other communications shall be deemed to have been
given and to be effective upon receipt or refusal by the addressee. Any
party may change its address for notices hereunder, effective upon giving of
notice of such change hereunder to the other parties.
9.3 No Third Party Beneficiaries. Neither this Agreement nor any
provision hereof, nor any document or instrument executed or delivered
pursuant hereto, shall be deemed to create
-24-
any right in favor of or impose any obligation upon any person or entity
other than Buyer and Seller and their respective successors and assigns.
9.4 Equitable Remedies. Seller, on the one hand, and Buyer, on the
other hand, each acknowledge that it will be impossible to measure in money
the damages that would be suffered by Buyer and Seller, respectively, if the
other party fails to comply with the obligations imposed on it pursuant to
paragraphs 1.1, 3.2, 3.3, 6.1 and 6.2 of this Agreement and that, in the
event of any such failure, the claiming party will be irreparably damaged and
will not have an adequate remedy at law. Each party shall, therefore, be
entitled to equitable relief, including, without limitation, injunctive
relief and/or specific performance to enforce such obligations of the other
party and, if any action should be brought in equity to enforce any
provisions of this Agreement, neither party shall raise the defense that
there is an adequate remedy at law. The parties further agree that
notwithstanding the provisions of Section 9.12, either party may, in
accordance with the provisions of this Section 9.4 hereof, seek immediate
injunctive relief in court prior to the initiation of or pending resolution
of any dispute in arbitration. Except as expressly provided in this
Agreement, all specific remedies provided for in this Agreement are
cumulative and are not exclusive of one another or of any other remedies
available at law or in equity. Notwithstanding anything to the contrary set
forth herein, nothing contained elsewhere in this Agreement, including,
without limitation, the monetary thresholds set forth in Section 4.9 with
respect to the definition of "actual harm", shall be deemed to limit in any
way the availability of equitable relief for any breach of this Agreement.
-25-
9.5 Captions and Paragraph Headings. Captions and paragraph headings
used in this Agreement are for convenience only and are not a part of this
Agreement and shall not be used in interpreting or construing it.
9.6 Entire Agreement. The making, execution and delivery of this
Agreement by the parties has been induced by no representations, statements,
warranties or agreements other than those herein expressed. This Agreement
embodies the entire understanding of the parties with respect to the subject
matter hereof. Notwithstanding the foregoing, the parties acknowledge that a
number of different agreements and instruments of which the parties are
signatory are all being executed simultaneously, as of the Closing Date, with
this Agreement. The parties acknowledge that this Agreement or instrument is
to be interpreted and enforced separately and independently of any other such
agreement or instrument, and the breach of any such agreement by a party
shall not affect the rights of such party under this Agreement. This
Agreement may be amended or modified only by an instrument of equal formality
signed by the parties or their duly authorized representatives. The parties
have made no representations or warranties not expressly set forth in this
Agreement. This Agreement supersedes and terminates all prior discussions,
negotiations, understandings, arrangements and agreements among the parties
relating to the subject matter hereof, except as expressly set forth herein.
9.7 Counterparts. This Agreement may be executed in any number of
duplicate counterparts, each of which shall be deemed an original and all of
which together shall constitute one and the same instrument.
9.8 Assignability. No party hereto may assign any of its interests,
rights or obligations under this Agreement without the prior written consent
of the other parties. Notwithstanding
-26-
the foregoing, Buyer may assign its rights, but not its obligations, under
this Agreement to any entity under common control with Buyer or to any
successor in interest to Trademark Assets without the consent of Seller. Any
impermissible attempted assignment of this Agreement without such prior
written consent shall be void as to the other parties to this Agreement.
Notwithstanding anything to the contrary set forth in this Agreement, Seller
shall be permitted to assign and transfer Seller's rights under this
Agreement to any parent, subsidiary or other affiliate of Seller if Seller or
its successor in interest remains fully liable for the performance of this
Agreement by such assignee or transferee and indemnifies Buyer with respect
to any costs and damages Buyer may incur because of such assignment or
transfer.
