EX-10.9
10
ex10-9.htm
TRADEMARK LICENSING AGREE NSI AND NS MALAYSIA
BETWEEN
NU SKIN INTERNATIONAL, INC.
(Company No. 880564-0142)
AND
NU SKIN (MALAYSIA) SDN. BHD.
(Company No. 402787-V)
THIS TRADEMARK LICENSING AGREEMENT
(hereinafter, this “Agreement”) is entered into this 20th day of June
2002 to be effective as of September 28, 2001, between NU SKIN INTERNATIONAL,
INC. (Company No. 880564-0142), a company organized under the laws of the
State of Utah, United States of America and and having its principal place of
business at 00, Xxxx Xxxxxx Xxxxxx, Xxxxx, Xxxx 00000, Xxxxxx Xxxxxx of America
(“NSI”), and NU SKIN (MALAYSIA) SDN. BHD. (Company No.
402787-V), a company incorporated in Malaysia and having its registered office
at 0xx Xxxxx, Xxxxxx Xxxxxxxx, 00 Xxxxx Xxxx Xxxxxx, 00000 Xxxxx
Xxxxxx, Xxxxxxxx and a place of business at Office Xxx 00-00, Xxxxx 0, XXX Xxxxx
Xxxx Retail, Xx. 00, Xxxxx Xxxxxx, 00000 Xxxxx Xxxxxx, Xxxxxxxx
(“NSMY”). Hereinafter, NSI and NSMY shall collectively be referred to
as the “Parties” and each shall be individually referred to as
“Party.”
RECITALS
WHEREAS, NSI develops and markets various
products for distribution in worldwide markets through a network of independent
distributors;
WHEREAS, NSMY desires to continue to use in
its corporate name, the NSI trademark “Nu Skin,” and to affix other
trademarks, service marks and trade names of NSI to products and services and to
use such marks and names in advertising and promotional activities and thereby
derive benefit from the goodwill, value and reputation such marks and names will
lend when used to identify NSMY and such products and other materials; and
WHEREAS, the Parties desire to enter into this
Agreement as set forth herein.
NOW THEREFORE, in consideration of the
premises, the mutual promises, covenants, and warranties hereinafter set forth
and for other valuable consideration, the sufficiency of which is hereby
acknowledged, the Parties agree as follows:
For the purposes of this Agreement, unless the context otherwise
requires or the Parties otherwise agree within the terms of the Agreement, the
following words, terms and phrases shall have the meaning assigned to them
respectively by this Article I:
1.1 | |
“Affiliate” shall mean, with respect to any specified person,
any other person that directly or indirectly, through one or more
intermediaries, controls, is controlled by, or under common control with, such
specified person.
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1.2 | |
“Agreement” shall mean this Agreement (together with any
exhibits and schedules hereto), as the same may be modified, amended or
supplemented from time to time.
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1.3 | |
“Business Portfolios” shall mean those materials approved by
NSI for supply by NSMY in conjunction with the execution of a distributor
contract to NSI Independent Distributors in the Territory explaining the NSI
independent business opportunity associated with retailing Products, the
contractual relationship with NSI and the marketing support programs for the
Territory.
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1.4 | | "GAAP"
shall mean general accepted accounting principles in the Federation of Malaysia.
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1.5 | | "Independent
Distributor Network" shall mean the network of all NSI Independent Distributors.
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1.6 | | "Intercompany
Agreements" shall mean the License Agreement between the Parties, the Distribution
Agreement between NSMY and Nu Skin Enterprises Hong Kong, Inc. ("NSEHK"), the Management
Services Agreement between NSMY and Nu Skin International Management Group, Inc. and this
Agreement.
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1.7 | |
“Know-How” shall mean any information, including, without
limitation, any commercial or business information, lists, marketing methods,
marketing surveys, processes, specifications, quality control reports, drawings,
photographs, or any other information owned by NSI, relating to the Independent
Distributor Network, NSI Independent Distributors, the NSI distributor lists,
and the NSI sales compensation plan.
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1.8 | |
“Licensed Marks and Names” shall mean those trademarks, service
marks, tradenames, logos, marks or devices identified in Schedule A to this
Agreement, as it may be modified and supplemented from time-to-time, whether or
not such marks, names or devices are registered or unregistered.
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1.9 | |
“Net Sales” shall mean, for any period, the aggregate gross
sales of NSMY Products and NSMY Commercial Materials (excluding applicable sales
and other consumption taxes and freight charges) less returns or refunds related
to NSMY Products and NSMY Commercial Materials reasonably accepted and credited
by NSMY during such period, all as determined in accordance with GAAP.
