Exhibit 10.4
TRADEMARK LICENSE AGREEMENT
BETWEEN:
SUN ICE USA, INC., a corporation incorporated under the laws
of the state of Nevada, having its principal place of business
at 0000 Xxxxx Xxxxxx, X.X., Xxxxxxx, Xxxxxxx, Xxxxxx, X0X 0X0
("Sun Ice USA") and SUN ICE LTD., a corporation incorporated
under the laws of the province of Alberta, Canada, having its
principal place of business at 0000 Xxxxx Xxxxxx, X.X.,
Xxxxxxx, Xxxxxxx, Xxxxxx, X0X 0X0 (collectively with Sun Ice
USA, the "Licensor").
AND
GLENGATE APPAREL, INC., a corporation incorporated under the
laws of the State of New Jersey, having its principal place of
business at 000 Xxxxxxxxx Xxxxxx, Xxxxxxxxxxxx, Xxx Xxxxxx
00000 (hereinafter the "Licensee").
WHEREAS Licensor is the owner, in the Territory, as
hereinafter defined, of the trademarks SUN ICE and AUREUS ("Licensed Marks")
identified in Exhibit A annexed hereto;
WHEREAS Licensor is willing to grant Licensee an exclusive
license to use the Licensed Marks in the Territory in connection with the
Licensed Products, as hereinafter defined, subject to the terms and conditions
contained herein;
NOW THEREFORE, this Agreement witnesseth that the parties
hereto covenant and agree as follows:
1. INTERPRETATION
1.1 Definitions. As used herein, the following terms shall have the
indicated meaning:
"Agreement" shall mean this Trademark License Agreement and
any amendments or replacements;
"Annual Minimum Royalty" shall have the meaning set forth in Section 4.3;
"Effective Date" shall mean February 14, 1997;
"Inventory" means all Licensed Product consigned to the Licensee and all
returns of Licensed Product;
"Consignment Agreement" means the agreement made as of February 14,
1997, between the parties to this Agreement whereby Licensor agreed
to consign and Licensee agreed to sell the Inventory;
"Licensed Marks" shall mean the marks SUN ICE and AUREUS as identified in
Exhibit A;
"Licensed Products" shall mean the products specified for use
set forth in Exhibit A in respect of each Licensed Xxxx listed in Exhibit A. In
the event that there is a bona fide dispute between Licensor and Licensee as to
whether any item is a Licensed Product because it is not readily identifiable as
golf related or is not visibly associated with golf, it shall be deemed a
Licensed Product if it is sold primarily through any of the following
distribution channels and shall be deemed not to be a Licensed Product if it is
not sold primarily through such channels: golf club and resort pro shops (green
grass accounts), golf specialty retailers (off-course accounts), golf specialty
departments at retail department stores or golf specialty departments at
sporting goods stores;
"Net Sales" shall mean the gross revenues of the Licensed
Products less all returns, allowances and customary discounts;
"Quarter" shall mean the three month periods ending February
28, May 31, August 31 and November 30 in each year; and "Territory" shall mean
the United States, including Alaska and Hawaii.
1.2 Interpretation. For all purposes under this Agreement, except as
otherwise expressly provided or unless the context otherwise requires:
(a) unless otherwise stated, all references in this Agreement
to designated "Articles", "Sections" and other subdivisions are to designated
articles, sections and other subdivisions of this Agreement;
(b) the words "herein", "hereof" and "hereunder", refer
to this Agreement as a whole and not to any particular article, section or other
subdivision of this Agreement;
(c) the headings are for convenience only and do not form a
part of this Agreement nor are they intended to interpret, define or limit the
scope, extent or intent of this Agreement or any provisions hereof;
(d) all accounting terms not otherwise defined herein have the
meanings assigned to them and all computations to be made hereunder will be made
in accordance with generally accepted accounting principles;
(e) unless otherwise stated all references to currency in
this Agreement are to the currency of the United States;
(f) words in the singular include the plural and words in
the masculine gender include feminine and neuter genders, and vise versa; and
(g) it is the express intention of the parties that no agency,
partnership or joint venture shall exist between Licensee and Licensor and
neither party has the right to obligate the other party or its property in any
manner whatsoever.
