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EXHIBIT 10.5
UMAREX SPORTWAFFEN GmbH K.G.
TRADEMARK LICENSE AGREEMENT
This Agreement, effective as of July 1, 2000, by and between UMAREX SPORTWAFFEN,
GmbH K.G., a corporation having its principal office at Xxxxxxxxxx 0, 00000,
Xxxxxxxx, Xxxxxxx (hereinafter called "Licensor") and XXXXXXX CUTLERY, INC., a
corporation having its principal office at 0000 Xxxxxxxx Xxxxxx, Xxxxxxxxxx,
Xxxxxxxxxx 00000 (hereinafter called "Licensee"). In consideration of the mutual
promises herein contained and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged by Licensor and Licensee, the
parties agree as follows:
1. Definitions
As used in this Agreement, the following terms shall have the following
meanings:
a. "Marks" shall mean those trademark(s) identified in Exhibit A
attached hereto, and also any trade dress of Licensor's
products and all of the Licensor's rights in such Marks
including, without limitation, common law rights, and
registrations and applications for registration of any such
Marks in any state, federal or other jurisdiction.
b. "Licensed Articles" shall mean the articles of merchandise
listed in Exhibit B, attached hereto and marked with one or
more of the Marks.
c. "Net Sales Price" shall be the invoiced price at which
Licensed Articles are sold or provided by Licensee, less any
sales tax, and less any credits for returns actually made or
allowances in lieu of returns, provided that such returns
and/or allowances relate to sales which were previously
included in royalty calculations under this Agreement and less
trade discounts and/or retailer promotional programs. The Net
Sales Price on account of sales, giveaways, or other
transactions, without charge or at discounted prices, and
sales to any person directly or indirectly related to or
affiliated with Licensee shall be computed based on regular
selling prices to the trade. There shall be no deduction from
the Net Sale Price on which royalties are due hereunder for
uncollectable accounts, advertising expenses or other expenses
of any kind except those specifically identified in this
Section.
d. "Licensed Territory" is the geographic area identified in
Section 2(a) of this Agreement.
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e. "Minimum Guaranteed Royalty" shall have the meaning set forth
in Section 3(a) of this Agreement.
f. "Contract Year" and "First Contract Year" shall have the
meanings given those respective terms set forth in Section
2(c) of this Agreement.
g. "Dollars" and all references to "royalties", "taxes",
"credits", as well as any and all other monetary values set
forth herein shall refer to or be computed in U.S. Dollars.
2. Grant of License, Term, Licensee's Duties
a. Licensor hereby grants to Licensee an exclusive, indivisible,
license, without the right to sublicense, to use the Marks in
connection with the manufacture and sale of Licensed Articles
only in Canada and the United States and its possessions.
Licensee shall not use, or permit the use of, the Marks with
any other product or territory, except as specifically
provided in this Agreement. Other than the specific license
grants set forth in this Agreement, the intellectual property
of the Parties shall remain the property of its respective
owners.
b. An annual marketing plan must be submitted by Licensee to
Licensor for its approval, along with brand statement and
strategy. A minimum of two percent (2%) of gross annual sales
revenue from the Licensed Articles is to be spent per year by
Licensee for promotional activities including marketing, trade
advertising and other advertising and public relations
expenditures.
c. The term of this Agreement shall be for the period beginning
July 1, 2000 through December 31, 2005, unless sooner
terminated. A new Agreement may be negotiated during the last
Contract Year by the parties. A party's determination not to
renew this Agreement may be effected without cause. Each
period set forth below is referred to as a "Contract Year":
First Contract Year July 1, 2000 through December 31, 2001
Second Contract Year January 1, 2002 through December 31, 2002
Third Contract Year January 1, 2003 through December 31, 0000
Xxxxxx Xxxxxxxx Year January 1, 2004 through December 31, 2004
Fifth Contract Year January 1, 2005 through December 31, 2005
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d. Licensee shall use its best efforts to promote the sale of
Licensed Articles in the Territory and shall maintain
resources and a sales force sufficient and adequate to
accomplish Licensee's obligations hereunder.
e. Licensee shall make available to Licensor or its designated
agent(s) any Licensed Article on the most favorable terms and
conditions offered by Licensee for that Licensed Article.