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1.10 | |
“NSI Confidential Information” shall mean any and all
information that is unique, proprietary or competitively sensitive to the
business of NSI and/or any Affiliate of NSI which NSMY may obtain knowledge of
or access to in connection with its relationship with NSI and the transactions
contemplated by the Intercompany Agreements, including, but not limited to,
information relating to Products, the NSI Independent Distributors, NSI’s
compensation or commission systems or schemes, pricing methods, historical,
current and projected financial information, marketing information, and any and
all information, technical data or Know-How related to any aspect of NSI’s
business or technology including data, know-how, formulae, designs, drawings,
proposals, specifications, and the terms of this Agreement.
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1.11 | | “NSI Independent Distributor” shall mean a person or
business entity authorized by contract with NSI to distribute, as an independent
contractor, products of NSI and its Affiliates.
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1.12 | |
“NSMY Confidential Information” shall mean any and all
information that is unique, proprietary or competitively sensitive to the
business of NSMY which NSI may gain knowledge of or access to in connection with
the transaction contemplated hereunder but specifically excluding the NSI
Confidential Information.
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1.13 | |
“NSMY Commercial Materials” shall mean, without
limitation, any of the following bearing a Licensed Xxxx and Name: any business
marquis, sign, letterhead, business card, pamphlet, brochure, magazine, flyer,
newsletter, sales aid, advertisement or other associated tangible materials
which NSMY uses in its activities with the Independent Distributor Network or
the public to enhance its image and competitiveness in the Territory and which
NSMY has not purchased from or procured through NSI or NSEHK. NSMY Commercial
Materials shall not, for the purposes of this Agreement, include Business
Portfolios.
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1.14 | |
“NSMY Product” shall mean any product or services bearing a
Licensed Xxxx and Name in accordance with the terms of this Agreement that NSMY
has not purchased or procured from or through NSI or its Affiliates including
NSEHK. Products shall not, for the purposes of this Agreement, include Business
Portfolios.
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1.15 | |
“Royalty” shall mean the royalty
payable under this Agreement as set forth in Section 2.5 of Article II
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1.16 | | "Territory"
shall mean the Federation of Malaysia.
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| NSI
hereby grants to NSMY a license and right to use, in accordance with this Agreement and in
the Territory, the Licensed Marks and Names on the NSMY Products approved in advance in
writing by NSI, on Business Portfolios and NSMY Commercial Materials and also, in the case
of the trademark, “Nu Skin”, in the corporate name of NSMY.
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2.2 | NSI’s
Interest in Licensed Marks and Names
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| Except
for the limited rights granted by this Agreement for the term of this Agreement, NSI
hereby retains legal title to and beneficial ownership of and all rights to the Licensed
Marks and Names and all intellectual property rights related thereto for all purposes,
including but not limited to, the bringing or defending of any legal action in the
Territory which NSI deems reasonable to protect its rights therein. NSMY agrees to assist
NSI in any manner to protect NSI’s rights in the Licensed Marks and Names which NSI
may reasonably request. NSI shall reimburse NSMY for any third party costs incurred by
NSMY in providing such assistance.
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2.3 | NSMY’s
Acknowledgment of Value of Licensed Marks and Names
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| NSMY
recognizes and agrees that NSI has expended considerable time, effort and resources to
develop, register, apply for registrations, maintain and enhance the value and reputation
of, or to obtain licenses to use and to grant sub-licenses to use, the Licensed Marks and
Names.
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| NSMY
further recognizes and agrees that it will derive considerable benefit from its use of the
Licensed Marks and Names in the Territory and from NSI’s efforts and expenditures in
respect of the Licensed Marks and Names.
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| NSI
hereby represents and warrants that it is the sole and exclusive owner of the Licensed
Marks and Names, or has a valid license to use the Licensed Marks and Names in the
Territory, and that to the best of its knowledge and information, no claim exists or has
been made contesting NSI’s ownership of and title to, or right to use, the Licensed
Marks and Names.
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| As
compensation for the exclusive licenses granted pursuant to the terms of this Agreement,
NSMY shall pay to NSI a royalty equal to fourteen percent (14%) (or as otherwise mutually
agreed upon in writing by the Parties) of the Net Sales during the entire term of this
Agreement. If any of the NSMY Products or NSMY Commercial Materials are based on or
contain NSI proprietary information, formulas or ingredients of NSI, the applicable
royalty shall be eighteen percent (18%) of Net Sales for such NSMY Products or NSMY
Commercial Materials, or as otherwise mutually agreed upon in writing by the Parties.
