AGREEMENT to PURCHASE and USE T-HEXX CONCENTRATE
and
T-HEXX(R) TRADEMARK
T-HEXX" LICENSE and USE AGREEMENT Page-i
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AGREEMENT to PURCHASE and USE T-HEXX CONCENTRATE
and
T-HEXX" TRADEMARK
TABLE OF CONTENTS
1. GRANT OF LICENSE.......................................................... 1
2. OWNERSHIP OF MARKS........................................................ 1
3. ADVERTISING COPY/LABELING................................................. 2
4. QUALITY MAINTENANCE....................................................... 2
5. FORM OF USE............................................................... 3
6. USE FEE................................................................... 3
7. INFRINGEMENT PROCEEDINGS.................................................. 4
8. TERM...................................................................... 4
9. TERMINATION OF LICENSE FOR NOT ABIDING BY MINIMUM PURCHASES............... 4
10. TERMINATION.............................................................. 4
11. EFFECT OF TERMINATION.................................................... 5
12. SUPPLY OF T-HEXX CONCENTRATE............................................. 5
13. PATENT LICENSE TO USE.................................................... 6
14. INDEMNIFICATION AND INSURANCE............................................ 6
15. FORCE MAJEURE
............................................................................. 6
16. GENERAL PROVISIONS....................................................... 6
a. Assignment....................................................... 7
b. Entire Agreement................................................. 7
c. Not a franchise.................................................. 7
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d. Surviving Clauses................................................ 7
e. Waiver........................................................... 7
f. Controlling Law and Place of Suit................................ 7
Exhibit A.................................................................... 9
Exhibit B.................................................................... 10
Exhibit C.................................................................... 11
Exhibit D.................................................................... 14
Exhibit E.................................................................... 15
Exhibit F.................................................................... 17
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This Agreement entered into on the 1st day of January, 2001, between:
Hydromer, Inc. ("Hydromer"), a corporation organized and existing under the laws
of New Jersey, located at 00 Xxxxxxxxxx Xxxxxxx, Xxxxxxxxxx, N.J., U.S.A
and
LHS Limited and LHS Holding Limited, English registration 2469440, dba
KLEENCARE, with its registered offices at Xxxx Xxx., Xxxxxxx Xxxxx Xxxxxxx
Xxxxx, Xxxxxxxx XX0 0XX. ("Kleencare").
Hydromer is the owner of the trademarks and service marks (the "Marks"), and
applications and registrations for the Marks, listed in Exhibit A. Kleencare
desires to use the Marks in connection with its business. In consideration of
the foregoing and of the mutual promises set forth in this agreement, the
parties agree as follows:
1. GRANT OF LICENSE
In consideration of US$_____ and other consideration herein, Hydromer grants to
Kleencare a non-exclusive, non-transferable license, without the right to
sub-license, to use the Marks in connection with the manufacture and sales of
the goods listed in Exhibit B within the sovereigns of:
Germany, France, Netherlands, Belgium, Luxembourg, United
Kingdom, Ireland, Austria, Switzerland.
Kleencare accepts the license subject to the following additional terms and
conditions.
2. OWNERSHIP OF MARKS
Kleencare acknowledges that Hydromer owns the Marks and agrees that it will do
nothing inconsistent with such ownership, including but not limited to selling
any product that competes with the goods or services in Exhibit B. All uses of
the Marks by Kleencare shall inure to the benefit of, and be on behalf of
Hydromer. Hydromer will provide any data which is then in existence to aid
Kleencare to register products carry the Marks appropriate governmental
authorities.
Nothing in this license shall give Kleencare any right, title, or interest in
the
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Marks, other than the right to use the Marks in accordance with the terms of
this license. Kleencare will not attack the title of Hydromer to the Marks or
attack the validity of this license.
