TRADEMARK LICENSE AGREEMENT
AGREEMENT made this 29th day of April, 1996 between XXXXX XXXX PET
FOOD COMPANY, INC., a Delaware corporation with its place of business at Xxx
Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxx, Xxxxxxxxx 00000 ("Licensor") and HEINZ PET
PRODUCTS COMPANY, a division of Star-Xxxx Foods Inc., a California corporation
with its place of business at Xxx Xxxxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000
("Licensee").
WHEREAS, Licensor is the owner of (i) the name, trade name and
trademark TUFFY'S which is the subject of certain foreign trademark
registrations set forth on Schedule A and (ii) unregistered common law
trademarks, trade dress and label designs utilized solely therewith and good
will associated therewith (the "Xxxx");
WHEREAS, Licensor, Licensee and the other Sellers defined therein
have entered into that certain Purchase Agreement, dated April 17, 1996,
pursuant to which among other things, Licensor agreed to grant to Licensee an
exclusive royalty free license to use the Xxxx as provided below; and
WHEREAS, by Agreement, dated June 20, 1995, ProMark International
Inc. ("ProMark") has granted to Licensee a non-exclusive five-year license (the
"ProMark License") to use, among other intellectual property, the Xxxx in the
United States, including its territories and possessions; and
WHEREAS, Licensee and ProMark have, by that certain letter
agreement, dated as of April 29, 1996, expressly (i) waived any and all rights
to the Xxxx under the ProMark License and (ii) amended the same to provide that
the Xxxx is no longer included in the intellectual property covered by the
ProMark License; and
WHEREAS, Licensor desires to grant to Licensee and Licensee desires
to obtain the exclusive right to use the Xxxx in connection with the
manufacture, distribution or sale of its pet food products outside the United
States and Canada as more particularly set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
promises herein contained, the parties agree as follows:
1. License Grant.
(a) Licensor hereby grants to Licensee the exclusive,
royalty-free, perpetual right and license to use the Xxxx throughout the world
but expressly excluding the United States (including its territories and
possessions) and
Canada (the "Territory") on and in connection with the manufacture, distribution
or sale of pet food products (the "Licensed Products"), including, but not
limited to, on packaging, in trade materials, in print, television and radio
advertising and any and all other uses related to the manufacture, distribution
or sale of the Licensed Products. Without limiting the foregoing, Licensee shall
have the right to use the Xxxx either as a primary brand, subbrand, maker's xxxx
or otherwise in connection with Licensed Products in any and all channels of
distribution provided, however, Licensee agrees that it will not use the Xxxx
with any trademark owned by any entity other than Licensor, except as a
corporate identifier.
(b) Licensee shall have no right to the Xxxx or to make, use
or sell any products utilizing the Xxxx (or any reproduction, counterfeit, copy
or colorable imitation thereof) other than as expressly granted in this
Agreement. Furthermore, Licensee is aware that Licensor has no history of sale
or distribution of products using the Xxxx in certain areas of the Territory and
that conflicting use or registrations of the Xxxx in the Territory may prevent
the use or registration of the Xxxx in jurisdictions in the Territory,
including, but not limited in those jurisdictions listed on Schedule A.
(c) Licensor and Licensee each expressly acknowledge and agree
that nothing in this Agreement gives the other any rights to or interest in any
product specifications, recipes or other proprietary materials related to any
products in connection with which the Xxxx is used by the other party and all
such information shall be considered confidential information subject to Section
11.
(d) Subject to the prior written approval of Licensor, which
shall not be unreasonably withheld, Licensee may sublicense the Xxxx or utilize
the services of third party manufacturers to produce the Licensed Products to be
sold by Licensee or its approved sublicensees; provided, however, no consent of
Licensor is necessary to grant a sublicense to a parent or affiliate of Licensee
or to use a parent or affiliate of Licensee as a third party manufacturer.