3. Royalties and Payment, Minimum Guaranteed Royalty, Reporting
a. Licensee shall pay Licensor a One Thousand Dollar ($1,000.00)
non-refundable fee on signature. In addition, Licensee shall
pay to Licensor a minimum royalty ("Minimum Guaranteed
Royalty") for each Contract Year, or portion thereof, until
changed by mutual written agreement of the parties. For the
First Contract Year, the Minimum Guaranteed Royalty shall be
Six Thousand Dollars ($6,000) payable quarterly in four (4)
equal quarterly installments commencing April 15, 2001. For
each Contract Year thereafter, the Minimum Guaranteed Royalty
shall be Six Thousand Dollars ($6,000) and shall be paid in
four equal quarterly installments on the dates on which each
royalty payment is due in accordance with the terms set forth
herein.
b. Licensee shall pay Licensor a royalty equal to the greater of
the Minimum Guaranteed Royalty or five (5%) percent of the Net
Sales Price at wholesale of all Licensed Articles sold,
distributed or otherwise provided by Licensee during or after
the term of this Agreement. Payments and schedules shall be
made in accordance with the terms set forth hereinafter.
c. On or before the fifteenth day of the first month of each
calendar quarter beginning October 1, 2000, Licensee shall
furnish to Licensor full and accurate statements, certified by
the Chief Financial Officer of Licensee, showing the number,
description, total Net Sales Prices and gross revenue of the
Licensed Articles sold, distributed or otherwise provided by
the Licensee during the preceding calendar quarter. Licensee
shall, simultaneously with such statements, pay to Licensor
the royalty due thereon. Licensee may credit against any such
royalty payment any Minimum Guaranteed Royalty payment made by
Licensee contemporaneously with such quarterly statement. Any
Minimum Guaranteed Royalty paid for any Contract Year shall
not be refunded to Licensee. On or before the first day of the
fourth month following the end of each Contract Year, Licensee
shall furnish to Licensor a statement certified by the Chief
Financial Officer of Licensee showing total sales of Licensed
Articles, gross revenues
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therefrom as well as royalties and royalties paid for the
preceding Contract Year. If such statement discloses that the
amount of royalties paid during any period to which such
statement relates were less than the amount required to be
paid, Licensee shall pay such deficiency concurrently with the
delivery of the statement. The quarterly and yearly statements
shall each show in detail all calculations used in the
computation of royalties. All payments and statements made
hereunder shall be made exclusively to Licensor's agent, Xxxxx
& Wesson Corp. at
Xxxxx & Wesson Corp.
0000 Xxxxxxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
Attn.: X. Xxxxxx, Director of Licensing
d. For purposes of this Agreement, a Licensed Article shall be
considered sold or provided when such Article has been
shipped, distributed, paid for, billed or invoiced, whichever
first occurs.
e. Any delinquent amounts under this Agreement shall bear simple
interest at the rate of 1.5 percent per month, or if lower,
the highest rate permitted by Massachusetts law, from the due
date thereof until paid.
4. Protection of Marks
a. Licensee acknowledges Licensor's exclusive right, title and
interest in and to the Marks, both at common law and under
applicable laws in the United States and all other
jurisdictions, and will not, either directly or indirectly, at
any time, do anything to discredit, encumber or diminish any
part of such right, title or interest or challenge the
validity of this License. Licensee agrees that its use of the
Marks will inure entirely to the benefit of Licensor. Licensee
shall assist Licensor, to the extent necessary or appropriate,
upon request by Licensor, in the procurement of any protection
of Licensor's rights in the Marks. Upon Licensor's request
from time-to-time, Licensee shall provide Licensor with six
(6) specimens of any Xxxx used on Licensed Articles and
whatever other documentation or information may be requested
by Licensor for the registration of any Xxxx in any category
into which the Licensed Articles fall.
