Exhibit 10.5
TRADENAME LICENSE AGREEMENT
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This TRADENAME LICENSE AGREEMENT ("License") is made and entered into July
31.1994, by and among DRA, Inc., a company organized under the laws of the State
of Delaware ("DRA"), DR International, Inc., a company organized under the laws
of the State of Delaware ("DRI" and together with DRA, the "Licensee"), and
General Motors Corporation, through its Delco Remy Division (together with any
successor thereto, the "Delco Remy Division"), a corporation organized under the
laws of the State of Delaware ("GM").
WITNESSETH
WHEREAS, GM, DRI and DRA have entered into the Asset Purchase Agreement,
dated July 13, 1994 (the "Asset Purchase Agreement") under which DRA has
acquired (The "Acquisition") certain assets and assumed certain liabilities of
the Delco Remy Division.
WHEREAS, DRI and DRA desire to acquire, and GM is willing to grant, a
license to use certain tradenames of Delco Remy Division.
NOW THEREFORE, in consideration of the mutual promises contained herein and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties, for themselves and their successors and
assigns, agree as follows:
1. DEFINITIONS
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The following terms have the meaning ascribed to them herein:
Businesses. The term "Businesses" shall mean the production,
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distribution, sale and servicing of heavy duty starter motors and
generators ("Heavy Duty Starter Motors Business"), remanufactured
heavy duty starter motors and generators ("HD Reman Business"), light
duty starter motors ("Light Duty
Starter Motor Business"), remanufactured light duty starter motors ("LD Reman
Business"), and powder metal forge ("PMF Business").
Closing. The term "Closing" has the meaning ascribed in the Asset Purchase
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Agreement.
Component Supply Agreements. The term "Component Supply Agreements" means the
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Heavy Duty Component Supply Agreement, Light Duty Component Supply Agreement,
Powder Metal Forge Component Supply Agreement, and Distribution and Supply
Agreement between DRA and GM included among the Ancillary Agreements to the
Asset Purchase Agreement.
Delco Remy Trademarks. "Delco Remy Trademarks" means "DELCO REMY", "DELCO REMY
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AMERICA", "DELCOTRON" (with regard to heavy duty generators only), the "DELCO
REMY AMERICA logo" as set forth in Exhibit A, and such other logo types
containing "Delco Remy" as DRA or DRI may adopt (subject to GM's written consent
not to be unreasonably delayed or withheld) and use during the term of this
License as provided herein.
Delco Remy Tradenames. The term "Delco Remy Tradenames" shall mean "Delco Remy
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America" and/or "Delco Remy International".
Effective Date. The term "Effective Date" means the date of this Agreement.
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Product Liability Insurance. The term "Product Liability Insurance" means
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insurance maintained by Licensee in accordance with Paragraph 7 hereof.
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Products. The term "Products" means the products manufactured by the
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Businesses as of the date of the signing of this License and any
replacements and extensions thereof.
Remy Trademarks. "Remy Trademarks" means "REMY", "REMY AMERICA", "REMY
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INTERNATIONAL", and such logotypes as Licensee may adopt containing "REMY",
"REMY AMERICA", or "REMY INTERNATIONAL".
Remy Tradenames. "Remy Tradenames" means "REMY AMERICA" and "REMY
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INTERNATIONAL."
Territory. Licensee shall be entitled to use the Tradenames world-wide.
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Trademarks. "Trademarks" means the "DELCO REMY Trademarks", the "Remy
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Trademarks", and any other term that GM authorizes as provided herein or in
the Trademark License Agreement for use as a trademark.
Tradenames. The term "Tradenames" shall mean the "Delco Remy Tradenames"
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and the "Remy Tradenames."
Trademark License Agreement. The term "Trademark License Agreement" shall
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mean the Trademark License Agreement between GM and DRA.
Capitalized terms used but not otherwise defined herein shall have the meanings
ascribed to them in the Asset Purchase Agreement.
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2. TRADENAME
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(a) Grant. GM specifically approves of and grants Licensee an exclusive,
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royalty free license to use the Tradenames in the Territory during the
term of the License as defined in 3(c). Licensee may display the
Tradename(s) in the logo type shown in Exhibit A and such other logo
types containing "Delco Remy" or "Remy" as DRA may adopt (any such
logotype being subject to GM's written consent not to be unreasonably
delayed or withheld), but Licensee will not display the Tradename(s)
in any other logo, without prior written approval of GM.
