CONTRACT RELATED TO THE CO-EXISTENCE OF TRADEMARKS
Exhibit
10.131.1
CONTRACT
RELATED TO THE CO-EXISTENCE OF TRADEMARKS
BY
AND BETWEEN THE UNDERSIGNED:
·
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XXXXXX
XXXXXX,
corporation with its head office at 00, xxx xx Xxxxxxxx Xxxxx-Xxxxxx,
00000 Xxxxx, registered in the RCS de Paris under number 612 048
629, and
represented by its Chair and Chief Executive Officer, Xx. Xxxx
Xxx
XXX-XXXX, hereafter referred to as “LANVIN”,
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Of
the first part,
AND
·
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INTER
PARFUMS,
corporation with its head office at 0, xxxx-xxxxx xxx Xxxxxx Xxxxxxx,
00000 Xxxxx, registered in the RCS de Paris under number 350 219
382, and
represented by its Chair and Chief Executive Officer, Xx. Xxxxxxxx
XXXXXXX, hereafter referred to as “INTER
PARFUMS”,
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Of
the second part,
IT
IS FIRST AND FOREMOST UNDERSTOOD THAT:
LANVIN
and INTER PARFUMS have on this day entered into a trademark assignment contract
(the “Trademark
Assignment Contract”)
under
which LANVIN has assigned to INTER PARFUMS a certain number of trademarks in
Class 3, international trademark deposit for perfumes, toiletries and makeup
(with the exception of cosmetics).
Under
the
Trademark Assignment Contract, LANVIN benefits from a buy-back option of the
assigned trademarks on July 1, 2025.
In
the
areas of ready-made clothing for men and women, fashion accessories and
perfumes, the Trademarks (as defined hereafter) have acquired an image as luxury
trademarks and uncontested renown, to which the parties are extremely attached
and which they intend to preserve as long as they make use of the
Trademarks.
The
purpose of this agreement is to specify the conditions under which the parties
intend to manage the Trademarks or have them managed in accordance with this
trademark image.
THE
PARTIES THEREFORE AGREE THAT:
ARTICLE
1- DEFINITIONS
1.1
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The
expression “Trademarks”
used in this contract designates all trademarks which LANVIN respectively
owns, in all the international Classes of trademark deposit and in
the
Territory, as well as any names, abbreviations, symbols and other
distinctive signs currently associated with LANVIN, or which will
be
associated with LANVIN in the future. The trademarks are comprised
of the
Assigned Trademarks.
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1.2
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The
expression “Assigned
Trademarks”
used in this contract refers to the trademarks listed in Appendix
1.2
herein, Class 3, international trademark deposit for the Products,
which
are the subject of the trademark assignment contract made on this
day
between the parties, as well as all the trademarks that INTER PARFUMS
will
be deposit and/or register prior to the end of the contract and which
will
be associated with one or several Trademarks for the creation,
development, distribution and marketing of the
Products.
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1.3
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The
term “Products” refers to perfume, toiletries and makeup, with the
exception of all existing and future cosmetics, sold under one or
more
Trademarks, which fall under the categories described in Appendix
1.3 of
this contract.
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1.4
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The
term “Territory” designates all countries where the Trademarks are or will
be deposited under Class 3, international trademark
deposit.
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ARTICLE
2 - RESPECT OF THE TRADEMARK IMAGE
2.1
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The
parties agree to continually respect and ensure continued respect,
in all
their actions and initiatives, for the image of quality, elegance
and
originality associated with the Trademarks, especially with regard
to the
quality of marketed products by using the Trademarks, their esthetic
appearance, their publicity, their promotion and their
distribution.
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2.2
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For
the duration of this contract, the parties agree to respect and ensure
that their employees, representatives, agents, sponsors and/or eligible
persons and their affiliates respect all laws and regulations in
effect on
the Territory concerned by the subject of this
contract.
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2.3
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For
the duration of this contract, neither the Trademarks, nor, more
generally, the names LANVIN and/or XXXXXX XXXXXX, nor the abbreviation
JLSA, for the purposes of a corporate name, may be used by one of
the
entities in which INTER PARFUMS participates directly or
indirectly.