However, in the event Licensee desire to grant a sublicense to a third party who
is a major branded competitor or affiliated to a major branded competitor of
Licensor, its subsidiaries or its affiliates, Licensee shall notify Licensor in
writing of the proposed sublicensee and the material terms of the proposed
sublicense and Licensor shall have a right of first refusal to enter into an
agreement with Licensee on substantially the same terms and conditions. Within
ten (10) business days of receipt of the relevant notice, Licensor shall either
notify Licensee of its intention to exercise its right of first refusal or
consent to the proposed sublicense and sublicensee on the terms contained in the
relevant notice from Licensee. Subject to Licensor's written approval, Licensee
will assure that there are adequate quality control provisions in any third
party manufacturer agreement or sublicense. Subject to Licensor's written
approval, Licensee shall take all steps reasonably necessary to enforce and
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implement such quality control provisions. Licensee will not distribute or
permit any of its sublicensees to distribute any Licensed Products which are not
produced in compliance with the standards and procedures set forth in Section 2
below.
2. Quality Standard; Inspections.
(a) Licensee shall maintain such quality standards for the
Licensed Products as it has maintained for products similar to the Licensed
Products prior to the date of this Agreement. Furthermore, Licensee shall take
such action as is reasonably necessary to maintain the quality and integrity of
the Xxxx. Licensee represents, warrants and agrees that the Licensed Products
bearing the Xxxx shall be in compliance with all applicable federal, state and
local laws, rules and regulations.
(b) Upon request, Licensee shall furnish to Licensor a
reasonable number of representative production samples of the Licensed Products,
in order for Licensor to assure itself that the provisions of this Agreement are
being observed. Upon introduction of a new Licensed Product, Licensee agrees
that without request it shall furnish to Licensor a reasonable number of
representative production samples of the Licensed Products.
(c) During the term of this License Agreement, Licensor or its
respective designees, shall have the right to conduct annual inspections of the
relevant portions of Licensee's manufacturing facilities for compliance with the
foregoing quality standards; provided, however, Licensee may restrict access by
Licensor's representatives to only those areas where the Licensed Products and
ingredients and materials for the Licensed Products are processed, tested or
stored. Inspections also may be conducted at any time during the Term when
Licensor has reasonable belief that there are or may be quality problems with
respect to the Licensed Products. Any or all plant inspections shall be
conducted only during regular business hours and upon at least twenty-four (24)
hours prior notice. Notwithstanding such right of inspection, nothing herein
shall relieve Licensee from any liability or shift any liability to Licensor for
Licensee's nonconformance with federal, state or local laws or regulations.
3. Display; Legends. Licensee shall submit copies of use of the Xxxx
on packaging, labelling, promotional and advertising materials to Licensor prior
to use. Licensee shall be free to display the Xxxx on Licensed Products in such
forms or manners as Licensee may choose, provided that any such use shall be of
a kind and quality which does not materially detract from the value of the Xxxx.
Licensee shall cause to appear on all written materials on or in connection with
which the Xxxx is used, such legends, markings and notices as Licensor may
prescribe in order to give appropriate notices of any trademark or other rights.
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4. Restrictions On and Covenants Of Licensor.
(a) So long as this Agreement is in effect, as between
Licensor and Licensee, Licensee shall be the exclusive licensee and/or
authorized user of the Xxxx in the Territory in connection with the Licensed
Products and Licensor specifically agrees, on behalf of itself and its
successors and assigns, not to license the Xxxx to any third party or use the
Xxxx in any manner whatsoever in connection with the manufacture, distribution
or sale of the Licensed Products in the Territory.
(b) Licensor shall be free to display the Xxxx on or in
relation to any of its products bearing the Xxxx in such forms or manners as
Licensor may choose, provided that any such use shall be of a kind and quality
which does not materially detract from the value of the Xxxx. Licensor agrees
that it will not use the Xxxx with any trademark owned by an entity other than
Licensor.
(c) Licensee covenants and agrees to use its reasonable
efforts to maintain at all times during the term of this Agreement in full force
and effect the registrations of the Xxxx listed on Schedule A or new
registrations applied for in the manner described below in those countries in
the Territory in which Licensee is using the Xxxx in a manner sufficient to meet
the requirements for continued registration of the Xxxx in the relevant country.
