TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement"), effective as of December 31,
2001 ("Effective Date") is by and between elcom, inc. with a principal place of
business at 00 Xxxxxx Xxx, Xxxxxxx, XX 00000 XXX (hereinafter referred to as
"Licensor") and AJJP Limited, a company incorporated in England under company
number 4336259 (which is to be renamed Elcom Information Technology Limited
after December 31, 2001) with its principal place of business at 000 Xxxxxxxxx
Xxxxxx Xxxxxx Xxxxx XX0 0XX ("Licensee").
1. Definitions
(a) "Business" shall mean the information technology products reseller business
carried on by Elcom Holdings Limited in the United Kingdom immediately before
the Effective Date.
(b) "Starbuyer trademark" shall mean the trademark "Starbuyer" owned by Licensor
including all common law rights therein and attaching thereto and all registered
trade marks obtained and all pending applications for trademark registration in
respect of the same within the Territory.
(c) "Territory" shall mean the United Kingdom and Eire.
(d) "US Domain Names" shall mean the domain names xxx.xxxxxxxxx.xxx and
xxx.xxxxxxxxx.xxx as used by the Licensor in its business.
2. License Grant and Restrictions
(a) Upon the terms and conditions hereinafter set forth, Licensor grants to
Licensee a perpetual, irrevocable, exclusive, non transferable, royalty-free
license to use the Starbuyer trademark in the Territory solely in connection
with the Business in a manner consistent with usage guidelines provided by
Licensor to Licensee from time to time which shall be no more onerous than those
applied by the Licensor or any other licensee of the Starbuyer xxxx.
(b) All rights not expressly granted in respect to the Starbuyer trademark and
the US Domain Name are reserved by Licensor. Licensee acknowledges that nothing
in this Agreement shall give it any right, title or interest in the Starbuyer
trademark or the US Domain Names, other than the license rights to the Starbuyer
trademark granted herein. Licensee may not use or reproduce the Starbuyer
trademark in any manner whatsoever other than as described above. Nothing in
this Agreement shall prevent the Licensor or any other party authorized by the
Licensor from using the Starbuyer trademark in any manner and in relation to any
goods or services in the Territory or elsewhere.
(c) Notwithstanding any other provision of this Agreement:-
(i) Licensor agrees that Licensee may use the Starbuyer trademark as part
of any company name or trading name. Licensee may also use the Starbuyer
trademark as part of any domain name expressly as part of xxx.xxxxxxxxx.xx.xx
(or .co.ei), xxx.xxxxxxxxxxxxx.xx.xx (or .co.ei), xxxxxxxxxxxxx.xxx and/or
xxxxxxxxxxxxx.xxx and use or display the Starbuyer trade xxxx on any website of
the Licensee operated in connection with the Business;
(ii) nothing in this Agreement shall affect in any way the ownership and/or
usage rights of Licensee under the Offer document dated 31st December 2001 for
the sale of the business of Elcom Holdings Limited and Elcom Information
Technology Limited between Elcom Holdings Limited (1), Elcom Information
Technology Limited (2) and the Licensee (3) in respect of the trade xxxx
"StarbuyerGold" or the domain names "xxxxxxxxxxxxx.xx.xx / .com/.net" (together
the "StarbuyerGold IP") which the Licensor acknowledges and confirms, as between
the Licensor and Licensee, are the exclusive property of Licensee and in
connection therewith, hereby undertakes that neither it nor any successor in
title or assignee of Licensor shall seek to exercise any right of Licensor in
relation to the Starbuyer trademark against the use by Licensee (or any assignee
or successor in title) of the StarbuyerGold IP.
(d) The provisions of Clause 2 (c) shall survive any expiry or termination of
this Agreement for any reason.
3. No Further Conveyances
Licensee shall not assign, transfer or sublicense this Agreement (or any right
granted herein) in any manner without the prior written consent of Licensor not
to be unreasonably withheld or delayed. The Licensor confirms that it will not
withhold its consent where the assignment is to a purchaser of a substantial
part of the Business from Licensee; provided, however such restriction on
withholding consent shall not apply to any purchase of a substantial part of the
Business by a competitor of Licensor.
4. Quality, Inspection, and Approval
At anytime at Licensor's request, Licensee shall supply Licensor, at no cost to
the Licensor, with suitable specimens of Licensee's use of the Starbuyer
trademark in connection with the Business. Licensee must correct any
deficiencies in its use of the Starbuyer trademark in its advertising, packaging
and collateral, and cease and desist from further publication or distribution of
the materials upon reasonable notice from Licensor. Refusal to correct such
deficiencies or to cease publication or distribution shall, at Licensor's
discretion, result in a right to give notice to terminate the license to use the
Starbuyer trademark in accordance with this Agreement.