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2.4
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The
parties agree that the name XXXXXX XXXXXX in high-end ready-made
clothing
and perfumes is an important element of this trademark and its reputation.
In this context, each of the parties considers essential that in
all
domains the image of elegance, originality and quality associated
with the
LANVIN trademark be consistently maintained and respected. The parties
agree to maintain the LANVIN trademark as a trademark associated
with
luxury.
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2.5
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The
parties agree to create and market products of very high quality
in terms
of design, execution, refinement and esthetics, so as to be able
to
compete with the most prestigious creations of competing trademarks
such
as those listed in Appendix 2.5, in the international market of perfume
products and the ready-made clothing market,
respectively.
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2.6
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In
the event that LANVIN assigns its activity or its trademarks before
the
year 2025, it agrees to ensure that its successor or eligible persons
respect the above provisions.
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ARTICLE
3 - TRADEMARKS, INDUSTRIAL PROPERTY
3.1
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The
Assigned Trademarks must be used by INTER PARFUMS to market the Products,
at the exclusion of any other use. The Assigned Trademarks may not
be used
in association with any other trademarks, names, company names or
distinguishing marks, with the exception of names of distributors,
or when
required by applicable local regulations and with the exception of
usual
business or trade documents in accordance with the provisions of
the
previous paragraph. The Assigned Trademarks may not be used as a
corporate
name, except by LANVIN.
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3.2
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The
maintenance fees for Assigned Trademarks used by INTER PARFUMS will
be the
responsibility of INTER PARFUMS. INTER PARFUMS will be free to not
renew
the Assigned Trademarks which it will no longer use, and it must
notify
LANVIN of its intention. LANVIN agrees to cooperate with INTER PARFUMS
in
order to provide it with any papers or document required for the
deposit
of Assigned Trademarks and their renewal. In the event of a technical,
administrative or legal difficulty or impossibility (particularly
related
to the specifics of certain national trademark rights) in depositing
and/or renewing the Assigned Trademarks with the appropriate national
registers, the parties agree to work together in accordance with
the
provisions herein, to arrive at the best possible technical solution,
on a
case-by-case basis, in respect of the interests of each of the parties
and
the spirit of this contract and to sign, if necessary, any supplementary
agreements required for this
purpose.
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3.3
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LANVIN
submits that it is the owner of a non-exclusive license, extended
at no
cost by L’OREAL, for use, by LANVIN and/or third parties, for the
manufacture of certain patented mechanisms for closing perfume bottles.
As
such, LANVIN agrees to extend the rights resulting from this non-exclusive
license.
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ARTICLE
4 - COPYRIGHT INFRINGEMENTS
4.1
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In
the event that a third party engages in (an) act(s) of copyright
infringement, imitation, unfair competition or any other infringement
on
the Assigned Trademarks, INTER PARFUMS agrees, within the limits
of its
rights and the regulations in effect, to take any appropriate emergency
measures to stop these acts or limit the resulting harm, and to keep
LANVIN informed as expeditiously as possible. LANVIN agrees to provide
INTER PARFUMS with any assistance that it is able to provide as well
as
all the information in its possession. INTER PARFUMS will be in charge
of
the proceedings in the action, and it will sustain the costs and
will
alone receive any
benefits or indemnity that may result from the
proceedings.
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4.2
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In
the event that a third party opposes the use of an Assigned Trademark
or
takes copyright infringement-related proceedings against INTER PARFUMS
on
the ground of use of an ASSIGNED TRADEMARK, INTER PARFUMS will notify
LANVIN as soon as possible. INTER PARFUMS will be have the responsibility
for and bear the cost of the defense and will alone receive any resulting
benefits and/or indemnity. The defense costs, the benefits that may
result
from this defense and any possible damages and interest will be borne
fully by INTER PARFUMS.
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4.3
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LANVIN
agrees to take any necessary and appropriate measures in the event
of acts
of copyright infringement, imitation or unfair competition or any
other
infringement on the Trademarks that it owns (with the exception of
the
ASSIGNED TRADEMARKS described in paragraphs 5.1 and 5.2 above), of
which
it has been made aware.