b. Licensee shall use the Marks only in the form and manner and
with appropriate legends as prescribed from time-to-time by
Licensor, and shall not use any other trademark or service
xxxx in combination with any Xxxx without prior written
approval of Licensor. In any written material, including the
packaging, advertising materials, catalogs,
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brochures and the like associated with the Licensed Articles,
in addition to the "(R)" symbol displayed adjacent to the
Xxxx, as appropriate, Licensee shall use the following legend
at least once in each such document: "Licensed Trademark of
UMAREX SPORTWAFFEN, GmbH K.G."
c. Licensee recognizes that the Walther name, all trade dress and
associated marks are world famous and that, even if not
registered in any country, the unauthorized use thereof would
seriously dilute the distinctiveness of such name, trade dress
and the associated marks and would irreparably harm the
Licensor.
d. Licensee shall immediately notify Licensor, in writing, of any
infringements or third party imitations of any Xxxx or other
act of a third party which may concern the Xxxx(s), of which
Licensee becomes aware. Licensor shall have the sole right to
determine whether or not any action shall be taken on account
of such infringements or imitations. Licensee shall not
institute any suit or take any action on account of any such
infringements or imitations without first obtaining the
written consent of Licensor.
e. Licensor shall undertake to apply for and obtain registration,
in its name and at its own expense, of any of the Marks in
association with the Licensed Articles in any country in which
Licensee may request and as deemed by Licensor to be necessary
or appropriate to protect the Marks and the goodwill
associated therewith.
5. Assignment of Marks
If Licensee shall acquire by act or operation of law by deed or
operation of law any rights in the marks in any country, Licensee shall
notify Licensor and immediately assign such rights to Licensor,
together with any goodwill that may have inured to the benefit of the
Licensee. Licensee shall not permit any other person to use any of the
Marks without Licensor's prior written consent, and shall cause any
manufacturer or other person involved in the production, promotion,
sale or provision of Licensed Articles to agree to assign to Licensor
any rights in any Xxxx acquired by such manufacturer or other person.
6. Indemnification
a. Licensee shall at all times during and after the term of this
Agreement, and to the fullest extent permitted by law,
indemnify, defend and hold harmless Licensor and Licensor's
parents, successors, assigns, franchisees, subsidiaries,
affiliates, licensing agents and distributors,
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and the present and former directors, officers, agents and
employees of each of the foregoing entities, from and against
any and all damages, demands, claims, suits, actions,
investigations, administrative proceedings, charges, costs and
expenses, including, without limitation, attorneys fees and
court costs, settlement amounts, judgments, compensation for
damages to Licensor's reputation and any losses of any nature
which arise out of or are based on the following:
(1) Any actual or alleged design defect, manufacturing
defect, failure to warn or instruct, breach of
contract, breach of express or implied warranty,
unfair or deceptive trade practices, failure to pay
rightful claims, negligence, strict liability in
tort, or under any other legal theory associated in
any way with the Licensed Articles;
(2) The infringement, alleged infringement or any other
violation or alleged violation of any patent,
trademark, trade dress or copyright rights or other
proprietary rights owned or controlled by third
parties by reason of the manufacture, use,
advertising, sale, service, distribution or provision
of the Licensed Articles;
(3) The violation, or alleged violation of any federal,
state or local law or law of any jurisdiction, or of
any regulation, ruling, standard or directive, or of
any industry standard with respect to or applicable
to the Licensed Articles;
(4) Any insolvency or bankruptcy on the part of the
Licensee any act of government or nature which causes
any discontinuation of the business of Licensee or
any forfeiture, change or discontinuation of full or
partial control of Licensee or a Sublicensee;
(5) Licensee's breach of any warranty, covenant,
representation, agreement or obligation hereunder;
(6) Any sets of omissions of Licensee or its agents,
servants or contractors with respect to the
manufacture, promotion, provision, sale, or servicing
of Licensed Articles or use of the Marks by Licensee;
or
(7) Any other acts or omissions of Licensee or agents,
servants or contractors thereof.
