EXHIBIT 10.13
SWIFT TRANSITION TRADEMARK LICENSE AGREEMENT
(Swift and Swift Premium Trademarks)
THIS TRANSITION TRADEMARK LICENSE AGREEMENT ("Agreement") is entered
into on this 19th day of September, 2002 (the "Effective Date") between SWIFT
BRANDS COMPANY, a Delaware corporation ("Licensor") and CONAGRA FOODS, INC.
("Licensee").
WITNESSETH
WHEREAS, Licensor and Licensee have entered into a certain agreement
("Purchase Agreement"), pursuant to which Licensor has acquired certain business
assets related to the production, distribution, marketing, advertising and sale
of fresh beef, fresh pork and fresh lamb;
WHEREAS, under the terms and conditions of the Purchase Agreement,
Licensor acquired from Licensee, and certain affiliates of Licensee, certain
rights in the trademarks Swift, Swift Premium and other derivations of the
trademark Swift (the "Licensed Trademarks"); and
WHEREAS, Licensee desires to obtain a license from Licensor to use the
Licensed Trademarks in connection with the production, distribution, marketing,
advertising and sale of certain processed meat products as further specified in
this Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and mutual covenants
and agreements hereinafter contained, it is agreed as follows:
1. GRANT OF LICENSE
(a) Licensor hereby grants to Licensee (including Licensee's
Affiliates, as the term "Affiliates" is used in the Purchase Agreement), and
Licensee hereby accepts from Licensor, an exclusive (but not as to Licensor)
limited, license to use the Licensed Trademarks in connection with the
production, distribution, marketing, advertising and sale of those processed
meat products that Licensee (including Licensee's Affiliates) was selling under
the Licensed Trademarks as of the effective date of the Purchase Agreement
(collectively, the "Licensed Goods"), throughout the world, pursuant to the
terms and conditions of this Agreement.
(b) Licensee agrees that the foregoing license grant expressly
includes the right to continue the use of any corporate name, trade name or
other business designation incorporating the word "Swift" that was in use by
Licensee (including Licensee's Affiliates) as of the effective date of the
Purchase Agreement.
2. PAYMENT
Licensee shall not be required to pay any royalty or to make any other
payment to Licensor under the terms of this Agreement.
3. OWNERSHIP AND PROTECTION OF LICENSED TRADEMARKS
(a) Licensee acknowledges and agrees that Licensor is the
owner of all right, title and interest in the Licensed Trademarks, including all
goodwill associated therewith, subject only to the specific rights granted to
Licensee pursuant to this Agreement. All goodwill arising from Licensee's use of
the Licensed Trademarks will inure solely to the benefit of Licensor.
(b) Licensee shall promptly notify Licensor in writing of any
known or suspected infringements, imitations, or unauthorized uses of the
Licensed Trademarks by third parties. Licensor shall have the sole right and
discretion to institute actions against third parties for infringement of the
Licensed Trademarks. Licensor shall have the sole right to control any such
action instituted by it, including employment of counsel selected by Licensor.
Licensee shall cooperate with Licensor, at Licensor's expense, in connection
with any such action instituted by Licensor.
4. REQUIRED APPROVALS
(a) Licensor is aware of the Licensed Goods sold by Licensee
as of the Effective Date and such Licensed Goods are hereby approved for sale by
Licensee provided that such Licensed Goods continue to reflect the same high
level of quality as of the Effective Date, and such Licensed Goods conform with
all applicable laws and regulations, including but not limited to the
regulations of the United States Department of Agriculture and the United States
Food and Drug Administration, and the HACCP plans currently approved by the
USDA. Licensee may not produce, distribute, market, advertise or sell any
Licensed Goods which constitute a material departure from those Licensed Goods
sold by Licensee as of the Effective Date of this Agreement, without the prior
written approval of Licensor which approval may be withheld in the sole
discretion of Licensor.
