LICENSE AGREEMENT
THIS LICENSE AGREEMENT is dated as of the 9th day of December,
1998 between Xxxxxx Products Company, a Delaware corporation, of 00 Xxxx Xxxx,
Xxxxxxxx, Xxxxxxx 00000 ("Xxxxxx"), and The Cutex Company, a Delaware
corporation, of 0000 Xxxxx Xxxx Xxxxx Xxxxx, X.X. Xxx 0000, Xxxxxxx, Xxxxxxx
00000 ("Cutex Co.") (each individually a "Party" and, collectively, the
"Parties").
WHEREAS, Xxxxxx and Cutex Co. have entered into the asset
purchase agreement dated as of December 9, 1998 (the "Purchase Agreement")
pursuant to which Xxxxxx is transferring to Cutex Co. (1) the assets used in
connection with its business of selling, distributing, packaging, manufacturing
and marketing nail polish remover and nail care implement products and (2) all
right, title and interest in and to the marks listed in Exhibit A and the
goodwill associated therewith (the "Marks") within the United States and Puerto
Rico (the "Territory");
WHEREAS, pursuant to the Purchase Agreement, Xxxxxx is
retaining certain assets used in connection with its business of selling,
distributing, packaging, manufacturing and marketing nail enamel products and
nail care treatment products; and
WHEREAS, Cutex Co. desires to grant to Xxxxxx, and Xxxxxx
desires to acquire from Cutex Co., an exclusive, transferable (subject to the
limitations set forth in Section 1.03), fully paid-up, royalty-free license to
use the Marks in connection with the sale, distribution, packaging, manufacture
and marketing within the Territory of (i) nail enamel products and (ii) nail
care treatment products to the extent that such nail care treatment products are
intended for use by direct application to nails and/or cuticles (the "Goods");
NOW THEREFORE, for and in consideration of the mutual
covenants and agreements contained herein and in the Purchase Agreement and
other good and valuable consideration the receipt and sufficiency of which are
hereby acknowledged, the Parties hereby agree as follows:
ARTICLE 1 GRANT OF LICENSE.
1.01 License. Subject to the other provisions hereof, Cutex
Co. hereby grants to Xxxxxx an exclusive (including as to Cutex Co.),
transferable (subject to the limitations set forth in Section 1.03), fully
paid-up, royalty-free license to use the Marks in connection with the business
of selling, distributing, packaging, manufacturing and marketing the Goods
within the Territory.
1.02 Ownership. All right, title and interest in and to the
Marks shall remain vested in Cutex Co. All use of the Marks by Xxxxxx shall
inure to the benefit of Cutex Co.
1.03 Transferability. Upon expiration of the Option Period (as
defined in the Option Agreement, dated the date hereof, by and between Xxxxxx
and Cutex Co.), Xxxxxx shall have the right to assign or sublicense its rights
under this Agreement in its sole discretion. Xxxxxx shall notify Cutex Co. of
such assignment or sublicense within a reasonable time following the effective
date of any such assignment or sublicense. In no event shall Xxxxxx transfer its
rights under this Agreement during the Option Period.
ARTICLE 2 FORM OF USE.
2.01 Notices, Legends and other Marks. Xxxxxx shall use the
Marks in connection with the federal registration symbol, (R), or the "TM"
symbol, as applicable.
2.02 Quality Standards. Subject to Section 2.03, Xxxxxx agrees
that it shall only use the Marks in a manner consistent with the past practices
of Xxxxxx immediately prior to the execution of the Purchase Agreement.
2.03 Quality Control. Cutex Co. hereby approves of all uses of
the Marks that are consistent with the practices of Xxxxxx immediately prior to
the execution of the Purchase Agreement. To the extent Xxxxxx intends to use the
Marks in a manner which materially deviates from past practices, Xxxxxx shall
submit to Cutex Co., for approval or disapproval, samples of any such proposed
use. Cutex Co. shall be deemed to have approved the use of such samples if
Xxxxxx does not receive a notice of disapproval within ten (10) business days of
Cutex Co.'s receipt of any such samples. Once Xxxxxx has obtained Cutex Co.'s
approval for any proposed use of the Marks, Carson shall only be obligated to
submit for approval samples of new proposed uses which are materially different
than the approved uses.
ARTICLE 3 TERM AND TERMINATION.
3.01 Term. The term of this Agreement shall commence on the
date of this Agreement and shall continue until terminated.