In the event that Licensee desires to have Licensor register the Xxxx or any
other xxxx used with the Xxxx in any country in the Territory (the "Foreign
Registrations"), Licensor will use all reasonable efforts to promptly do so and
any such Foreign Registrations automatically shall become part of the definition
of the "Xxxx" for purposes of this License Agreement. Licensee shall be
responsible for the reasonable costs of Licensor associated with any Foreign
Registrations of the Xxxx requested by Licensee and actually applied for by
Licensor. Licensor may decide not to apply for registration in any country
requested by Licensee in the Territory should Licensor, in its reasonable
discretion, consider such application or registration likely to lead to
opposition or litigation which would materially adversely affect the Xxxx.
(d) In the event that Licensor shall fail to take any action
in the Territory reasonably required by Licensor to effectuate the foregoing and
Licensor has not advised Licensee that it considers such action, in its
reasonable discretion, likely to lead to opposition or litigation which would
materially adversely affect the Xxxx, Licensor hereby appoints Licensee as its
attorney-in-fact solely for such purpose (it being acknowledged that such
appointment is irrevocable and coupled with an interest) with full power of
substitution and delegation. Licensee shall supply Licensor with copies of any
such documents promptly after
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execution. In such circumstances, Licensor will use its reasonable efforts to
cooperate with Licensee to obtain registration of the Xxxx in the relevant
country.
5. Dispute Resolution.
(a) Licensee and Licensor agree that, in the event that there
is a disagreement with regard to whether the quality of a product or a use of
the Xxxx materially detracts from the value of the Xxxx, senior management of
the parties will meet and negotiate in good faith in an attempt to resolve the
dispute. In the event that the parties are unable to resolve the dispute within
thirty (30) days from the date of written notice of disagreement, either party
may submit the dispute to binding arbitration, which shall be conducted as
follows: (i) the arbitration panel shall be composed of three parties, one
appointed by Licensee, one appointed by Licensor and one chosen by the
arbitrators appointed by Licensor and Licensee, provided, however, the third
arbitrator shall be an independent third party knowledgeable in marketing and
pet food sales and mutually satisfactory to Licensor and Licensee; (ii) the
arbitrators, in conducting such arbitration, shall have access to all relevant
documents and records of the parties; (iii) the arbitration shall be conducted
in accordance with the Commercial Arbitration Rules of the American Arbitration
Association (the "Rules") in effect on the date such arbitration is commenced
and shall be final and binding on the parties; and (iv) unless otherwise agreed,
all arbitration proceedings shall be conducted in New York City, New York in
English. In the event a mutually satisfactory third arbitrator is not appointed
within fifteen (15) days of submission of a dispute to binding arbitration,
appointment of the third arbitrator shall be as provided in the Rules.
(b) If either party concludes in good faith that the quality
of a product being sold by the other party bearing the Xxxx presents a material
health hazard, such party shall have the right, notwithstanding the negotiation
and arbitration provisions set forth above, to seek an injunction in a court of
competent jurisdiction to cause the other party to cease manufacturing, sale or
distribution of the offending product, or to recall already distributed product.
Furthermore, except as set forth in subsection (a) above, nothing herein shall
prevent either party from exercising any other rights or remedies available at
law to enforce or preserve their rights under this License Agreement, including,
but not limited to, their respective rights to indemnification pursuant to
Section 9 of this Agreement.
6. Ownership. Licensee acknowledges Licensor's ownership of the Xxxx
subject to this License Agreement and Licensee agrees that all use by Licensee
of the Xxxx shall inure to Licensor's benefit. Licensor and Licensee further
agree that any and all alterations or new packaging, label designs and trade
dress used on or in connection with the Licensed Products will become part of
the Xxxx and shall be deemed owned from their inception by Licensor without the
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need for additional or further assignments. Licensee shall at any time execute
any documents reasonably required by Licensor to confirm Licensor's ownership of
all such rights. In the event that Licensee shall fail to execute and return to
Licensor any documents reasonably required by Licensor to confirm Licensor's
ownership of such rights, Licensee hereby appoints Licensor as its
attorney-in-fact for such purpose (it being acknowledged that such appointment
is irrevocable and coupled with an interest) with full power of substitution and
delegation. Licensor shall supply Licensee with copies of any such documents
promptly after execution.