2. GRANT OF LICENSE TO USE THE LICENSED MARKS
2.1 Licensor hereby grants to Licensee the exclusive right to sell,
market, and manufacture the Licensed Products in the Territory in connection
with the Licensed Marks, subject only to:
(a) Licensor's right to sell Inventory, set out in
Section 2.2.; and
(b) Licensor's right to manufacture Licensed Product in
the Territory for export and sale outside of the Territory.
2.2 Licensor has the right to sell Inventory bearing the Licensed
Marks in the Territory.
3. ARTICLE WARRANTIES AND REPRESENTATIONS
3.1 Warranties and Representations of Licensor. Licensor hereby
represents and warrants that:
(a) it is the owner of the Licensed Marks, subject to
exclusive and non-exclusive licenses granted and to be granted for use of the
Licensed Marks outside of the Territory and inside of the Territory in
connection with products and services other than the Licensed Products;
(b) each is a duly organized corporation, validly existing and
in good standing under the laws of the State of Nevada in the case of Sun Ice
USA, Inc. and under the laws of the province of Alberta in the case of Sun Ice
Ltd.; and each is duly qualified as a foreign corporation and is in good
standing in each jurisdiction in which the conduct of its business or the
ownership of its assets requires such qualification;
(c) it has the requisite corporate power to execute, deliver
and perform this Agreement and has taken all necessary corporate action required
to authorize the execution, delivery and performance of this Agreement and any
other document or instrument required by or delivered to Licensee in connection
herewith; no other corporate action is required in connection herewith;
(d) the execution and delivery of this instrument and the
performance of the transaction contemplated hereby
(i) does not conflict with the certificate of
incorporation or bylaws or any other
controlling documents of Licensor and
(ii) does not contravene, result in a breach or
violation of, or constitute a default under
any contract, agreement, commitment,
indenture, loan or credit agreement or any
other agreement, lease or instrument to
which Licensor is a party;
(e) to Licensor's knowledge, there are no pending suits or
actions or threatened suits or actions to which Licensor is a party which if
resolved adversely may affect the status of Licensor's title to the Licensed
Marks or have an adverse effect on the ability of Licensor to perform its
obligations hereunder;and
(f) to the knowledge of Licensor, the Licensed Marks do not
infringe any trademark right of any third party with respect to the Licensed
Products in the Territory.
3.2 Warranties and Representations of Licensee. Licensee hereby
represents and warrants that:
(a) it is a duly organized corporation, validly existing and
in good standing under the laws of the State of New Jersey and it is duly
qualified as a foreign corporation and is in good standing in each jurisdiction
in which the conduct of its business or the ownership of its assets requires
such qualification;
(b) it has the requisite corporate power to execute, deliver
and perform this Agreement and has taken all necessary corporate action required
to authorize the execution, delivery and performance of this Agreement and any
other document or instrument required by or delivered to Licensor in connection
herewith; no other corporate action is required in connection herewith;
(c) the execution and delivery of this instrument and the
performance of the transaction contemplated hereby
(i) does not conflict with the certificate of
incorporation or bylaws or any other
controlling documents of Licensee and
(ii) does not contravene, result in a breach or
violation of, or constitute a default under
any contract, agreement, commitment,
indenture, loan or credit agreement or any
other agreement, lease or instrument to
which Licensee is a party.
4. ARTICLE ROYALTIES
4.1 Commitment to Pay Royalties. Licensee shall pay to Licensor
or its successors-in-interest royalties in U.S. Dollars to accounts designated
by Licensor in accordance with the provisions set forth in this Article 4.
4.2 Royalty Rate and Payment Requirements. Subject to Section 4.3,
Licensee shall pay Licensor a royalty payment equal to five (5%) percent of Net
Sales. Such royalty payments shall be payable quarterly, in arrears, within
fifteen (15) days of the end of each Quarter commencing May 31, 1997.
4.3 Minimum Royalty.
(a) Royalty Payment Calculations. The quarterly royalty
payment shall be the greater of
(i) 25% of the Annual Minimum Royalty or
(ii) 5% of actual Net Sales for such quarter,
provided, however, in no event shall royalty
payments during any twelve month period
described below exceed the greater of (1)
the Annual Minimum Royalty for such twelve
month period or (2) 5% of actual Net Sales
for such twelve month period. The aggregate
Annual Minimum Royalty for the Licensed
Marks shall be as follows:
Year Annual Minimum Royalty
Twelve month period commencing Dec. 1, 1997 $100,000
Twelve month period commencing Dec. 1, 1998 $150,000
Twelve month period commencing Dec. 1, 1999 $200,000
Twelve month period commencing Dec. 1, 2000 $210,000
Twelve month period commencing Dec. 1, 2001 $220,000
There will be no minimum royalty from the date hereof to
November 30, 1997. During this period, Licensee shall pay royalties equal to
five (5%) percent of Net Sales, payable quarterly, in arrears, within fifteen
(15) days from the end of each Quarter.