b. Licensee shall promptly give Licensor notice of any action,
suit, proceeding, claim, demand, inquiry or investigation
relating to the
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Marks or Licensed Articles. Licensor may, at its sole option,
elect to undertake the defense of any such action, suit,
proceeding, claim, demand, inquiry or investigation, provided
that such an undertaking by Licensor shall not diminish
Licensee's obligation hereunder to indemnify Licensor and to
hold it harmless. All losses and expenses incurred under this
Section shall be chargeable to Licensee pursuant to its
obligations to indemnify under this Section, regardless of any
actions, activity or defense undertaken by Licensor or the
subsequent success or failure of such actions, activity or
defense.
c. Licensor assumes no liability whatsoever for the acts or
omissions of Licensee or any of those with whom Licensee may
contract for the promotion, manufacture, distribution, sale or
provision, or servicing of Licensed Articles notwithstanding
any prior consent by Licensor to such contract.
7. Insurance
Licensee shall maintain, throughout the term of this Agreement, at its
own expense, liability insurance from a U.S. insurance company with a
Xxxxx'x rating of "Baa" or higher, with such liability coverages and
limits as are acceptable to Licensor, including insurance against
claims from bodily injury, property damage and with a limit of
insurance of at least one million U.S. dollars ($1,000,000) per
occurrence. Such policies shall name Licensor as an additional insured
and shall provide that Licensor shall receive at least thirty (30) days
prior written notice of intent to cancel, alter or amend such policy.
The "other insurance" clause, if any, shall be deleted from such policy
with respect to the coverage furnished to Licensor under such policy
and shall have no application to any insurance maintained by Licensor.
The insurance coverage secured by Licensee shall be primary with
respect to Licensor, and other insurance in force with respect to
Licensor shall be neither primary nor contributing. Licensee shall
provide Licensor, within thirty (30) days after the execution of this
Agreement and upon Licensor's request from time-to-time thereafter,
with certificates or other evidence of insurance required by this
Section. Licensee shall keep all insurance coverages required by this
Agreement in full force and effect for a period of three (3) years
after the termination of this Agreement.
8. Quality of Licensed Articles
a. Licensee agrees, represents and warrants to Licensor, that all
Licensed Articles shall be state-of-the-art, of high safety
and structural standards, of such style, appearance, quality
and consistency as shall be suitable for distribution and
satisfactory for consumer usage, and otherwise merchantable
and fit for the purposes for which they are intended to be
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used. At least thirty (30) days before manufacturing or
promoting, and again before distributing, selling or providing
any Licensed Article, and upon Licensor's request from
time-to-time, Licensee shall submit to Licensor, for its
written approval, not to be unreasonably withheld, samples of
Xxxx usage or description of each Licensed Article together
with any labeling, packaging, or promotion material and
literature in respect of which such Licensed Article is to be
marketed, distributed or sold. The number of samples to be
furnished by Licensee shall be such reasonable number as
Licensor may from time-to-time request. All samples shall be
provided without charge to Licensor. No Licensed Article shall
be distributed, sold or provided pursuant to this Agreement
until Licensee has obtained Licensor's written approval of the
samples submitted. It is understood, however, that failure of
the Licensor to provide Licensee with written approval or
rejection of the samples submitted within twenty (20) business
days of the Licensor's receipt of such samples shall be deemed
to constitute approval on the part of the Licensor of such
samples.
b. All Licensed Articles shall be of the same quality and
workmanship as the approved sample, and in the manufacture and
provision thereof, Licensee shall cause to be used
state-of-the-art manufacturing processes, techniques and
quality control procedures in order to ensure that the
Licensed Articles will consistently comply with the highest
product quality standards. Under no circumstances shall
Licensee sell, distribute, give away or otherwise deal or
cause to have sold, distributed, given away or otherwise dealt
Licensed Articles that are seconds or sub-standard, that bear
a distortion of the Marks or that otherwise do not comply with
this Agreement.
c. Licensee shall consistently distinguish the Licensed Articles
from other products and services manufactured, distributed or
sold by Licensee and shall avoid any confusing similarity
between such other products and services and the Licensed
Articles. Licensee shall take such actions as are necessary to
maintain the Licensed Articles as separate and distinct lines
of styling, design and merchandising from any other product
and service manufactured, sold or provided by Licensee.
d. Licensee shall, no later than ninety (90) days before the
expiration of any Contract Year, furnish Licensor a statement
showing the number and description of Licensed Articles in
inventory and in process.