3. ADVERTISING COPY/LABELING
Hydromer at it's own expense will provide all advertising copy and creative
works in the English language (which Hydromer claims are copyrights of Hydromer)
to Kleencare. Kleencare shall not, without written permission, place
advertisements, develop sales material, communicate clinical results or
otherwise develop any communications to third parties relating to the Marks or
the goods/services on which the Marks are used including the labeling and labels
used on or with the goods and services. Kleencare will be allowed, upon the
written approval of Hydromer, to modify the copy with respect to the European
market. Kleencare will have the right to propose advertising copy for approval
by Hydromer Labeling and Advertising Guidelines in Exhibit E shall be followed.
Hydromer shall promptly review all proposed marketing and advertising material
received from Kleencare with 3 business days of receipt and provide Kleencare
with either an approval or requirements for changes.
4. QUALITY MAINTENANCE
The nature and quality of all services rendered and goods sold by Kleencare in
connection with the Marks shall conform to standards set by Hydromer. Standards
for product formulation and testing are attached as Exhibit C. Any changes in
the formulation and/or testing shall be on an amendment signed by both parties.
Hydromer will guarantee the physical and chemical stability of the T-Hexx
concentrate supplied to Kleencare. Kleencare guarantees not to modify the
finished product formulations without the expressed written approval of Hydromer
and further agrees to provide Hydromer with the results of any tests performed
on T-HEXX"ORO dip.
Kleencare will meet all quality aspects of the formulations made by Kleencare
and will permit reasonable inspection of Kleencare's operation. Kleencare will
supply Hydromer with specimens and test results for each batch of product which
carries the Marks with 14 working days on a reporting format attached as Exhibit
F or such other format IF approved in writing by Hydromer.
UNDER NO CIRCUMSTANCES WILL KLEENCARE RELEASE ANY BATCH OF T-HEXX PRODUCTS FOR
SALE UNTIL THE TESTS SET FORTH IN EXHIBIT C ARE COMPLETED BY KLEENCARE.
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Until such release the batch(s) are to be quarantined. Any release of untested,
partially tested or inaccurately tested Product is a material breach of this
Agreement. Kleencare agrees that the safety and effectiveness of the T-HEXX
goods made by Kleencare are the sole responsibility of Kleencare, however
Hydromer has the right to take all reasonable steps to insure that its
trademarks are not tainted, clouded or diluted by a poor quality T-HEXX product.
Any recall of a T-HEXX product shall be done at the expense of Kleencare unless
the defect is caused by the T-HEXX concentrate supplied by Hydromer. The quality
of the T-HEXX concentrate shall be determined by the retained samples kept at
Hydromer.
KLEENCARE SHALL COMPLY WITH ALL APPLICABLE LAWS AND REGULATIONS AND OBTAIN ALL
APPROPRIATE GOVERNMENTAL APPROVALS PERTAINING TO THE MANUFACTURE, TESTING, SALE,
DISTRIBUTION, AND ADVERTISING OF GOODS AND SERVICES COVERED BY THIS LICENSE.
In the event that the quality of Kleencare's goods or services with which the
Marks are used falls below acceptable standards established by Hydromer or any
government within the territory, or Kleencare fails to submit samples and test
results to Hydromer for each batch, at the sole and exclusive judgment of
Hydromer, which shall be conclusive, Hydromer shall notify Kleencare in writing.
Kleencare shall cure any deficiency in quality within thirty (30) days of
receipt of such notice of deficiency from Hydromer. In the event that such
deficiency is not cured within thirty (30) days, Hydromer shall have the right
to terminate this agreement.
5. FORM OF USE
Kleencare will use the Marks only in the form and manner and with appropriate
legends as prescribed from time to time by Hydromer, and will not use any other
trademark or service xxxx in combination with any of the Marks without the prior
written approval of Hydromer.
6. USE FEE
Kleencare agrees to pay a use fee for all uses of the Marks pursuant to the rate
set forth in Exhibit D. The uses of the Marks and the payment of the use fee
must be received by Hydromer within 45 days after the end of any calendar
quarter. In the event Exhibit D contains minimum payments, said payments will be
so included.