9.9 Expenses. The parties shall each bear their own expenses in
connection with the negotiation, execution and delivery of this Agreement and
the performance of their respective obligations hereunder.
9.10 Successors and Assigns. This Agreement and the provisions thereof
shall be binding upon and inure to the benefit of the respective successors
and permitted assigns of the parties hereto.
9.11 Governing Law. The validity, construction, operation and effect of
any and all of the terms and provisions of this Agreement shall be determined
and enforced in accordance with the laws of the State of New York without
giving effect to principles of conflicts of law thereunder, except as to
matters involving issues of foreign trademark law, in which case the
applicable foreign trademark laws shall be applied. In the event any legal
action becomes necessary to enforce or interpret the terms of this Agreement,
the parties agree that such action will be brought in the U.S. District Court
for the Southern District of New York, and the parties
-27-
hereby submit to the jurisdiction of such court; provided, however, that any
party may enforce an arbitration award in any court of competent jurisdiction
located in New York City and the parties hereby submit to the jurisdiction of
any such court.
9.12 Arbitration. Except as provided in paragraph 9.4 above, all
disputes arising from or in any way in connection with this Agreement shall
be finally settled through binding arbitration conducted pursuant to the
Rules of Conciliation and Arbitration of the International Chamber of
Commerce in effect as of the date of the initiation of any dispute submitted
to arbitration under this section ( ICC Rules ) by three arbitrators
appointed in accordance with the ICC Rules. Except as provided in this
Section, no modification or amendment of the ICC Rules applicable to any such
arbitration shall be binding upon the parties unless agreed to in writing by
the parties. In each such arbitration, each party to the dispute shall
appoint one arbitrator within 30 days of receipt by the defendant of the
request for arbitration, and the arbitrators so appointed by the parties
shall appoint the third arbitrator (who shall be the Chairman), within 30
days of the confirmation of the later of the two arbitrators appointed by the
parties. If any such arbitration involves multiple claimants or multiple
defendants, nomination of arbitrators shall be governed by the applicable ICC
rules. Notwithstanding anything to the contrary contained in the ICC rules:
(i) the arbitration proceedings shall be conducted in the City of New York,
State of New York; (ii) the arbitration proceedings shall be conducted in the
English language; and (iii) the arbitrators shall apply New York law without
regard to such state's choice of law rules, except as to matters involving
issues of foreign trademark law, in which case the applicable foreign
trademark laws shall be applied. If the non-prevailing party does not comply
with an arbitration decision, the prevailing parties may
-28-
immediately enforce the arbitration decision in an equitable proceeding in
court with both parties' court costs and related attorneys' fees paid by the
non-prevailing party in the arbitration, unless the arbitration decision is
modified, or not upheld or enforced, in which case, each side shall bear its
own costs and attorneys' fees.
9.13 Confidentiality. This Agreement, its terms, conditions and
provisions, and the trade secrets and confidential information of the parties
are strictly confidential and shall not be disclosed by either party to any
other person or entity without the prior written consent of the other party,
or as required by law, (i) except financial institutions (including but not
limited to investment bankers and underwriters), attorneys and accountants
with which the parties transact business, provided, however, that such third
parties agree in writing to abide by the terms of this provision; or (ii)
except as appropriate for the parties to protect and/or enforce their
respective trademark rights. Buyer and Seller further agree that disclosure
of this Agreement within their organizations shall be limited to their
respective directors, officers and employees with a "need to know," to carry
out the purposes of this Agreement, or to protect the rights of either party.
Nothing in this provision is intended to prevent or substantially interfere
with Seller's or its partners', affiliates' or stockholders' ability to make
all disclosures required by law pursuant to offering and selling stock to the
public. Notwithstanding the provisions of this Section, in the event of
published reports regarding this Agreement or Seller's relationship with
Buyer or Hugo Boss, Buyer, Hugo Boss and Seller agree to cooperate in good
faith to provide appropriate public responses and comments and the parties
shall be free to make accurate public statements which are appropriate to
correct or clarify the public record.