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3.1(a) | |
Within thirty (30) days from the close of each month, NSMY shall deliver to NSI, by
electronic transmission or such other medium as the Parties shall agree upon from time to
time, a statement of its Net Sales and a computation of the Royalty payable hereunder on
such Net Sales. Concurrently with the delivery of such statement, NSMY shall make payment,
in accordance with Section 3.3 of Article III hereof, of such Royalty less such
withholding tax as may be chargeable on such Royalty.
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3.1(b) | |
For purposes of computing the Royalty payable hereunder, NSMY Products and NSMY Commercial
Materials shall be considered sold when recognized for accounting purposes as a sale by
NSMY in accordance with GAAP.
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| NSMY
shall keep complete and accurate records of its activities under this Agreement and permit
NSI and its authorized representatives (including auditors) to inspect and, if required by
NSI, to audit such records at all reasonable times.
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| All
amounts payable by NSMY to NSI under this Agreement shall be calculated and invoiced in
Ringgit but shall be paid in U.S. Dollars. For the purposes of such payment, amounts
stated in Ringgit shall be converted on the date payment is initiated at the selling rate
for US Dollars published on such date by such financial institution as is approved by NSI
in writing from time to time. Payments shall be made either directly to NSI in immediately
available funds by wire transfer to an account designated by NSI, or by such other means
of payment acceptable to NSI from time to time.
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| If
NSMY shall be prevented by exchange regulation or restraint from making payment of any sum
due to NSI in U.S. Dollars then NSMY shall make payment in such other currency as may be
selected by NSI and be permitted by exchange regulations.
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| Without
limiting or prejudice to any of NSI’s other rights and remedies under this Agreement:
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| 3.5(a) | an
amount due and outstanding under the terms of this Agreement and not paid within sixty
(60) days from the date on which such
amount is due ands payable in accordance with the payment provisions herein,
shall bear interest (both before and after judgment) at the rate of ten percent
(10%) per annum from the due date and until the date of actual payment; and
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3.5(b) | |
NSI may (but shall not be obligated to) waive, whether with conditions or otherwise, its
right to the payment of interest payable pursuant to Section 3.5(a) of Article III hereof,
whether in respect of all or some of the monies due and payable from time-to-time by NSMY
to NSI and for such period as NSI deems appropriate in its absolute discretion.
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3.5(c) | |
Interest shall accrue daily and be calculated on the basis of a three hundred sixty (360)
day year and the actual number of days elapsed in any partial calendar month.
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| NSMY
shall make due payments to the Inland Revenue Board, Malaysia, of such withholding tax (if
any) as may be chargeable on and deducted from the royalty and any interest thereon
payable hereunder. NSMY shall furnish to NSI within fourteen (14) days of each payment, a
copy of the prescribed form for such payment and NSMY’s letter to the Inland Revenue
Board accompanying such payment.
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| Subject
to the provisions of Section 3.6 of Article III hereof, all sums payable by NSMY to NSI
under this Agreement shall be paid without any set-off, counter-claim, qualification or
condition whatsoever.
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| NSMY may
use the Licensed Marks and Names only in accordance with the terms of this Agreement.
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4.1(a) | |
The use of the NSI Trademark, “Nu Skin”, in NSMY’s corporate name in any
manner other than that in which it is used as at the date of this Agreement shall be
subject to NSI’s prior written consent which may be withheld or granted with or
without conditions at NSI’s absolute discretion.
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4.1(b) | |
All NSMY Products and NSMY Commercial Materials shall be approved by NSI and shall be
manufactured and produced in accordance with standards, specifications and instructions
approved by NSI;
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4.1(c) | |
NSI shall have the right to inspect the premises of NSMY and those of any of NSMY’s
subcontractors at which NSMY Product(s) are being manufactured, at reasonable times, and
also to receive samples of such NSMY Product(s), in accordance with a reasonable schedule
to be established promptly between NSI and NSMY;
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4.1(d) | |
NSMY shall correct, as promptly as possible, any defects in the NSMY Product(s)
and/or the manufacturing processes therefor brought to NSMY’s attention by NSI or
otherwise; and,
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4.1(e) | |
NSMY shall submit to NSI for prior approval, which approval will not be unreasonably
withheld, labels, packaging, advertising and promotional materials, in relation to which
any of the Licensed Marks and Names are proposed to be used, including the marking legends
intended to be used in relation thereto.
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4.1(f) | |
NSMY accepts full liability in every respect for all such NSMY Products and NSMY
Commercial Materials as are manufactured or produced and sold and/or distributed by NSMY.
Except where such claims are attributable to NSI’s wrongful act, willful default or
gross negligence, NSMY shall indemnify and hold NSI harmless against any and all claims
for damages, costs and interests arising directly or indirectly from the manufacture,
production, sale and/or distribution of the NSMY Products and NSMY Commercial Materials.