(b) Prepayment of Royalty. Licensee shall, upon execution of
this Agreement, prepay the sum of $10,000 to be applied towards the royalty
payment for the fourth Quarter of the fiscal year commencing December 1, 1997.
4.4 Any defective Licensed Product returned to Licensee that was sold
prior to the Effective Date by Licensor, for which Licensor was paid will be
charged back to Licensor by deduction from royalties already payable. Licensor
shall have the right of approval for all such charges, provided that Licensor
shall use reasonable discretion in exercising such right of approval.
4.5 Any royalty amount not paid when due will bear interest at the rate
per annum equal to the prime rate of interest in effect from time to time at
Citibank, N.A., in New York City plus 2% from the due date until the date paid,
before and after default and judgment. This remedy is in addition to Licensor's
right to terminate this Agreement in accordance with Article 9 and payment of
the outstanding royalty amount after the due date with interest will not operate
to relieve the default if the royalty has not been paid when due.
4.6 Licensee shall maintain separate invoices and books of account for
all Licensed Products sold under or in connection with the Licensed Marks
hereunder. Such books of account shall be complete and accurate in accordance
with standard accounting practices so as to make the amount to become due and
payable to Licensor under this Agreement clearly ascertainable.
4.7 Licensee shall render to Licensor a written statement setting forth
its gross sales of Licensed Product and its adjustments thereto, Net Sales and
the Licensee's calculation of the royalty due to be paid and shall deliver the
same with each quarterly payment of royalty. In the event that there shall be
any dispute between the parties hereto as to the calculation of the royalty or
the calculation of the sales and adjustments of Licensee, the prevailing party
shall be entitled to recover from the other its reasonable legal and accounting
fees relating to the dispute.
4.8 Licensor or its authorized agent shall have reasonable access to,
and the right during normal business hours and upon five (5) days' notice to
Licensee to inspect such books, records and accounts of Licensee as may be
necessary to verify the accuracy of any statement required to be rendered by
Licensee hereunder. Licensor will be entitled to take copies of all such
information. Licensor and its representative will keep all of the information
received during such inspection strictly confidential, subject to its right to
use such information to prove the amount of royalty payable under this
Agreement.
4.9 The inspection, referred to in Section 4.8, will be at the expense
of Licensor unless the actual royalties paid by Licensee for any period is less
than the royalties payable under this Agreement by 5% or more, in which event,
the cost of the inspection will be paid by Licensee.
4.10 Sale of Licensed Marks.
(a) AUREUS Xxxx. If the cumulative paid royalties for the
AUREUS Xxxx shall be $2,500,000 or more during any five (5) year period after
the execution of this Agreement, Licensee shall own the AUREUS Xxxx for the
Territory without the payment of any additional consideration and this Agreement
(with respect to the AUREUS Xxxx only) shall terminate after the Assignment
Date. "Assignment Date" shall be the date that the cumulative paid royalties for
the AUREUS Xxxx meet or surpass $2,500,000 during any five (5) year period.
Licensor shall, within thirty (30) days of the Assignment
Date, execute and deliver a trademark assignment of the AUREUS Xxxx and
thereafter promptly take such further action as Licensee may request from time
to time in order to evidence or effectuate the assignment of the AUREUS Xxxx to
Licensee free and clear of all liens and encumbrances. Licensee shall pay all
costs incurred in preparing and recording the assignment of the AUREUS Xxxx.
(b) SUN ICE Xxxx. If the cumulative paid royalties for the SUN
ICE Xxxx shall be $3,000,000 or more during any five (5) year period after the
execution of this Agreement, Licensee will be granted a royalty free license to
use the SUN ICE xxxx for the Licensed Products in the Territory for the life of
the SUN ICE Xxxx. Licensee shall be granted such royalty free license subject to
the terms and conditions of this Agreement (other than with respect to royalty
payments) which, for purposes of this Section, shall survive the termination of
this Agreement.