7. INFRINGEMENT PROCEEDINGS
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Kleencare agrees to notify Hydromer of any unauthorized use of the Marks by
others as soon as it comes to Kleencare's attention. Hydromer shall have the
right and discretion to bring infringement or unfair competition suit or
proceedings involving the Marks. In the event Hydromer fails to bring such suit
or proceeding, Kleencare at its cost, shall have the right to bring such suit or
proceedings after a 60 day written notice to Hydromer.
8. TERM
This agreement shall continue in full force unless sooner terminated as provided
for in this agreement.
9. TERMINATION OF LICENSE FOR NOT ABIDING BY MINIMUM PURCHASES
Starting with the quarter beginning January 1, 2001, and for each quarter
thereafter, the quarterly minimum purchases of T-Hexx concentrate shall be as
set forth in Exhibit D. ("the Minimum"). Hydromer reserves the unilateral right
to terminate this agreement if the Minimums are not met after a 15 day written
notice. Kleencare may nullify the effect of this notice if it pays an amount
computed by multiplying .75 times the shortfall in the quarterly minimum
purchase time the unit price + use fee. The shortfall shall be the actual
purchase in a quarter subtracted from the minimum purchase for the same quarter.
10. TERMINATION FOR OTHER REASONS
Either party shall have the right to terminate this agreement upon thirty (30)
days' written notice to Kleencare in the event of any affirmative act of
insolvency by the other party, or upon the appointment of any receiver or
trustee to take the possession of the properties of such other party, or upon
the winding up, sale, consolidation, merger, change of control or any other
sequestration by governmental authority of such other party.
In addition Hydromer shall have the right to terminate this agreement upon
thirty (30) days written notice if Kleencare attains a total receivable to
Hydromer in the amount over US$50,000 for more then 60 days for any product
purchased or use fee owed or upon breach of any of the provisions of this
agreement by Kleencare.
Hydromer may also terminate this Agreement if Kleencare commits a material
breach and such breach is not cured after a 30 day notice is sent to Kleencare
by Hydromer.
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Kleencare shall have the right to terminate this Agreement before December 31,
2002 for any reason upon a the payment of US$100,000 to Hydromer. Afterwards,
Kleencare may terminate this Agreement by the a 90 day written notice to
Hydromer.
11. EFFECT OF TERMINATION
Upon termination of this agreement Kleencare agrees to immediately discontinue
all use of the Marks and any term similar to the Marks. Kleencare agrees to
delete the similar term or Xxxx from its corporate or business name, to
cooperate with Hydromer or its appointed agent to apply to the appropriate
authorities to cancel recording of this agreement from all governmental records,
and to destroy all printed material bearing any of the Marks. Kleencare agrees
that all rights in the Marks and the goodwill connected with those Marks shall
remain the property of Hydromer.
As an exception to the previous paragraph Kleencare shall have 90 days to
liquidate the then existing inventory of T-HEXX Teat Dip which comply with all
the standards in this Agreement including but not limited to testing and
releasing.
12. SUPPLY OF T-HEXX CONCENTRATE
HYDROMER will make the patented T-HEXX 12% concentrate available to Kleencare at
US$____ per kg., NOT INCLUDING USE FEES, in minimum orders of 1000 kg., FOB
Branchburg, NJ, USA.
Hydromer reserves the right to increase the price at a rate not to exceed the
increase in the CPI for Northern New Jersey with October 1, 2000 being the base.
Hydromer will give Kleencare a 60 day written notice of any increase. In the
event that the cost increase ratio of any raw material which Hydromer purchases
exceeds the CPI for Northern New Jersey, Hydromer may pass this additional
incremental cost to Kleencare.
