EXHIBIT 10.8
AMENDMENT TO TRADEMARK LICENSE AGREEMENT
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THIS AMENDMENT NO. 2 (the "Amendment") is made and entered into as of
this 18th day of February, 1998, by and between Lanco, Inc., a Delaware
corporation ("Lanco"), Lernco, Inc., a Delaware corporation ("Lernco"), Limited
Stores, Inc., a Delaware corporation ("Limited Stores"), Lane Xxxxxx, Inc., a
Delaware corporation ("Lane Xxxxxx"), Xxxxxx Stores, Inc., a Delaware
corporation ("Xxxxxx Stores"), Lane Xxxxxx Direct Holding, Inc., a Delaware
corporation ("LBDH") (as successor corporation to Lane Xxxxxx Direct, Inc., and
Xxxxxx Direct Inc.) (the above all collectively referred to as "Licensor"), and
Brylane, L.P., a Delaware Limited Partnership ("Brylane") ("Licensee").
WHEREAS, on August 20, 1993, certain of the parties hereto entered
into a Trademark License Agreement providing for (i) the licensing of certain
trademarks by Lanco, Lernco, Limited Stores and Lane Xxxxxx to LBDH pursuant to
the terms and subject to the conditions set forth in the Agreement and (ii) the
assignment by LBDH of the Agreement and the licenses therewith to Brylane; and
WHEREAS, on December 9, 1996, the parties entered into Amendment No. 1
to Trademark License Agreement (as so amended, the "Agreement"); and
WHEREAS, Pinault Printemps-Redoute, S.A. ("PPR") has entered into a
Stock Purchase Agreement with Licensee (the "Investment").
WHEREAS, the parties hereto desire to amend the Agreement on the terms
hereinafter set forth and to include in the Agreement all of the provisions of
this Amendment including the foregoing recitals;
NOW THEREFORE, in consideration of the material agreements hereinafter
set forth, the parties hereto, intending to be legally bound, hereby agree as
follows:
1. Section 1 of the Agreement shall be amended to include the
following subsection.
Section 1(c). Additional Categories The scope of the Agreement shall
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include mens' wear, intimate apparel and shoes (the "Additional Categories"), as
follows:
(i) Licensor acknowledges that, prior to the Amendment of the
Agreement, Licensee has used the Marks in connection with the Additional
Categories through Catalogues and on Advertising Materials (the "Additional
Use"). Licensor hereby expressly waives any claims it may have against Licensee
which arise by virtue of any use by Licensee, prior to this Amendment of the
Agreement, of the Marks in connection with the sale of products in the
Additional Categories. This waiver does not constitute an admission by Brylane
that any breach of the Trademark License Agreement has occurred.
(ii) Licensor hereby expressly grants to Licensee the right to
continue to use the Marks in connection with the Additional Categories through
Catalogues and on Advertising Materials in a manner substantially identical to
Licensee's use of the Marks, prior to the Amendment of the Agreement, through
Licensee's Fall 1998 media buying period, such period to terminate no later than
March 31, 1999 (the "Additional Period") except that Licensee's use in
connection with intimate apparel and shoes may continue following the expiration
of the Additional Period for the Xxxx "Xxxxxx" and for the Xxxx "Lane Xxxxxx"
(provided the Lane Xxxxxx Xxxx was used for such products prior to August 20,
1993).
2. Section 2.7 of the Agreement shall be amended to include the
following subsection:
Section 2.7.7 Licensor acknowledges that Licensee may use the Marks
with other trademarks of Licensee for the purpose of the transition from use of
the Marks in connection with Apparel and the Additional Categories, provided
that Licensee obtains the prior consent of Licensor to any such use, which
consent shall not be unreasonably withheld. Licensee acknowledges that
Licensor's consent will be withheld if usage of the Marks would, in the opinion
of Licensor, create any confusion among consumers with respect to Licensor's
retail stores or disparage or adversely impacts the goodwill associated with the
Marks.
3. Section 6 of the Agreement shall be amended to add the following
subsection:
Section 6.2. Non-Competition For the purpose of Section 6.1, PPR's
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business as presently conducted is not competitive with The Limited or any of
its Affiliates. Accordingly, it is specifically agreed by the parties hereto
that PPR's Investment in Licensee will not trigger an early termination of the
Agreement. The substance of the immediately preceding sentence, however, shall
not limit or waive any of The Limited's rights to early termination pursuant to
the Agreement in the event that subsequent to the effective date of this
Amendment, PPR's business activities compete with any retail or catalog business
conducted by The Limited or any of its Affiliates as of January 20, 1993.
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The parties hereto have caused this Amendment to be executed on the
day and year first above written.
LANCO, INC.
LERNCO, INC.
LIMITED STORES, INC.
LANE XXXXXX, INC.
XXXXXX STORES, INC.
LANE XXXXXX DIRECT HOLDING, INC.
By: /s/ Xxxxxxx X. Xxxxx
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Name: Xxxxxxx X. Xxxxx
Title: Vice President
BRYLANE, L.P.
By: /s/ Xxxxxx X. Xxxxxxxx
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Name: Xxxxxx X. Xxxxxxxx
Title: Executive Vice President,
Chief Financial Officer,
Secretary and Treasurer
Acknowledged and accepted as those portions of this Amendment granting rights
to, or imposing obligations on The Limited, Inc.
THE LIMITED, INC.
By: Xxxxxxx X. Xxxxx
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Name: Xxxxxxx X. Xxxxx
Title: Vice President
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