(b) Sole Use. Licensee agrees that its use of the Tradenames as its
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company name(s) and tradename(s) is with the permission of GM.
3. SCOPE OF USE
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(a) Use. Subject to the terms and conditions of this License, Licensee may
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use the Tradename(s) in association with its business.
(b) The grant shall include all typical uses such as letterhead, business
cards, signage as well as the advertising, promotion, distribution,
service and sale of its products in the Territory by or for Licensee
except as provided herein, and shall include use as a corporate name
as well as a tradename.
(c) Term. The term of the License with respect to the Delco Remy
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Tradenames hereby granted shall commence on the Effective Date, and,
unless extended by mutual agreement, shall continue until the earlier
to occur of (i) ten years after the Closing Date, (ii) any sale of all
or substantially all of the assets of DRA to any party other than the
Citicorp Venture Capital, Ltd., CIT Group/Business Credit, Inc., World
Equity Partners, L.P., MascoTech, Xxxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxx
and/or Xxxxx X. Xxxxxxx, or (iii) termination of this License as
provided herein. The license of the Remy Tradenames hereby granted
shall commence on the Effective Date, shall be perpetual, fully-paid,
and
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royalty-free, and may be freely assigned, mortgaged, sublicensed or
encumbered, subject, however, to the covenants in Paragraph 3(d) of this
Agreement.
(d) Limitations to Licensee's Rights. Licensee shall not use the Delco Remy
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Tradename physically on any product or packaging except the licensed
Products or as set forth in the Trademark License Agreement. Except as
contemplated by the Manufacturers Representative Agreement and the
Distribution and Supply Agreement, Licensee shall not use the Delco Remy
Tradenames directly or indirectly on or in connection with, or in relation
to, batteries or any other product or business of the Delco Remy Division
not acquired by Licensee. Licensee shall not combine the Tradenames with
any other trademark or tradename without the express written authorization
of GM, provided, however, that Licensee may use the Tradenames together
with other tradenames, trademarks and service marks. Licensee shall not
make tradename or corporate name use of the Tradenames or any confusingly
similar form of, variation on, or alternative spelling of "DELCO" except as
provided herein.
(e) Notwithstanding the other provisions of this Agreement, and except as
contemplated by the Manufacturers Representative Agreement and the
Distribution and Supply Agreement, neither Licensee nor its sublicensees,
assigns, or affiliates may use the Remy Tradenames directly or indirectly
on or in connection with or in relation to (i) batteries at any time after
the Closing Date or (ii) for 10 years after the Closing Date for any other
product manufactured by the Delco Remy Division on the Closing Date and not
acquired by DRA.
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4. RIGHTS RETAINED
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Nothing in this License shall be construed to prevent GM from itself using,
prior to an assignment pursuant to Paragraph 9 of this Agreement, "Delco
Remy Division" as a tradename with regard to and in connection with
batteries or any other product or business of the Delco Remy Division not
acquired by Licensee as of the Closing Date except that GM will not use,
and will not directly or indirectly authorize or permit any third party to
use, the Tradenames or any confusingly similar form of, variation on, or
alternative spelling of any Tradename.
5. GOODWILL
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Licensee recognizes the value of the goodwill associated with the
Tradenames and acknowledges that, except for assignments pursuant to
Paragraph 9 of this Agreement, the Tradenames, and all rights therein and
the goodwill pertaining thereto, belong exclusively to GM and that the
Tradenames have acquired secondary meaning in the mind of the public in
relation to GM. Notwithstanding anything to the contrary expressed in this
License, Licensee shall not acquire, be deemed to have acquired and shall
not claim any rights to the Tradenames other than the rights granted by GM
under this License or pursuant to Paragraph 9 of this Agreement.
6. GM'S TITLE AND PROTECTION OF GM'S RIGHTS
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(a) GM's Representations. GM represents and warrants that in the
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Territory: (i) it is the sole and exclusive owner of all right, title
and interest in and to the Tradenames for use in connection with the
Businesses; (ii) it has the power to grant the rights and licenses
granted to Licensee herein and has not granted such rights and
licenses to any other person with regard to Products; (iii) it is not
aware of any rights of any third party which would be infringed by
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Licensee's use of the Tradenames in relation to the Businesses as
authorized herein.