-29-
IN WITNESS WHEREOF, the parties have duly signed this Agreement the day
and year first written above.
I. C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By: /s/ Xxxxxx X. Xxxxx
----------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief Executive
Officer
By: /s/ Xxxxxx X. Xxxx
-----------------------------------
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief Executive
Officer
AMBRA INC.
By: /s/ Jorg-Xxxxx Xxxxxx
------------------------------------
Name:
Title:
Hugo Boss AG ("Hugo Boss") hereby irrevocably and unconditionally
guarantees to Seller the full and timely performance of Buyer's obligations
to Seller under this Agreement. Hugo Boss covenants and agrees to indemnify
and save harmless Seller from and against any damage, liability and expense
resulting from Buyer's breach of this Agreement.
HUGO BOSS AG
By: /s/ Jorg-Xxxxx Xxxxxx
---------------------------------------
Name:
Title:
-30-
FOREIGN BOSS RIGHTS ACQUISITION AGREEMENT
EXHIBITS
Exhibit A Trademark Assignments
Exhibit B Assumption Agreement
Exhibit C Concurrent Use Agreement
Exhibit D Foreign Manufacturing Rights Agreement
Exhibit E Option Agreement
Exhibit F The ICI Note
Exhibit G Note Assumption Agreement
Exhibit H Hugo Boss AG Guaranty
Exhibit I Consent Agreement
Exhibit J Certain Provisions in Settlement Agreement
Exhibit K Form of Release
Exhibit L Indemnification Agreement
-31-
FOREIGN
SCHEDULE 1.1(b)
ASSUMED AGREEMENTS
For all of the following agreements to the extent they apply outside the U.S.:
1. Trademark License Agreement by and between Brookhurst, Inc. and
ProGroup, Inc. dated February 1, 1993.
2. Agreement by and between Brookhurst, Inc. and Boss Manufacturing Company
dated January 17, 1994.
3. Settlement Agreement by and between Brookhurst, Inc. and Bravo
Corporation dated January 21, 1997.
4. Agreement by and between Brookhurst, Inc. and Hi-Tech Golf, Inc. dated
July 20, 1994.
5. Settlement Agreement by and between Brookhurst, Inc. and Le Boss Sports
Wear, Inc. dated August 9, 1994.
6. Settlement Agreement by and between Brookhurst, Inc. and Xxxxxx Xxxxx
d.b.a. W-Two Tees dated March 31, 1995.
7. Agreement by and between Brookhurst, Inc. and Xxxxxx Industries, Inc.
dated July 19, 1993.
8. Agreement by and between Brookhurst, Inc. and Dayang International, Inc.
dated February 28, 1994.
9. Agreement by and between Brookhurst, Inc. and Xxxx Xxx Trading Co., Inc.
dated February 28, 1994.
10. Agreement by and between The Boss Group Companies and Xxxxxx and Xxx
Xxxxxxxx dated June 9, 1983.
11. Stipulation Terminating Opposition by and between Boss Group Companies,
Inc. and Levi Xxxxxxx & Co. dated June, 1976.
12. Agreement by and between Brookhurst, Inc., Yogi Enterprises, Inc. and
New York Wholesale dated February 21, 1994.
FOREIGN
SCHEDULE 4.3(b)
THIRD PARTY CONSENTS AND WAIVERS
Xxxx-Xxxxx-Xxxxxx approval.
Approval from secured lender, Congress Financial Corporation.