5. Ownership, Registration, Identification and Use
Licensee acknowledges Licensor's ownership of the Starbuyer trademark and, save
as provided below, all goodwill associated therewith, and all registrations
thereof throughout the world. Licensor shall, in its own name and within its
sole discretion, obtain such registrations of the Starbuyer trademark as it may
deem necessary. Licensee shall cooperate with Licensor in obtaining such
registrations as Licensor may deem necessary, and in making such further filings
(e.g., license recordal, registered user filings) as may be required, all at
Licensor's expense. Licensee shall use the Starbuyer trademark in a manner that
does not derogate from Licensor's rights in the Starbuyer trademark and will
take no action that will interfere with or diminish Licensor's rights in the
Starbuyer trademark. Licensee agrees that all goodwill associated with the use
of the Starbuyer trademark by Licensee will inure to the benefit of Licensor,
but for the avoidance of doubt all goodwill associated with the Business and the
StarbuyerGold IP will inure to the benefit of Licensee. Licensee may not use
Starbuyer trademark in any way as to suggest endorsement or sponsorship of the
Business by Licensor.
6. Warranties and Disclaimer
6.1 The Licensor warrants that it is the sole legal and beneficial owner of the
Starbuyer trademark and has the right to enter into this Agreement and grant the
licensed rights under clause 2 to the Licensee. Furthermore, the Licensor
warrants that it has not nor shall it do anything or permit anything to be done
which would conflict with or diminish the rights granted to the Licensee
hereunder.
6.2 In relation to any registrations granted in respect of the Starbuyer
trademark all registration and renewal fees (if applicable) have been paid in
respect of the Starbuyer trademark and there has been no act or omission the
affect of which would be to render the Starbuyer trademark vulnerable or liable
to be revoked (partially or in full) on any grounds including, without
limitation, on grounds of non-use, deceptive use or bad faith.
6.3 The use of the Starbuyer trademark in the Territory does not and will not
infringe any trademark or other intellectual property or other right belonging
to any third party.
6.4 No claims or applications have been made against the Licensor, no
notifications (including non-threatening letters) have been received by and no
circumstances are known to the Licensor in respect of the Starbuyer trademark
which (notwithstanding any view taken by the Licensor as to the merits of such
claim, application, notification or circumstances) if pursued, granted or acted
upon would affect the accuracy of the warranties given at Clauses 6.1, 6.2 and
6.3.
6.5 SUBJECT TO CLAUSES 6.1, 6.2, 6.3 AND 6.4 TO THE EXTENT PERMITTED BY
APPLICABLE LAW, THE LICENSED MARKS ARE PROVIDED "AS IS", WITHOUT WARRANTY OF ANY
KIND, AND ALL IMPLIED WARRANTIES, INCLUDING BUT NOT LIMITED TO IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT, ARE HEREBY
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TRADEMARK LICENSE AGREEMENT
EXCLUDED. IN THE EVENT OF A DISPUTE WITH A THIRD PARTY REGARDING LICENSOR'S OR
LICENSEE'S RIGHT TO USE THE STARBUYER TRADEMARK, LICENSEE SHALL, AT LICENSOR'S
REQUEST, IMMEDIATELY CEASE ALL USE OF THE STARBUYER TRADEMARK.
6.6 The Licensor shall indemnify and keep indemnified the Licensee, its
directors, employees, permitted assignees or sub-licensees (each an "Indemnified
Person") from and against all costs, claims, demands, liabilities, expenses,
damages or losses (together "Losses") suffered or incurred by an Indemnified
Person arising out of or in connection with the use of the Starbuyer trademark
in accordance with the terms hereof arising as a result of any claim or legal
proceeding brought or threatened by a third party on the grounds that the
Starbuyer trademark infringes that third party's intellectual property rights.
6.7 Licensee shall indemnify, defend, and hold harmless Licensor from and
against any and all damages, costs, claims, demands, liabilities and expenses
(including reasonable attorneys' fees) incurred in connection with a claim
relating to Licensee's use of the Licensed Marks outside of the scope of this
Agreement.