All invoices from Hydromer to Kleencare must be paid in 60 days time being of
the essence. If Kleencare fails to pay an invoice in 90 days from the receipt of
an invoice, such omission is a material breach of this Agreement.
13. PATENT LICENSE TO USE.
Kleencare recognizes and agrees that the T-Hexx concentrate formula uses art
taught by patents 4,642,267; 4,769,013 and other patents and patent applications
that are now in existence or will be in existence in any country throughout the
world. Nothing herein is intended to grant a license to make, sell, offer for
sale or import any chemical or concentrate covered by any Hydromer
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patents, patent applications or trade secrets, but only the exclusive right to
use T-Hexx concentrate to make the goods set forth in Exhibit B and selling the
goods with the Marks set forth in Exhibit A.
14. INDEMNIFICATION AND INSURANCE
Kleencare indemnifies Hydromer from all damages resulting from Kleencare's
products or services. Kleencare agrees that it will obtain, at its own expense,
product liability insurance from a recognized insurance company, providing
adequate protection (at least in the amount of US$5,000,000/$10,000,000),
against any claims, suits, loss, and damage (including reasonable attorneys'
fees arising out of any alleged defects in the goods and services listed in
Exhibit B.
As proof of such insurance, a fully paid certificate of insurance will be
submitted to Hydromer by Kleencare for Hydromer's prior approval before any of
the goods and services listed in Exhibit B are distributed or sold, and at the
latest within thirty (30) days after the commencement of the term of this
agreement. Any proposed change in certificates of insurance shall be submitted
to Hydromer for its prior approval. Hydromer shall be entitled to a copy of the
then prevailing certificate of insurance, which shall be furnished to Hydromer
by Kleencare.
15. FORCE MAJEURE
If either party shall be prevented from performing its obligations due to an act
or omission of a government within the territory or an "act of god" they shall
be excused from such performance while such act or omission is in effect and for
1 day thereafter. This paragraph cannot be invoked by Kleencare if any
submission by Kleencare to a government or a governmental agency regarding
T-HEXX finished products is incomplete or inaccurate.
16. GENERAL PROVISIONS
a. Assignment
This agreement shall be binding upon the parties' respective successors
and permitted assignees. Kleencare may not assign this agreement or any
rights or obligations under this agreement without the prior written
consent of Hydromer, and any such attempted assignment shall be void. A
change of control of Kleencare is considered to be an assignment.
b. Entire Agreement
This agreement contains the entire understanding of the parties and
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supersedes all prior written or verbal agreements or representations.
No change or waiver of any provision of this agreement shall be valid
unless in writing and signed by the party against whom such change or
waiver is sought to be enforced. Any signing by Hydromer, Inc. must be
done by the President of the corporation. No employee, agent, or
representative of either party has authority to bind such party by any
oral representation or warranty.
c. Not a franchise
The parties agree that this Agreement shall not be considered a
franchise and any provision of any state law to the contrary is hereby
waived by both parties to the maximum extent allowed by law.
d. Surviving Clauses.
If a court deems or declares invalid or unenforceable any clause or
provision of this agreement, all other terms and provisions shall
remain in full force and effect.
e. Waiver
No delay or omission by Hydromer to exercise any right or power under
this agreement shall impair any such right or power or be construed as
a waiver.
f. Controlling Law and Place of Suit
This agreement shall be subject to and shall be interpreted according
to the laws of the New Jersey and both parties agree to the
jurisdiction thereof. The United Nations Convention on Contracts for
the International Sale of Goods and any other like law, statute or
convention is explicitly disclaimed by both parties.
The parties have executed this agreement in duplicate by their
respective authorized representatives.
Hydromer, Inc.
By: /s/ Xxxxxxx X. Xxxx
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Xxxxxxx X. Xxxx
Title:President and CEO
LHS Holding Company on behalf of LHS Limited and Kleencare
BY:
----------------------------
TITLE:
----------------
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Exhibit A
T-HEXX(R)ORO
Exhibit B
Licensed for use on the following goods:
Polymeric Film Former for Teats of Fresh Cows ("in milk").