FOREIGN
SCHEDULE 4.4(a)
LITIGATION
CANADA
Brookhurst, Inc. x. Xxxx Boss AG, Hugo Boss Canada Inc., Carrera Optic AG,
Falke Fashion, Siga Corp., La Xxxx Xxxxxxx, S.p.A., Xxxxx Xxxxx-Xxxxx
Strumpffabriken, New Pel, S.p.A., Federal Court of Canada, Court No. T-1333-93
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx BOSS ELEMENTS, Application Number 766,156,
owned by Hugo Boss AG
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx BOSS XXXX BOSS ELEMENTS, Application Number
766,155, owned by Hugo Boss AG
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx XXXX XXXX BOSS & DESIGN, Application Number
740,329, owned by Hugo Boss AG
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx XXXX XXXX BOSS DESIGN, Application Number
732,019, owned by Hugo Boss AG
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx BOSS XXXX BOSS DESIGN, Application Number
701,377, owned by Hugo Boss AG
Opposition in the Canadian Trade-Marks Office by Brookhurst, Inc. to the
registration of the Trade-xxxx XXXXXXXXXXXX XXXX BOSS DESIGN, Application
Number 732,110, owned by Hugo Boss AG
HONG KONG, CHINA AND MACAU
See attached.
JAPAN
See attached.
FOREIGN
SCHEDULE 4.4(a)
MEXICO
Letters received from Merchant & Xxxxx dated August 22 and September 4,
1997.
LIST OF HONG KONG PROCEEDINGS
DATE OF CEASE AND DATE OF WRIT 1996
DESIST LETTER ACTION NO.
Brookhurst, Inc. vs. Hugo Boss AG 16 August 1996 20 September 1996 10808
Brookhurst, Inc. vs. Hugo Boss AG 16 August 1996 20 December 1996 14585
and Hugo Boss Hong Kong Limited
Hugo Boss AG vs. CAC Garment Ltd. 26 July 1996 24 September 1996 10896
Hugo Boss AG vs. Xxxxxxxx Xxxxx 26 July 1996 24 September 1996 10897
Fah Co Ltd
Hugo Boss AG vs. P'NT
Merchandising Co Ltd 13 July 1996 24 September 1996 10898
Hugo Boss AG and Hugo Boss Hong 13 July 1996 8707
Kong Limited vs. Ace Merchandising
Corp.(a firm)(3rd party)
Pro-Knit Mfg. Ltd. (Defendant)
Hugo Boss AG vs. Gofar Textiles 13 July 1996 5 August 1996 8857
Limited
Hugo Boss AG and Hugo Boss Hong Amended 174
Kong Limited vs. Dodge International Statement of Claim
Trading Ltd, Dodge Knitting Company pursuant to
Ltd, Dodge Trading Ltd (5th to 7th Summons dated 9
Defendants); August 1995
(Sun Xxxxxx Xxx Manufacturing Ltd,
Xxxxxx Fat Trading Co. (a firm)(1st
and 4th Defendants); Garment Express
Fashions Co.(a firm)(2nd Defendant);
Xxxx Xxxxxx (HK) Co. (3rd Defendant);
Wah Kel Garment Co. (a firm)(8th and
9th Defendants))
Times Trademark Industrial Ltd. 28 October 1996
LIST OF MACAU PROCEEDINGS
DATE OF CEASE AND DATE OF WRIT 1996
DESIST LETTER ACTION NO.
Fabrica de Vestuario Best Found 26 July 1996 --
Limitada (received by Eldex Limited
in HK)
[LIST OF PRC PROCEEDINGS]
DATE OF CEASE AND DATE OF WRIT 1996
DESIST LETTER ACTION NO.
[Hugo Boss AG vs. Boss Sportswear unknown unknown
(USA), Inc.]
JAPAN
-----
List of All Legal Matters Involving Boss Trademark
TRIALS
------------------------------------------------------------------------------
Trial No. Our Case
------------------------------------------------------------------------------
554/1993 S7069 Non-Use Cancellation
Trial against Trademark
Reg. No. 695865 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
555/1993 S7070 Non-Use Cancellation
Trial against Trademark
Reg. No. 695865 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
564/1993 S7071 Non-Use Cancellation
Trial against Trademark
Reg. No. 2190696 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
565/1993 S7072 Non-Use Cancellation
Trial against Trademark
Reg. No. 2190696 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
566/1993 S7073 Non-Use Cancellation
Trial against Trademark
Reg. No. 2190696 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
567/1993 S7074 Non-Use Cancellation
Trial against Trademark
Reg. No. 2190696 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
568/1993 S7075 Non-Use Cancellation
Trial against Trademark
Reg. No. 2190696 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
569/1993 S7076 Non-Use Cancellation
Trial against Trademark
Reg. No. 2197845 "BOSS"
owned by Hugo Boss A.G.