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| NSMY
shall make no modification to the Licensed Marks and Names without the express, prior
written consent of NSI, which consent may be withheld or granted with or without
conditions as NSI deems appropriate at its absolute discretion.
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| NSMY
shall not use the Licensed Marks and Names in any way that will prejudice NSI’s
rights therein. Without limiting the foregoing, NSMY shall not attempt to vary or cancel
any registration of the Licensed Marks and Names, shall not hold itself out as or
represent it is the owner of the Licensed Marks and Names, or assist any other person in
any of the foregoing. NSMY shall not alter in any way the Licensed Marks and Names and
shall not combine the Licensed Marks and Names with any intellectual property of NSMY in a
manner that could create joint rights in the Licensed Marks and Names.
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| At
the request of NSI, NSMY Products or NSMY Commercial Materials that bear any of the
Licensed Marks and Names shall also clearly indicate NSI’s ownership of the Licensed
Marks and Names in such manner as shall be approved by NSI.
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| All
goodwill generated by use of the Licensed Marks and Names shall inure to NSI, and, upon
termination of this Agreement, NSMY shall not have any claim against NSI for compensation
for loss of distribution rights, loss of goodwill or any similar loss or in respect of any
benefit (if any) derived by NSI from the use of the Licensed Marks and Names.
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| NSMY
shall not export any NSMY Products to any country outside the Territory without the prior
written consent of NSI, which consent may be withheld or granted with or without
conditions as NSI deems appropriate at its absolute discretion.
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| Except
for the Licensed Marks and Names, NSMY shall not have the right to use, and expressly
agrees not to use, any trademarks, service marks, trade names, logos, marks or devices
owned, used or licensed by NSI or an Affiliate of NSI, or which NSI or an Affiliate of NSI
has the bona fide intent to use, whether or not such marks, names or devices are
registered or unregistered.
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This Agreement shall commence and take effect on September 28,
2001, and the initial term shall end on December 31, 2004 unless earlier
terminated pursuant to the provisions of Article VI of this Agreement. This
Agreement shall renew automatically for successive one (1) year terms upon
expiration of the initial term or any renewal term unless terminated by either
Party by written notice given not less than (90) days prior to the end of the
then current term of this Agreement or in accordance with the provisions of
Article VI hereof.
| This
Agreement may be terminated by either Party immediately or at any time after the
occurrence of any of the following events:
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6.1(a) | | the
other Party shall commence any case, proceeding or other action:
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| (i)
| under any existing or future law of any jurisdiction, domestic or foreign, relating to
bankruptcy, insolvency, reorganization or relief of debtors, seeking to have an order for
relief entered with respect to it, or seeking to adjudicate it a bankrupt or insolvent,
or seeking reorganization, arrangement, adjustment, winding-up, liquidation, dissolution,
compensation or other relief with respect to it or its debts, or
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| (ii) | seeking
appointment of a receiver, trustee, custodian or other similar action; or
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6.1(b) | |
there shall be commenced against the other Party any case, proceeding or other action of a
nature referred to in Section 6.1(a) of Article VI hereof which either results in the
entry of an order for relief or any such adjudication or appointment or remains
undismissed, undischarged or unbonded for a period of ninety (90) days.
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6.1(c) | |
if the other Party causes or allows a judgment in excess of ten percent (10%) of its
assets as reflected on its most recent balance sheet to be entered against it or
involuntarily allows a lien, security interest, or other encumbrance to attach to its
assets which secures an amount in excess of ten percent (10%) of its assets.
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6.2(a) | |
This Agreement may be terminated immediately by NSI if NSMY fails to pay on any due date
any monies payable hereunder by NSMY to NSI, and such failure continues for a period of
thirty (30) days from NSMY’s receipt of a written notice given by NSI requiring such
payment.
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6.2(b) | |
This Agreement may be terminated by either Party, if the other Party is in default in the
performance of any material obligation hereunder (other than NSMY’s obligation to pay
the monies referred to in Section 6.2(a)), and such default has not been cured within
sixty (60) days after receipt by the defaulting Party of written notice of such default
served by the other Party requiring such cure.
