Translation from Spanish)
Exhibit 10.36
(Translation from Spanish)
(On the left hand margin of each page of the document appear several sets of initials)
AGREEMENT ENTERED INTO BY XX. XXXXX XXXXXXX XXXXX AND XXXXXXXX XXXXXXX XXXXX, IN THEIR OWN
RIGHT, HEREINAFTER JOINTLY REFERRED TO AS “THE PLAINTIFF”, AND BY THE PUBLIC ACCOUNTANT,
XXXXXXXX XXXXXXX XXXXXXX, AS ATTORNEY-IN-FACT OF THE COMPANY NAMED: OCULUS TECHNOLOGIES OF
MEXICO, S.A. DE C.V. (CORPORATION OF VARIABLE CAPITAL), HEREINAFTER REFERRED TO AS “THE
DEFENDANT”, IN ACCORDANCE WITH THE FOLLOWING REPRESENTATIONS AND CLAUSES:
REPRESENTATIONS
| I. | “THE PLAINTIFF” represents in its own right: |
| a) | To be individuals of Mexican nationality, with legal capacity for the entering into of this agreement. | ||
| b) | To be the titleholders of trademark registry number: 594389 “MICROMYCIN®”. | ||
| c) | To have filed, before the Mexican Institute of Industrial Property, the proceeding in order to |
| obtain the administrative-law declaration of infringement against “Oculus Technologies of Mexico, S.A. de C.V. based on the grounds provided for in sections I and IV of article 213 of the Industrial Property Law, under file number P.C. 421/2005 (I-310)8735, which it agrees to conclude by means of the relinquishment of the claim and of the corresponding proceeding. |
| d) | That it is its wish to enter into this agreement with “THE DEFENDANT”, in order to definitively conclude the dispute specified in paragraph c) hereinabove, without the existence of pressure, fraud, bad faith or any other vice of consent. | ||
| II. | “THE DEFENDANT” represents, though its attorney-in-fact: | ||
| a) | That its client is a corporation incorporated in accordance with the laws of the United Mexican States, as confirmed in original instrument number 3,605, dated April 30, 2003, executed before Xx. Xxxxxxx X. Xxxxxxx Alba, head of notary public’s office number one of the State of Michoacán. |
| b) | That it holds the necessary and sufficient powers for the entering into of this agreement, as confirmed in public instrument number 95370, dated November 30, 2005, executed before Mr. Francisco Xxxxxx Xxxx Xxxxxxxx, head of notary public’s office number 74 of the Federal District, which henceto have by no means been revoked or modified. | ||
| c) | That it is its wish to enter into this agreement with “THE PLAINTIFF”, in order to definitively conclude with the motion established in clause five of this agreement, the dispute specified in point I, paragraph c) hereinabove, without the existence of pressure, fraud, bad faith or any other vice of consent. | ||
| Both parties assert that they have freely negotiated the terms and conditions of this agreement, without the existence of any vice of consent that could cause it to be invalid or null, wherefore this agreement is entered into in accordance with the following: |
CLAUSES
ONE: “THE DEFENDANT” is bound, given that it is in its best interests, before “THE PLAINTIFF”
to cease to utilize the name Microcyn 60, or any other name that is the same or similar in
degree of confusion to trademark: 594389 “MICROMYCIN®, which is printed on the labels of the
product, within the term not exceeding one year as from the signing date of this agreement.
TWO: The term specified in the above clause may be used by “THE DEFENDANT” in order to
perform the processes and acts needed to register a distinct trademark before the Mexican
Institute of Industrial Property, at the sole discretion of “THE DEFENDANT”, as well as to
undertake the application processes, corresponding to the product, before the Federal Board
for Protection against Health Risks.
