Exhibit 10.3
LICENSE AGREEMENT
LICENSE AGREEMENT, dated as of June 16 , 1999 (the "License
Agreement"), by and between Consorcio G Grupo Xxxx, S.A. de C.V., a corporation
organized under the laws of the United Mexican States ("Licensor"), and MCII
Holdings (USA), Inc., a Delaware corporation ("Licensee").
W I T N E S S E T H
WHEREAS, Licensor is the owner of the trademark, trade name
and service xxxx "Xxxx", including the registrations therefor, set forth on
SCHEDULE A hereto (the "Name");
WHEREAS, Licensor is the owner of the Patents (as hereinafter
defined);
WHEREAS, the Licensor has been utilizing the Name and the
Patents in connection with the Business (as hereinafter defined);
WHEREAS, pursuant to the Investment Agreement (the "Investment
Agreement") dated as of June 11, 1999 by and among Xxxxxx Xxxxxxxxxx & Levy Fund
III, L.P. ("JLL"), CIBC WG Argosy Merchant Fund 2, L.L.C. ("CIBC Argosy"),
Co-Investment Merchant Fund 3, LLC ("CMF") and Licensor, JLL, CIBC Argosy and
CMF, among other things, purchased certain securities of the Licensee (the
"Investment") and, simultaneously therewith, the Licensee repurchased from
Licensor certain outstanding securities of the Licensee owned by the Licensor;
WHEREAS, pursuant to the Investment Agreement, Licensor agreed
to grant to Licensee a license to utilize the Name and the Patent in connection
with the Business upon the terms and subject to the conditions hereinafter set
forth.
NOW, THEREFORE, in consideration of the foregoing and of the
representations, warranties, covenants, agreements and conditions contained
herein, and intending to be legally bound hereby, the parties agree as set forth
below.
1. DEFINITIONS.
All capitalized terms used herein and not otherwise defined
herein shall have the meanings ascribed to such terms in the Investment
Agreement.
2. GRANT OF LICENSES.
(a) Upon the terms and subject to the conditions
set forth herein, Licensor hereby grants to Licensee a perpetual, exclusive
and royalty-free right and license in each of the United States of America,
Mexico, Canada, Argentina and Brazil (collectively, the "Territory") and in
each other jurisdiction in which the Licensor has or acquires the right to
use the Name, with right of sublicense to affiliates, to use the Name in
connection with the Business; PROVIDED, HOWEVER, that in the event of a sale
of Licensee to a competitor of Xxxx Camiones, S.A. de C.V., the right to use
the Name in connection with the operation of the Business in Mexico shall
terminate.
(b) Upon the terms and subject to the conditions set
forth herein, Licensor hereby grants to Licensee a perpetual, exclusive and
royalty-free right and license, with right of sublicense to affiliates, to make,
use, offer to sell or sell any patented invention or import any patented
invention during the term therefor as set forth on SCHEDULE B, including any
continuation, divisional, reissue or continuation in part thereof (the
"Patents") in each of the United States and Canada, and in each other
jurisdiction in which the Licensor has or acquires rights to the Patents.
(c) Upon the request of Licensee, Licensor shall use
commercially reasonable efforts to register the Name and/or the Patents in each
jurisdiction identified by the Licensee.
3. USE OF NAME.
Licensee shall use the Name in substantially the same form and
manner that the Name currently is used in connection with the Business. Licensee
undertakes to comply with all laws, rules and regulations pertaining to the use
of the Name, and agrees to apply appropriate statutory notice of registration
where applicable. In the event Licensee desires to use the Name in a
substantially different form or manner than the Name is currently used in
connection with the Business, Licensee may request Licensor's consent to such
use, which consent shall not be unreasonably withheld or delayed.
4. INFRINGEMENT AND MAINTENANCE.
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Licensee shall notify Licensor of any threatened or actual
unauthorized use, infringement or dilution of the Name or the Patents which may
come to Licensee's attention. Licensor shall have the sole initial right to
determine whether or not any action shall be taken with respect to such
unauthorized use, infringement or dilution, and the nature of the action to be
taken. In the event that Licensor determines that litigation should not be
commenced, or Licensor fails to commence litigation within a reasonable time
after notice by Licensee, Licensee or any sublicensee may commence, but shall
not be obligated to commence, such litigation. Each party agrees to cooperate
fully with the other in the conduct of any such litigation. Any recovery
obtained as a result of any lawsuit for infringement, unauthorized use or
dilution of the Name or the Patents shall belong to the party commencing such
action, net of reimbursement to the other party hereto for its reasonable
expenses, if any, incurred in connection with such suit.
5. OWNERSHIP.
(a) Licensor represents and warrants that it is
the owner of the Name in the Territory, and that it has the right to grant an
exclusive license in the Territory pursuant to Section 2(a) of this License
Agreement.
(b) Licensor represents and warrants that it is
the owner of the Patents, and that it has the right to grant an exclusive
license pursuant to Section 2(b) of this License Agreement.
(c) Licensee acknowledges that Licensor is the
owner of the Name and the Patents, that use of the Name or the Patents by
Licensee shall not create in Licensee's favor any ownership interest therein.
