EXHIBIT 10.40
WORLD-WIDE TRADEMARK
OWNERSHIP, USE AND ASSIGNMENT AGREEMENT
Effective 30th June, 1997
Signed 18 December, 1997
WORLD-WIDE TRADEMARK
OWNERSHIP, USE AND ASSIGNMENT AGREEMENT
AGREEMENT effective as of this thirtieth (30th) day of June, 1997, by and
between Bowater Incorporated, a Delaware corporation ("BOWATER USA"), and Rexam
plc (formerly called BOWATER PLC), and English company ("REXAM") (collectively,
the "PARTIES").
WHEREAS, the PARTIES each have an interest in the "Bowater" trade name
(including corporate names), the "Bowater" word xxxx, dimunitives, contractions
and variations thereof, and the "Bowater" house xxxx (collectively, the "BOWATER
MARKS").
WHEREAS, BOWATER USA, including its predecessors in interest, and REXAM have
previously entered into certain AGREEMENTS, (collectively the "PRIOR
AGREEMENTS") regarding the use, ownership, distribution, territories and rights
to the BOWATER MARKS.
WHEREAS, REXAM, has heretofore conveyed many individual registrations of the
"Bowater" house xxxx to BOWATER USA.
WHEREAS, REXAM and its subsidiaries (together "Rexam Group") have adopted and
are using the "Rexam" name and marks in connection with most of their products
and services and no longer use the BOWATER MARKS, except those rights reserved
in Section 2 of this Agreement.
WHEREAS, BOWATER USA desires to acquire substantially all of Rexam Group's
rights in or to the BOWATER MARKS, to the extent that it has not heretofore
acquired the same, and
1
REXAM desires to convey such rights in the BOWATER MARKS to BOWATER USA as Rexam
Group has with Rexam Group retaining those rights in and to the BOWATER MARKS as
set out in Section 2, subject to the terms and conditions set forth in this
Agreement;
NOW, THEREFORE, in consideration of the premises and mutual covenants and
agreements set forth hereinafter, together with other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
PARTIES agree as follows:
1. REXAM warrants that, as far as it is aware neither it nor any member of the
Rexam Group has (i) assigned to any third party any rights in and to the
BOWATER MARKS except those previously transferred to BOWATER USA; or, (ii)
granted any licenses that are currently in use, to use the BOWATER MARKS
other than in respect of the RESERVED RIGHTS (as defined below) and a
license granted to Land Securities plc in relation to Xxxxxxx Xxxxx,
Xxxxxxxxxxxxx, Xxxxxx.
2.1 REXAM Group shall retain (and does not hereby transfer or assign to BOWATER
USA) the following rights (collectively, the "RESERVED RIGHTS") in and to
the BOWATER MARKS:
(a) All rights in the BOWATER MARKS, with the exception of the
"Bowater" housemark, in relation to those product categories or any
new products developed within the product categories, listed in the
Schedule which may now or hereafter be manufactured or distributed
by the SUBSIDIARIES listed in the Schedule attached hereto, or any
successor in interest to any of them.
2
(b) REXAM shall be free to expand its manufacturing and sales
facilities for the product categories as defined in the Schedule
anywhere in the EASTERN HEMISPHERE provided that any use of the
BOWATER MARKS be accompanied by a term that is product specific,
e.g. "Bowater Windows" and "Bowater Security Papers." REXAM shall
not have the right to expand its manufacturing facilities, sales
offices, or corporate name into the WESTERN HEMISPHERE in
conjunction with the RESERVED RIGHTS. As used herein, the EASTERN
HEMISPHERE means all of the world except the WESTERN HEMISPHERE as
defined in Section 3 infra.
(c) All rights in the name of "Bowater House" Knightsbridge in London,
England, in connection with that building;
(d) All rights in the BOWATER MARKS for all ministerial and
administrative purposes as:
(i) are necessarily incidental to, or appropriate to, further
facilitate REXAM Group's use of the RESERVED RIGHTS, including, but
not limited to, registration of any such RESERVED RIGHTS described
in (a) or (b) above as and when required; and/or
(ii) arise as a result of Rexam Group's previous connection with
the BOWATER MARKS, in particular the name `Bowater', including,
without limitation, using the name in dealings with registry and
administrative and other offices that hold registrations,
agreements or other information in the former names of Rexam
3
Group companies, references in existing or commissioned marketing
literature, product information, catalogues or similar materials,
and indicating the former name of any Rexam Group company where
appropriate to do so.