(b) Licensor is aware of the labels, packaging, advertising
and promotional materials (collectively, the "Promotional Materials") used by
Licensee as of the Effective Date and such Promotional Materials are hereby
approved for use by Licensee provided that such Promotional Materials conform
with all applicable laws and regulations. Licensor agrees that Licensee may make
such modifications to the Promotional Materials as may be required, in the
reasonable discretion of Licensee, to preserve consumer recognition of Licensee
as the source of the Licensed Goods, as Licensee transitions from the Licensed
Trademarks to one or more new trademarks, and that such modifications do not
require the approval of Licensor. Without limiting the generality of the
foregoing, Licensee may change the logo style or trade dress used in connection
with the Licensed Trademarks and may add or remove such trademarks, logos,
graphics, design elements and trade dress as Licensee in its reasonable
discretion may select for the purpose of facilitating its transition to one or
more different trademarks. Licensee shall send
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one copy of every item of Promotional Material that is modified as described
above to Licensor for its review, but Licensor's approval shall not be required.
5. INSPECTIONS
Licensee acknowledges and agrees that Licensor shall have reasonable
access to all facilities in which any Licensed Goods are produced, packaged,
stored or otherwise handled, for the purpose of confirming Licensee's compliance
with the terms and conditions of this Agreement. In connection with such
inspections, Licensee shall provide Licensor with such samples of Licensed Goods
as Licensor may reasonably request. Unless Licensor has a reasonable basis for
believing that Licensee has violated the terms and conditions of this Agreement,
Licensor agrees that it will not seek access to such facilities more than one
time each in any twelve (12) month period and then only during regular business
hours, or such other times as the parties may mutually agree.
6. INSURANCE
(a) Licensee agrees to maintain the following insurance during
the term of this Agreement:
(i) Commercial general liability insurance, including
products liability insurance, written on an occurrence form, including blanket
contractual liability coverage against claims for bodily injury, affording
minimum single limit protection of two million dollars ($2,000,000) per
occurrence, and two million dollars ($2,000,000) in the aggregate, with respect
to personal injury or death and property damage;
(ii) Automobile liability insurance against claims
for bodily injury, death and property damage, affording minimum single limit
protection of two million dollars ($2,000,000) with respect to personal injury
or death and property damage occurring or resulting from one occurrence; and
(iii) Employer's liability insurance against claims
for bodily injury and death, affording minimum single limit protection of two
million dollars ($2,000,000) with respect to personal injury or death occurring
or resulting from one occurrence and worker's compensation insurance in
accordance with the statutory requirements of each state in which Licensee's
employees may be found.
(b) Licensor agrees that Licensee may comply with the
foregoing obligations through self insurance.
7. INDEMNIFICATION
Licensee shall indemnify Licensor for any third party product liability
claims arising out of the sale of any Licensed Goods by Licensee.
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8. REPRESENTATIONS AND COVENANTS OF LICENSEE
(a) Licensee recognizes Licensor's exclusive right, title and
interest in the Licensed Trademarks and agrees that it will not, at any time, do
or cause to be done any act or thing impairing or tending to impair any part of
Licensor's right, title and interest therein. Licensee agrees that it will not
directly or indirectly, during the term of this Agreement or thereafter, attack
or contest Licensor's exclusive right, title and interest in the Licensed
Trademarks.
(b) Licensee agrees that Licensee will not seek to register
the Licensed Trademarks or any other trademark, service xxxx, corporate name,
trade name, domain name or other designation that incorporates the Licensed
Trademarks, in any jurisdiction without the express written consent of Licensor
which may be withheld in the sole discretion of Licensor.
(c) Licensee agrees that it will take no action likely to
damage the goodwill and reputation associated with the Licensed Trademarks.
(d) Licensee agrees that its use of the Licensed Trademarks
will comply with all applicable laws and regulations. Without limiting the
generality of the foregoing, on any new Promotional Materials that Licensee
creates after the Effective Date, Licensee agrees that it shall cause
appropriate "(TM)" or "(R)" designations to appear on all such Promotional
Materials that are used in connection with the Licensed Goods.
9. REPRESENTATIONS AND COVENANTS OF LICENSOR
(a) Licensor represents that (i) it has the right to enter
into this Agreement, and (ii) Licensor has not granted any third party any
license or right to use the Licensed Trademarks that would conflict with the
license grant set forth in this Agreement.