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This Agreement may be terminated
by NSI if:
6.3(a) | | any
of the parties (other than Nu Skin Enterprises, Inc.) to the Shareholders Agreement by
and between Nu Skin Enterprises, Inc. and the other shareholders of Nu Skin Malaysia
Holdings Sdn. Bhd (Company No. 552189-P) ("NSMH"), the parent/holding company of NSMY,
breaches such party's obligations thereunder and fails to cure such breach within thirty
(30) days after its receipt of a written notice of such breach is given by Nu Skin
Enterprises, Inc. requiring such cure;
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6.3(b) | | the
aforesaid Shareholders Agreement or any other(s) of the Intercompany Agreements is/are
terminated for any reason whatsoever;
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6.3(c) | |
by agreement between the parties to the aforesaid Shareholders Agreement, all of the
issued shares in NSMY are sold by NSMH to a third party or NSMY’s business and assets
are sold by NSMY to a third party;
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6.3(d) | | Nu
Skin Enterprises, Inc., NSI or other Affiliate of NSI ceases to hold directly or
indirectly, an equity interest of at least thirty percent (30%) in NSMY; or
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6.3(e) | |
persons representing from time-to-time such of Nu Skin Enterprises,
Inc., NSI or other Affiliates of NSI as is/are the holder(s) of an indirect thirty percent
(30%) equity interest in NSMY, cease (for any reason other than their removal by such
holder of an indirect thirty percent (30%) equity interest in NSMY) to hold office such
that the number of directors of NSMY representing Nu Skin Enterprises, Inc., NSI or other
Affiliates constitute less than thirty percent (30%) of the total number of NSMY’s
Board of Directors.
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| NSI
shall have the right to terminate this Agreement in the event any license, government
approval, or corporate authorization necessary to conduct the business in the Territory as
contemplated by the Parties and the Intercompany Agreements is terminated, not obtained or
renewed, or otherwise expires.
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If this Agreement is terminated by
either Party, NSMY shall:
7.1(a) | |
change its corporate name to one which does not include NSI’s Trademark “Nu
Skin” within ninety (90) days from the date of termination;
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7.1(b) | |
notwithstanding any other provision to the contrary herein, immediately pay all monies
then remaining unpaid and payable by NSMY to NSI and whether or not such monies shall then
have become due for payment;
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7.1(c) | |
destroy all NSMY Products and NSMY Commercial Materials bearing the Licensed Marks and
Names within forty-five (45) days from the date of termination, or repackage or modify
such NSMY Materials so that the Licensed Marks and Names are no longer contained on or in
such NSMY Products or NSMY Commercial Materials;
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7.1(d) | |
immediately discontinue use of the Licensed Marks and Name in any form and not adopt in
place thereof any word or design that is identical therewith or confusingly similar
thereto; and
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7.1(e) | |
immediately return to NSI, without retaining copies, all manuals, drawings, and standards
and any other documents and materials provided by NSI to NSMY relating to the use of the
Licensed Marks and Names.
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| The
termination or expiration of this Agreement shall be without prejudice to the rights and
remedies of a Party in respect of any antecedent breach of this Agreement. The obligations
of a Party to pay any sums which are due and payable as of the expiration or termination
of this Agreement and its obligations under Article IX and under Article X hereof shall
survive the expiration or termination of this Agreement.
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| Upon
termination of this Agreement by NSI, all rights and licenses herein granted to NSMY shall
immediately cease and shall revert to NSI, and NSMY shall cease representing to any third
party that it has any right to use the Licensed Marks and Names.
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ARTICLE VIII
GOVERNMENTAL APPROVALS, LAWS AND REGULATIONS
8.1 | Regulatory
Approvals and Filings
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| NSMY
agrees to obtain, or cause to be obtained, at its sole cost and expense, any governmental
approval and make, or cause to be made, any filings or notifications required under all
applicable laws, regulations and ordinances of the Territory to enable this Agreement to
become effective or to enable any payment pursuant to the provisions of this Agreement to
be made. NSMY agrees to keep NSI informed of the progress in obtaining all such government
approvals. NSMY agrees to cooperate with NSI and to take such actions as NSI shall
reasonably request in order to obtain such approvals.
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| Each
Party agrees to refrain from any action that will cause the other party to be in violation
of any applicable law, regulation, or ordinance of the Territory or the United States or
elsewhere or any international convention or bilateral or multilateral treaty to which the
Territory or the United States is a signatory, including, without limitation, the U.S.
Foreign Corrupt Practices Act of 1977, the U.S. Export Control Laws, and the U.S.
Anti-Boycott laws.
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| NSI
hereby represents and warrants that to the best of its knowledge, as of the date hereof,
there are no infringement or misappropriation suits pending or filed or threatened against
NSI within the Territory that relate to the Licensed Marks and Names and NSI is not
presently aware of any such infringement or misappropriation.