(b) Conduct of Licensee. Licensee agrees that it will not do or suffer to be
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done during the Term or any renewal period of this License any act or thing
that will impair in any way the rights of GM in and to the Tradenames then
licensed hereunder. GM hereby agrees to indemnify Licensee and undertakes
to hold it harmless against any claims or suits to the extent that such
claim or suit arises out of the exploitation and use by Licensee of the
Tradenames as authorized in this License, provided that the claim or suit
arises in the Territory and prompt notice is given to GM of any such claim
or suit and provided, further, that GM shall have the option to undertake
and conduct, at GM's expense, the defense of any suit brought and that no
settlement of any such claim or suit is made without prior written consent
of GM (which consent shall not be unreasonably delayed or withheld).
Licensee shall participate in such defense, at its own expense, to protect
its interest. GM shall keep Licensee informed of all material developments
throughout the progress of any such defense, and GM shall not, without
Licensee's prior approval (which approval shall not be unreasonably delayed
or withheld), enter into any consent, settlement, or other agreement which
materially diminishes or restricts Licensee's rights under this License or
places any material restrictions or conditions upon Licensee's use of the
Tradenames.
(c) No Assignment. It is agreed that nothing contained in this License shall be
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construed as an assignment or grant to Licensee of any right, title or
interest in or to the Tradenames, it being understood that all rights
relating thereto are reserved by GM, except for (i) the License to Licensee
of the right to use and utilize the Tradenames only as specifically and
expressly provided in this License and (ii) the assignment to Licensee of
the trademarks and tradenames under the Asset Purchase Agreement and
pursuant to Paragraph 9 of this Agreement.
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7. INDEMNIFICATION BY LICENSEE AND PRODUCT LIABILITY INSURANCE
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Licensee agrees that it will obtain as of the Closing, at its own expense,
Product Liability Insurance from a recognized insurance company which is
qualified to do business in the State of Indiana, providing adequate
protection (in the minimum amount of five million dollars ($5,000,000) per
occurrence) for GM (as well as Licensee) against any product liability
claims related to the Products. As proof of such insurance, a certificate
of Product Liability Insurance, naming GM as an additional insured party
(and setting forth the amount of insurance, the policy number, the date of
expiration and including a provision requiring that GM be given thirty (30)
days written notice prior to termination, reduction or modification of such
insurance coverage) shall be submitted to GM by Licensee within thirty (30)
days after the execution of this License. Upon modification thereof,
Licensee shall furnish promptly to GM a copy of the modified certificate of
Product Liability Insurance. Licensee's procurement of Product Liability
Insurance or furnishing to GM a certificate therefor shall not relieve
Licensee of its obligation or liabilities under this License.
8. CONDUCT OF BUSINESS
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(a) Standard of Conduct. GM acknowledges that the overall manner in which
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business is being conducted by its Delco Remy Division meets its high
standards. So as not to impair the substantial goodwill that GM has
built up and now possesses in the Tradenames it is an essential
condition of this License, and Licensee hereby covenants and agrees:
(i) that the overall manner in which the business will be conducted
under this License, and any use of the Delco Remy Tradenames in
connection therewith, shall meet or exceed the standard as that of the
Delco Remy Division as of the Closing; (ii) that business will be
conducted in all material respects in accordance with all applicable
and material federal, state and local laws and regulations; and (iii)
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that the activities of Licensee hereunder shall not reflect adversely
in any material respect upon the good name and reputation of GM.
(b) Advertising. Licensee shall provide GM at any time, at GM's reasonable
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request but not more than three times per year, a representative
sampling of all current or proposed tags, labels, identification
plates, packaging, advertising copy, business cards, letterhead,
brochures, catalogs, and marketing and promotional materials bearing
the Delco Remy Tradenames not previously provided pursuant to this
provision (individually or collectively, the "Material") for GM's
review of the manner in which the Delco Remy Tradenames are used and
depicted in a manner consistent with this Agreement. GM shall use its
best efforts to respond with any objections as to content thereto in
writing within fourteen (14) days and the parties will use their best
efforts to resolve in good faith such objections. If GM shall fail,
however, to object in writing within thirty (30) days after receipt of
the Material, it shall be deemed to have consented to Licensee's use
of the Material. Such consent by GM shall not constitute a waiver of
Licensee's other duties under this License.