6. NOTICES.
All notices, requests, demands, waivers and other
communications required or permitted to be given under this License Agreement
shall be in writing and shall be deemed to have been duly given if delivered
personally, by mail (certified or registered mail, return receipt requested) or
by facsimile transmission (receipt of which is confirmed):
If to Licensee, to:
MCII Holdings (USA), Inc.
x/x Xxxxx Xxxxx Xxxxxxxxxx Xxxxxxxxxxxxx, Inc.
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00 Xxxx Xxxx Xxxx
Xxx Xxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Facsimile No.:(000) 000-0000
with a copy to:
Skadden, Arps, Slate, Xxxxxxx & Xxxx LLP
Xxx Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxxxx, Esq.
Facsimile No.: (000) 000-0000
If to Licensor, to:
Consorcio G Grupo Xxxx, S.A. de C.V.
Tlacoquemecatl Xx. 00
Xxxxxxx Xxx Xxxxx
00000, Xxxxxx D.F., Mexico
Attention: Xx. Xxxxxx Xxxxx Xxxxxx
Facsimile No.: 000-000-000-0000
with a copy to:
Winston & Xxxxxx
00 Xxxx Xxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: M. Xxxxxx Xxxxxx, Esq.
Facsimile No.: (000) 000-0000
or to such other person or address as any party shall specify by notice in
writing to the other party. All such notices, requests, demands, waivers and
communications shall be deemed to have been received on the date on which so
hand delivered, on the third business day following the date on which so mailed
and on the date on which faxed and confirmed, except for a notice of change of
address, which shall be effective only upon receipt thereof.
7. ENTIRE AGREEMENT.
This License Agreement, including SCHEDULES A and B hereto and
other documents referred to herein which form a part hereof, contain the entire
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understanding of the parties hereto with respect to its subject matter. This
License Agreement supersedes all prior agreements and understandings, oral and
written, with respect to its subject matter.
8. BINDING EFFECT; ASSIGNMENT.
This License Agreement and all of the provisions hereof shall
be binding upon and inure to the benefit of the parties hereto and their
respective heirs, executors, successors and permitted assigns, but, except as
contemplated herein, neither this License Agreement nor any of the rights,
interests or obligations hereunder shall be assigned, directly or indirectly, by
Licensor or Licensee without the prior written consent of the other party
hereto; PROVIDED, HOWEVER, that Licensee may assign this License Agreement, on
one or more occasions, to (a) any Affiliate of Licensee or (b) any lender or
other financing party of Licensee or any Affiliate of Licensee provided that no
such assignment shall release Licensee from any of its obligations hereunder.
9. COUNTERPARTS.
This License Agreement may be executed simultaneously in
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
10. INTERPRETATION.
The article and section headings contained in this License
Agreement are solely for the purpose of reference, are not part of the agreement
of the parties and shall not in any way affect the meaning or interpretation of
this License Agreement.
11. GOVERNING LAW.
This License Agreement shall be governed by the laws of the
State of New York, without regard to the principles of conflicts of law thereof.
The parties hereto waive their right to a jury trial with respect to disputes
hereunder; all such disputes shall be settled by binding arbitration pursuant to
the rules of the American Arbitration Association in New York, New York and the
order of such arbitrators shall be final and binding on all parties hereto and
may be entered as a judgment in a court having jurisdiction over the parties.
The Company and Xxxx hereby agree and consent to be subject to the jurisdiction
of the United States District Court for the Southern District of New York and
the jurisdiction of the courts of the State of New
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York located in the Borough of Manhattan in the City of New York
(collectively, the "Courts") in any suit, action or proceeding seeking to
enforce any provision of, or based on any matter arising out of or in
connection with, this Agreement or the transactions contemplated hereby. The
Company and Xxxx hereby irrevocably consent to the service of any and all
process in any such suit, action or proceeding by the delivery of such
process to such party at the address and in the manner provided in Section 6.
Xxxx has appointed The Corporation Trust Company, 0000 Xxxxxx Xxxxxx,
Xxxxxxxxxx, Xxxxxxxx 00000, as its authorized agent (the "Xxxx Authorized
Agent"), upon which process may be served in any suit, action or proceeding
based on this Agreement which may be instituted in any court, by the Company,
and Xxxx expressly accepts the jurisdiction of any such court in respect of
any such suit, action or proceeding. Such appointment shall be irrevocable.
Xxxx represents and warrants that the Xxxx Authorized Agent has agreed to act
as said agent for service of process, and Xxxx agrees to take any and all
action, including the filing of any and all documents and instruments, which
may be necessary to continue such appointment in full force and effect.
Service of process upon the Xxxx Authorized Agent and written notice of such
service to Xxxx shall be deemed, in every respect, effective service of
process upon Xxxx.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have executed this
License Agreement as of the day and year first above written.
MCII HOLDINGS (USA), INC.
By:
-------------------------------------
Name:
Title:
CONSORCIO G GRUPO XXXX, S.A. de C.V.
By:
-------------------------------------
Name:
Title:
SCHEDULE A
NAME
See attached.
A-1
SCHEDULE B
PATENTS
See attached.
B-1