(b) Licensor warrants that during the term of this Agreement
it will not (i) grant to any third party any license or right to use the
Licensed Trademarks that would conflict with the license grant set forth in this
Agreement, or (ii) use for itself or its own account, the Licensed Trademarks in
connection with the Licensed Goods. Nothing contained herein shall be construed
as in any manner restricting or limiting Licensor from producing, distributing,
marketing, advertising or selling any goods under any other trademark other than
the Licensed Trademarks, including but not limited to goods that compete with
the Licensed Goods.
(c) Except as expressly set forth herein, the license grant
set forth in this Agreement is made on an AS IS basis without any warranty or
representation whatsoever. Without limiting the generality of the foregoing,
Licensee acknowledges and agrees that Licensor has not registered the Licensed
Trademarks in every jurisdiction throughout the world and Licensee acknowledges
and agrees that Licensor has made no warranty or representation to Licensee that
the Licensed Trademarks are available for use in any jurisdiction other than the
United States.
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10. XXXXX N SERVE TRADEMARK
(a) Licensor acknowledges and agrees that Licensee is the sole
owner of all right, title and interest in the trademark Xxxxx 'N Serve, any
derivations of the trademark Xxxxx 'N Serve and the current combination of all
trademarks, logos, graphics, and design elements that comprise the trade dress
associated therewith, excluding, however, the trademark "Swift Premium" and any
other trademarks specifically assigned to Licensor or its Affiliates as part of
the transaction described in the Purchase Agreement (collectively, the "Xxxxx 'N
Serve Properties"). Licensor agrees that it shall not use, nor authorize any
third party to use, the Xxxxx 'N Serve Properties, nor any other trademarks,
combinations of logos, graphics, and design elements, or trade dress that is
confusingly similar therewith.
(b) Licensor recognizes Licensee's exclusive right, title and
interest in the Xxxxx 'N Serve Properties and agrees that it will not, at any
time, do or cause to be done any act or thing impairing or tending to impair any
part of Licensee's right, title and interest therein. Licensor agrees that it
will not directly or indirectly, during the term of this Agreement or
thereafter, attack or contest Licensee's exclusive right, title and interest in
the Xxxxx 'N Serve Properties.
(c) Licensor agrees that Licensor will not seek to register
the trademark Xxxxx 'N Serve, any derivation of the trademark Xxxxx 'N Serve, or
any term that is confusingly similar thereto, as a trademark, service xxxx,
corporate name, trade name, domain name or other designation in any jurisdiction
without the express written consent of Licensee which may be withheld in the
sole discretion of Licensee.
11. TERM AND TERMINATION
This Agreement shall commence as of the Effective Date and
shall continue for a period of twelve (12) months.
(b) Either party may terminate this Agreement upon written
notice to the other party in the event that the other party commits a material
breach of this Agreement and such breaching party fails to cure such breach
within thirty (30) days after receiving written notice of such breach. If the
breach is of a nature such that it cannot be cured using commercially reasonable
efforts, however, the non-breaching party shall not be able to terminate this
Agreement for that particular breach, provided that the breach was not willful
and the breaching party takes commercially reasonable steps to ensure that such
breaches do not occur again in the future.
(c) Either party may terminate this Agreement upon written
notice to the other party in the event that (i) a petition in bankruptcy is
filed by or against the other party, (ii) the other party is adjudicated a
bankrupt or insolvent, (iii) the other party makes an assignment for the benefit
of creditors or an arrangement pursuant to any bankruptcy law, (iv) the other
party discontinues its business, or (v) a receiver is appointed for the other
party or other party's business and such receiver is not discharged within
thirty (30) days.
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(d) Upon the termination of this Agreement, unless otherwise
provided herein, any and all rights of Licensee to use the Licensed Trademarks
shall automatically cease. Licensee shall promptly cease all use of the Licensed
Trademarks, and Licensee will not adopt or use any word, logo or trademark which
is confusingly similar to the Licensed Trademarks. Notwithstanding the
foregoing, Licensor agrees that Licensee shall not be required to recall or
remove any Licensed Goods from the channels of distribution into which such
Licensed Goods were placed prior to termination.