9. Compliance with Government, Regulations, Industry Standards and Product
Testing
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Licensee agrees that the manufacture, distribution and sale of the
Licensed Articles will conform at all times to all applicable federal,
state and local laws, regulations, industry standards, ordinances and
other enactments, including, without limitation, those relating to
product safety in all countries into which the Licensed Articles are
shipped.
10. Promotional Material
Licensee shall not use the Marks or any reproduction thereof in any
advertising, promotional or display material without Licensor's prior
written approval. Under no circumstances will promotional materials or
programs be used by Licensee that reflect unfavorably on the Marks or
disparage marks of third parties. All advertising, display or
promotional copy utilizing or in any way connected with the Marks,
shall carry a notice that the Marks are the property of Licensor, and
at least six (6) copies of such advertising, display or promotional
copy shall be submitted to Licensor for prior written approval, not to
be unreasonably withheld, at least thirty (30) days in advance of
production and upon Licensor's request from time-to-time thereafter.
Any approval granted by Licensor under this Section will extend only to
Licensee's use of the Marks. It is understood, however, that failure of
the Licensor to provide Licensee with written approval or rejection of
the copies submitted within twenty (20) business days of the Licensor's
receipt of such copies shall be deemed to constitute approval on the
part of the Licensor of such copies. Licensor shall not be liable for
content or accuracy of such advertising, promotional or display
material nor for infringement of patents, copyrights, trademarks, or
any other proprietary rights owned, used, or controlled by third
parties, by reason of Licensee's promotional activities.
11. Records
a. Licensee shall keep accurate books of account and records
covering all transactions relating to the license herein
granted. Licensor and its duly authorized independent
accountants or other representatives shall, from time-to-time,
have the right at reasonable times upon Licensor's prior
written request of at least thirty (30) business days to
examine such books of account and records and other documents
and material in Licensee's possession or under its control
with respect to Licensee's activities in connection with this
Agreement, and such persons shall have free and full access
for such purposes and may make copies thereof or extracts
therefrom. Licensee shall keep all such records available to
Licensor for at least three (3) years after expiration or
termination of this Agreement. Licensee will designate a
symbol or number which will be used exclusively in connection
with the Licensed Articles and with no other articles or
services which Licensee may manufacture, sell or distribute,
and that duplicates of all xxxxxxxx by
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Licensee to its customers with respect to Licensed Articles
shall be kept by Licensee for inspection as is herein
provided. Information on Licensee's sources of supply shall be
exempt from examination of records.
b. If any audit by Licensor shall reveal a shortfall of royalties
paid by Licensee against royalties actually due in accordance
with this Agreement, Licensee shall within fifteen (15) days
make payment to Licensor of such shortfall, plus simple
interest at the rate of 1.5 percent per month or if lower, the
highest rate permitted by Massachusetts law, for the period of
such shortfall. In addition, if such audit shall reveal a
shortfall of more than five percent (5%) of royalties due,
Licensee shall reimburse Licensor for the services of its
accountant and for any other expenses of Licensor incident
thereto including, without limitation, any attorneys' fees and
costs of collection.