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| NSI
shall indemnify and hold NSMY harmless from and against all claims, actions, suits,
proceedings, losses, liabilities, costs, damages and attorneys’ fees in respect of a
third party claim alleging infringement or misappropriation by NSMY in respect of its use
of the Licensed Marks and Names in the Territory; provided that NSMY shall give NSI
prompt written notice of any such claim, action, suit or proceeding and, without limiting
the generality of Section 2.2 of Article II hereof, shall cooperate with NSI in the
defense of any such claim, action, suit or proceeding. Notwithstanding the foregoing, NSI
shall have no obligation to indemnify NSMY for any liabilities arising out of NSMY’s
failure or the failure of the NSI Independent Distributors in the Territory to utilize the
Licensed Marks and Names
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| 9.2(a) | in
the manner for which the Licensed Marks and Names are reasonably intended,
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| 9.2(b) | in
compliance with NSI's policies and procedures or
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| 9.2(c) | as
contemplated by the Intercompany Agreements.
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| NSI shall have the right to select
counsel in any such claim, action, suit or proceeding.
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| In
the event that any such claim, action, suit or proceeding is successful, NSI shall use
reasonable efforts to make such changes in the Licensed Marks and Names to permit NSMY to
continue to use of the Licensed Marks and Names free and clear of all infringement and
misappropriation.
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| NSMY
shall give NSI prompt written notice of any infringement or misappropriation of the
Licensed Marks and Names by any third party.
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| NSI
shall have the sole right to initiate any and all legal proceedings against any such third
party and, without limiting the generality of Section 2.2 of Article II hereof, NSMY shall
cooperate with NSI in the pursuit of any such proceeding. NSI shall retain any damage
award obtained from such third party.
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ARTICLE X
CONFIDENTIALITY
| NSMY
agrees that, during and after the term of this Agreement, NSMY shall maintain in
confidence all NSI Confidential Information and shall not disclose any NSI Confidential
Information to any third party or use any NSI Confidential Information for any purpose
whatsoever except as contemplated by this Agreement. In maintaining the confidentiality of
NSI Confidential Information, NSMY shall exercise the same degree of care that it
exercises with its own confidential information, and in no event less than a reasonable
degree of care. NSMY shall , without limiting its obligation to maintain the NSI
Confidential Information in confidence, use commercially reasonable efforts to ensure that
each of its employees and contractors holds in confidence and makes no use of any NSI
Confidential Information for any purpose other than those permitted by this Agreement.
NSMY shall use its best efforts to ensure that no person other than its employees shall
have access to NSI Confidential Information without the prior written consent of Nu Skin,
and shall restrict access to NSI Confidential Information to those having a need for
access thereto.
|
| NSI
agrees that, during and after the term of this Agreement, NSI shall maintain in confidence
all NSMY Confidential Information and shall not disclose any NSMY Confidential Information
to any third party or use any NSMY Confidential Information for any purpose whatsoever
except as contemplated by this Agreement. In maintaining the confidentiality of NSMY
Confidential Information, NSI shall exercise the same degree of care that it exercises
with its own confidential information, and in no event less than a reasonable degree of
care. Without limiting its obligation to maintain the NSMY Confidential Information in
confidence, NSI shall use commercially reasonable efforts to ensure that each of its
employees and contractors holds in confidence and makes no use of any NSMY Confidential
Information for any purpose other than those permitted by this Agreement. NSI shall use
its best efforts to ensure that no person other than its employees and contractors shall
have access to NSMY Confidential Information without the prior written consent of NSMY,
and shall restrict access to NSMY Confidential Information to those employees and
contractors having a need for access thereto.
|
| The
obligation of confidentiality contained in this Agreement shall not apply to the extent
that (i) either party is required to disclose information by order or regulation of a
governmental agency or a court of competent jurisdiction, provided, however,
that such party shall not, to the extent possible, make any such disclosure without first
notifying the disclosing party and allowing the disclosing party a reasonable opportunity
to seek injunctive relief from (or a protective order with respect to) the obligation to
make such disclosure, or (ii) the party receiving disclosed information can demonstrate
that (A) the disclosed information was at the time of such disclosure already in, or
subsequently becomes part of, the public domain other than as a result of actions of the
receiving party, its affiliates, employees, consultants, agents or subcontractors in
violation hereof; (B) the disclosed information was received by the receiving party on an
unrestricted basis from a source unrelated to the disclosing party provided the receiving
party has no knowledge or reason to know that such party is under a duty of
confidentiality with respect to such information.
