Exhibit 10.11(d)
CONCURRENT USE AGREEMENT
THIS CONCURRENT USE AGREEMENT ("Agreement") is effective as of the 5th day
of November, 1997 ("Effective Date"), by and between Hugo Boss AG
("HUGO BOSS"), a corporation of the Federal Republic of Germany, and I. C.
Xxxxxx & Company L.P. ("XXXXXX"), a Delaware Limited Partnership.
R E C I T A L S
A. HUGO BOSS is the owner of various trademarks including the word
"BOSS" throughout the world and in the United States ("Hugo Boss' Marks").
HUGO BOSS and its predecessors in interest have used for many years the xxxx
BOSS and Hugo Boss' Marks and have developed certain intellectual property
rights in connection therewith.
X. XXXXXX, as the successor in interest of Brookhurst, Inc., is the
owner of certain United States trademark rights in and registrations of the
word BOSS. XXXXXX and its predecessors in interest have used for many years
the xxxx BOSS on certain products in the United States and have developed
certain intellectual property rights in connection therewith.
C. The parties intend that consistent with the terms of this Agreement,
XXXXXX will be able to market Xxxxxx' Trademark Products (as defined below)
contemplated by this Agreement without causing confusion in the marketplace
with the HUGO BOSS and related brands marketed by HUGO BOSS ("Hugo Boss'
Trademark Products"), and that HUGO BOSS will be able to continue to market
Hugo Boss' Trademark Products without causing confusion in the marketplace
with the BOSS and related brands marketed by XXXXXX.
NOW, THEREFORE, in consideration of the mutual agreements set forth in
this Agreement, the parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, the following terms shall have the
meanings set forth below:
a. "Xxxxxx' Xxxx" or "Xxxxxx' Marks" shall mean the trademarks BOSS in
the Microgramma Typestyle and the stylized B (as set forth on Exhibit A
attached hereto) whether used alone or in combination with other words or
symbols, with the appearance and/or style of the said trademark in compliance
with the provisions of Exhibit A.
b. "Xxxxxx' Trademark Product" or "Xxxxxx' Trademark Products" shall
mean solely the products listed in Exhibit B, Section I, as modified by
Section II, bearing Xxxxxx' Marks in compliance with Exhibit A and sold
pursuant to the schedule in Exhibit C.
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* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
c. "United States" mean the United States of America, its territories,
possessions and commonwealths, except Saipan and American Samoa. "United
States" includes, without limitations, Puerto Rico.
2. CONCURRENT USE AGREEMENT
a. Unless otherwise agreed to by the parties in writing, XXXXXX
agrees to use Xxxxxx' Trademark Products solely in accordance with Exhibits
A, B and C. The parties recognize, however, that the marketplace is an
ever changing environment and that it is not possible to predict the future
trends. Accordingly, to ensure that there is no substantial likelihood of
confusion between the marks of the parties, the parties agree that Hugo Boss
shall, solely at its discretion, have the right, commencing on January 1, 2008,
to evaluate whether the type style and appearance of Xxxxxx' Marks remains
unlikely to cause confusion with the Hugo Boss Marks and may, in its sole
discretion, cause Xxxxxx to alter, change, amend or revise the typestyle and
appearance of Xxxxxx' Marks.
b. Unless otherwise agreed to by the parties in writing, XXXXXX agrees
that it shall not use the Xxxxxx' Marks in connection with the advertisement,
promotion, distribution or sale of any products other than Xxxxxx' Trademark
Products.
c. Unless otherwise agreed to by the parties in writing, XXXXXX agrees
that it will not distribute or sell any Xxxxxx' Trademark Products bearing
the Xxxxxx' Marks to athletic stores whose primary product line is composed
of products intended to be used in connection with golf, tennis, skiing,
sailing, windsurfing, motor sports or any combination thereof or at golf,
tennis, skiing, sailing, windsurfing, or motor sports athletic events,
without the prior written consent of HUGO BOSS. The foregoing shall not
prevent XXXXXX from selling Xxxxxx' Trademark Products to general sporting
goods stores selling multiple lines of products for a variety of sports
(e.g., Modell's and Sports Authority).
d. With respect to the limitations on the use of the Xxxxxx' Marks on
Xxxxxx' Trademark Products described in Exhibit A, XXXXXX shall begin to
phase some of the limitations into its product line beginning with products
produced by or for XXXXXX after January 1, 1998. Thereafter, fifty percent
(50%) of the products bearing Xxxxxx' Marks produced by or for XXXXXX during
the period August 1, 1998 through December 31, 1998 (as measured by the
number of styles) must comply therewith. XXXXXX agrees to use its reasonable
efforts to ensure that fifty percent (50%) of its projected volume of such
goods comply with the limitations described in Exhibit X. XXXXXX shall be in
full compliance with Exhibit A for all products bearing a BOSS xxxx produced
on or after December 31, 1998 and for that season and thereafter may not
manufacture or produce any products bearing a BOSS xxxx which are not in
full compliance with Exhibit A.
e. On those products listed on Exhibit C, HUGO BOSS agrees to use the
word BOSS, whether used alone or in combination with other words, phrases or
designs on such
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products solely in accordance with the price points contained
in Exhibit C; provided, however, that such Exhibit C shall not apply to such
products used or distributed by HUGO BOSS or its licensees for promotional
purposes.
x. XXXX BOSS agrees that without XXXXXX' written consent, which consent
may be withheld in XXXXXX' sole discretion, HUGO BOSS shall not license any
nonaffiliated third party to use Hugo Boss' Marks alone in connection with
the sale of the sportswear products listed in Exhibit C at or below XXXXXX'
maximum wholesale prices listed therein.
g. Nothing herein is intended to or shall prevent or otherwise restrict
HUGO BOSS from designing, manufacturing, advertising, promoting, distributing
or selling or licensing others to design, manufacture, distribute, advertise,
promote or sell in the United States any product, whether or not bearing a
xxxx including the word BOSS, listed in and consistent with Exhibit C, or any
other product not listed in Exhibit C, provided that such products do not use
the Microgramma typestyle shown in Exhibit A.
h. Neither HUGO BOSS nor XXXXXX shall use on or in connection with
apparel bearing the word "BOSS" sold in the United States, any apparel style,
design, pattern, art work or color which are or have been primarily
associated with products distributed by the other (or any licensee of the
other) except those which are traditional or standard in the industry.
i. Notwithstanding any other provision of this Agreement, Xxxxxx may,
during 1998, use the Xxxxxx' Marks on the following goods so long as such
goods are not intended to be sold to the public and are intended to be used
solely in connection with and for the promotion of Xxxxxx' Trademark
Products: compact discs, videos, stickers, stick-on-tattoos, photographs and
posters, whistles, notebooks, lanyards, non-leather I.D. tags, basketballs,
cassette tapes, sweatbands and visors; provided further that XXXXXX shall not
contest in any way the manufacturing, distributing or selling by HUGO BOSS
or its licensees of any of the above items with Hugo Boss' Marks. Each year
thereafter XXXXXX shall submit for approval a list of goods it intends to use
(subject to the terms and conditions of this Section 2.i.) for promotional
purposes. HUGO BOSS shall consider the request in good faith and advise
XXXXXX within ten (10) business days of receipt of such list which of the
goods HUGO BOSS, in the exercise of its sole discretion, approves; provided
however, that notwithstanding the provision of Section 12.d., XXXXXX may seek
arbitration solely as to whether HUGO BOSS has acted in good faith in
considering XXXXXX' request. Absent such approval, XXXXXX shall not use
Xxxxxx' Marks on such goods.
j. Each party acknowledges the other party's legal and beneficial
ownership interests in and to its respective trademarks referred to herein
and undertakes that it will not take any action which may in any way impair
the other party's rights in its marks, including, without limitation, by
challenging or opposing, or raising or allowing to be raised, on any grounds
whatsoever, any questions concerning or obligations to the validity of the
other party's trademarks.