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4.4
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Each
party agrees to inform the other party, as expeditiously as possible,
in
the event that it is made aware of acts of copyright infringement
imitation, unfair competition, or any other infringement on the Trademarks
which would concern the other
party.
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ARTICLE
5 - PROMOTIONAL ITEMS
INTER
PARFUMS may use (by sale or trade discount), under the Assigned Trademarks,
promotional items or products of any kind (outside the domain of Products)
on
the condition that:
a)
LANVIN
has previously authorized the distribution of the items in question, of which
INTER PARFUMS will have submitted a sample or model to LANVIN, with it being
understood that any possible refusal by LANVIN must be made for reasons that
would objectively demonstrate that such distribution would bring about real
and
serious harm to LANVIN.
b)
Use of
these items remains secondary to use of the Products of the
contract
c)
The
promotional items and products are indicated as “Lanvin Parfums” and there can
be no confusion with products marketed by LANVIN or its other license
holders.
ARTICLE
6 - NON-COMPETITION AND FAIRNESS
6.1
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For
the duration of the contract, LANVIN may not use or have any other
party
use Trademarks in the area of Products, or undertake any actions
that may
prejudicially affect the use of the Products and Assigned Trademarks
in an
area other than that of the Products, or undertake any actions that
may
prejudicially affect the use of the Trademarks by
LANVIN.
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6.2
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The
parties agree to execute this contract in a fair manner and to not
take
any measures, directly and/or indirectly, which would prejudicially
affect
LANVIN or INTER PARFUMS and/or the sale, distribution or image of
the
Products.
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ARTICLE
7 - DURATION OF THE CONTRACT
This
contract takes effect as of the signing of this contract and will remain in
effect until June 30, 2025. The parties will negotiate in good faith, as
required, a new coexistence agreement which will take effect on July 1,
2025.
ARTICLE
8 - MODIFICATION OF THE CONTRACT
8.1
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Any
overriding or supplementary agreement or any amendment to this contract
will necessarily be established by a written document signed by the
parties and attached to the contract. Any such modification will
be
limited to the specific point for which it will have been agreed.
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8.2
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If,
in the event of a force majeure, it is impossible for one of the
parties
to honor its commitments under this contract, it must inform its
contracting party, So that the parties may together agree to equitable
adjustments to this contract in their common
interest.
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8.3
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If
one or several provisions of this contract proves to be without effect,
this circumstance will in no way affect the validity of other provisions
in the contract nor the validity of the contract in its entirety.
The same
would be the case in the event that this contract contains omissions.
The
provision that would need to be removed, or which is missing, will
be
replaced by a legally valid provision consistent with the purpose
of this
contract.
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ARTICLE
9 - CONFIDENTIALITY
9.1
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The
parties agree to consider as strictly confidential and to treat as
such
all information, regardless of its nature and its support, collected
during the execution of this Contract, including the clauses of this
Contract (hereafter “Confidential
Information”).
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9.2
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Notwithstanding
the clauses in paragraph 9.1, INTER PARFUMS will be authorized, in
application of its status as a listed company, to disclose this
Confidential Information if this information should be revealed further
to
a requirement of a regulation in effect, particularly if it relates
to the
stock exchange or if this information should be revealed further
to an
injunction by a judicial or administrative authority, with the provision
that LANVIN is informed and consulted beforehand regarding the terms
of
disclosure of this information.
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9.3
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All
information known by the public is deemed non-confidential unless
it is
compiled in a manner unknown to the
public.
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9.4
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The
parties agree to not disclose or allow to be disclosed, directly
or
indirectly or through a third party, in whole or in part, any Confidential
Information of which they are aware, to any third party whatsoever,
with
the exception of employees and/or subcontractors requiring this
information to carry out their
obligations.
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9.5
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The
parties agree, in this regard, to take any necessary measures with
respect
to employees and/or beneficiaries in order that they be subjected
to this
same obligation of confidentiality.
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9.6
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The
parties agree not to use the Confidential Information in a context
other
than that of this contract.