4.11 Right of First Refusal.
During the term of this Agreement, if Licensor at any time desires to
assign the AUREUS Xxxx in the Territory to a third party ("Transfer of Rights"),
then Licensor must, prior to entering into a contract or other commitment for
the Transfer of Rights, first give written notice to Licensee specifying:
(i) The name and address of the proposed transferee ("Proposed Transferee");
and
(ii) The price at which and the terms and
conditions under which such Proposed
Transferee is willing to acquire rights in
the Licensed Products pursuant to the
Transfer of Rights ("Purchase Price").
Such written notice shall be accompanied by, if same exists, a
copy of any written offer made by such Proposed Transferee for the Transfer of
Rights and must include an offer by Licensor ("Purchase Offer") to consummate
the Transfer of Rights with Licensee on the same terms as those offered by or to
the Proposed Transferee.
Licensee shall give Licensor written notice of its acceptance
or rejection of the Purchase Offer within ten (10) days after the date on which
notice of the Transfer of Rights was received by Licensee ("Acceptance Period").
In the event that Licensee does not give Licensor written
notice of its acceptance of the Purchase Offer in the manner described above
within the Acceptance Period, Licensor may complete the Transfer of Rights with
the Proposed Transferee subject to the purchase terms set forth in the Purchase
Offer; provided, however, Licensor provides Licensee with such assurances and
agreements as Licensee may reasonably require to assure that the Transfer of
Rights will not adversely affect Licensee's rights under this Agreement. In the
event that Licensee accepts the Purchase Offer, Licensor and Licensee shall
execute a separate agreement assigning all rights, title and interest in the
AUREUS Xxxx, to Licensee, subject to the terms set forth in the Purchase Offer.
Licensee shall pay all costs incurred in preparing and recording such assignment
to Licensee.
Such right of first refusal shall not apply in the case of a
transfer to an affiliate of Licensor if such affiliate acknowledges, in writing,
Licensee's continuing right of first refusal.
4.12 XXXXX Xxxx. Nothing herein shall preclude Licensor from (a)
selling any product, including the Licensed Products, under the XXXXX xxxx; (b)
sublicensing the right to third parties to sell any product, including the
Licensed Products, under the XXXXX Xxxx; (c) maintaining trademark registrations
for the XXXXX xxxx; or (d) seeking to register the XXXXX xxxx. Licensee agrees
not to contest, challenge as object in any way to Licensor's use and/or
registration in accordance with this Agreement, of the trademark XXXXX or any
xxxx incorporating the xxxx XXXXX for any products. Licensee agrees that should
the AUREUS Xxxx, once assigned to Licensee, be cited as a basis for refusal of
registration of the XXXXX xxxx to Licensor, Licensee will cooperate fully and in
good faith to provide Licensor with Licensee's written consent to the
registration of XXXXX or any xxxx incorporating the xxxx XXXXX. Licensor agrees
not to contest, challenge or object in any way to Licensee's use and/or
registration of the AUREUS Xxxx in the United States, once assigned to Licensee
for the Licensed Products, and further agrees that should Licensor's XXXXX xxxx
be cited as a basis for refusal of registration of the AUREUS Xxxx to Licensee
in the United States, Licensor shall cooperate fully and in good faith to
provide Licensee with its written consent to the registration of the AUREUS
Xxxx.
5. TERM
5.1 The term of this Agreement shall be, unless terminated sooner as
hereinafter provided, for a period of five (5) years, commencing on the
Effective Date (hereinafter the "Term"). This Agreement shall be renewable by
Licensee for three (3) successive five (5) year periods, unless terminated
sooner as herein provided.
6. DUTIES OF THE LICENSEE
6.1 Licensee agrees that it will use the Licensed Marks only in
connection with Licensed Products and no other products.
6.2 Quality Control. In the course of producing and distributing the
Licensed Products under the Licensed Marks, Licensee shall maintain and adhere
to standards of quality and technical specifications that conform to quality
standards sufficient to ensure that the quality of any of the Licensed Products
produced, packaged and licensed under the Licensed Marks are consistent with the
quality of the products distributed under the Licensed Marks by Licensor within
two (2) years prior to the date of this Agreement and the reputation enjoyed by
the Licensed Marks within two (2) years prior to the date of this Agreement, or
are of higher quality or reputation.