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3. GEOGRAPHIC SCOPE OF AGREEMENT
x. XXXXXX acknowledges that HUGO BOSS owns extensive trademark rights
relating to the word BOSS both within and outside of the United States.
XXXXXX does not and shall not own, or purport to own, any trademark rights
relating to the word BOSS outside of the United States.
x. XXXXXX agrees that it will not sell or offer for sale or resale
Xxxxxx Trademark Products anywhere in the world other than in the United
States. XXXXXX shall not sell or cause to be sold, directly or indirectly,
any Xxxxxx' Trademark Products to any party which XXXXXX knows, or has reason
to know, has resold or distributed, is reselling or distributing, or is
likely to resell or distribute such Xxxxxx' Trademark Products (i) outside of
the United States; or (ii) as duty free merchandise. Within thirty (30) days
after the Effective Date of this Agreement and thereafter from time to time
as is reasonable, XXXXXX shall advise each of its customers (other than
consumers or other end users) in writing of the restrictions on such sales.
c. The parties agree that XXXXXX may sell Xxxxxx' Trademark Products to
the United States military solely for resale on United States military
installations in the United States. In making such sales, XXXXXX shall seek
to obtain agreement from XXXXXX' United States military customers that
Xxxxxx' Trademark Products will not be sold in United States military
installations outside the United States ("Military Agreement").
(i) If XXXXXX is unable to obtain a Military Agreement with any
military customer, or if the obtaining of any such Military Agreement
substantially adversely affects XXXXXX' ability to make military sales in
the United States, then XXXXXX shall promptly notify HUGO BOSS. Any such
notice by XXXXXX shall include a written explanation and documentation of
all efforts by XXXXXX to obtain such agreement and shall include (1) data
disclosing XXXXXX' sales of Xxxxxx' Trademark Products to the military
customer(s) at issue during the immediate prior 12-month period, (2)
projected sales of Xxxxxx' Trademark Products over the next 12-month
period, (3) the basis for XXXXXX' belief that obtaining such an agreement
will substantially adversely affect XXXXXX' military sales, and (4) all
information known or reasonably available to XXXXXX about sales of Xxxxxx'
Trademark Products by the military customer(s) at U.S. military
installations outside the United States.
(ii) Upon receipt of such notice and at HUGO BOSS' request, the
parties shall meet and confer within five (5) business days, to agree upon
any further steps to be taken by XXXXXX to obtain the Military Agreement.
Thereafter, absent an agreement between the parties on this issue, or in
the event such steps as may be agreed upon do not result in a Military
Agreement and XXXXXX does not agree to discontinue sales of Xxxxxx'
Trademark Products to any such military customer, HUGO BOSS may initiate
arbitration under the principles set forth in Exhibit F1. In any such
proceeding, the arbiter shall decide whether XXXXXX shall be permitted to
continue selling Xxxxxx' Trademark Products to the military customer(s),
absent a
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Military Agreement, and if so under what circumstances, conditions
or limitations, if any. In considering these issues, the arbiter shall
consider, inter alia, the extent of XXXXXX' efforts to obtain a Military
Agreement, the extent to which XXXXXX' military sales are affected) the
extent to which the absence of a Military Agreement has, is or will
contribute to the sale of Xxxxxx' Trademark Products outside the United
States, and the actual or threatened harm to HUGO BOSS from such sales.
Pending the resolution of such arbitration, XXXXXX may continue to make
sales of Xxxxxx' Trademark Products to any such military customer(s) absent
a Military Agreement; provided, however, that the continuation of such
sales does not constitute (1) a waiver by HUGO BOSS of any rights it may
have under this Agreement, or (2) HUGO BOSS' consent to such sales.
(iii) Notwithstanding the foregoing or the decision of any arbitration,
nothing in this agreement shall prevent HUGO BOSS from fully enforcing all
of its rights to prevent the unauthorized sale of products bearing Hugo
Boss' Marks at any U.S. military installation outside the United States or
elsewhere outside the United States.
4. ADVERTISING AND PROMOTION
x. XXXXXX agrees that any and all of its advertising and sales
promotion activities regarding Xxxxxx' Trademark Products (including
cooperative advertising) shall be subject to the provisions established by
Exhibit D. All such advertising and promotional materials arranged or placed
by XXXXXX shall conform to the standards of Exhibit D on or before February
1, 1998. After February 1, 1998, XXXXXX shall not create, or cause to be
created, any advertising or promotional materials that do not comply with
Exhibit D and shall use reasonable efforts, including termination of
relationships, to cause third parties who advertise or otherwise promote
Xxxxxx' Trademark Products to comply with the standards of Exhibit D.
Notwithstanding the foregoing, XXXXXX shall within twelve months of the
Effective Date of this Agreement, provide its retail customers with materials
designed to (i) replace existing signage with signage conforming to the
requirements of this Section 4.a. and Exhibit D and/or (ii) bring existing
signage into such conformity. XXXXXX shall use reasonable efforts to cause
its retail customers to use such materials, but XXXXXX shall not be required
to terminate its relationship with any retailer solely on the basis that the
retailer continues to use existing non-conforming signage.
x. XXXX BOSS agrees that any and all of its advertising activities
(including cooperative advertising) for products listed in Exhibit B, Section
I, as modified by Section II, shall be subject to the provisions established
in Exhibit X.
x. XXXXXX shall have exclusive rights as between the parties to use the
Xxxxxx' Marks with respect to boxing sports sponsorship in the United States,
except that HUGO BOSS retains the right to use the Hugo Boss' Marks in
connection with the sponsoring of boxers in the United States who are neither
U.S. citizens, nor residents of the United States. Unless otherwise agreed
to in writing by the parties, HUGO BOSS shall have exclusive
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rights as between the parties to use BOSS with respect to golf, tennis, motor
sports, skiing, sailing, and windsurfing sports sponsorship in the United
States. With regard to all other sports, HUGO BOSS and XXXXXX agree to
cooperate with each other to avoid interference with the other party's sports
sponsorships in the United States. If HUGO BOSS or XXXXXX notifies the other
party of the existence of sports sponsorship relationships in other sports,
the party receiving such notice will then avoid interfering with the
sponsorship relationship established by the other party. For example, the
party receiving such notice will not establish, or attempt to establish, any
sponsorship relationship with the same athlete or the same team while the
sponsorship relationship of the other party to this Agreement remains in
effect, although the party receiving the notice would not be prevented from
establishing other sponsorship relationships in the same sports. After
notification, and upon request by the notified party, the notifying party
shall provide evidence of any such sponsorships to the notified party. The
parties agree that XXXXXX may use Xxxxxx' Marks in the United States in
connection with the sponsorship of United States Olympic Athletes and United
States Olympic Teams; provided, however, that Xxxxxx' Marks are not used in
advertisements intended to be seen in countries outside the United States and
provided, further, that such Olympic athletes and teams agree not to display
Xxxxxx' Marks outside the United States. Nothing in this Agreement entitles
either HUGO BOSS or XXXXXX to exclusive rights as between the parties with
regard to any Olympic events occurring within the United States, except with
regard to the sports expressly identified above.