------------------------------------------------------------------------------
FOREIGN
SCHEDULE 4.4(b)
JUDGMENTS AND ORDERS
See Schedule 4.5.B for references to Levi Xxxxxxx & Co.
FOREIGN
SCHEDULE 4.5.A
CURRENT BOSS LICENSES
LICENSE AGREEMENT dated August 11, 1994 by and between BROOKHURST, INC. and
I.C. XXXXXX & CO., L.P.
TRADEMARK LICENSE AGREEMENT dated February 1, 1993 by and between BROOKHURST,
INC. and PROGROUP, INC.
TRADEMARK LICENSE AGREEMENT dated August 25, 1992 by and between BROOKHURST,
INC. and BOSS AMERICA, S.A. DE C.V.: terminated but there are sell-off rights
in Paragraph Thirteenth of said Agreement.
FOREIGN
SCHEDULE 4.5.B
AGREEMENTS RE USE OF TRADEMARK
1. Agreement by and between Brookhurst, Inc. and Boss Manufacturing Company
dated January 17, 1994.
2. Settlement Agreement by and between Brookhurst, Inc. and Bravo Corporation
dated January 21, 1997.
3. Letter to Xxxxxxx X. Pine, attorney for Enjoylife, Inc. dated April 30,
1993.
4. Agreement by and between Brookhurst, Inc. and Hi-Tech Golf, Inc. dated
July 20, 1994.
5. Settlement Agreement by and between Brookhurst, Inc. and Le Boss Sports
Wear, Inc. dated August 9, 1994.
6. Settlement Agreement by and between Brookhurst, Inc. and Xxxxxx Xxxxx
d.b.a. W-Two Tees dated March 31, 1995.
7. Trademark License Agreement by and between Brookhurst, Inc. and ProGroup,
Inc. dated February 1, 1993.
8. Letter to Xxxx X. XxXxxxx, Xx., Esq., attorney for Boss Uniform Service,
from Xxxxx X. Xxxxxxxx, attorney for The Boss Group Companies, dated
March 20, 1974.
9. Agreement by and between Brookhurst, Inc. and Xxxxxx Industries, Inc.
dated July 19, 1993.
10. Agreement by and between Brookhurst, Inc. and Dayang International, Inc.
dated February 28, 1994.
11. Agreement by and between Brookhurst, Inc. and Xxx Xxx Trading Co., Inc.
dated February 28, 1994.
12. Agreement by and between The Boss Group Companies and Xxxxxx and Xxx
Xxxxxxxx dated June 9, 1983.
13. Letter from Xxxxxxx X. Xxxxxx, Xx., attorney for Boss Group Companies,
Inc., to Xxxxxx X. Xxxx, Esq., attorney for H.D. Xxx Company, dated
January 13, 1976.
14. Stipulation Terminating Opposition by and between Boss Group Companies,
Inc. and Levi Xxxxxxx & Co. dated June, 1976.
FOREIGN
SCHEDULE 4.5.B
15. Agreement (undated and unsigned) by and between Boss Group Companies,
Inc. and Levi Xxxxxxx & Co.
16. Agreement by and among Brookhurst, Inc., Yogi Enterprises, Inc. and New
York Wholesale dated February 21, 1994.
17. Letter Agreement by and between Brookhurst, Inc. and Reebok
International Limited dated May 28, 1993.
18. Settlement Agreement by and among Brookhurst, Inc., Hugo Boss AG and
Xxxxxxx Xxxxxx Mode dated January 6, 1988.
2
SCHEDULE 4.6
ALIENATION OF RIGHTS
NONE
FOREIGN
SCHEDULE 5.3(B)
THIRD PARTY CONSENTS
NONE