(e) Notwithstanding the foregoing, Licensor acknowledges that
Xxxxx-Xxxxxxx, Inc., a wholly owned subsidiary of Licensee, has entered into
certain agreements with Gainers, Inc. ("Supply Agreement") pursuant to which
Xxxxx-Xxxxxxx, Inc. has agreed to provide Gainers, Inc. with certain "Swift" and
"Swift Premium" branded products, such products being manufactured in the United
States and exported for sale in Canada. Licensor agrees that Xxxxx-Xxxxxxx, Inc.
may continue to manufacture and sell "Swift" and "Swift Premium" branded
products to Xxxxxx'x, Inc. and its successor(s) in interest provided that such
goods are exported solely for sale in Canada.
(f) Notwithstanding anything to the contrary provided herein,
the provisions of Sections 3, 8(a), 8(b), 10, 11(d), 11(e), 11(f), 16 and 17
shall survive the termination of this Agreement.
12. RELATIONSHIP BETWEEN PARTIES
Nothing contained in this Agreement shall be construed to place the
parties in the relationship of legal representatives, partners, joint venturers,
agents or fiduciaries, and no party shall take any action nor incur any debts,
obligations or liabilities in the name of the other. The rights of inspection
and approval set forth herein shall not create any duty or responsibility of
Licensor with respect to any Licensed Goods or Promotional Materials, and
Licensee agrees that Licensee shall remain solely responsible for compliance
with all labeling laws and regulations, advertising laws and regulations, and
all other laws and regulations relating to the production, distribution,
marketing, advertising and sale of the Licensed Goods and the publication or
other dissemination of the Promotional Materials.
13. ASSIGNMENT
(a) Licensee agrees that Licensor may freely assign its rights
and obligations under this Agreement.
(b) Licensee agrees that the rights and obligations of
Licensee under this Agreement are personal to Licensee, and this Agreement may
not be assigned by Licensee, in whole or in part, without the express written
consent of Licensor which may be withheld in the sole discretion of Licensor.
Any assignment in violation of this Agreement shall be void and a material
breach of this Agreement.
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14. AMENDMENTS
This Agreement may not be amended or modified except in a writing
signed by the party against whom enforcement of such change is sought.
15. NOTICE
All notices required or permitted to be given by this Agreement shall
be in writing and sent by registered or certified mail, return receipt
requested, and shall be addressed to the party to whom it is to be served at the
address of such parties stated below. If either party changes his address, a
written notice thereof shall be given to the other party in accordance with this
Section.
If to Licensor: Swift Brands Company
0000 Xxxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: President
Fax: (000) 000-0000
Copy to: Hicks, Muse, Xxxx & Xxxxx Incorporated
000 Xxxxxxxx Xxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
Attention: Xxxxxx Xxxxxxx
Fax: (000) 000-0000
Copy to: Xxxxxxx Xxxxxxx
Xxxxxx & Xxxxxx, L.L.P.
0000 Xxxx Xxxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
Fax: (000) 000-0000
If to Licensee: ConAgra Foods, Inc.
Xxx XxxXxxx Xxxxx
Xxxxx, Xxxxxxxx 00000
Attn: Corporate Controller
Telephone: (000) 000-0000
Fax: (000) 000-0000
Copy to: Xxxxx Xxxxx
XxXxxxx, North, Xxxxxx & Xxxxx, P.C.
0000 Xxx Xxxxxxx Xxxx Xxxxx
000 Xxxxx 00xx Xxxxxx
Xxxxx, Xxxxxxxx 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
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16. CHOICE OF LAW
This Agreement shall be deemed to have been made and shall be
interpreted, and the rights and liabilities of the parties hereto determined, in
accordance with the laws of the State of Delaware applicable to agreements made
and to be performed solely in such State.