x. XXXXXX may submit to HUGO BOSS for prior approval samples of tags,
labels, packaging (including cartons, containers and wrapping or packing
materials) stationery, sales documents, advertising, promotional and display
materials, and other items bearing or using the Marks, so that HUGO BOSS can
ensure that such items comply with the terms of this Agreement. If XXXXXX
does not submit such items to HUGO BOSS for approval, and items are
determined to materially breach the terms of this Agreement on two occasions
within a twelve (12) month period, XXXXXX must thereafter submit all such
items for approval by HUGO BOSS. Under these circumstances, XXXXXX shall not
use any item in that category until corresponding samples have been approved
by HUGO BOSS in writing, and XXXXXX shall not depart therefrom in any respect
without again obtaining HUGO BOSS' prior written approval. If there have
been no further material violations for a twelve (12) month period, approval
for such category shall return to permissive instead of mandatory. When its
samples are submitted for approval (whether mandatory or permissive), HUGO
BOSS shall either approve or set forth in writing its reasons for withholding
approval within twenty (20) days of receipt of such samples. Failure by HUGO
BOSS to so respond within twenty (20) days shall be deemed as approval.
5 PREVENTION OF CONFUSION
a. The parties agree that adherence by both parties to the terms of
this Agreement will avoid confusion between their respective products.
b. The parties agree that nothing in this Agreement shall require
either party to do business with any third party wholesaler or retailer. The
parties further agree that each
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party shall have the right at its sole discretion to take all steps necessary
to prevent its products from being offered for sale to the public in
proximity to the products of the other party or one of its licensees.
c. Except as otherwise provided herein, the parties agree that each
shall have no right to require the other to make any change in the rights or
obligations set forth in this Agreement. The parties further agree that they
will institute no legal action against each other based solely upon conduct
which is expressly permitted by and in accordance with this Agreement.
6. USE AND DISPLAY OF THE MARKS
XXXXXX agrees to use, in connection with the Xxxxxx' Trademark Products
only, labels, tags, signs, banners, stationery, order forms, business cards
and other forms of identification for such products which are consistent with
the terms of Exhibit A and Exhibit X. XXXXXX agrees that it shall not use
the name BOSS in any corporate, partnership or other trade name or as a form
of entity identification. XXXXXX shall not use the word BOSS or authorize
any third party to use the word BOSS in connection with the name of any store
or retail establishment; provided that nothing in this Section 6 shall be
construed as prohibiting use of the Xxxxxx' Marks in shop-within-a-shop
situations. XXXXXX may continue its factory outlet operations in proximity
to its distribution facilities which are currently located in Milford,
Delaware; provided, however, that the word BOSS shall not be used in or as
part of the name of the store. XXXXXX agrees to provide HUGO BOSS with
written notice of any change in the location of such factory outlet. To the
extent XXXXXX uses and/or provides design layouts and/or fixtures for use in
stores or retail establishments, it shall not use design layouts and/or
fixtures which are or have been primarily associated with products
distributed by HUGO BOSS or its licensees, except those which are traditional
or standard in the industry.
7. NONTRANSFERABILITY OF RIGHTS
x. XXXXXX shall not grant, assign or otherwise convey or transfer any
rights inuring to XXXXXX or any obligations or duties owed by XXXXXX to HUGO
BOSS under this Agreement, without the prior written consent of HUGO BOSS and
any attempted transfer or assignment shall be null and void. HUGO BOSS shall
consider in good faith any request for such consent and promptly notify
XXXXXX of XXXX BOSS' decision, said decision to be in HUGO BOSS' sole
discretion. Nothing in this Section 7 is intended to prevent XXXXXX from
offering and selling stock to the public.
b. Notwithstanding anything to the contrary set forth in this
Agreement, XXXXXX shall be permitted to assign and transfer XXXXXX' rights
under this Agreement to any parent, subsidiary or other affiliate of XXXXXX
if XXXXXX or its successor in interest remains fully liable for the
performance of this Agreement by such Assignee or Transferee and indemnifies
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HUGO BOSS with respect to any costs and damages HUGO BOSS may incur because
of such assignment or transfer.
x. XXXX BOSS shall provide XXXXXX with written notice if HUGO BOSS
intends to assign or transfer to any third party any of its rights or
obligations under this Agreement.
8. NO AFFILIATION
The parties hereby agree that XXXXXX is and shall be wholly independent
of HUGO BOSS, and vice-versa, and that no agency, license, joint venture,
partnership, franchise or affiliation is created by this Agreement. Neither
party shall incur any obligation in the name of the other party.
9. EQUITABLE RELIEF
The parties acknowledge that it will be impossible to measure in money
the damages that would be suffered by one if the other breaches or otherwise
fails to comply with the obligations imposed on it pursuant to this Agreement
and that, in the event of any such failure, the non-breaching party will be
irreparably damaged and will not have an adequate remedy at law. The
non-breaching party shall, therefore, be entitled to equitable relief,
including, without limitation, injunctive relief and/or specific performance
to enforce such obligations and, if any action should be brought in equity to
enforce any provisions of this Agreement, the breaching party shall not raise
the defense that there is an adequate remedy at law. 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.
10. LEGAL ACTIONS
a. Unless otherwise agreed to by the parties, the parties shall be
responsible for the protection and enforcement of their respective marks
(HUGO BOSS for Hugo Boss' Marks and XXXXXX for Xxxxxx' Marks) in the United
States.
b. The parties agree to reasonably cooperate with and assist each
other in protecting and defending the parties' trademark rights (Hugo Boss'
Marks and Xxxxxx' Marks). Each party shall promptly notify the other in
writing of any infringements, counterfeiting, claims or actions by third
parties that the party reasonably believes may be a violation of the other
party's trademark rights.
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c. The parties agree that they shall determine solely at their own
discretion and not subject to dispute by the other party or review in any
arbitration or litigation their respective conduct of such protection and
enforcement, and neither party shall have a claim for damages or other relief
against the other based thereon.
x. XXXX BOSS and XXXXXX shall each have the right to record, or
continue the recordation of, their respective trademarks (Hugo Boss' Marks
and Xxxxxx' Marks) with the Customs Service of the United States and neither
party shall interfere with the efforts of the other, and each party shall
cooperate with the other in such efforts.
11. NOTICES
All notices, requests or other communications required or permitted
hereunder shall be given or made in writing and shall be (i) delivered
personally (including 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 11:
If to HUGO BOSS, to:
Hugo Boss AG
Xxxxxxxxxxxxx 00
X-00000 Xxxxxxxxx
Xxxxxxx Xxxxxxxx of Germany
Attention: General Counsel
Telecopier: 00-0000-000000
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
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If to XXXXXX, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxx, 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
Attn: Xxxxxx X. Xxxxx, 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
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.