2.2 (a) Where it is appropriate to do so, REXAM shall, at such time as
subsequent dealings are required with regard to the
above-referenced registry, administrative, and other office, use
reasonable endeavors to ensure that reference to the Bowater name
will be deleted from the relevant registry or office and the
appropriate correction entered on the record. With regard to the
above-referenced existing or commissioned marketing literature,
product information, catalogs, or similar material, when such
material is replaced and subsequent inventory created, the new
material will appropriately identify the relevant Rexam entity.
(b) This Section 2 and its limitations shall run with the exercise of
the rights retained herein and shall be binding upon any transferee
of all or a substantial part of any business which relates to any
of the PRODUCTS to which any of the RESERVED RIGHTS apply;
(c) The RESERVED RIGHTS retained herein shall be transferable only with
the sale of all or a substantial part of any business which relates
to any of the PRODUCTS to which any such rights apply. In the event
of a sale and transfer of the RESERVED RIGHTS, REXAM undertakes to
use its best efforts to negotiate a two-year transition period in
which the prospective buyer will cease using the BOWATER MARKS.
4
(d) Nothing herein shall prevent BOWATER USA from adopting and using
any of the RESERVED RIGHTS which REXAM notifies BOWATER USA in
writing heretofore have been or hereafter will be abandoned by
REXAM or become abandoned as a matter of law provided that, in such
circumstances, BOWATER USA shall confirm such abandonment with
REXAM before adopting and using the affected RESERVED RIGHTS.
3. REXAM hereby assigns and conveys to BOWATER USA such right, title and
interest as the Rexam Group may have, including such goodwill associated
therewith that REXAM may have (if any) which arises exclusively from the use
thereof by BOWATER USA, including its predecessors in interest, in and to
the BOWATER MARKS world-wide for any and all goods and services
(collectively, the "RIGHTS"), subject to Section 2, above. Rexam shall not
utilize the BOWATER MARKS now or in the future in any territory worldwide
except as provided in Section 2. Further, REXAM undertakes that it shall not
use the BOWATER MARKS in any part of North, Central and South America
together with all contiguous islands under the governmental control of any
country located therein and together with all countries of the Caribbean
group of islands, including Bermuda and the Falkland Islands ("WESTERN
HEMISPHERE") except as may arise as a consequence of the RESERVED RIGHTS.
4. Upon BOWATER USA's request and expense therefor, REXAM shall execute such
documents to assign and shall procure that other members of the Rexam Group
shall execute such documents to assign, to the extent not already assigned,
by separate
5
documents all existing trademark or service xxxx registrations of the
BOWATER MARKS, except those registrations relating to the RESERVED, to
BOWATER USA and further agrees to cooperate by executing any and all
documents which may be required to effect the transfer and assignment of
such trade and service xxxx registrations.
5. Each of the PARTIES agrees that it shall use reasonable endeavors to use the
BOWATER MARKS in a way which minimizes confusion between the respective
PARTIES. In the unlikely event that any confusion should arise from the
PARTIES' respective uses of the BOWATER MARKS for their respective products
and/or services, the PARTIES will cooperate in good faith to xxxxx such
confusion.
6. BOWATER USA represents and warrants that no assignments or outstanding
licenses have been granted by BOWATER USA or its subsidiaries to third
parties in respect of the BOWATER MARKS.
7. BOWATER USA agrees to pay REXAM concurrently with execution of this
Agreement consideration for the RIGHTS in the amount of $1,650,000 in U.S.
funds, which funds shall be delivered to REXAM via wire transfer.
8. Subject to Section 2, REXAM shall not oppose or otherwise obstruct BOWATER
USA's attempt to register the BOWATER MARKS or any registration resulting
therefrom and shall provide reasonable assistance with registration whenever
and wherever needed, at BOWATER USA's request and sole expense.
6
9. With the exception of the RESERVED RIGHTS, all uses heretofore of the
BOWATER MARKS by BOWATER USA and any of their predecessors, subsidiaries,
affiliates, or licensees shall inure to the benefit of BOWATER USA.