THREE: The phases in which “THE DEFENDANT” shall perform the processes and acts needed to
change the name of its product Microcyn 60 for a distinct trademark, are the following:
| FIRST PHASE | ||||
| COMMENCEMENT | PROBABLE | |||
| DATE | ACTIVITY | CONCLUSION DATE | ||
WEEK OF AUG/01/2006
|
COMMENCEMENT OF THE APPLICATION PROCESS OF THE TRADEMARK REGISTRATION WITH THE IMPI (MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY) |
ESTIMATE OF SIX MONTHS IN ORDER TO OBTAIN THE RESULT OF THE APPLICATION PROCESS |
||
| SECOND PHASE | ||||
| COMMENCEMENT | PROBABLE | |||
| DATE | ACTIVITY | CONCLUSION DATE | ||
WEEK OF FEB/05/2007
|
COMMENCEMENT OF THE APPLICATION PROCESS AT COFEPRIS (FEDERAL BOARD FOR PROTECTION AGAINST HEALTH RISKS) |
ESTIMATE OF SIX MONTHS FOR THE APPROVAL OF THE CHANGE OF NAME AND LABELS |
||
| THIRD PHASE | ||||
| COMMENCEMENT | PROBABLE | |||
| DATE | ACTIVITY | CONCLUSION DATE | ||
WEEK OF AUG/01/2007
|
FIRST PRODUCT DELIVERIES WITH NEW LABELING INCLUDING THE CHANGE OF NAME |
FOLLOWING WEEKS | ||
FOUR: Upon completion of the year referred to in clause one of this agreement, “THE
DEFENDANT” should begin to make the first deliveries to businesses of the product with new
labeling, which shall include a trademark different from the name: Microcyn 60, or another
name that is not similar in degree of confusion to trademark: 594389 “MICROMYCIN®, while
fully abiding by the stipulations of this meeting of the minds.
FIVE: Upon the signing of this agreement, “THE PLAINTIFF” is bound before “THE DEFENDANT” to
file, in the administrative-law declaration of infringement proceeding before the Mexican
Institute of Industrial Property, Divisional Office for the Protection of Intellectual
Property, Divisional Sub-office for the Prevention of Unfair Competition, Departmental
Coordination of Inspection and Supervision, File P.C. 421/2005 (I-310)8735, for the
relinquishment of the claim and the corresponding proceeding, without reserving any action or
right to exercise against “THE DEFENDANT”, by virtue of the entering into of this agreement.
This provision shall be invalid if “THE DEFENDANT” continues to use the
product showing the Microcyn 60 trademark after one year as from the signing of this
agreement.
Furthermore, it is the responsibility of “THE PLAINTIFF” to by no means permit the company:
Laboratorios Dermatológicos Darier, S.A. de C.V. to file any similar proceeding against “THE
DEFENDANT” regarding the Microcyn 60 product and by virtue of this meeting of minds.
SIX: “THE DEFENDANT” is bound to pay “THE PLAINTIFF” the sum of $80,000.00 (Eighty Thousand
Mexican Pesos 00/100) in order to recover legal costs, which shall be paid within fifteen
days following the date on which “THE DEFENDANT” receives the corresponding receipt and/or
invoice.
SEVEN: Upon termination of the term specified in clause one, and only in case “THE DEFENDANT”
continues manufacturing and labeling the product with the name Microcyn 60 or another similar
name in degree of confusion to trademark 594389 “MICROMYCIN®, following the termination of
the aforementioned term of one year, both parties agree to establish as liquidated damages
the sum of $100,000.00 (one hundred thousand Mexican Pesos
00/100) per month, which “THE DEFENDANT” is bound to pay in favor of “THE PLAINTIFF” during
the time “THE DEFENDANT” continues labeling the product with the aforementioned name.
EIGHT: On its part, “THE PLAINTIFF” promises and is bound with “THE DEFENDANT” not to
directly or indirectly use the name: Microcyn 60 or another name similar in degree of
confusion.
Both parties agree to ratify this agreement before the Mexican Institute of Industrial
Property.
NINE: There exists no custom, use or practice against the terms and conditions of this
agreement. Any modification of the expressly agreed matters shall only be effective between
the parties if the respective agreement is recorded in writing and signed by all the parties.
TEN: For all matters regarding the fulfillment and execution of this agreement, the parties
specify the following domiciles:
“THE PLAINTIFF”: Xxxxxxxxxxx Xxx 0000, Xxxxx 0, 0xx xxxxx, offices 801-804,
Tlalpan Residential Zone, Tlalpan City District, Zip Code 14020, in Mexico, Federal District.
“THE DEFENDANT”: Industria Vidriera number 81, Zapopan Norte Industrial Development, Zip Xxxx
00000, Xxxxxxx, Xxxxxxx.