12. GOVERNING LAW AND RESOLUTION OF DISPUTES
a. The validity, construction 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 laws, 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 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.
b. Notwithstanding the foregoing, and except as provided in Section 12.c.
below, in order to expedite the resolution of legal disputes, the parties
agree to have disputes
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arising in connection with this Agreement finally settled in accordance with
the rules established in Exhibit F1, which decision shall be binding on the
parties. The parties further agree that the first such arbitration
proceeding initiated by either party shall be conducted at a location and
under the auspices and arbitration rules (either the American Arbitration
Association Rules or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce) selected by the non-complaining party;
provided that English shall be the official language of all arbitration
proceedings. For all subsequent arbitrations, the selection of location and
selection of the auspices and the auspices' established rules shall alternate
between the parties, i.e., if HUGO BOSS is the complaining party in the first
arbitration under this Section, XXXXXX shall select the location and
selection of the auspices and the auspices' established rules for that
arbitration and for the third, fifth, seventh, et seq. arbitrations, and HUGO
BOSS shall select the location and selection of the auspices and the
auspices' established rules for the second, fourth, sixth, et seq.
arbitrations. The parties further agree that notwithstanding this provision,
either party may, consistent with the provisions of Section 9 herein, seek
injunctive relief in court prior to the initiation or pending resolution of
any dispute in arbitration, or otherwise. If the non-prevailing party does
not comply with an arbitration decision, the prevailing party therein may
immediately enforce the arbitration decision in an equitable proceeding in
court with both parties' court costs and related attorney's 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 attorney's fees.
c. Notwithstanding anything in this Agreement, the parties agree
that disputes arising under Sections 2.a., 2.d., 2.e., 2.f., 2.g., 4.a.,
4.b. and 6 herein, may, at the option of either party, be finally settled
in accordance with the expedited arbitration procedures set forth in
Exhibit F2, which decision shall be binding on the parties.
d. The parties agree that any decision required by this Agreement
that is committed to a party's "sole discretion" shall not be the subject
of arbitration; any decision required by this Agreement that is committed
to a party's "sole reasonable discretion" or "reasonable discretion" may be
the subject of arbitration.
e. Nothing in this Agreement is intended to or shall prevent HUGO
BOSS (i) from enforcing any of its rights in any jurisdiction anywhere in
the world to prevent the unauthorized manufacture, sale or distribution of
Hugo Boss' Trademark Products; or (ii) from enforcing any of HUGO BOSS'
rights in any jurisdiction anywhere in the world under any other agreements
it may have with XXXXXX.
f. The parties agree that in any arbitration proceeding brought
under this Section 12 where the interests of justice so require, the
arbitrator(s) shall have the discretion to require one party to pay some or
all of the costs and expenses, including legal fees, incurred by the other
party.
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13. BINDING EFFECT
This Agreement shall be binding on the parties, their subsidiaries,
successors, affiliates, permitted licensees and assigns (if any), and they each
warrant that the undersigned are authorized to execute this Agreement on behalf
of their respective parties.
14. GENERAL PROVISIONS
a. No waiver or modification of any of the terms or provisions of this
Agreement shall be valid unless contained in a written document signed by
both parties. No course of conduct of dealing between the parties shall act
as a waiver of any provision of this Agreement.
b. This Agreement, including the entirety of Exhibits A through F2,
attached hereto, contains the entire understanding of the parties as to the
subject matter herein, and there are no representations, warranties, promises
or undertakings other than those contained herein. This Agreement supersedes
and cancels all previous agreements between the parties hereto. This
Agreement shall be construed against both parties equally, regardless of the
party that drafted it. Notwithstanding the foregoing, nothing herein shall
affect the validity or enforceability of the Settlement Agreement and related
documents between the parties which terminated the litigation captioned Hugo
Boss Fashions, Inc., et al. v. Brookhurst, Inc., et al., Civil Action Xx. 00
Xxx. 0000 (XXX).
c. 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. HUGO BOSS and XXXXXX 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 XXXXXX, its partners, its stockholders or its ability to make all
disclosures required by law pursuant to offering and selling stock to the
public. Notwithstanding the provisions of this Section 14.c., in the event
of published reports regarding the Agreement or XXXXXX' relationship with
LICENSOR or HUGO BOSS AG, HUGO BOSS AG or any of its affiliates and XXXXXX
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.
12
d. If any provision of this Agreement should be held to be void or
unenforceable, such provision will be treated as severable, leaving valid
the remainder of this Agreement.
e. The parties agree to execute promptly any documents necessary to
effectuate the purpose and intent of this Agreement.
f. 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.
g. 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.
15. PENDING TRADEMARK APPLICATIONS
In recognition of terms of this Agreement, Xxxxxx agrees at the expense
of Hugo Boss to do the following within thirty (30) days of the Effective Date:
a. abandon Trademark Application No. 74/074,962 for BOSS, including
without limitation by filing an Express Abandonment with the Patent &
Trademark Office ("PTO");
b. delete "golf caps" from the description of goods in Trademark
Application No. 74/075,953 for BOSS;
c. abandon/delete that portion of Trademark Application No. 74/323,654
for BOSS which relates to Classes 14, 18 and 28 and all goods listed therein
as well as delete "robes, blazers, topcoats, pajamas, sleepwear, lingerie,
underclothing, bras, panties, petticoats, stockings, leggings, hosiery,
tights, wristbands, headbands, footwear, smocks, scarves, shawls and
suspenders" from the description of goods in the Class 25 portion of said
Application; and
d. delete "golf shirts" from the description of goods in Trademark
Application No. 74/326,997 for BOSS.
13
IN WITNESS WHEREOF, the parties agree that this Agreement shall take effect
as of the Effective Date.
HUGO BOSS AG
By: /s/ Jorg-Xxxxx Xxxxxx
-------------------------------
Name: Jorg-Xxxxx Xxxxxx
Title: Chief Financial Officer
By: /s/ Xxxx-Xxxxxx Xxxxxx
-------------------------------
Name: Xxxx-Xxxxxx Xxxxxx
Title: Attorney-in-Fact
I. C. XXXXXX & COMPANY L.P.
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
14
LIST OF EXHIBITS
Exhibit A: Specifications and limitations on XXXXXX' use of Xxxxxx' Marks
Exhibit B: List of products on which XXXXXX is permitted and forbidden to
use Xxxxxx' Marks
Exhibit C: Price Points
Exhibit D: XXXXXX advertising rules
Exhibit E: HUGO BOSS advertising rules
Exhibit F1: Non-expedited Arbitration provisions
Exhibit F2: Expedited Arbitration provisions
EXHIBIT A
XXXXXX MARKS
[LOGO]
( The Microgramma Typestyle )
[LOGO]
In using these Xxxxxx' Marks on Xxxxxx' Trademark Products and in all
advertising and promotional uses, XXXXXX will comply with the following:
1. XXXXXX shall use the phrase "BOSS by I G Design" (or such other name
as approved by HUGO BOSS) on all interior labels, tags and other interior
identifiers, and on all temporary or removable exterior labels, tags,
flashers, jokers, hang tags, and similar items, consistent with the rules in
section 4 below. In addition, the phrase "by I G Design" shall be
prominently visible; this requirement is satisfied when the prominence, use,
and format of the phrase "BOSS by I G Design" are similar to the exemplars
shown in Attachment 1 to this Exhibit A or as to tops satisfies the criteria
set forth in Section 9.a.(iii) below. Notwithstanding the exemplars shown in
Attachment 1 to this Exhibit A, for all purposes under this Agreement where
the word "BOSS" is smaller than one inch, the ratio of the word "BOSS" to the
phrase "by I G Design" shall be no less than 4:1; in all other uses the ratio
shall be no less than 5:1.