6.3 Licensee shall indicate on all labels, price lists or advertising
of any kind printed by or on behalf of Licensee in which one or several of the
Licensed Marks appear, that the use of the Licensed Marks is made under license
and that Licensor is the owner of the Licensed Marks. In order to preserve the
validity and integrity of the Licensed Marks and to ensure compliance with this
Agreement, Licensor shall, at all reasonable times and upon reasonable prior
notice, have the right to inspect the premises and records of Licensee's
business. The Licensee shall, upon request, and at Licensee's cost, provide to
Licensor a reasonable number of samples of the Licensed Products, hangtags,
packagings and labels manufactured by or on behalf of Licensee. Licensee shall
discontinue any use of the Licensed Marks on or in connection with any product,
packages or marketing material to which Licensor reasonably objects that is
injurious to the reputation of or goodwill associated with the trademarks.
6.4 Ownership and Other Duties. Licensee acknowledges that the
ownership of the Licensed Marks is in Licensor and Licensee agrees that it will
do nothing inconsistent with such ownership and that use of the Licensed Marks
by Licensee shall inure to the benefit of Licensor, as applicable. Licensee
agrees that it shall not apply for registration or seek to obtain ownership of
any of the Licensed Marks, other than pursuant to Sections 4.10 or 4.11 of this
Agreement.
6.5 Licensee recognizes the goodwill associated with the Licensed Marks
and acknowledges that such goodwill belongs to and inures to Licensor. Licensee
agrees not to challenge the validity and Licensor's ownership of the Licensed
Marks.
6.6 Licensee shall comply in material respects with all applicable
laws, regulations, orders and other governmental and regulatory requirements
applicable to it relating to the advertising, promotion and sale of the Licensed
Products. Licensee agrees to execute additional documents or instruments
reasonably deemed necessary or appropriate, in the reasonable judgment of
Licensor to confirm or record the license contemplated herein.
6.7 Licensee agrees, upon reasonable request of Licensor, promptly to
execute all documents and instruments including, but not limited to, consent
agreements and license agreements, deemed necessary or appropriate, in the
reasonable judgment of Licensor, to secure registrations (and all renewals
thereof) and file applications for registration for the Licensed Marks.
6.8 Licensee agrees not to sell Licensed Products outside of the
Territory and to take reasonable steps to prevent the distribution of Licensed
Products outside of the Territory from within the Territory.
7. DUTIES OF THE LICENSOR
7.1 Licensor shall provide the Licensee with all information regarding
the marketing and sale of the Licensed Products in the Territory to Licensor at
the date hereof generally including the list of existing customers a well as the
list of customers indebted to Licensor.
7.2 Licensor agrees to not sell Licensed Products under the Licensed
Marks within the Territory (other than to the extent permitted under Section 2.2
of this Agreement) and further agrees to take reasonable measures to prevent
distribution of Licensed Products sold under the Licensed Marks within the
Territory from outside of the Territory.
8. ASSIGNMENT OF THE TRADEMARKS
8.1 Any assignment by the Licensor of the Licensed Marks or of its
rights, duties and obligations hereunder, whether voluntary or involuntary, or
by operation of law, shall be subject to the rights of the Licensee hereunder
and shall not operate to deprive the Licensee of any of its rights under this
Agreement.
8.2 The Licensee shall not assign this Agreement or its rights, duties
or obligations hereunder without prior written consent of the Licensor.
8.3 The Licensee shall not sublicense the Agreement or its rights,
duties or obligations hereunder. Notwithstanding the foregoing, Licensor
acknowledges and agrees that Licensee may contract with third parties for
manufacture of the Licensed Products so long as such third party complies with
the provisions set forth in Article 6 of this Agreement and further acknowledges
and agrees that resale by customers of Licensee is permitted provided that
Licensee does not receive any royalties, fees, commissions or any other benefits
from such resale by its customers.
9. TERMINATION
9.1 Events of Termination. If the Licensee fails to pay any amounts
when due under this Agreement or the Consignment Agreement and if such amounts
remain unpaid ten (10) days after notice is given to the Licensee by the
Licensor, the Licensor may, at its option, terminate this Agreement by notice in
writing expiring at any time after the date of receipt of the notice by the
Licensee.