10. Except as specifically limited herein, this Agreement shall be binding upon
and inure to the benefit of the PARTIES hereto and their successors, and
assigns. As used herein, the successors shall include, but not be limited
to, any successor by way of merger, consolidation, sale of all or
substantially all of its assets, or similar reorganization.
11. This Agreement contains the entire understanding between the PARTIES hereto
and supersedes all other oral (if any) and written PRIOR AGREEMENTS or
understandings between them in relation to the use of the BOWATER MARKS and
the matters dealt with in this Agreement. No further rights or obligations
from the PRIOR AGREEMENTS in relation to the use of the BOWATER MARKS and
the matters dealt with in this Agreement remain except to the extent
specifically set forth herein.
12. No modification or addition hereto or waiver or cancellation of any
provision of this Agreement shall be valid except as specified in writing
signed by the party to be charged therewith.
13. The validity and construction of this Agreement or of any of its provisions
shall be determined under the laws of England. The invalidity or
enforceability of any provision of this Agreement shall not affect or limit
the validity and enforceability of the other provisions hereof.
7
14. In the event of any dispute, controversy or claim arising out of or relating
to this Agreement or the breach, termination, or validity thereof, except
for disputes in respect of which equitable relief is sought (individually, a
"DISPUTE"), the PARTIES shall make a good faith attempt to settle the
DISPUTE by mediation pursuant to the provisions of this Section 14 before
resorting to the procedure set forth in Section 15 below:
(a) Unless the parties agree otherwise, the mediation shall be conducted in
accordance with the Commercial Mediation Rules of the American
Arbitration Association as modified pursuant to this Section 14, by a
mediator who (x) has the qualifications and experience set forth in
paragraph (b) of this Section 14 and (y) is selected as provided in
paragraph (c) of this Section 14.
(b) Unless the PARTIES agree otherwise, the mediator shall be a mediator
certified by the International Trademark Association who has mediated
cases involving large commercial transactions for the federal or state
courts.
(c) Either party (the "INITIATING PARTY") may initiate mediation of the
DISPUTE by giving the other party (the "RECIPIENT PARTY") written notice
(a "MEDIATION NOTICE") setting forth a list of the names and resumes of
qualifications and experience of three (3) impartial persons who the
INITIATING PARTY believes would be qualified as a mediator pursuant to
the provisions of paragraph (b) hereof. Within seven (7) days after the
delivery of the MEDIATION NOTICE, the RECIPIENT PARTY shall give a
counter-notice (the "COUNTER-NOTICE") to the INITIATING PARTY in which
the RECIPIENT
8
PARTY may designate a person to serve as the mediator from among the
three (3) persons listed by the INITIATING PARTY in the MEDIATION NOTICE
(in which event such designated person shall be the mediator). If none
of the persons listed in the MEDIATION NOTICE is designated by the
RECIPIENT PARTY to serve as the mediator, the COUNTER-NOTICE shall set
forth a list of the names and resumes of three (3) impartial persons who
the RECIPIENT PARTY believes would be qualified as a mediator pursuant
to the provisions of paragraph (b) hereof. Within seven (7) days after
the delivery of the COUNTER-NOTICE, the INITIATING PARTY may designate a
person to serve as the mediator form among the three (3) persons listed
by the RECIPIENT PARTY in the COUNTER-NOTICE (in which event such
designated person shall be the mediator). If the PARTIES cannot agree on
a mediator from the three (3) names from the other party's list, each
party shall strike two (2) names form the other party's list, and the
two (2) remaining persons on both lists will jointly select as the
mediator any person who has the qualifications and experience set forth
in paragraph (b) hereof. If the two (2) persons are unable to agree,
then the mediator will be selected by the American Arbitration
Association.
(d) If the DISPUTE cannot be settled within 30 days after the mediator has
been selected as provided above, either party may give the other and the
mediator a written notice declaring the mediation process at an end, in
which event the DISPUTE shall be resolved as hereinafter provided.
9
(e) All conferences and discussions which occur in connection with mediation
conducted pursuant to this Agreement shall be deemed settlement
discussions, and nothing said or disclosed, nor any document produced
which is not otherwise independently discoverable, shall be offered or
received as evidence or used for impeachment or for any other purpose in
any current or future arbitration or litigation.