3.02 Termination of License by Cutex Co. Cutex Co. may
terminate the license granted hereunder by giving notice to the licensee (1)
upon the exercise by Cutex Co. of its option set forth in the Option Agreement
between Cutex Co. and Xxxxxx of even date herewith and the consummation of the
transactions contemplated thereby, (2) if the holder of the license ceases to
actively engage in the sale of Goods in a manner consistent with past practices
or as otherwise permitted by Cutex Co. pursuant to Section 2.03 or (3) if the
holder of the license fails to perform any material obligation under this
Agreement and does not cure such default within 45 days after written notice
from Cutex Co. of such default.
3.03 Termination for Convenience. Upon notice to Cutex Co.,
Xxxxxx may terminate the license granted to it under this Agreement for
convenience at any time.
3.04 Effect of Termination. In the event of a termination of
the license granted under this Agreement for any reason, Xxxxxx shall have the
right to continue to use the Marks in connection with the sale of any and all
previously manufactured Goods in the normal course of business for a period of
up to six (6) months in order to dispose of inventory of finished Goods and
works in progress in an orderly manner. At the end of such six-month period,
Xxxxxx shall (1) cease use of the Marks and (2) terminate all sublicenses
granted pursuant to this Agreement.
ARTICLE 4 DISCLAIMER.
EXCEPT AS SET FORTH HEREIN, NEITHER PARTY MAKES ANY REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, REGARDING OR RELATING TO THE MARKS OR ITS USE OF
THE MARKS, AND EACH PARTY EXPLICITLY DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
SPECIFIC PURPOSE. NOTHING CONTAINED IN THIS SECTION SHALL LIMIT OR RESTRICT
CUTEX CO.'S RIGHTS AND REMEDIES, OR THOSE OF ANY OF ITS AFFILIATES, UNDER THE
PURCHASE AGREEMENT.
ARTICLE 5 TOOLS, DIES AND MOLDS.
5.01 Use of Tools, Dies and Molds. Pursuant to the Purchase
Agreement, Xxxxxx is selling to Cutex Co., among other assets, the tools, dies
and molds set forth on Schedule 1.1(vii) to the Purchase Agreement, which tools,
dies and molds are currently used in connection with the manufacture of the
Goods (the "Equipment"). For so long as Xxxxxx has the right to use the Marks
pursuant to the license granted hereunder, this Agreement shall also constitute
the agreement by Cutex Co. to lease to Xxxxxx on an exclusive (except as to
Cutex Co.), transferable (on the same terms as the license granted hereunder),
fully-paid up, rent-free basis the Equipment for use in connection with the
manufacture of the Goods. Cutex Co. further agrees that the Equipment shall
continue to be located at the facilities indicated on Schedule 1.1(vii) to the
Purchase Agreement and that, during the term of the lease granted hereby, Cutex
Co. will not require or authorize that the Equipment be moved from such
locations without the express written consent of Xxxxxx, which consent shall not
be unreasonably withheld. The provisions of this paragraph shall automatically
terminate at the same time as the license granted hereunder in respect of the
Marks terminates pursuant to Article 3. Xxxxxx shall maintain the equipment in
accordance with generally accepted industry practice such that upon the
termination of this provision the equipment shall be returned to Cutex Co. in
good operating condition and repair, ordinary wear and tear excepted. Xxxxxx
acknowledges that Cutex Co. shall have no responsibility for the safe-keeping,
maintenance, or condition of the equipment and Xxxxxx hereby indemnifies Cutex
Co. from any loss, liability, claim, damage or expense suffered by Cutex Co. as
a result of Xxxxxx'x use of the equipment.
ARTICLE 6 MISCELLANEOUS PROVISIONS.
6.01 Notices. Except as otherwise specified in this Agreement,
all notices, requests, consents, approvals, agreements, authorizations,
acknowledgements, waivers and other communications required or permitted under
this Agreement shall be in writing and shall be deemed given: (i) on the date of
delivery, if delivered personally, (ii) on the business day after dispatch by
documented overnight delivery service such as Federal Express, if sent in such
manner, (iii) on the date of transmission by telecopy or telex or other means of
electronic transmission, if so transmitted, provided that a confirmation copy of
any such electronic transmission is sent no later than the business day
following the day of electronic transmission by documented overnight delivery
service or registered mail, postage prepaid (return receipt requested), or (iv)
on the fifth business day after deposit in the United States mail and sent by
registered mail, postage prepaid (return receipt requested). Notices or other
communications shall be directed to the following addresses:
If to Xxxxxx to:
Xxxxxx, Inc.
x/x Xxxxxxxxxxx Xxxxxxx Xxxxx, X.X.X.