12. Termination
Licensee may terminate this Agreement without cause by written notice to the
Licensor 90 days prior to the conclusion of the First Contract Year. In addition
to any other rights which Licensor may otherwise have, Licensor may terminate
this Agreement at any time, immediately upon written notice;
a. If within six (6) months from the date of this Agreement,
Licensee shall not have begun the bona fide design,
specification and/or concluded contracts for production,
distribution or sale of the Licensed Articles; or
b. If Licensee shall, after said written notice, fail for a
period in excess of three (3) consecutive months to continue
the bona fide design, specification, distribution or sale of
the Licensed Articles; or
c. If Licensee shall fail to make any payment due hereunder or to
deliver any of the statements required hereunder, and if such
default shall continue for a period of fifteen (15) days after
notice of such default by Licensor to Licensee or if such a
failure shall occur twice in any consecutive 12-month period
even if both failures are corrected as provided hereunder; or
d. If Licensee or its property:
(1) Becomes subject to a receiver or trustee; or
(2) Becomes insolvent; or
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(3) Becomes subject to an involuntary or voluntary
petition under National Bankruptcy Laws; or
(4) Makes an assignment for the benefit of its creditors;
or
e. If there is any deliberate deficiency in the Licensee's
reporting which affects royalties or gross revenue or any
other aspect of this Agreement; or
f. If any warranty, representation or covenant made by Licensee
hereunder, or any information provided by Licensee as to
Licensee, its principals or agents or to product quality or
safety is false or misleading; or
g. If Licensee fails to comply with any term or condition of this
Agreement, other than those specifically set forth in clauses
(a) through (f) above, and such non-compliance continues
beyond a period of fifteen (15) days after notice thereof is
given by the Licensor.
Any termination by Licensor shall be without prejudice to any of
Licensor's other rights or remedies. Forbearance on the part of
Licensor in exercising any of its rights hereunder or as otherwise
provided by law shall not be construed to be a waiver of those rights.
13. Effect of Termination
a. After expiration or other termination of this Agreement,
Licensee shall have no further right to manufacture,
distribute, sell, exploit, provide, render or otherwise deal
in any Licensed Articles which utilize the Marks, except that
Licensee may dispose of Licensed Articles which are on hand or
in process or to be provided at the time of expiration or
termination so long as (a) Licensee reports, in writing, to
Licensor, no later than thirty (30) days after termination of
this Agreement, the total number of Licensed Articles which
will be disposed of; (b) the sale or provision thereof is
completed within six months; (c) all payments when due are
made to Licensor; (d) such disposal or provision of Licensed
Articles shall be in accordance with the terms of this
Agreement; and (e) statements and royalty and gross revenue
share payments with respect to that period are made by
Licensee in accordance with Section 3. Notwithstanding the
foregoing, in the event this Agreement is terminated pursuant
to Sections 12(c), 12(d), 12(e), 12(f), or 12(g), Licensee
shall not dispose of or provide any Licensed Articles which
are on hand, in process or to be provided at the time of
termination in association with the Marks. A final statement
and payment shall be made by Licensee within fifteen (15) days
after the
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end of such six-month period. Upon expiration of such 6-month
period herein, all molds, plates, prints and other materials
used to reproduce the Marks for the manufacture or provision
of the Licensed Articles and related advertising shall be
destroyed and evidence of such destruction shall be given to
the Licensor.
b. In the event this Agreement expires or is otherwise terminated
for any reason, Licensee shall, and hereby does agree to
assign to Licensor any and all rights of Licensee in the
Marks, including associated goodwill, and the designs, trade
dress and styles of the Licensed Articles to the extent such
design or styles contain or employ any of the Marks, and shall
not thereafter market, manufacture or sell any such designs or
styles or use the Marks in any manner in connection with any
provided services.
c. Except as provided in subsection (a) of this paragraph, upon
the expiration or termination of this Agreement, Licensee
shall immediately cease all further use of the Marks and any
names, trademarks, trade dress, characters, symbols, designs,
likenesses or visual representations as might be likely to
cause confusion or deceive purchasers or prospective
purchasers or dilute any trade name, trademark, trade dress or
service xxxx of Licensor including, without limitation,
Licensor's corporate and private names, other trademarks,
trade dress symbols, designations, indices, slogans and other
means of identifying products or services of Licensor, whether
or not identified herein as a Xxxx.