17. CONFIDENTIALITY
(a) The term "Confidential Information" shall mean all
information that is, directly or indirectly, disclosed by either party to the
other party, that should reasonably be understood by the receiving party, due to
legends or other markings, the circumstances of disclosure or the nature of the
information itself, to be proprietary or confidential to the disclosing party,
regardless of whether such information is disclosed in writing, verbally or by
virtue of inspection or observation of any tangible or intangible objects,
facilities, processes or information.
(b) The parties agree that all Confidential Information
disclosed by either party to the other party shall be maintained in secrecy by
the receiving party using the same safeguards as the receiving party uses to
protect its own commercially confidential information of a similar character,
but at least using reasonable care. The parties agree that neither party shall
disclose any Confidential Information received from the other party to any third
party and that both parties shall use Confidential Information received from the
other party for the sole purpose of fulfilling its contractual obligations to
the other party. The parties agree that they will each disclose Confidential
Information received from the other party only to those employees who have a
bona fide need to know such Confidential Information. The parties agree that
they shall each be responsible for ensuring that their respective employees
safeguard all Confidential Information in accordance with the terms and
conditions of this Agreement.
(c) The parties agree that the term "Confidential Information"
does not include any information that is: (i) already known to or otherwise in
the possession of the receiving party at the time it is received from the
disclosing party, (ii) publicly available or otherwise in the public domain, or
(iii) rightfully obtained by the receiving party from any third party without
restriction and without breach of this Agreement by the receiving party.
18. BINDING EFFECT
This Agreement shall inure to the benefit of and shall bind the
respective parties, their permitted successors and assigns, and their parents,
subsidiaries and Affiliates.
19. SEVERABILITY
If any portion of this Agreement shall be held to be unenforceable or
illegal, such portion of this Agreement shall be deemed cancelled, but such
cancellation shall not affect any of the other terms, conditions or provisions
of this Agreement.
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20. NONWAIVER
The failure of either party to require the performance of any term of
this Agreement or the waiver by either arty of any breach under this Agreement
shall not prevent subsequent enforcement of such term, nor be deemed a waiver of
any subsequent breach.
21. HEADINGS
The section headings within this Agreement are for convenience only and
shall not be deemed to affect in any way the language of the provision to which
they refer.
22. LANGUAGE
The language in this Agreement shall in all cases be construed as a
whole, according to its fair meaning, and not strictly for or against any of the
parties.
23. CONSENT TO JURISDICTION. THE PARTIES HERETO HEREBY IRREVOCABLY
SUBMIT TO THE EXCLUSIVE JURISDICTION OF ANY UNITED STATES FEDERAL OR DELAWARE
STATE COURT SITTING IN WILMINGTON, DELAWARE IN ANY ACTION OR PROCEEDING ARISING
OUT OF OR RELATING TO THIS AGREEMENT AND EACH OF THE PARTIES HERETO HEREBY
IRREVOCABLY AGREES THAT ALL CLAIMS IN RESPECT OF SUCH ACTION OR PROCEEDING SHALL
BE HEARD AND DETERMINED IN ANY SUCH COURT AND IRREVOCABLY WAIVES ANY OBJECTION
IT MAY NOW OR HEREAFTER HAVE AS TO THE VENUE OF ANY SUCH SUIT, ACTION OR
PROCEEDING BROUGHT IN SUCH A COURT OR THAT SUCH COURT IS AN INCONVENIENT FORUM.
24. ENTIRE AGREEMENT
This Agreement and the Purchase Agreement constitutes the entire
agreement and supersedes any and all other understandings and agreements between
the parties with respect to the subject matter hereof and no representation,
statement or promise not contained herein shall be binding on either party.
[Signature Page to Follow]
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
SWIFT BRANDS COMPANY
By: /s/ XXXXXXX X. XXXXX
--------------------------------------
Name: Xxxxxxx X. Xxxxx
------------------------------------
Title: Vice President
-----------------------------------
CONAGRA FOODS, INC.
By: /s/ XXXXX X. XXXXXXXX
--------------------------------------
Name: Xxxxx X. Xxxxxxxx
------------------------------------
Title: Assistant Secretary
-----------------------------------
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