2. On all Xxxxxx' Trademark Products other than Bottoms (Bottoms being
defined as jeans, casual pants, slacks, trousers, shorts, and overalls and
shortalls ) XXXXXX shall use the phrase "BOSS by I G Design" (or such other
name as HUGO BOSS approves) as a permanent exterior means of identification
similar to the exemplars shown in Attachment 1 to this Exhibit A.
3. In addition to the use of the phrase "BOSS by I G Design" (or such
other name as approved by HUGO BOSS) as required by Section 1 of Exhibit A
and Exhibit E, XXXXXX may also use the word "BOSS" without the phrase "by I G
Design" (i) permanently affixed to the exterior of any Xxxxxx' Trademark
Product or (ii) for advertisement or promotional purposes; but in all such
cases only in accordance with the rules in Sections 4 and 5 of this Exhibit A
and, in the case of advertising and promotional cases, in accordance with the
rules in Exhibit E to this Agreement.
4. On all Bottoms:
a. All Bottoms will be sold either with (i) a pocket flasher, (ii) a
waist band ticket, or (iii) some other form of temporary, removable exterior
identification bearing the phrase "BOSS by I G Design" (or such other name as
HUGO BOSS approves) or with a permanently affixed "BOSS by I G Design" (or
such other name as HUGO BOSS approves) exterior marking, as illustrated by
the exemplars shown in Attachment 1 to this Exhibit A; provided, however,
that all temporary removable exterior identification must use the phrase "BOSS
by I G Design" as illustrated by the exemplar shown in Attachment 1 to this
Exhibit A.
b. If the word "BOSS", whether used alone or with any other word, is
used on fly labels on Bottoms, the letters of the word "BOSS" must be slanted
no less than nineteen (19) degrees as shown in Attachment 6B to this Exhibit
A.
2
c. If the word "BOSS" is used on a signature leather patch on a rear
jeans pocket, (i) the word "BOSS", whether used alone or with any other word,
except "I G Design" (or such other name as HUGO BOSS approves) will be
slanted no less than twenty-four (24) degrees, as illustrated by the examples
shown in Attachment 4 to this Exhibit A; or (ii) the phrase "BOSS/I G Design"
(or such other name as HUGO BOSS approves) will be used in a non-justified
4:1 ratio on the leather patch consistent with the terms of Section 5.d.
below; or (iii) the phrase "Boss/I G Design" (or such other name as HUGO BOSS
approves) will be otherwise permanently affixed to the garment, similar to
the exemplar shown in Attachment 1 of this Exhibit A.
5. Where the word "BOSS" does not appear immediately adjacent to the
phrase "I G Design" (or such other name as HUGO BOSS approves), the word
"BOSS" may appear either in capital letters of equal size, or, if the individual
letters comprising B-O-S-S are of different sizes, within seventy-five (75)
percent of any other letter; provided, however, that one or more of the
following rules are met:
a. The word "BOSS" is incorporated into a graphic environment as
illustrated by the acceptable exemplars shown in Attachment 2 to
this Exhibit A; not all graphic environments are acceptable as
illustrated by the unacceptable exemplars shown in Attachment 2
to this Exhibit A; or
b. All of the letters of the word "BOSS" are distorted as illustrated
by the acceptable exemplars shown in Attachment 3 to this Exhibit
A; not all distortions are acceptable as illustrated by the
unacceptable exemplars shown in Attachment 3 to this Exhibit A; or
c. The word "BOSS" appears other than in the Microgramma typestyle,
the non-Microgramma typestyle having first been approved in
accordance with the provisions of Section 10 of this Exhibit A;
or
d. All of the letters of the word "BOSS" are slanted as follows:
(i) If used with no vertical or angled lines, then no less than
twenty-two (22) degrees, as illustrated by the exemplar shown
in Attachment 5 to this Exhibit A; or
(ii) If used with vertical or angled lines as shown in Attachment
6A, then no less than nineteen (19) degrees, as illustrated
by the exemplar shown in Attachment 6B of this Exhibit A.
e. The requirements of this Section 5. a.-d. do not apply if the
word "BOSS" is used with the letters appearing in a vertical (up
and down) manner generally consistent with the acceptable
exemplars shown in Attachment 7A to this Exhibit A. Not all
vertical uses of the word
3
"BOSS" are acceptable, as illustrated by the unacceptable exemplar
shown in Attachment 7B to this Exhibit A, in which case the
requirements of this Section 5. a.-d. apply.
f. All of the foregoing rules except 5.d. shall apply to headwear.
g. In the case of belts, XXXXXX may use the word "BOSS" alone,
without the phrase "I G Design", (or such other name as approved
by HUGO BOSS) where the Xxxxxx' Xxxx appears only on the belt
buckle; where the Xxxxxx' Xxxx appears elsewhere on the exterior
of the belt, it shall incorporate the phrase "I G Design.
6. Any two-line logo or design using the word "BOSS" shall not have
justified margins or substantially justified margins.
7. XXXXXX shall not use words which indicate that its product is the only
or first BOSS product, e.g., "authentic," "genuine" or "original," except that
XXXXXX may use such words to directly modify the phrase "I G Design" (or such
other name as HUGO BOSS approves).
8. Unless otherwise agreed to by the parties, XXXXXX shall not use the
terms BOSS AMERICA, HUGO BOSS, HUGO, BALDESSARINI, WORLDWIDE, EUROPEAN, BOSS
GOLF, GOLF, TENNIS, SKI, FORMULA I, MOTORSPORT, WINDSURFING, SAIL, GERMAN or
any other words that are similar in sound, sight or meaning, as exemplified
in Attachment 8 to this Exhibit A. The parties agree that XXXXXX may use the
phrases "U.S.A." and "United States" on Xxxxxx' Trademark Products, including
in graphic depictions with or near Xxxxxx' Marks; provided, however, that
such words are not incorporated into a corporate identity, brand, or product
extension logo with the word "BOSS". In addition, the parties may, from
time to time, submit to each other exemplars of logos, designs or decorative
motifs which they are using or plan to use in the next selling season,
provided that such logos, designs, or decorative motifs shall not have been
used by the other party. The party so notified shall not use any such logos,
designs or decorative motifs, or anything similar to them in the following
selling season, without the other party's written permission; provided,
however, that either party may use logos, designs or decorative motifs that
are standard in the industry. Notwithstanding the foregoing, XXXXXX shall
not use any design or decorative motif similar to the BOSS SPORT patch shown
in Attachment 9 to Exhibit A.
9. For purposes of this Agreement, "polo shirt" or "polo shirts"
shall mean a pullover shirt for sportswear that is made of knitted fabric and
has short or long sleeves and a turnover collar or a round banded collar and
placket. In addition to all other rules herein applicable to tops, XXXXXX
may use the word "BOSS" by itself on the exterior of polo shirts only in
accordance with the following:
4
a. Traditional Button Placket Knit Collar Style. To the extent
XXXXXX uses the word "BOSS" by itself on the exterior left breast
area of polo shirts with button through plackets, knit turnover
collars and traditional coloration and designs the following
rules shall apply:
(i) on the exterior of men's shirts, the size of the word "BOSS"
shall be no smaller than three (3) inches long by
five-eighths (5/8) inches tall; on the exterior of boys' and
women's shirts, the size of the word "BOSS" shall be no
smaller than two and three-eighths (2 3/8) inches long by
seven-sixteenths (7/16) inches tall;
(ii) The word "BOSS" shall be slanted no less than
24 DEG.;
(iii) The phrase "I G Design" shall be prominently visible.