7. Infringement Proceedings.
(a) So long as this Agreement is in effect, each party agrees
to notify the other of any unauthorized uses of the Xxxx by any third party as
promptly as it comes to such party's attention. Either Licensee or Licensor
shall have the right and discretion to bring infringement or unfair competition
proceedings involving the Xxxx in the manner more specifically described below;
provided, however, that each party covenants and agrees to cooperate with and
furnish full assistance to one another in connection with the procurement,
protection and maintenance of the Xxxx and their rights associated therewith.
(b) Licensor shall have the initial right to determine whether
or not any demand, suit or other action shall be taken on account of or with
reference to any infringement or unfair competition in connection with the Xxxx
and shall have the right to take such action as it may determine. Licensee shall
not institute any suit or take any action on account of any such infringement or
unfair competition without first obtaining the express written consent of
Licensor to do so. Licensor's consent shall not be unreasonably withheld or
delayed. The parties agree to cooperate with each other in any manner which the
litigating party may reasonably request in connection with any such litigation;
provided, however, that the non-litigating party will be entitled to
reimbursement of its reasonable expenses directly related to such cooperation in
excess of $5000.00. In all instances, the party commencing the litigation shall
have the right to employ counsel of its choosing and to direct the handling of
the litigation and the settlement thereof. Notwithstanding the foregoing, no
action may be settled by Licensee without the prior consent of Licensor, which
consent shall not be unreasonably withheld or delayed. All amounts awarded as
damages, profits or otherwise in connection with such litigation shall be
divided among the parties as their interests may appear. Nothing herein shall be
construed as imposing any duty or obligation upon Licensor to take any action
against any alleged infringer.
8. Termination. Notwithstanding anything herein to the contrary,
Licensor shall have the right to terminate this Agreement effective upon ninety
(90) days written notice to Licensee in the event (i) Licensee commits a
material breach
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of this Agreement which is not cured to comply with the terms of this Agreement
within such ninety (90) day notice period or (ii) Licensee ceases to use the
Xxxx in connection with the manufacture, distribution or sale of the Licensed
Products, either as a primary brand, subbrand, maker's xxxx or otherwise in the
ordinary course of business, in connection with Licensed Products for a period
in excess of twelve (12) and does not commence use of the Xxxx in connection
with the Licensed Products in the ordinary course of business within the ninety
(90) day notice period. Upon termination of this Agreement, Licensee agrees to
destroy any molds, plates, packaging or finished product bearing the Xxxx which
are in its possession or control and thereafter cease any and all use of the
Xxxx.
9. Indemnification. Licensee shall indemnify and agrees to defend
Licensor from any and all damages (but excluding any incidental or consequential
damages or claims for lost profits) resulting from or arising out of the
manufacture, packaging, distribution, selling, handling, consumption or
marketing of Licensed Products by Licensee except to the extent such damages are
the result of or caused by the negligence of Licensor or its agents or
employees, or the result of instructions or standards dictated by Licensor with
respect to the Licensed Products. Furthermore, each party indemnifies and agrees
to defend the other in the event of any breach of any covenant or provision of
this Agreement. Each party (a) shall provide the other with reasonable notice of
any such claims and cooperate with the defense of any such claim, and (b) agrees
that the provisions of this Section 10 shall survive the expiration of this
Agreement for the period of any applicable statute of limitations. The
indemnifications set forth in this paragraph shall include reasonable attorney's
fees, settlement costs and any other expenses reasonably related to the
indemnification.
10. Insurance. Licensee shall maintain throughout the Term a
reasonably adequate products liability insurance policy with limits of no less
than One Million Dollars ($1,000,000.00) combined single limit with a
financially responsible insurance carrier naming Licensor as an additional
insured and providing Licensor with thirty (30) days notice of cancellation or
alteration.
11. Confidentiality. Any confidential information disclosed by
either party to the other, except as set forth below, shall be considered
confidential information, and shall be accorded the same treatment which the
receiving party gives to its own confidential information. The obligation of
confidentiality set forth in the preceding sentence shall not apply to
information which (a) was publicly available at the time of the disclosure to
the receiving party; (b) subsequently becomes publicly available through no
fault of the receiving party; (c) is rightfully acquired by the receiving party,
subsequent to disclosure by the other party, from a third party who to the
receiving party's knowledge is not in breach of a confidential relationship with
regard to such information; or (d) is independently developed by
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the receiving party solely through the efforts of individuals who did not have
access to the confidential information.