9. RIGHT TO ACQUIRE REMY TRADENAMES
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GM will, within 30 days after Licensee's written request, transfer and
assign, or cause to be transferred and assigned, to Licensee or its
designee the right, title and interest to the Remy Tradenames in such
country or countries as Licensee may designate, together with all
assignments and other documents necessary to effect such transfer. Licensee
will bear the expense of preparing and recording such documents and
assignments as well as all out-of-pocket legal costs, taxes, and fees
related thereto. Licensee may exercise its right to cause GM to transfer
the Remy Tradenames from time to time in such countries as it chooses until
it has acquired all right, title and interest to the Remy Tradenames in all
countries. To the extent necessary, the parties will enter into such
consent agreement as is appropriate under the laws of each such country to
ensure the protection of the Remy Tradenames as to Licensee and the
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Delco Remy Tradenames as to GM. Contemporaneous with each such transfer and
assignment, GM will, to the extent requested by Licensee in writing,
voluntarily partially abandon, relinquish or limit any of its or its
affiliates' rights to and registrations of Delco Remy Tradenames in such
country or countries with respect to the Businesses. Nothing herein will
limit GM's ability to use, license, or seek tradename registration of the
Delco Remy Tradenames in connection with businesses of the Delco Remy
Division as of the Closing Date other than the Businesses. With respect to
each country in which Licensee has been assigned the Remy Tradenames, as of
the effective date of any such assignment the Remy Tradenames will no
longer be subject to this License in such country, the definition of the
term "Tradenames" in this Agreement will exclude the Remy Tradenames as to
such country, and Licensee's covenants and acknowledgements in Paragraphs
3(d) and 5 with respect to the Delco Remy Tradenames will not be
interpreted to limit or restrict Licensee's use of or rights to the Remy
Tradenames as to such country.
10. TERMINATION
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(a) Bankruptcy. If Licensee: (i) files a voluntary petition for an order
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for relief in bankruptcy; (ii) is adjudicated a bankrupt; (iii) has an
involuntary petition in bankruptcy filed against it which remains
unstayed or undismissed for sixty (60) days following the filing
thereof; (iv) makes an assignment for the benefit of its creditors or
pursuant to any bankruptcy law; or (v) has a liquidating receiver
appointed for it or for its business, the License hereby granted shall
automatically terminate without any notice being necessary.
(b) Breach. If either party shall commit a material breach of any of its
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obligations under this License, the non-breaching party shall have the
right to terminate this License upon ninety (90) days written notice
("Notice Of Termination"), and such Notice Of Termination shall become
effective unless the breaching party shall have substantially remedied
the breach within the ninety (90) day period, which may be extended an
additional ninety (90) days if requested in
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writing by the breaching party and the breaching party is working in
good faith to fully remedy such breach.
11. EFFECT OF EXPIRATION OR TERMINATION
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Upon and after the expiration or termination of this License, the license
granted to Licensee hereunder shall forthwith revert to GM, and Licensee
shall execute any instruments reasonably requested by GM, at GM's expense,
to accomplish or confirm the foregoing, provided, however, that such
expiration or termination shall not in any way diminish, limit, revoke, or
cause any reversion of, Licensee's rights to the trademarks and tradenames
transferred and assigned under the Asset Purchase Agreement or pursuant to
Paragraph 9 of this Agreement.
12. REMEDIES
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(a) No Waiver. The resort by either party to any remedies referred to
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herein shall not be construed as a waiver of any other rights or
remedies to which such party is entitled under this License or
otherwise.
(b) Remedies Cumulative. All rights and remedies of a party hereto whether
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evidenced hereby or arising as a result of any other contract,
agreement, instrument or law shall be cumulative and may be exercised
singularly or concurrently.
13. NOTICES
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All communications, notices and exchanges of information contemplated
herein, or required or permitted to be given under this License, must be in
writing and will be deemed effective when delivered in person or on the
third business day after the day on which such notice is mailed by the
highest class of regular mail to the following addresses:
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If to GM: AC Delco Systems Division
0000 X. Xxxxxxx Xxxxxx
Xxxxx, Xxxxxxxx 00000
Attention: Finance Director
Fax: (000) 000-0000
with a copy to: General Motors Corporation
Office of General Counsel
0000 Xxxx Xxxxx Xxxxxxxxx
P. O. Xxx 00000
Xxxxxxx, Xxxxxxxx 00000-0000
Attention: Trademark Counsel
If to Licensee: Delco Remy America, Inc.
0000 Xxxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxx 00000
Attention: Chief Financial Officer
Fax: (000) 000-0000
DR International, Inc.