This requirement shall be satisfied by the following: the
phrase shall appear and be visible on the outside crease of
one sleeve; the typestyle shall be Microgramma; and the size
of the letters shall be no less than one fourth the size of
the letters used for the word "BOSS" on the exterior left
breast.
(iv) The color of the stitching on the shirt bearing the word
"BOSS" on the left breast area and the phrase "I G Design"
on the sleeve must be the same and clearly contrast with the
color of the shirt fabric, e.g., black on white; red, blue
or green on yellow; but not combinations like dark blue on
light blue; dark xxxx on black; dark green on dark blue.
Acceptable and unacceptable exemplars are shown in
Attachment 10 to this Exhibit A.
b. All Other Traditional Styles. To the extent XXXXXX uses the word
"BOSS" by itself on the exterior left breast area of polo shirts
with non-button through plackets and traditional coloration and
designs, the phrase "BOSS by I G DESIGN" required by Section 2 of
this Exhibit A shall be located on the top half of the garment
and shall be prominently visible. This latter requirement is
satisfied when the prominence, use and format of the phrase "BOSS
by I G Design" are similar to the exemplars shown in Attachment 1
to this Exhibit A or satisfies the criteria set forth in Section
9.a.(iii) of this Exhibit A.
c. Non-traditional Styles. To the extent XXXXXX uses the word
"BOSS" by itself on polo shirts other than those described in
Sections 9.a. and 9.b. of this Exhibit A, no additional rules
shall apply.
d. Exemplars of acceptable shirts for each category described in
this Section 9.a., 9.b., and 9.c. are depicted in Attachment 11
hereto.
5
10. Prior to use, XXXXXX may submit to HUGO BOSS for approval typestyles
other than Microgramma for the word "BOSS", provided those typestyles are
less similar to the typestyles used by HUGO BOSS than the Microgramma
typestyle used by XXXXXX. XXXXXX shall not use any such typestyle unless
HUGO BOSS, in its sole reasonable discretion, has approved such use in
writing.
ATTACHMENT 1
TO EXHIBIT A
o Exemplars of interior and exterior permanent/temporary labels, tags, etc.
with acceptable "BOSS by I G Design."
BMA-1368 -- info tag [Graphic Logo]
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-1241R -- [Graphic Logo]
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537W
FRONT
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-458 -- [Graphic Logo]
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537
BACK
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo]
BMA-1242
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXEMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 2
TO EXHIBIT A
o Exemplars of acceptable graphic environments.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 3
TO EXHIBIT A
o Exemplars of acceptable distorted letters.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 4
TO EXHIBIT A
o Exemplars of 24(degree) slant.
[Graphic Logo]
ATTACHMENT 5
TO EXHIBIT A
o Exemplars of 22(degree) slant.
[Graphic Logo]
ATTACHMENT 6A
TO EXHIBIT A
o Exemplars of vertical alignment.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo]
ATTACHMENT 6B
TO EXHIBIT A
o Exemplars of 19(degree) slant.
[Graphic Logo]
ATTACHMENT 7A
TO EXHIBIT A
o Exemplars of acceptable vertical BOSS logos.
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 7B
TO EXHIBIT A
o Exemplars of unacceptable vertical BOSS logos.
[Graphic Logo]
ATTACHMENT 8
TO EXHIBIT A
o Exemplars of forbidden words.
AMERICAN BOSS
BOSS AMERICAN
BOSS OF AMERICA
BOSS AMERIKA
BOSS AMERICAS
BOSS GOAL
YUGO
HUGE
BALDISSARENE
GLOBAL
CONTINENTAL
EUROPE
BAVARIAN
BAVARIA
GERMANY
INTERNATIONAL
ATTACHMENT 9
TO EXHIBIT A
o The BOSS Sport Patch
[Graphic Logo]--Shirt
[Graphic Logo]
ATTACHMENT 10
TO EXHIBIT A
o Exemplars of acceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
o Exemplar of unacceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 11
TO EXHIBIT A
o Exemplar of acceptable shirts under Exhibit A, Section 9.a.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.b.
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.c.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
EXHIBIT B
I. PRODUCTS BEARING XXXXXX' MARKS THAT XXXXXX MAY SELL
A. Men's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing
other than the exclusions listed below. All fabrications may be
used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and or fabric treated
(waterproofed, coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. Lengths of such garments shall be 22" to 60".
All fabrications may be used except fur (except as trim) and leather
(except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication
6. Belts. Belts bearing Xxxxxx' Marks provided that such belts shall be
sold only as part of a Bottom and shall not be made out of leather.
B. Women's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing
for juniors, contemporary, misses and large sizes other than the
exclusions listed below. All fabrications may be used.
2. Outerwear. All jackets coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and/or fabric treated
(waterproofed coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. Lengths of such garments shall be 22" to 60".
All fabrications may be used except fur (except as trim) and leather
(except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing Xxxxxx' Marks provided that such belts
shall be sold only as part of a Bottom and shall not be made out of
leather.
7. Other. Women's knit garments to be worn on the upper torso that are
either snapped or fixed through the crotch and the top portion of
which may be a halter, shoulder strap, short sleeve or long sleeve.
C. Children's Apparel
l. Children's Sportswear and Activewear. All sportswear and activewear
clothing other than the exclusions listed below. All fabrications
may be used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and/or fabric treated
(waterproofed, coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. All fabrications may be used except fur (except
as trim) and leather (except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing Xxxxxx' Marks provided that such belts
shall be sold only as part of a Bottom and shall not be made out of
leather.
D. Other
1. All apparel, including uniforms and work clothes, which is intended to be
worn solely and exclusively while persons are performing the normal duties
of their employment.
II. PRODUCTS BEARING XXXXXX' MARKS THAT XXXXXX SHALL NOT SELL
A. Notwithstanding the foregoing, the parties agree that Xxxxxx' Trademark
Products do not include any of the following men's, women's or children's
apparel:
1. All styles of tailored clothing, furnishings and accessories,
including but not limited to tuxedos, gowns and evening wear, sportcoats,
blazers, jackets, suits, dress pants, career apparel including blouses,
skirts and dresses, raincoats, top coats, dress shirts, ties, dress vests,
hosiery (including but not limited to socks, stockings and hose), and
leather belts.
2. All types of leather clothing (although leather trim may be used
on all products listed in Section I of this Exhibit B).
3. All styles of shoes and other footwear.
4. Clothing designed and sold for the primary purpose of engaging in
[to be deleted and dealt with in Ambra-ICI Boss Golf License Agreement]
golf, tennis, skiing, motor sports, windsurfing, or sailing.
5. Except as described in Exhibit B Section I.B.7. above, bodywear,
including but not limited to underwear (including t-shirts intended to be
worn as underwear); loungewear and intimate apparel; and sleepwear and
robes.
B. Except as agreed upon in writing by the parties, the parties further
agree that Xxxxxx' Trademark Products shall not include any non-apparel products
of any kind.