12. Assignment. This Agreement and all of the provisions hereof
shall be binding upon and inure to the benefit of the parties hereto and their
permitted assigns. Notwithstanding the foregoing, neither party shall assign,
transfer or delegate any of its rights under this Agreement or delegate any of
its obligations under this Agreement to any entity which is not a parent or
affiliate of the assigning party without the other party's prior written
approval, and any such assignment, transfer or delegation made without such
approval shall be void ab initio; provided, however, (i) Licensor and Licensee
shall be permitted to assign, transfer or delegate any of its rights and/or
obligations under this Agreement in connection with the sale of all or part of
its business to any third party without the consent of the other party provided
such third party expressly agrees to be bound by the terms and conditions of
this Agreement and (ii) Licensor shall be permitted to assign, transfer or
delegate any of its rights and/or obligation under this Agreement to any lender
providing financing to Licensor without the consent of Licensee provided such
assignment, transfer or delegation is expressly subject to the terms and
conditions of this Agreement
13. Force Majeure. Neither party to this Agreement shall be held
liable for failure to comply with any of the terms of this Agreement when such
failure has been caused by fire, flood, labor dispute, strike, war, energy
shortage, insurrection, government restrictions or regulations or force majeure
beyond the control of the party involved.
14. Miscellaneous.
(a) THIS AGREEMENT SHALL BE GOVERNED BY THE LAWS OF THE STATE
OF NEW YORK, WITHOUT REGARD TO ITS RULES OR CONFLICTS OF LAW.
(b) Nothing herein contained shall be deemed to create the
relationship of partnership or joint venture between the parties. Neither party
shall have the right to incur any obligation to third parties which shall be
binding upon the other and neither party shall have any interest whatever in the
profits and liabilities of the other arising out of or resulting from the
subject matter of this Agreement.
(c) Unless otherwise specified herein, notices to the parties
shall be sent by prepaid certified or registered mail, or by a national
overnight courier service, to the parties at the following addresses (or at such
other address as shall be specified by like notice):
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(i) If to Licensee, to:
Heinz Pet Products Company
Xxx Xxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: Vice President, Value Brands Marketing
with a copy to:
X.X. Xxxxx Company
000 Xxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn: Senior Vice President and General Counsel
(ii) If to Licensor, to:
Xxxxx Xxxx Pet Food Company, Inc.
Xxx Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxxx 00000
Attention: Xx. Xxxxx Xxxx, President
with a copy to:
Xxxxxxxx & X'Xxxx, LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx Xxxxxxx, Esq.
(d) The failure of either party to insist on compliance with
any provision hereof shall not constitute a waiver or modification of such
provision or any other provision.
(e) If any provision hereof is held to be invalid or
unenforceable by any court of competent jurisdiction or any other authority
vested with jurisdiction, such holding shall not effect the validity or
enforceability of any other provision hereto.
(f) The paragraph order and heading are for convenience only
and shall not be deemed to affect in any way the language, obligations or the
provisions to which they refer.
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(g) This Agreement sets forth the entire understanding of the
parties with respect to the subject matter hereof, and may be amended or
modified only in writing executed by each party hereto.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first above written.
XXXXX XXXX PET FOOD COMPANY, HEINZ PET PRODUCTS COMPANY, a
INC. division of Star-Xxxx Foods Inc.
By: /s/ Xxxxxx X. Xxxx By: /s/ Xxxxxxx Xxx Xxxxxxxx
--------------------------- ------------------------------------
Name: Xxxxxx X. Xxxx Name: Xxxxxxx Xxx Xxxxxxxx
Title: President Title: Chief Cost Officer
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SCHEDULE A
LIST OF LICENSED MARKS
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Xxxx Country Reg. No.
---- ------- --------
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Tuffy's Benelux 319,988
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Tuffy's Japan 1,279,595
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Tuffy's Japan 1,302,914
(in Katakana Characters)
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Tuffy's Taiwan 683,198
--------------------------------------------------------------------------------
Tuffy's and Tuffy's Taiwan 484,245
(in Chinese Characters)
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