Xxx Xxxxxxxxxxx Xxxxx Xxxxx, Xxxxx 000
Xxxxxxxx, XX 00000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxxxxx X. Xxxxx
and to:
Xxxxxx Products Company
X.X. Xxx 00000
Xxxxxxxx, XX 00000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxxxx X. Xxxxxx
with a copy to:
Milbank, Tweed, Xxxxxx & XxXxxx
Xxx Xxxxx Xxxxxxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxxxxxx Xxxxxxxx, Esq.
and Xxxxxx X. Xxxxx, Esq.
If to Cutex Co. to:
The Shansby Group
000 Xxxxxxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxxxxx Xxxxxxxx and
Xxx Xxxxxxxx
with a copy to:
Xxxxxx & Xxxxxx L.L.P.
2300 First City Tower
0000 Xxxxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxx Xxxxx, Esq.
and to:
Medtech Laboratories, Inc.
X.X. Xxx 0000
Xxxxxxx, XX 00000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxx Xxxxxxx
with a copy to:
Xxxxxxxxx, Xxxxxx & Xxxxxxx, P.C.
0000 Xxxxxx Xxxxxxxx
Xxx Xxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000-0000
Telephone No.: (000) 000-0000
Telecopy No.: (000) 000-0000
Attention: Xxxxxxx X. Xxxxx, Esq.
Any party may, by notice given in accordance with this Section 6.01, specify a
new address for notices under this Agreement.
6.02 Headings. The article and section headings are for
reference and convenience only and shall not be considered in the interpretation
of this Agreement.
6.03 Severability. If any provision of this Agreement is held
by a court of competent jurisdiction to be contrary to law, then the remaining
provisions of this Agreement, if capable of substantial performance, shall
remain in full force and effect.
6.04 Waivers. No delay or omission by either Party in the
exercise of any right or power it has under this Agreement shall impair or be
construed as a waiver of such right or power. A waiver by any Party of any
breach or covenant shall not be construed to be a waiver of any succeeding
breach or any other covenant. All waivers must be in writing and signed by the
Party waiving its rights.
6.05 Consents, Approvals and Requests. Except as specifically
set forth in this Agreement, all consents and approvals to be given by either
Party under this Agreement shall not be unreasonably withheld or delayed and
each Party shall make only reasonable requests under this Agreement.
6.06 Entire Agreement. This Agreement represents the entire
agreement between the Parties with respect to its subject matter, and there are
no other representations, understandings or agreements between the Parties
relative to such subject matter.
6.07 Amendments. No amendment to, or change, waiver or
discharge of, any provision of this Agreement shall be valid unless in writing
and signed by an authorized representative of each of the Parties.
6.08 Governing Law. This Agreement and the rights and
obligations of the Parties hereunder shall be governed by and construed in
accordance with United States trademark laws and the laws of the State of New
York, without giving effect to the principles thereof relating to the conflicts
of laws.
6.09 Covenant of Further Assurances. Cutex Co. and Xxxxxx
covenant and agree that, subsequent to the execution and delivery of this
Agreement and without additional consideration, each of Cutex Co. and Xxxxxx
shall execute and deliver any further legal instruments and perform any acts
which are or may become necessary to effectuate the purposes of this Agreement
to perfect or otherwise preserve and maintain Cutex Co.'s rights in and to the
Marks.
IN WITNESS WHEREOF, each of Cutex Co. and Xxxxxx has caused
this Agreement to be signed and delivered by its duly authorized representative.
THE CUTEX CO.
By:___________________________________________
Name:
Title:
STATE OF_________ )
) SS.
COUNTY OF________ )
On this__day of______ ,199_, there appeared before me ________________,
personally known to me, who acknowledged that he/she signed the foregoing
license as his/her voluntary act and deed with full authority to do so.
___________________
Notary Public
XXXXXX PRODUCTS COMPANY
By:___________________________________________
Name:
Title:
STATE OF_________ )
) SS.
COUNTY OF________ )
On this__day of______ ,199_, there appeared before me ________________,
personally known to me, who acknowledged that he/she signed the foregoing
license as his/her voluntary act and deed with full authority to do so.
___________________
Notary Public
EXHIBIT A - THE MARKS
COLOR QUICK
CUTEX
CUTEX
CUTEX
CUTEX BLOCK LETTERING LOGO # 1
CUTEX BLOCK LETTERING LOGO # 2
CUTEX BLOCK LETTERING LOGO # 3
CUTEX BLOCK LETTERING LOGO # 4
CUTEX BLOCK LETTERING LOGO # 5
CUTEX BLOCK LETTERING LOGO # 6
CUTEX BLOCK LETTERING LOGO # 7
CUTEX COLOR SPLASH
CUTEX COLOR SPLASH
CUTEX LOGO
CUTEX LOGO
CUTEX QUICK AND GENTLE
CUTEX SCRIPT LETTERING LOGO
FINGER DESIGN