EXHIBIT C
PRICE POINTS
1. XXXXXX shall sell products bearing Xxxxxx' Marks and permitted under
the schedule contained in Exhibit B that bear wholesale prices prior to any bona
fide trade, quantity and early payment discounts and any other credits, no
greater than those listed below. HUGO BOSS shall sell or license others to sell
products bearing Hugo Boss' Marks and permitted under the schedule contained in
Exhibit B that bear wholesale prices prior to any bona fide trade, quantity and
early payment discounts and any other credits, no less than those listed below:
--------------------------------------------------------------------------------
HUGO BOSS'
XXXXXX' MAXIMUM MINIMUM
WHOLESALE WHOLESALE
--------------------------------------------------------------------------------
All long bottoms except jeans and warm-up
(or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic Blend * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
All short bottoms except jeans and warm-up
(or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic Blend * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Jeans
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Xxxx Shorts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Overalls
--------------------------------------------------------------------------------
Short * *
--------------------------------------------------------------------------------
Long * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Outerwear
--------------------------------------------------------------------------------
Filled * *
--------------------------------------------------------------------------------
Lined * *
--------------------------------------------------------------------------------
Waterproof * *
--------------------------------------------------------------------------------
---------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
HUGO BOSS'
XXXXXX' MAXIMUM MINIMUM
WHOLESALE WHOLESALE
--------------------------------------------------------------------------------
Vest
--------------------------------------------------------------------------------
Filled * *
--------------------------------------------------------------------------------
Lined * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Polo Shirts and Knit Tops
--------------------------------------------------------------------------------
Basic Short * *
--------------------------------------------------------------------------------
Basic Long * *
--------------------------------------------------------------------------------
Fashion Short * *
--------------------------------------------------------------------------------
Fashion Long * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Sweatshirts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Warm-up (or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
T-shirts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
Embroidered * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Sweaters
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Hats
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Woven Shirts
--------------------------------------------------------------------------------
Basic Short * *
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Basic Long * *
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Fashion Short * *
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Fashion Long * *
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Swimwear
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Basic * *
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Fashion * *
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* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2. All price points are expressed in 1997 dollars. XXXXXX price points
shall adjust over the term of this Agreement with changes in the rate of
inflation applicable to clothing according to the Producer Price Index for
Apparel and Other Finished Products Made From Fabrics and Similar Materials.
HUGO BOSS' price points shall remain as stated herein.
3. To the extent XXXXXX desires to add additional products to its line, or
to the extent either party desires to use fabrics or constructions materially
different from those currently being used consistent with the limitations of
Exhibit B, the parties will in good faith negotiate reasonable price points
applicable to such products.
4. The parties agree that the price points included in this Exhibit C are
based upon existing market conditions and reasonably foreseeable changes in such
market conditions. In the event that market conditions relating to the
manufacture, distribution or sale of products contained in Exhibit B should
change substantially, to a degree not contemplated by the price points in this
Exhibit C, and such change would result in economic hardship to a party to this
Agreement, the parties agree to negotiate in good faith to agree upon reasonable
alternative price points.
EXHIBIT D
ADVERTISING AND PROMOTION
(XXXXXX)
1. On all advertising and promotional materials for Isaac's Trademark
Products, XXXXXX may use the word "BOSS", provided the phrase "BOSS by I G
Design" appears at least once in accordance with the rules listed in Sections 2.
3 and 4 below of this Exhibit D.
2. In all print or Internet advertising and promotions for Xxxxxx'
Trademark Products, whether by XXXXXX, or by retailers, or by any other entity
authorized by XXXXXX, each and every page shall prominently feature "BOSS by I G
Design" as illustrated by the acceptable exemplars shown in Attachment 1 to this
Exhibit D.
3. In all radio, television and motion picture advertising for Xxxxxx'
Trademark Products, the first and last time BOSS is shown or mentioned, it shall
be as part of the phrase "BOSS by I G Design".
4. In all visual presentations of the phrase "BOSS by I G Design" in
advertising and promotions for Xxxxxx' Trademark Products, including but not
limited to print, Internet, television, motion picture, billboards, posters,
flyers, in-store signage, point-of-sale displays, sports sponsorships,
promotional tie-ins and/or samples, whether by XXXXXX, or by retailers, or by
any other entity authorized by XXXXXX, the size ratio between the word "BOSS"
and the phrase "I G Design" shall be similar to, and in no event greater than,
that shown in Attachment 1 to this Exhibit D.
5. XXXXXX shall be entitled to display Xxxxxx' Trademark Products and
people wearing Xxxxxx' Trademark Products in all advertising and promotional
material, provided that such Xxxxxx' Trademark Products comply with Exhibit A
and Exhibit B.
6. Nothing in this Agreement is intended to give HUGO BOSS any right to
approve or disapprove any aspect of the contents of any advertising other than
as expressly set forth above and in Exhibit A and Exhibit B; provided, however,
that XXXXXX shall not use any advertising style or format which is or has been
primarily associated with HUGO BOSS' advertising of its products other than
those which are traditional or standard in the industry.
7. XXXXXX agrees to take reasonable steps to achieve compliance with this
Exhibit D in advertising and promotions by retailers and other entities
authorized by XXXXXX including, but not limited to, providing such entities
periodically with appropriate guidelines for use of the Xxxxxx' Marks consistent
with this Agreement. However, acts of retailers and other entities which are
beyond the control of XXXXXX will not constitute a breach of this Agreement.
ATTACHMENT 1 TO
EXHIBIT D
o Exemplars of BOSS/I G Design.
For all uses where the word "BOSS" is less than one inch (1"):
(4:1)
1/2" 22(degrees) WIDE/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) NARROW/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRT.NARROW/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRAIGHT NARROW/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) NARROW/CAPS 4-1
(graphic logo)
4/4/97
1/2" STRT.WIDE/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) WIDE/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRT.WIDE/LOWER CASE 4-1
(graphic logo)
4/4/97
For all uses where the word "BOSS" is one inch (1") or larger:
(5:1)
1" 22(degrees) WIDE/LOWER 5:1
(graphic logo)
4/4/97
1" STRT.WIDE/CAPS 5:1
(graphic logo)
4/4/97
1" STRT.(degree)WIDE/LOWER CASE 5:1
(graphic logo)
4/4/97
1" 22(degrees)WIDE/CAPS 5:1
(graphic logo)
4/4/97
EXHIBIT E
ADVERTISING
(HUGO BOSS)
1. In all print or Internet advertising for products listed in Exhibit B,
Section I as modified by Exhibit B, Section II, whether by HUGO BOSS, or by
retailers, or by any other entity authorized by HUGO BOSS, each and every page
shall prominently feature the words "HUGO BOSS", regardless of whether these
words appear alone or in connection or combination with any other words.
2. In all radio, television and motion picture advertising for products
listed in Exhibit B, Section I as modified by Exhibit B, Section II, the first
and last time the word "BOSS" is shown or mentioned, it shall include the phrase
"HUGO BOSS", regardless of whether these words appear alone or in connection or
combination with any other words.
3. Nothing in this Agreement is intended to give XXXXXX any right to
approve or disapprove any aspect of the contents of any advertising other than
as set forth above; provided, however, that HUGO BOSS shall not use any
advertising style or format which is or has been primarily associated with
XXXXXX' advertising of Xxxxxx' Trademark Products, other than those which are
traditional or standard in the industry.
4. HUGO BOSS agrees to take reasonable steps to achieve compliance with
this Exhibit E in advertising and promotions by retailers and other entities
authorized by HUGO BOSS including, but not limited to, providing such entities
periodically with appropriate guidelines for use of the words "HUGO BOSS"
consistent with this Agreement. However, acts of retailers and other entities
which are beyond the control of HUGO BOSS will not constitute a breach of this
Agreement.