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| Each
Party acknowledges and confirms that the Confidential Information of the other Party
constitutes valuable proprietary information and trade secrets of the other Party and that
the unauthorized use, loss or outside disclosure of such information shall cause
irreparable injury to the other Party. Each Party shall notify the other Party immediately
upon discovery of any unauthorized use or disclosure of Confidential Information of the
other Party, and will cooperate with the other Party in every reasonable way to help
regain possession of such information and to prevent its further unauthorized use. Each
Party acknowledges that monetary damages may not be a sufficient remedy for unauthorized
disclosure of the Confidential Information of the other Party and that the other Party
shall be entitled, without waiving other rights or remedies, to such injunctive or
equitable relief as may be deemed proper by a court of competent jurisdiction, and shall
be entitled to recover reasonable attorneys’ fees for any action arising out of or
relating to a disclosure of such Confidential Information.
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| NSMY
shall, upon the request of NSI, return to NSI all NSI Confidential Information, including
any copies or reproductions thereof, in NSMY’s possession or control.
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The relationship of NSMY and NSI shall be and at all times
remain, respectively, that of Licensee and Licensor. Nothing contained or
implied in this Agreement shall be construed to constitute either Party as the
legal representative or agent of the other or to constitute or construe the
Parties as partners, joint ventures, co-owners or otherwise as participants in a
joint or common undertaking. Neither Party is authorized to conclude any
contract or agreement or make any commitment, representation or warranty that
binds the other or otherwise act in the name of or on behalf of the other Party.
| NSI
shall use its best efforts to maintain the registrations of the Licensed Marks and Names
currently registered in the Territory as set forth in Schedule A hereto. NSI, in its sole
discretion, shall have the right to record this Agreement or proof thereof, and to enter
NSMY as a registered user in the Territory. NSMY agrees to cooperate, as reasonably
requested by NSI, in arranging for such recordings or entries, or in or canceling such
recordings or entries in the event of amendments to or termination of this Agreement for
any reason.
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| Upon
the expiration or the termination for any reason of this Agreement, the Parties shall do
everything necessary to effect cancellation of the record of NSMY as a registered user of
the NSI Trademarks in the Territory.
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| NSMY
shall not dispute NSI’s rights, title or interest in or the validity of NSI’s
rights to the Licensed Marks and Names or use, register or apply for the registration of
any tradenames, words, marks, get ups or designs which are identical with or similar to
the Licensed Marks and Names.
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| At
the request of NSMY, NSI shall file applications in the Territory for the registration of
all new NSI Trademarks that NSMY intends to use in the Territory that have been approved
by NSI and included as a Licensed Xxxx through amendment to the Schedule of Licensed Marks
and Names. If any xxxx used by NSI in the United States of America with respect to certain
Products is used by NSMY in the Territory in relation to similar Products, then, whether
or not the xxxx is registered in the Territory, NSMY shall not claim any proprietary
interest in any such NSI marks. If any of such marks are immediately registrable in the
Territory, NSMY will cooperate with NSI in filing an application for registration of the
marks in the name of NSI. If any such marks are not immediately capable of registration
because they lack distinctiveness, then at any time when in the opinion of legal counsel
for NSI the use of the marks by NSMY has conferred on them sufficient distinctiveness to
permit registration in the Territory, NSMY shall, when requested by NSI, do all things
necessary and execute all documents required to register such marks in the Territory and
assign the eventual registrations to NSI who shall reimburse NSMY for the cost of
registration and assignment, but shall not be obligated to make any other payment in
consideration for the assignment.
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| This
Agreement shall be binding on and inure to the benefit of the respective successors,
assigns and beneficiaries of the Parties; provided that neither Party may assign this
Agreement or any rights or obligations hereunder, whether by operation of law or
otherwise, without the prior written consent of the other Party, which consent may be
withheld or granted with or without conditions at the sole discretion of such other Party.
Any attempted assignment without requisite written consent shall be void and
unenforceable. Notwithstanding the foregoing, NSI may assign this Agreement to any of its
Affiliates.
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| A
Party shall not be responsible for failure to perform hereunder due to force majeure,
which shall include, but not be limited to: fires, floods, riots, strikes, labor disputes,
freight embargoes or transportation delays, shortage of labor, inability to secure fuel,
material, supplies, equipment or power at reasonable prices or on account of shortage
thereof, acts of God or of the public enemy, war, terrorist activities or civil
disturbances, any existing or future laws, rules, regulations or acts of any government
(including any orders, rules or regulations issued by any official or agency or such
government) affecting such Party that would delay or prohibit performance hereunder, or
any cause beyond the reasonable control of a party. If an event of force majeure should
occur, the affected Party shall promptly give notice thereof to the other Party and such
affected Party shall use its reasonable best efforts to cure or correct any such event of
force majeure.