000 Xxx Xxxxxxxxx
Xxxxxx Xxxxx, Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxxxxxx
Fax: (000) 000-0000
with a copy to: Dechert Price & Xxxxxx
4000 Xxxx Atlantic Tower
0000 Xxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attention: G. Xxxxxx X'Xxxxxxx, Esquire
Fax: (000) 000-0000
14. RELATIONSHIP BETWEEN GM AND LICENSEE
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Nothing in this License shall be construed to place the parties in a
relationship whereby either shall be considered to be the agent of the
other for any purpose whatsoever. Neither party is authorized to bind the
other party or to enter into any contract or assume any obligation for the
other. Any such unauthorized act will be null and void as to the party for
which such obligations were assumed. Nothing in
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this License shall be construed to establish a relationship of partners or
joint venturers between GM and Licensee. Each party is individually
responsible only for its own obligations, duties and promises as set out in
this License.
15. ASSIGNMENT OR SUBLICENSE
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With the exception of the license of the Remy Tradenames and Licensee's
rights under Paragraph 9, this License and each part hereof and all rights
and duties hereunder are personal to Licensee and shall not, without the
prior written consent of GM, be assigned, mortgaged, sublicensed or
otherwise encumbered by Licensee or by operation of law. Notwithstanding
the foregoing, GM may assign this License without first obtaining
Licensee's written consent to any wholly owned subsidiary company of GM.
16. NO WAIVER, ENTIRE AGREEMENT
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None of the terms of this License can be waived or modified except by an
express agreement in writing signed by all of the parties. There are no
representations, promises, warranties, covenants or undertakings other than
those contained in this License and Exhibits hereto, or the Asset Purchase
Agreement, which represent the entire understanding of the parties hereto
relating to the subject matter thereof. The failure of either party hereto
to enforce, or the delay by either party in enforcing, any of its rights
under this License shall not be deemed a continuing waiver or a
modification thereof, and either party may, within the time provided by
applicable law, commence appropriate legal proceedings to enforce any or
all of such rights. No person, firm, group or corporation other than
Licensee and GM shall be deemed to have acquired any rights by reason of
anything contained in this License.
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17. MISCELLANEOUS
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(a) Controlling Law. This License shall be considered as having been
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entered into in the State of New York, without giving effect to the
principles of conflict of laws, and shall be construed and interpreted
in accordance with the laws of that State.
(b) Service of Process. Service of process shall be effective if mailed
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pursuant to Paragraph 13 hereof.
(c) Singular Shall Include Plural. Whenever required by the context, the
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singular shall include the plural, and the plural the singular, and
the masculine shall include the feminine and neuter.
(d) Severability. The provisions of this License shall be severable, and
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if any provision of this License shall be held or declared to be
illegal, invalid, or unenforceable in any jurisdiction, such
illegality, invalidity or unenforceability shall not affect any other
provision hereof or the interpretation and effect of this License as
to any other jurisdiction, and the remainder of this License,
disregarding such illegal, invalid or unenforceable provision shall
continue in full force and effect as though such illegal, invalid, or
unenforceable provision had not been contained herein.
(e) Headings. Headings or titles to Paragraphs or subparagraphs in this
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License are for the convenience of reference only and shall not affect
the meaning or interpretation of this License or any part hereof.
(f) No Modifications. This License may not be released, discharged,
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abandoned, changed or modified in any manner except in an instrument
signed by each of the parties hereto.
(g) No Strict Construction. The language used in this License shall be
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deemed to be language chosen by all parties hereto to express their
mutual intent, and no rule of strict construction against either party
shall apply to any term or condition of this License.
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(h) Signature Representation. Each person who signs the License on
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behalf of a party hereto represents and warrants that he has
the proper authority to execute this License of such party's
behalf.
IN WITNESS WHEREOF, GM and DRA have caused this Agreement to be executed by
their duly authorized representatives on the day and year first written above.
DRA, INC. DELCO REMY DIVISION
GENERAL MOTORS CORPORATION
BY: /s/ Xxxxx X. Xxxxxxx BY: /s/ Xxxxxxx X. Xxxxxx
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NAME: Xxxxx X. Xxxxxxx NAME: Xxxxxxx X. Xxxxxx
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TITLE: Executive V.P. TITLE: Attorney in fact
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DR INTERNATIONAL, INC.
BY: /s/ Xxxxx X. Xxxxxxx
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NAME: Xxxxx X. Xxxxxxx
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TITLE: Executive V.P.
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EXHIBIT A
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DELCO REMY AMERICA LOGO
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[LOGO OF DELCO REMY APPEARS HERE]
Tradename License Agreement
Exhibit A