EXHIBIT F1
NON-EXPEDITED ADR PROCEDURES
In the event a dispute arises requiring non-expedited ADR procedures, the
following procedures shall be followed:
1. The parties shall attempt to resolve disputes arising under this
Agreement informally and in the normal course of business, by means of
negotiations between employees of the companies responsible for the parties'
day-to-day relationship.
2. In the event that either party believes that normal business
negotiations have not or are not likely to lead to a timely resolution, either
party may at any time without regard to Section 1 of this Exhibit F1 initiate
ADR proceedings by notifying the other in writing via facsimile of a demand for
ADR proceedings, with a succinct statement of the matters at issue. Notice shall
comply with the requirements of Section 21 of the Master License Agreement.
3. Upon receipt of such notification, both parties shall make arrangements
for an executive to confer, either in person or, if both agree, by telephone, in
an effort to negotiate a resolution of the dispute.
a. The executives will confer within five (5) business days of the
notification, and will work for at least ten (10) additional days to
try to reach a negotiated settlement.
b. By written agreement of both parties, the time period for
negotiation may be extended. The time period for negotiation will
automatically be extended until one party declares an impasse.
4. If the executive negotiations described in Section 3 of this Exhibit F1
fail to resolve the matter, then either party may thereafter notify the other
party in writing via facsimile that if agreement is not reached, mediation or
arbitration will be required. The notifying party shall state whether it elects
mediation or arbitration. If mediation is elected, the notified party may within
two (2) business days elect instead to proceed directly to arbitration, and will
so notify the notifying party. If the notified party takes no action, the matter
will proceed to mediation. If arbitration is elected by either party, the matter
will proceed directly to arbitration. In the case of arbitration, the party
selecting the location and choice of rules of the arbitration as specified under
Section 20.b. of this Agreement shall, within ten (10) business days of the
election to arbitrate, notify the other party of the selections of location and
choice of rules made.
5. In the event of mediation, the parties agree that Xxxxxxxx Xxxxxx Marks
of J.A.M.S./Endispute or his designee shall select a mediator within five (5)
business days. If Xx. Xxxxxx Marks or his designee is unable to select a
mediator, the parties shall within ten (10) business days select a mediator
based on candidates provided by the Washington, D.C. office of
J.A.M.S./Endispute, or if J.A.M.S./Endispute is unavailable, the American
Arbitration Association.
a. Within two (2) business days of the mediator's selection, the
mediator will confer in a joint conference call with representatives
of the parties to discuss the issues in dispute and any further
preparation needed prior to holding a mediation session. The parties
shall defer to the mediator's recommendation about appropriate
procedures.
b. The parties shall attempt to resolve the dispute through mediation
for at least twenty (20) business days from the date of the
mediator's initial joint telephone conference.
c. The time period for mediation shall be extended automatically past
the initial twenty (20) business days until one party declares in
writing an impasse and demands arbitration. If an impasse is
declared by either party, the matter shall proceed to arbitration.
EXHIBIT F2
EXPEDITED ADR PROCEDURES
In the event a dispute arises requiring expedited APR procedures, the
following procedures will be followed:
1. The parties will attempt to resolve disputes arising under this
Agreement informally and in the normal course of business, by means of
negotiations between employees of the companies responsible for the parties'
day-to-day relationship.
2. Either party may at any time request that the parties make arrangements
for an executive from each side not directly involved in the underlying dispute
to confer, either by telephone or in person, in an effort to negotiate a
resolution of the dispute.
3. Although the parties recognize that resolution of disputes through
direct negotiation under Sections 1 and 2 of this Exhibit F2 are to be
preferred, in the event that either party believes that normal business
negotiations are not likely to lead to a timely resolution, either party may at
any time without regard to Sections 1 and 2 of this Exhibit F2 initiate
expedited ADR proceedings by notifying the other in writing via facsimile of a
demand for expedited ADR proceedings, with a succinct statement of the matters
at issue, and by sending the notification and statement to the Washington, D.C.
office of J.A.M.S./ENDISPUTE. Notice will comply with the requirements of
Section 11 of this Agreement.
4. The expedited ADR proceedings will consist of an expedited arbitration
unless both parties agree in writing that they wish to pursue mediation, either
as a preliminary to arbitration or in parallel to the arbitration proceedings.
If the parties agree to pursue mediation, Xxxxxxxx Xxxxx or another mediator
agreed to by the parties will serve as mediator, and the mediator shall follow
such procedures to which the mediator and the parties agree.
5. Unless the parties agree in writing to an alternative approach (as to
accommodate mediation or to fit the specifics of a particular dispute), the
parties will proceed as follows:
a. Within one (1) business day (a business day consists of a day,
excluding Saturdays, Sundays and all holidays generally recognized in
either the United States or the Federal Republic of Germany) of receipt of
the demand for expedited ADR proceedings, J.A.M.S./ENDISPUTE will inform
the parties by facsimile of the name of the arbitrator who will handle the
case.
b. The matter will be heard and decided by one of the following
members of the J.A.M.S./ENDISPUTE panel of neutrals: The Honorable
Xxxxxxxx Xxxxxxx; The Xxxxxxxxx Xxxxxx Xxxxxxxx; The Xxxxxxxxx Xxxxxx
Xxxxx Xxx Xxxx.] In the event that one of the three pre-identified
neutrals ceases to be a member of the J.A.M.S./ENDISPUTE panel of
neutrals, J.A.M.S./ENDISPUTE will provide additional names of potential
arbitrators and the parties will agree on a replacement; if the parties
cannot agree, J.A.M.S./ENDISPUTE may appoint a replacement.
c. On the fifth (5th) business day after J.A.M.S./ENDISPUTE has
notified the parties of the arbitrator, the arbitrator will hold a
preliminary telephone conference during which the parties will describe
the dispute and discuss the procedure for resolving the dispute,
including, for example, the need for and content of pre-hearing
submissions. To the extent that the parties cannot agree on procedures,
the arbitrator will orally inform the parties at the close of the
telephone hearing of his procedural decisions. He will confirm those
decisions in writing no later than the following business day.
d. On the sixth (6th) business day after the preliminary telephone
conference, unless both parties agree to shorten the time or to extend the
time, the arbitrator will hold an in-person hearing to receive evidence
and consider arguments relating to the matter; provided, however, that if
the parties cannot agree to extend the time and the arbitrator concludes
that in the interest of justice the time should be extended, the
arbitrator may do so.
(1) The hearing will be conducted at a time decided by the
arbitrator, in either New York City or Washington, D.C., the
location to be decided by the arbitrator.
(2) The arbitrator will not be bound by the rules of evidence.
(3) The arbitrator will allow each side to present written and
oral evidence as they deem appropriate, except that the arbitrator
may set time limits to ensure that the hearing is completed within
one (1) working day.
(4) The arbitrator will declare the record closed at the end
of the hearing, except that the arbitrator may defer the closing of
the record for up to two (2) business days in order to allow the
parties to make post-hearing submissions.
(5) The arbitrator will hand down a binding award within one
(1) business day of the close of the record. The award will be
accompanied by a statement of reasons. "Statements of reasons" from
prior expedited
arbitrations may be used by parties to later arbitrations to support
their positions.
e. Except as specifically set out herein, the arbitrator will have
sole discretion to determine procedures for the arbitration.