Exhibit C
T-HEXX" ORO Dip FORMULATION
Exhibit C
T-HEXX" ORO Dip Manufacturing Specifications
Exhibit C
T-HEXX" ORO Acceptance Test Parameters
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Exhibit D
(use fees)
US$_____ per Kg. of T-Hexx 12% concentrate purchased by Kleencare in addition to
the standard price. All purchase of T-Hexx concentrate from Hydromer shall be on
non cancelable purchase order for a minimum quantity of 1000 kg with at least a
3 week notice, Kleencare to supply (or pay of) containers/drums. Hydromer shall
supply and affix T-Hexx labels on the containers of concentrate.
Minimum quarterly purchases shall be:
1/1/2001-3/31/2001 1,000 Kg.
4/1/2001-6/30/2001 1,000 Kg.
7/1/2001-9/30/2001 1,000 Kg.
10/1/2001-12/31/2001 1,000 Kg.
1/1/2002-3/31/2002 2,000 Kg.
4/1/2002-6/30/2002 2,000 Kg.
7/1/2002-9/30/2002 2,000 Kg.
10/1/2002-12/31/2002 2,000 Kg.
1/1/2003-3/31/2003 5,000 Kg.
4/1/2003-6/30/2003 5,000 Kg.
7/1/2003-9/30/2003 5,000 Kg.
10/1/2003-12/31/2003 5,000 Kg.
and for each quarter
thereafter 5,000 Kg.
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Exhibit E
Label Guidelines
Guidelines on Use of T-Hexx Trademark and the design of Product Labels
____ Do follow the first prominent use of the xxxx with a ". Its OK to put " or
tm after each use thereafter but its not necessary.
____ Use the trademark as an adjective, not as a noun. Avoid such use as "put
T-HEXX tm on the teat", say "put T-HEXX tm solution on the teat"
____ Don't confuse a trade xxxx with a tradename. Hydromer", Inc. is improper as
the word Hydromer is being used to identify the Company. Conversely, Hydromer"
cow teat dip would be identifying the PRODUCT as to its source. Then Hydromer is
being used as a trademark.
____ Do give credit to all the trademarks of on the label. Example "Dermaseal"
is a trademark of Hydromer, Inc."
____ Do not place unknown trademarks on a label. International graphics are in
the public domain but each trademark on a label must be justified as to owner.
____ Don't string trademarks together. It confuses the consumer or buyer as to
the source. Example of stringed trademarks "Fargo" T-Hexx xx xxxx dip"
____ On T-Hexx labels which represent a custom label for a distributor, the
distributor's trademark should not exceed 150% of the size of the T-HEXX xxxx .
A distribution trademark should never appear as if the source is the
distributor.
____ Don't makeup or create trademarks. Before using a trademark it must be
searched. A search generally runs US$250-$500 per class plus attorney's fees and
takes 1-2 weeks for a comprehensive search in the USA. Foreign trademarks
searches can run US$500 per country plus fees. Each distributor must use its own
attorney for an opinion.
____ Avoid using the xxxx generically. Example. "T-Hexx that cow". The solution
may not be T-Hexx.
____ Have a legal review of a printers' proof of the label. Hydromer's legal
department MUST see the printer's proof before any labels are printed.
Turnaround will no more then 48 hours and generally 4 hours or less from receipt
of print proof (not a fax). Ask the printer for two proofs.
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____ A label must have contamination warnings, must display the active
ingredients and the FDA labeler code if assigned.
ADVERTISING GUIDELINES:
Exhibit F
Reporting Form (A substitute to this form is permitted AS LONG AS the reporting
form contains the same data)
Batch Form (include with batch form a sample label to be used on the containers
filled with goods from this batch.)
Batch # Product Made Date Made Ph SPG Visc Bio Color %Actives
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