(f) Each party shall bear its own costs and expenses with respect to
mediation, provided, however, that the costs of the mediator shall be
shared equally between the parties.
15. Any DISPUTE not settled in accordance with the procedures set forth in
Section 14 of this Agreement shall, at the request of either party, be
settled by the courts of England. Each of the parties hereby consents to
service of process by registered mail, by receipt of Federal Express or
other courier delivery, or by personal delivery at its address set forth
below and agrees that its submission to jurisdiction and its consent to
service of process by mail is made for the express benefit of the other
party.
16. This Agreement may be executed in one or more counterparts, each of which
shall be deemed an original and all of which together shall constitute one
and the same instrument. Execution of this Agreement may be effected by
facsimile transmission and facsimile signatures will have the same effect
and force as an original signature.
10
17. All notices hereunder shall be deemed given if in writing, and delivered
personally (including by commercial courier or delivery service) or sent by
facsimile, or by registered or certified mail (return receipt requested) to
the PARTIES at the following addresses (or at such other addresses as shall
be specified by like notice):
(a) if to REXAM, to: Rexam PLC
000 Xxxxxxxxxxxxx
Xxxxxx XX0X0XX Xxxxxx Xxxxxxx
Fax: 000-00-000-000-0000
Attention: Xxxxxxx X. Xxxxxxxx
Finance Director
(b) if to BOWATER USA, to: Bowater Incorporated
00 Xxxx Xxxxxxxxxx Xxx
Xxxxxxxxxx, XX 00000 XXX
Fax: (000) 000-0000
Attention: Xxxxxxx X. Xxxxxx
Xx. Vice President
Corporate Affairs and
General Counsel
11
The PARTIES have caused this Agreement to be signed as of the day and year first
above written, whereupon it became a legally binding agreement in accordance
with its terms and conditions thereof.
Witness: BOWATER INCORPORATED
/s/ Xxxxx X. Xxxxx /s/ Xxxxxxx X. Xxxxxx
/s/ Xxxxxxx X. Xxxxxxx By: Xxxxxxx X. Xxxxxx
Title: Sr. Vice President, Corporate Affairs
and General Counsel
Date: December 16, 1997
Witness: REXAM PLC
/s/ [illegible signature]
/s/ Xxxx Xxxxxxx /s/ Xxxxxxx X. Xxxxxxxx
By: Xxxxxxx X. Xxxxxxxx
Title: Finance Director
Date: 18 December 1997
12
SCHEDULE
PRODUCT CURRENT MANUFACTURING COUNTRIES WHERE
CURRENT BUSINESS CATEGORIES LOCATION (TERRITORIES) SUBSIDIARY AND PLACE OF PRODUCT IS SOLD
(PRODUCT) XXXX INCORPORATION
Bowater Windows window and door None except Czech Republic Bowater Windows Limited - U.K
products subsidiary U.K. (England) Slovakia
corporate names Germany Bowater Halo Limited - Germany
Poland (England) Belgium
Netherlands
Luxembourg
Czech Republic
Poland
Croatia
Russia
Lithuania
Estonia
South Africa
Singapore
Hungary
Ireland
France
Austria
Bowater Business computer BOWJET England Bowater Business Forms U.K.
Forms stationery and BOWLIST Limited - (England) Northern Ireland
business forms Subsidiary Republic of
corporate name Ireland
USA
Kenya
Malta
Ghana
Nigeria
Uganda
Israel
Libya
PRODUCT CURRENT MANUFACTURING COUNTRIES WHERE
CURRENT BUSINESS CATEGORIES LOCATION (TERRITORIES) SUBSIDIARY AND PLACE OF PRODUCT IS SOLD
(PRODUCT) XXXX INCORPORATION
Bowater Security business *BOWJET England Bowater Security Products U.K.
Products stationery, TOPCHEX Northern Ireland Limited - (England) Northern Ireland
security Republic of Ireland Republic of
printing and *BOWATER Ireland
encoded CHEXPRESS Channel Islands
documentation
Subsidiary
corporate name
*Both
registered in
Great Britain
and Northern
Ireland
Rexam Food and food and BOWTOP England Rexam PKL Limited - Worldwide
Beverage beverage BOWPAK (England) Worldwide
Packaging packaging
Rexam Paper copy paper BOWLASER Australia None relevant Australia
Products BOWCOPY