9.2 If the Licensee is in material breach of any other terms of this
Agreement or ceases using a Licensed Xxxx to market or sell any Licensed Product
for any consecutive twelve (12) month period, which breach remains unremedied
for thirty (30) days after notice thereof is given by the Licensor to the
Licensee, or if the Licensee becomes insolvent or ceases voluntarily or not to
carry on business, the Licensor may, at its option, terminate this Agreement by
notice in writing expiring at any time after the date of receipt of the notice.
9.3 Licensee may not terminate this Agreement prior to December 1,
2000. Following such date, Licensee may terminate this Agreement upon written
notice of at least one hundred eighty (180) days to Licensor.
9.4 Upon material breach of this Agreement by Licensee, which breach
remains uncured for the relevant cure period, Licensor may, at its option,
terminate the Consignment Agreement by notice in writing expiring at any time
after the date of receipt of the notice by the Licensee.
9.5 If Licensee ceases to use any Licensed Xxxx to sell any Licensed
Products for any consecutive twelve (12) month period, which non-use remains
unremedied for ninety (90) days after notice thereof is given by Licensor to
Licensee, Licensor may at its option terminate this Agreement with respect to
the said Licensed Xxxx only by notice of termination in writing expiring at any
time after the date of receipt of the notice of termination.
9.6 Effects of Termination. Upon termination or expiration of this
Agreement, Licensee shall immediately cease to use the Licensed Marks, or any
part thereof, and shall not use any trade names, trademarks or other words
confusingly similar thereto.
9.7 Upon the termination of this Agreement for any reason other than
breach of Subsection 9.1(a), or expiration of this Agreement at the end of the
initial or subsequent term and subject to Subsection 9.2(d), Licensee shall be
entitled to dispose of all inventory of Licensed Products then existing for a
six (6) month period after the date of such termination or expiration in a
manner consistent with the terms and conditions of this Agreement and subject to
payment of the royalty provided under this Agreement calculated and payable
monthly within thirty (30) days of the end of each calendar month.
9.8 Upon the termination of this Agreement pursuant to a breach of
Subsection 9.1(a), and subject to Subsection 9.2(d), Licensee shall be entitled
to dispose of all inventory of Licensed Products then existing for a thirty (30)
day period, after the date of such termination, in a manner consistent with the
terms and conditions of this Agreement, and subject to payment of the royalty
provided under this Agreement, calculated and payable within sixty (60) days of
the date of termination of the Agreement.
9.9 Upon the termination of this Agreement, Licensor may, upon giving
notice to the Licensee, purchase all or any inventory of Licensed Product held
by or for Licensee at the true landed cost of Licensee of such Licensed Product,
other than Licensed Product required to fill existing purchase orders.
9.10 In the event that prior to December 1, 2000, this Agreement is
terminated for any reason, other than material breach by the Licensor, Licensee
will pay the Licensor an amount equal to the minimum royalties that would have
been payable if the Agreement had not been terminated calculated as provided in
this Agreement from the Effective Date to December 1, 2000 less any royalties
paid to the date of termination. The obligation to pay the amount arising under
this Subsection 9.2(e), is accelerated and such amount is due and payable within
sixty (60) days of the date of termination.
9.11 The remedies provided in this Agreement including, without
limitation Section 9.2, are cumulative and are in addition to all other remedies
available to Licensor at law or in equity and not in substitution therefor.
10. INDEMNITY
10.1 Licensor hereby agrees to defend, indemnify and hold Licensee
harmless against any claims, demands, causes of action and judgments arising out
of claims made by any third party with respect to infringement of the Licensed
Marks used in connection with the Licensed Products, in accordance with this
Agreement.
10.2 Licensee agrees to defend, indemnify and hold Licensor harmless
against any claims, demands, causes of action and judgments arising out of
Licensee's failure to comply with the terms of this Agreement.
10.3 Notice and Actions. Each of the parties shall bring to the other's
attention any unauthorized use of a xxxx which is the same or similar to the
Licensed Marks that comes to its attention.
10.4 Licensor shall have the right to determine whether any demand,
suit or other action shall be taken on account of or with respect to any
infringement or suspected infringement of the Licensed Marks. Licensor may
commence or prosecute any such suit or action or make any such demand in its own
name, and Licensee agrees to assist and cooperate with Licensor, as Licensor may
request, in connection with any such demand, suit or other action. If Licensor
prosecutes any such demand, suit or other action, Licensor shall be entitled to
all proceeds and recoveries resulting therefrom, however, Licensor shall
reimburse Licensee's expenses.