d. Licensee agrees that the Marks are distinctive and possess
special, unique and extraordinary characteristics which make
difficult the assessment of the monetary damages that Licensor
would sustain by unauthorized use. Licensee recognizes that
irreparable injury would be caused to Licensor by any
unauthorized use of the Marks and agrees that preliminary
and/or permanent injunctive and other equitable relief would
be appropriate in the event of a breach of this Agreement by
Licensee provided, however, that such remedy shall not be
exclusive of other legal remedies otherwise available.
e. Licensee's obligations and agreements set forth in Sections 3
through 11, 13, 14, 17, 19 and 20 shall survive any
termination or expiration of this Agreement.
14. Notices:
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All notices and statements to be given hereunder shall be, in writing,
any such notice or statement shall be deemed duly given if mailed by
certified mail, return receipt requested, if to Licensor, at:
UMAREX SPORTWAFFEN, GmbH K.G.
c/x XXXXX & WESSON CORP.
0000 Xxxxxxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
Attention: Xxxx Xxxxxx
and if to Licensee, at:
XXXXXXX CUTLERY, INC.
0000 Xxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attention: Shiraz Balolia
15. No Joint Venture
Nothing in this Agreement shall be construed to place the parties in
the relationship of partners or joint ventures, and Licensee shall have
no power to bind Licensor in any manner whatsoever. This Agreement
shall not be construed as anything other than a trademark license
between Licensor and Licensee.
16. Cancellation
Licensee acknowledges that Licensor and its subsidiaries, affiliates
and franchisees use the Marks to advance and promote Licensor's
business, and that Licensor has a paramount obligation to preserve its
ability to so use such Marks. Should the use by Licensee of any Xxxx on
Licensed Articles be deemed by Licensor in its discretion to be in
violation of any federal, state or local law or to adversely affect the
reputation of Licensor or affect the validity, enforceability or
distinctiveness of the Xxxx as a designation of origin for Licensor's
own products, then Licensor may terminate this Agreement on ninety (90)
days notice to Licensee.
17. Assignments, Transfers and Sublicenses
Without the prior written consent of Licensor, which may be withheld in
Licensor's sole and reasonable discretion (a) Licensee shall not
voluntarily or by operation of law, assign or transfer this Agreement
or any of Licensee's rights or duties hereunder or any interest of
Licensee herein, except to a third
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party which is controlled by Licensee, or is associated therewith by
common ownership, nor shall Licensee enter into any sublicense for use
of the Marks by other persons otherwise than as contemplated by this
Agreement; and (b) Licensee shall not sell or otherwise transmit or
transfer to any party engaged in the design or manufacture of items
similar to any of the Licensed Articles, any design, style, know-how,
technology or other item or knowledge of a technical or competitive
nature, furnished to Licensee by or through Licensor. Any transfer or
attempt to transfer of this license to any entity in which the present
directors of Licensee do not have voting control shall be deemed an
assignment prohibited hereunder. The consent of Licensor to one
assignment, transfer or sublicense shall not be deemed to be consent to
any subsequent assignment, transfer or sublicense. Nothing provided
herein shall limit Licensor's right to transfer and/or assign any of
its rights hereunder.
18. Scope and Modification
This Agreement sets forth the entire agreement between the parties, and
supersedes all prior agreements and understandings between the parties,
relating to the subject matter hereof. None of the terms of this
Agreement may be waived or modified except as expressly agreed, in
writing, by both parties.
19. Severability
Should any provision of this Agreement be declared void or
unenforceable, the validity of the remaining provisions shall not be
affected thereby.
20. Governing Laws, Jurisdiction and Venue for Suit
a. This Agreement shall be made in the Commonwealth of
Massachusetts and its terms shall be interpreted in accordance
with and governed by the laws thereof.
b. Any suit, action or other proceeding brought by Licensee which
stems from or relates to the subject matter of this Agreement
shall be limited to an action brought in U.S. District Court
in Springfield, Massachusetts, USA.
c. Licensee hereby waives any and all right to assert a defense
based on jurisdiction and/or venue for an action by Licensor
brought in U.S. District Court in Springfield, Massachusetts,
USA which stems from or relates to the subject matter of this
Agreement.