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9.7
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Each
party agrees to return upon request all documents or supporting documents,
as well as any copies thereof, from the other party which contain
Confidential Information that will have been submitted to it in connection
with the execution of this
Contract.
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ARTICLE
10 - NOTIFICATIONS
All
notifications made by one of the parties in connection with the execution of
this contract’s provisions, must be sent, by registered mail with acknowledgment
of receipt, to the address of the other party’s head office, to the attention of
its legal representative, or any other person duly designated by said
party.
ARTICLE
11- CONCILIATION / DISPUTES
In
the
event of a disagreement between the parties on the validity, interpretation,
execution and/or resolution of one of the provision in these contracts, the
parties agree that, prior to initiating any contentious procedure, they will
follow the conciliation procedure outlined hereunder:
· |
First,
competent operations managers of each of the parties will meet
to discuss
the subject of disagreement, on the initiative of the most diligent
party,
and as soon as possible, upon emergence of the disagreement. The
goal of
this meeting will be to find an amiable solution to the disagreement
in
question. Minutes of this meeting will be recorded by both
parties.
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· |
Secondly,
if the meeting between the operations managers does not lead to
an amiable
solution, the leading managing agents of each party will meet and
make
their best efforts to resolve the disagreement amiably. This meeting
must
be held as quickly as possible and no later than ten (10) days
from the
meeting between operations
managers.
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If,
in
spite of the conciliation procedure, a proceeding goes forward on the validity,
interpretation, execution and/or resolution of the contracts, or if one of
the
parties refuses to carry out the above-mentioned procedure with diligence and
good faith, this proceeding will be submitted to the exclusive jurisdiction
of
the Paris Court of Appeal.
ARTICLE
12 - APPLICABLE LAW
This
contract is subject to French Law.
Signed
on
July 30, 2007
In
Paris
In
two
(2) originals
/s/ Xx. Xxxx Xxx XXX-XXXX | /s/ Xxxxxxxx XXXXXXX | ||
XXXXXX
XXXXXX SA
Xx.
Xxxx Xxx XXX-XXXX
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INTER
PARFUMS
Xx. Xxxxxxxx
XXXXXXX
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Appendix
1.3: List of Products
Products
- women’s line
1.
Perfume extract*
2.
Perfume spray*
3.
Perfume bottle*
4.
Eau de
toilette spray*
5.
Cologne spray*
6.
Pocket
spray*
7.
Pocket
spray refill*
8.
Roll-on pocket perfume pen
9.
Body
cream
10.
Body
lotion
11.
Glitter body lotion
12.
Body
oil
13.
Perfumed body powder
14.
Bath
and shower gel
15.
Shower foam
16.
Exfoliant for the body
17.
Deodorizing spray
18.
Roll-on deodorant
19.
Hair
mist
20.
Glitter hair mist
21.
Scented shampoo
22.
Soap
23.
Scented indoor candle
Products
- men’s line
24.
Eau
de toilette spray
25.
Eau
de toilette bottle
26.
Cologne spray
27.
After-shave lotion bottle
28.
After-shave balm bottle
29.
Shaving gel
30.
Shower gel for body and hair
31.
Shampoo plus conditioner
32.
Spray
deodorant
33.
Deodorant stick
34.
Soap
Makeup
(this
list is indicative and may evolve in the course of execution of the contract
to
include new products usually considered as makeup).
COMPLEXION
· |
Foundation
(liquid and powder)
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·
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Blush |
·
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Terracota |
·
|
Powder |
·
|
Anti-circle cream |
EYES
· |
Mascara
|
·
|
Eye shadow |
·
|
Eye contour (eye pencil, eyebrow pencil, eyeliner) |
LIPS
· |
Lipstick
|
·
|
Gloss |
·
|
Lipliner |
·
|
Repulper |
NAILS
· |
Polish
|
·
|
Nail care |
·
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Nail polish remover |
Note:
Products not marked with an asterisk (*) are granted as extensions of product
lines directly related and completely faithful to the perfumes. There must
be an
explicit reference to the corresponding perfume in their names.