XXXXXX: For the interpretation and compliance with the agreement, the parties expressly
submit themselves to the authority of the Mexican Institute of Industrial Property,
Divisional Office for the Protection of Intellectual Property, Divisional Sub-office for the
Prevention of Unfair Competition, Departmental Coordination of Inspection and Supervision.
The foregoing is for all corresponding legal effects.
The parties agree with the content of this agreement and it is signed on four copies in
Mexico City, Federal District, this July 31, 2006.
By “THE PLAINTIFF”
|
By “THE DEFENDANT” | |
(Signed)
|
(Signed) | |
Xx. Xxxxx Xxxxxxx Xxxxx
|
Public Accountant, Xxxxxxxx | |
| Xxxxxxx Xxxxxxx |
By
“THE PLAINTIFF”
(Signed)
Xx. Xxxxxxxx Xxxxxxx Xxxxx
WITNESSES
By “THE PLAINTIFF”
|
By “THE DEFENDANT” | |
(Signed)
|
(Signed) | |
Xx. Xxxxxx Xxxxxxxxx Xxxxxx
|
Mr. Xxxx Xxxx Xxxxxxx Xxxxxx |
(Translation from Spanish)
(Emblem):
IMPI
Mexican Institute of Industrial Property
IMPI
Mexican Institute of Industrial Property
(Stamp):
MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY
Divisional Office for the Protection
of Intellectual Property
Folio: 14983
Date: SEP/22/2006 – Time: 15:37
File: P.C. 421/2005(I-310)8735
-Illegible- 579125
(Barcode): -Illegible-
MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY
Divisional Office for the Protection
of Intellectual Property
Folio: 14983
Date: SEP/22/2006 – Time: 15:37
File: P.C. 421/2005(I-310)8735
-Illegible- 579125
(Barcode): -Illegible-
DIVISIONAL OFFICE FOR THE PROTECTION
OF INTELLECTUAL PROPERTY.
DIVISIONAL SUB-OFFICE FOR THE PREVENTION
OF UNFAIR COMPETITION.
DEPARTMENTAL COORDINATION OF
INSPECTION AND SUPERVISION.
REG. 011834
OF INTELLECTUAL PROPERTY.
DIVISIONAL SUB-OFFICE FOR THE PREVENTION
OF UNFAIR COMPETITION.
DEPARTMENTAL COORDINATION OF
INSPECTION AND SUPERVISION.
REG. 011834
XXXXX XXXXXXX XXXXX AND
XXXXXXXX XXXXXXX XXXXX.
VS.
OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V.
TRADEMARK: 594389 MICROMYCIN.
XXXXXXXX XXXXXXX XXXXX.
VS.
OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V.
TRADEMARK: 594389 MICROMYCIN.
P.C. 421/2005(I-310)8735.
MATTER: THE ABANDONMENT OF THIS PROCEEDING BY RENOUNCEMENT IS DECLARED.
XX. XXXXXXXX XXXXXX XXXXXXXX.
ATTORNEY-IN-FACT OF XXXXX XXXXXXX XXXXX AND
XXXXXXXX XXXXXXX XXXXX.
XXXXX XX XXXXXXX 000 Xx. 0000,
XXX. XXXXXXXXX XXXXXXX, 2DA. SECCION,
DEL. XXXXXXX X. XXXXXX,
C.P. 07839, MEXICO, D.F.
ATTORNEY-IN-FACT OF XXXXX XXXXXXX XXXXX AND
XXXXXXXX XXXXXXX XXXXX.
XXXXX XX XXXXXXX 000 Xx. 0000,
XXX. XXXXXXXXX XXXXXXX, 2DA. SECCION,
DEL. XXXXXXX X. XXXXXX,
C.P. 07839, MEXICO, D.F.
Having seen the document presented at the filing office of the Divisional Office for the
Protection of Intellectual Property of this Institute on September 21, 2006, with entry folio
011834, by Xx. Xxxxxxxx Xxxxxx
Osequera, in representation of XXXXX XXXXXXX XXXXX AND XXXXXXXX XXXXXXX XXXXX, and by Xx.
Xxxxxxxx Xxxxxxx Xxxxxxx, in representation of OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V.
whereby the former relinquishes the request of administrative-law declaration of
infringement, specifying that an agreement has been entered into with the presumed infringer,
dated July 31, 2006, while attaching the original thereof for the corresponding legal
effects, which is signed in agreement by Xx. Xxxxxxxx Xxxxxxx Xxxxxxx, attorney-in-fact of
OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V. the following is agreed.