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LICENSOR:
Witnessed By: UMAREX SPORTWAFFEN, GMBH & CO., KG
/s/ [signature not legible] By: /s/ [signature not legible]
----------------------------------- --------------------------------------------
(Title) President
----------------------------------------
Date: August 23, 2000
------------------------------------------
LICENSEE:
Witnessed By: XXXXXXX CUTLERY, INC.,
/s/ [signature not legible] By: /s/ [signature not legible]
----------------------------------- --------------------------------------------
(Title) President
----------------------------------------
Date: July 10, 2000
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EXHIBIT "A" - LICENSED MARKS
WALTHER - as seen in U.S. Registration Nos. 1120867 and 0303701
17
EXHIBIT B - LICENSED ARTICLES
Knives
Binoculars
Spotting Scopes
Night-Vision Scopes
Bore Sights, Specifically excludes Rifle and Handgun Sight Scopes.
Shooting Safety Glasses and Bookends.
18
UMAREX Sportwaffen GmbH & Co. KG
AMENDMENT TO TRADEMARK LICENSE AGREEMENT
This Amendment, effective as of March 14, 2001, by and between UMAREX
Sportwaffen GmbH & Co. KG, a corporation having its principal office at
Xxxxxxxxxx 0, 00000, Xxxxxxxx, Xxxxxxx (hereinafter called "Licensor") and
XXXXXXX CUTLERY, INC., a corporation having its principal office at 0000
Xxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxx 00000 (hereinafter called "Licensee").
Whereas, the above parties have signed a TRADEMARK LICENSE AGREEMENT having an
effective date of July 1, 2000 (hereinafter "the Trademark Agreement").
Whereas, the parties desire to modify the Trademark Agreement.
In consideration of the mutual promises herein contained and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged by Licensor and Licensee, the parties agree to supplement the
Trademark Agreement as follows:
1. Modification of Exhibit B
The "Licensed Articles" as listed in Exhibit B of the Trademark
Agreement shall include "Tool Kits", "Socket Sets", "Wrenches", "Wrench Sets",
"Xxxxx Key Sets", "Screwdriver Sets", "Gunsmithing Tools", "Pliers" and "Hearing
Protection".
A copy of the modified Exhibit B is attached to this Amendment.
2. Scope
This Amendment, together with the Trademark Agreement, sets forth the entire
agreement between the parties, and supersedes all prior agreements and
understandings between the parties, relating to the subject matter hereof. None
of the terms of this Amendment or the Trademark Agreement may be waived or
modified except as expressly agreed, in writing, by both parties.
19
The parties acknowledge that no other term or provision of the Trademark
Agreement has been modified by this Amendment.
LICENSOR:
Witnessed By: UMAREX SPORTWAFFEN, GMBH & CO., KG
By: /s/ [signature not legible]
-------------------------------------- ---------------------------------------------------
(Title) President
-----------------------------------------------
Date: 03.14.01
-------------------------------------------------
LICENSEE:
Witnessed By: XXXXXXX CUTLERY, INC.,
/s/ [signature not legible] By: /s/ [signature not legible]
-------------------------------------- ------------------------------------------------------
(Title) President
-----------------------------------------------
Date: March 8, 2001
-------------------------------------------------
2
20
EXHIBIT B - LICENSED ARTICLES
(As modified by this Amendment dated March 14, 2001)
Knives
Binoculars
Spotting Scopes
Night-Vision Scopes
Bore Sights, Specifically excludes Rifle and Handgun Sight Scopes
Shooting Safety Glasses and Bookends
Tool Kits
Socket Sets
Wrenches
Wrench Sets
Xxxxx Key Sets
Screwdriver Sets
Gunsmithing Tools
Pliers
Hearing Protection