10.5 If the event Licensor chooses not to take any action with respect
to any infringement or suspected infringement of the Licensed Marks, Licensee
may commence or prosecute any such suit or action or make any such demand in its
own name, and Licensor agrees to assist and cooperate with Licensee, as Licensee
may request, including being named as a party plaintiff to the action. In
connection with any such demand, suit or other action, Licensee shall be
entitled to all of the proceeds and recoveries resulting therefrom; however,
Licensee shall reimburse Licensor's expense.
11. ARBITRATION
11.1 In the event of any dispute arising under this Agreement, such
dispute shall be referred to three arbitrators, one to be appointed by Licensor,
a second to be appointed by Licensee and a third to be appointed by the two
arbitrators so appointed; and the resolution reached by any two of them shall be
final. If any party refuses or neglects to appoint an arbitrator within ten (10)
days after the other shall have appointed an arbitrator and served written
notice thereof upon the other, then the arbitrator so appointed shall be the
sole arbitrator with full power and authority to resolve the dispute for that
purpose, and such arbitrator's decision shall be final.
12. MISCELLANEOUS
12.1 Any notice required or permitted to be given hereunder shall be in
writing, addressed as follows, and given by registered mail, return receipt
requested, by prepaid private courier or otherwise and delivered or sent prepaid
by telecopier or other similar means of electronic communications and confirmed
on the same or following day by prepaid mail:
with respect to the Licensee:
GLENGATE APPAREL, INC.
000 Xxxxxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxx Xxxxxx 00000
Telecopier: (000) 000-0000
Attention: Xxxxxx Xxxxxx
with copy to:
Xxxxxx, Xxxxxx & Xxxxxxxx
0 Xxxxxxxxxxxx Xxxxx
X.X. Xxx 0000
Xxxxxxxxxx, Xxx Xxxxxx 00000-0000
Attention: Xxxxxxx X. Xxxx, Esq.
with respect to the Licensor:
SUN ICE USA, INC.
0000 Xxxxx Xxxxxx, X.X.
Xxxxxxx, Xxxxxxx
Xxxxxx X0X 0X0
SUN ICE LTD.
0000 Xxxxx Xxxxxx, X.X.
Xxxxxxx, Xxxxxxx
Xxxxxx X0X 0X0
Telecopier: (000) 000-0000
Attention: Xxxxxx Xxxxxx
with copy to:
Xxxxxxx Xxxx & Xxxxxxxxx
One Citicorp Center
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxx
Any notice given shall be conclusively deemed to have been given and received on
the tenth (10th) days of postal service following mailing if given by registered
mail, or on the day of actual delivery when so personally delivered or on the
day of transmittal (return receipt requested) if sent by telecopier or other
electronic means. Either party may change its address of notice to the other
party in the manner aforesaid.
12.2 This Agreement, including the Exhibits attached hereto and the
documents delivered pursuant hereto, sets forth all the promises, covenants,
agreements, conditions and understandings between the parties hereto with
respect to the subject matter hereof, and supersedes all prior or
contemporaneous agreements, understandings, inducements or conditions, expressed
or implied, oral or written, except as herein contained. No changes of or
modifications or additions to this Agreement shall be valid unless the same
shall be in writing and signed by the parties hereto.
12.3 This Agreement may be executed in one or more counterparts each in
which shall be deemed an original but all of which together shall constitute one
and the same instrument.
12.4 This Agreement shall be binding upon and inure to the benefit of
the parties hereto and their respective successors and permitted assigns.
12.5 This Agreement shall be governed and interpreted and construed in
accordance with the laws of the State of New Jersey.
IN WITNESS WHEREOF, the parties hereto have duly executed and
delivered this Agreement, as of the date indicated hereunder.
Dated and signed on this 14th day of February, 1997.
Licensor
SUN ICE USA, INC.
By: /s/ Xxxxxx Xxxxxx
XXXXXX XXXXXX, President
SUN ICE LTD.
By: /s/ Xxxxxx Xxxxxx
XXXXXX XXXXXX, President
Dated and signed on this 14th day of February, 1997.
Licensee
GLENGATE APPAREL, INC.
By: /s/ Xxxxxx Xxxxxx
XXXXXX XXXXXX, President
EXHIBIT A
Trademark Licensed Products
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SUN ICE Mens and ladies golf outerwear
AUREUS Mens golf apparel