The document in question is formally placed on record, by Xx. Xxxxxxxx Xxxxxx Xxxxxxxx, in
representation of XXXXX XXXXXXX XXXXX AND XXXXXXXX XXXXXXX XXXXX, with his legal capacity
being accredited in the records, relinquishing the aforementioned proceeding, by virtue of
the fact that an agreement was entered into with the supposed infringer in July 31, 2006, as
well as Xx. Xxxxxx Xxxxxx Xxxx, attorney-in-fact of OCULUS TECHNOLOGIES OF MEXICO, S.A. DE
C.V. whose legal capacity is accredited in the records, signing in agreement, the
relinquishment and, given that from the aforementioned agreement, which was
attached in original to the document in question, the following is seen in CLAUSE FIVE: “Upon
the signing of this agreement, “THE PLAINTIFF” is bound before “THE DEFENDANT” to file, in
the administrative-law declaration of infringement proceedings before the Mexican Institute
of Industrial Property, Divisional Office for the Protection of Intellectual Property,
Divisional Sub-office for the Prevention of Unfair Competition, Departmental Coordination of
Inspection and Supervision, File P.C. 421/2005 (I-310)8735, for the relinquishment of the
claim and the corresponding proceeding, without reserving any action or right to exercise
against “THE DEFENDANT”, by virtue of the entering into of this agreement. This provision
shall be invalid if “THE DEFENDANT” continues to use the product showing the Microcyn 60
trademark after one year as from the signing of this agreement.” Consequently, with the
existence of said agreement between the parties for the relinquishment in question, based on
articles 1, 2 and 57, section II of the Federal Code of Administrative-law procedure, and
article 373, sections I and II of the Federal Code of Civil Procedure; it is resolved:
ONE: The abandonment of this proceeding is declared, due to the asserted and duly grounded
reasons.
TWO: Kindly archive the file specified at the head of this document, as a full and
definitively concluded matter.
THREE: Let this resolution be known to the parties.
This document is signed in Mexico City, Federal District, based on article 6, sections IV, V
and XXII, Articles 7 bis, 184, 187, 188, 193, 191, 192 bis and 215, Headings Six and Seven
and other applicable articles of the Industrial Property Law; articles 1 and 2 and other
applicable articles of the Federal Code of Administrative-law procedure, and articles 1, 70,
80, 129, 197 and 202 of the Federal Code of Civil Procedure, supplying deficiency; articles 1
and 3, section V, paragraph c), subparagraph i), first and second lines, articles 4, 5 and
11, last paragraph and article 14 of the Regulations of the Mexican Institute of Industrial
Property; articles 1, 3, 4, 5, 18, 25, 26 and 32 of the Organic Bylaws of the Mexican
Institute of Industrial Property, and articles 1, 3, and 7, sections c), e) and r) and last
paragraphs of the Agreement that confers powers upon the Assistant General Directors,
Coordinator, Divisional Directors, Incumbents of the Regional Offices, Divisional Deputy
Directors, Departmental Coordinators and other employees of the Mexican Institute of
Industrial Property, with said laws being published in the Official Gazette on August 2,
1994, August 4, 1994 (reformed on May 30, 2000), February 24, 1943, December 14, 1999
(reformed and added to by Decree published on July 15, 2004, whose errata was published on
the 28th of the same month and year), December 27, 1999 (reformed and added to by
agreement published on July 29, 2004, whose clarification note was published on August 4,
2004), and December 15, 1999 (reformed by agreement published on July 29, 2004, whose
clarification note was published on August 4, 2004).
YOURS SINCERELY
THE DIVISIONAL DEPUTY DIRECTOR FOR THE
PREVENTION OF UNFAIR COMPETITION
(Signed)
XX. XXXXX XXXXXXXXX XXXXXXX XOXOTLA
THE DIVISIONAL DEPUTY DIRECTOR FOR THE
PREVENTION OF UNFAIR COMPETITION
(Signed)
XX. XXXXX XXXXXXXXX XXXXXXX XOXOTLA
With copy: Xxxxxxxx Xxxxxxx Xxxxxxx, Attorney-in-fact of OCULUS TECHNOLOGIES OF MEXICO, S.A.