7. Infringements
7.1 In addition to and without prejudice to any other right or remedy available
to Licensee under any applicable laws in the Territory, the Licensee shall have
the right to have the conduct of any claim or proceedings relating to the use of
the Starbuyer trademark in the Territory and shall have the exclusive right to
decide what action, if any, to take in respect of any infringement or alleged
infringement of the Starbuyer trademark in the Territory by any third party or
any other claim or counterclaim brought or threatened in respect of the use or
registration of the Starbuyer trademark in the Territory.
7.2 Licensor shall, at the expense of Licensee, provide all assistance as
Licensee may require in the prosecution or defence of any proceedings concerning
the Starbuyer trademark in the Territory, including, without limitation, lending
its name to any proceedings, provided, however, that any costs incurred by
Licensor under this Clause 7.2 shall be borne by Licensee.
7.3 The Licensee shall be entitled to all awarded damages and costs or
settlement amounts, if any, including contribution to legal costs arising from
any action or proceedings referred to in this Clause 7.
7.4 If the Licensor receives notice from any third party which alleges that the
Starbuyer trademark are invalid or that the use of the Starbuyer trademark
infringes any rights of another party, Licensor shall immediately send a copy of
such notice to Licensee and shall make no comment or admission to any third
party in respect thereof.
8. Termination
The rights granted to the Licensee hereunder are irrevocable. The sole remedy of
Licensor for any breach by Licensee of the provisions of this Agreement shall be
damages.
9. Limitation of Liability
Subject to Licensor's liability under Clause 6.1 and Clause 11(d) which shall
not be limited, the cumulative liability of either party in respect of all
claims for loss or damage arising out of, or in connection with any provision of
this Agreement, except for death or personal injury resulting from negligence,
will in no circumstance exceed US$10,000, except in respect of Licensor's
liability under Clause 6.6 or in respect of Licensee's liability under Clause
6.7 which shall in no circumstance exceed US$100,000. IN NO EVENT SHALL EITHER
PARTY BE LIABLE FOR SPECIAL, INCIDENTAL, CONSEQUENTIAL DAMAGES ARISING OUT OF OR
IN CONNECTION WITH THIS AGREEMENT, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
10. Further Assurance
Each party shall, at the cost and expense of the party requesting further
assurance pursuant to this clause, execute and do all such further acts, things
and deeds as may be reasonably required in order to give effect to the purposes
of this Agreement and to afford the other the benefits hereby provided. Licensor
shall assist Licensee as requested by Licensee (including by executing any
necessary documents) in recording Licensee as a licensee of the Starbuyer
trademark on any relevant register in the Territory (including any applications
for trademark registrations).
11. General
(a) This Agreement shall be governed by and construed in accordance with the
laws of the England and Wales without regard to its principles of conflicts of
laws. The parties agree that non-exclusive jurisdiction and venue of any action
with respect to this Agreement shall be in a court of competent subject matter
jurisdiction located in England and Wales and each of the parties hereby submits
itself to jurisdiction and venue of such courts for the purpose of any such
action. If any provision of this Agreement is held to be invalid, illegal or
unenforceable, the validity, legality and enforceability of the remaining
provisions will not be affected or impaired thereby.
(b) No waiver of any breach of any provision of this Agreement shall constitute
a waiver of any prior, concurrent or subsequent breach of the same or any other
provision hereof, and no waiver shall be effective unless made in writing and
signed by an authorized representative of the waiving party.
(c) Neither this Agreement, nor any terms and conditions contained herein, shall
be construed as creating a partnership, joint venture or agency relationship or
as granting a franchise.
(d) In the event of any assignment of the Starbuyer trademark by the Licensor,
the Licensor shall procure that its assignee ("Assignee") enters into a deed
which is delivered to the Licensee (or any subsequent assignee thereof), such
deed to be read and construed in accordance with English law and in respect of
which the parties shall submit to the jurisdiction of the English courts made
between the Licensee, Licensor and the Assignee, under which the Assignee
covenants directly with the Licensee that it will comply in all respects with
the terms of this Agreement as licensor and be bound by the terms of this
Agreement as licensor including being bound by the provisions of this clause 11
(d) on any subsequent assignment. In the event of any assignment of this
Agreement in accordance with this Agreement, this Agreement shall be binding
upon and shall inure for the benefit of such assignee.
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TRADEMARK LICENSE AGREEMENT
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives as of the date first above written.
elcom, inc.
By: /s/
-----------------------------
Name:
Title:
AJJP Limited
By: /s/
-----------------------------
Name:
Title:
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