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| This
Agreement shall be governed by and construed in accordance with the laws of the State of
Utah, applicable to contracts made and to be wholly performed within such State.
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| Any
dispute or difference which may arise between the Parties at any time hereafter, whether
during the continuance in force of this Agreement or upon or after its termination,
touching any matter or thing herein contained or the operation or construction of this
Agreement or any matter or thing in any way connected with, arising from or in relation to
this Agreement or the rights, duties or liabilities of the Parties hereunder shall be
finally settled by arbitration in accordance with International Arbitration Rules of the
American Arbitration (“AAA”).
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| 13.4(a) | A
reference to arbitration shall be to three (3) arbitrators.
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| 13.4(b) | The
arbitration shall be held in Provo, State of Utah, United States of America, at the
Regional Center and the language to be used in the arbitral proceedings shall be English.
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| 13.4(c) | Pending
the commencement of the arbitral proceedings, either Party may apply, to the courts in
Utah and/or Malaysia (which shall have non-exclusive jurisdiction) for the grant of
interim injunctions and orders for the protection and preservation of property subject of
or relating to this Agreement. For the purposes of this Section 13.4(c) and as provided
in the Arbitration Rules of the AAA, arbitral proceedings shall be deemed to commence on
the date when the administrator of the AAA receives notice of arbitration from the Party
initiating the arbitration.
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| No
waiver by either party of any breach or default in performance by the other party, and no
failure, refusal or neglect of either party to exercise any right, power or option given
to it hereunder or to insist upon strict compliance with or performance of the other
party’s obligations under this Agreement, shall constitute a waiver of the provisions
of this Agreement with respect to any subsequent breach thereof or a waiver by either
party of its right at any time thereafter to require exact and strict compliance with the
provisions thereof.
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| A
notice, request and other communication hereunder shall be in writing and shall be deemed
to have been duly given, if delivered by hand, courier or registered airmail, or
communicated by facsimile, cable or similar electronic means to the address, facsimile
number or cable identification number provided below (or as changed in accordance with
this Section 13.6) of the Party to whom it is addressed and shall be deemed to be given if
delivered by hand or courier, at the time of delivery or if communicated by facsimile,
cable or similar electronic means, at the time that receipt thereof has been confirmed by
return electronic communication or signal that the message has been received, or if
mailed, ten (10) days after dispatch by registered airmail, postage prepaid:-
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| If to MSMY: | Nu Skin (Malaysia) Sdn. Bhd.
Office Xxx 00-00, Xxxxx 0
XXX Xxxxx Xxxx Retail
Xx. 00, Xxxxx Xxxxxx
00000 Xxxxx Xxxxxx
Xxxxxxxx
Attn: Managing Director
Facsimile: 603-2170 7799
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| If to NSI: | Nu Skin International, Inc.
00 Xxxx Xxxxxx Xxxxxx
Xxxxx, Xxxx 00000
Xxxxxx Xxxxxx of America
Attn: General Counsel
Facsimile Number: (000)000-0000
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| Either
Party may change its facsimile number, cable identification number or address by a notice
given to the other Party in the manner set forth above.
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| This
Agreement constitutes the entire agreement between the Parties relating to the subject
matter hereof and supersedes all prior or contemporaneous negotiations, representations,
agreements and understandings (both oral and written) of the Parties.
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| No
supplement, modification or amendment of this Agreement shall be binding unless it is in
writing and executed by both of the Parties.
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| To
the extent that any provision of this Agreement is (or in the opinion of counsel mutually
acceptable to both Parties would be) prohibited, judicially invalidated or otherwise
rendered unenforceable in any jurisdiction, such provision shall be deemed ineffective
only to the extent of such prohibition, invalidation or unenforceability in that
jurisdiction, and only within that jurisdiction. Any prohibited, judicially invalidated or
unenforceable provision of this Agreement will not invalidate or render unenforceable any
other provision of this Agreement, nor will such provision of this Agreement be
invalidated or rendered unenforceable in any other jurisdiction.
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| This
Agreement may be executed in one or more counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same instrument. All
headings and captions are inserted for convenience of reference only and shall not affect
the meaning or interpretation of any provision hereof.
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IN WITNESS WHEREOF, the Parties have by their
respective duly authorized representatives executed this Agreement as of the day
and year first-above written.
NU SKIN INTERNATIONAL, INC.
By: /s/ Xxxxxx Xxxx
Name: Xxxxxx Xxxx
Its: Executive Vice President
NU SKIN (MALAYSIA) SDN. BHD.
By: /s/ Datuk Mohd Nadzmi Bin Mohd Salleh
Name: Datuk Mohd Nadzmi Bin Mohd Salleh
Its: Director