DE C.V. Río Rhin No. 56, Penthouse 2, Col. Xxxxxxxxxx, Delegación Xxxxxxxxxx, C.P. 06500,
Mexico, D.F. For his knowledge.
RCL/CAP (Initials)
Periférico
Sur No. 3106, Col. Jardines del Pedregal, C.P.01900.
Switchboard: 5624-0400
(Translation from Spanish)
(Stamp):
MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY
Divisional Office for the Protection
of Intellectual Property
Folio: 011834
Date: SEP/21/2006 – Time: 13:45
File: P.C. 421/2005(I-310)8735
MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY
Divisional Office for the Protection
of Intellectual Property
Folio: 011834
Date: SEP/21/2006 – Time: 13:45
File: P.C. 421/2005(I-310)8735
ATTACHED DOCUMENT:
TRANSFER
PROMOTION
823412
TRANSFER
PROMOTION
823412
REGISTERED TRADEMARK: 594389 MICROMYCIN
DIVISIONAL OFFICE FOR THE PROTECTION
OF INTELLECTUAL PROPERTY.
DIVISIONAL SUB-OFFICE FOR THE PREVENTION
OF UNFAIR COMPETITION.
DEPARTMENTAL COORDINATION OF
INFRINGEMENTS AND CRIMES
DIVISIONAL OFFICE FOR THE PROTECTION
OF INTELLECTUAL PROPERTY.
DIVISIONAL SUB-OFFICE FOR THE PREVENTION
OF UNFAIR COMPETITION.
DEPARTMENTAL COORDINATION OF
INFRINGEMENTS AND CRIMES
HEAD OF THE MEXICAN
INSTITUTE OF INDUSTRIAL PROPERTY
INSTITUTE OF INDUSTRIAL PROPERTY
I, XXXXXXXX XXXXXX OSEGUERRA, Lawyer for and in representation of XXXXX XXXXXXX XXXXX
and XXXXXXXX XXXXXXX XXXXX, with such legal capacity being accredited in the “P.C”. specified
hereinabove, with all due respect to appear before you in order to assert:
I, XXXXXXXX XXXXXXX XXXXXXX, as attorney-in-fact of OCULUS TECHNOLOGIES OF MEXICO, S.A.
DE C.V. with such legal capacity being accredited in the “P.C”. specified hereinabove, with
all due respect to appear before you in order to assert:
That having reached a satisfactory arrangement for both parties, under the terms of the
agreement entered into on July 31, 2006, we appear in order to exhibit same for its due
approval and inclusion in the corresponding file.
Furthermore, and based on the provisions of article 373, section II of the Civil Code of
Procedure, supplying deficiency to the Industrial Property Law, XXXXX XXXXXXX XXXXX and
XXXXXXXX XXXXXXX XXXXX, in representation of the undersigned, do hereby fully relinquish the
proceeding against OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V. given that it is in their
bests interests which I represent.
Due to the foregoing, I kindly request you, the HEAD THE MEXICAN INSTITUTE OF INDUSTRIAL
PROPERTY, to:
ONE: To formally enter my appearance on record, in the name and representation of XXXXX
XXXXXXX XXXXX and XXXXXXXX XXXXXXX XXXXX, relinquishing the proceeding given that it is in
the interests of my clients, under the terms of the agreement attached hereto for all
corresponding legal effects.
TWO: To formally enter my appearance on record, in the name and representation of OCULUS
TECHNOLOGIES OF MEXICO, S.A. DE C.V., and to formally place on record the acceptance of the
relinquishment, for the effects established in article 373, section II of the Civil Code of
Procedure, supplying deficiency to the Industrial Property Law and under the terms of the
exhibited agreement.
Mexico, Federal District, this September 21, 2006.
THANK YOU FOR YOUR CONSIDERATION OF THIS LETTER
| (Signed) XX. XXXXXXXX XXXXXX XXXXXXXX Attorney-in-fact of XX. XXXXX XXXXXXX XXXXX and XX. XXXXXXXX XXXXXXX XXXXX |
(Signed) PUBLIC ACCOUNTANT: XXXXXXXX XXXXXXX XXXXXXX Attorney-in-fact of OCULUS TECHNOLOGIES OF MEXICO, S.A. DE C.V. |
