CONFIDENTIAL INFORMATION HAS BEEN OMITTED PURSUANT TO RULE 406 UNDER THE
SECURITIES ACT AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. THE LOCATIONS OF THE OMITTED INFORMATION HAVE BEEN INDICATED WITH
ASTERISKS.
Exhibit 10.3
GE TRADEMARK AND TRADE NAME AGREEMENT
This Agreement is dated and effective as of February 2, 1999, between
GENERAL ELECTRIC COMPANY ("LICENSOR"), a New York corporation, and GE FUEL CELL
SYSTEMS, LLC ("LICENSEE"), a Delaware limited liability company.
A. Whereas, LICENSOR owns, directly or indirectly, in excess of fifty
percent (50%) of the membership interests of LICENSEE and has the right or power
to exercise effectively all of the rights or powers of ownership therein;
B. Whereas, LICENSOR owns the LICENSED MARKS (hereinafter defined) and
LICENSOR has common law and/or statutory rights therein, including applications
to register and registrations therefor in certain countries throughout the world
for various goods and services;
C. Whereas, LICENSEE desires to use the LICENSED MARKS on or in connection
with PRODUCTS, PRE-COMMERCIAL UNITS and SERVICES (each hereinafter defined);
D. Whereas, LICENSOR is willing to grant licenses to LICENSEE to use the
LICENSED MARKS on PRODUCTS and PRE-COMMERCIAL UNITS marketed and sold by or on
behalf of LICENSEE, and for SERVICES performed by or on behalf of LICENSEE, in
strict accordance with STANDARDS OF QUALITY (hereinafter defined);
E. Whereas, LICENSEE has adopted the corporate name "GE Fuel Cell Systems,
LLC", which corporate name contains LICENSOR's trademark and trade name, "GE"
("LICENSED NAME").
F. Whereas, LICENSOR is willing to permit the use of the LICENSED MARKS
and the LICENSED NAME under the terms and conditions hereinafter set forth.
NOW THEREFORE, the parties agree as follows:
ARTICLE I
DEFINITIONS
The following terms as used in this Agreement shall have the meaning set forth
in this Article I:
A. The term "LICENSED MARKS" shall mean and be limited to the trademarks,
service marks, and logos shown in Exhibit A attached hereto.
B. The terms "PRODUCTS", "PRE-COMMERCIAL UNITS", and "SERVICES" shall have
the respective meanings set forth in the Distributor Agreement between LICENSEE
and Plug Power, L.L.C., of even date herewith (the "Distributor Agreement").
C. The term "STANDARDS OF QUALITY" shall mean and be limited to the
specifications for PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES set forth in the
Distributor Agreement.
D. The term "LICENSED TERRITORY" shall mean and be limited to every
country, province, territory, or other principality in the world, except the
states of Michigan, Indiana, Ohio and Illinois in the United States of America
while Edison Development Corporation has exclusive rights to market and sell
products similar to Products and provide services similar to Services therein.
In the event that Edison Development Corporation ("EDC") shall lose any of its
rights to market and sell similar products and provide similar services in the
States of Michigan, Indiana, Ohio and Illinois (the "EDC Territory"), this
definition of "LICENSED TERRITORY" shall be expanded to include the EDC
Territory.
ARTICLE II
LICENSE GRANT
A. LICENSOR hereby grants to LICENSEE, during the term of this Agreement,
a royalty-bearing, non-exclusive license to use the LICENSED MARKS in the
LICENSED TERRITORY on or in connection with the PRODUCTS, PRE-COMMERCIAL UNITS,
and SERVICES, in strict accordance with the STANDARDS OF QUALITY. LICENSEE is
authorized to use the LICENSED MARKS only on or in connection with PRODUCTS,
PRE-COMMERCIAL UNITS, and SERVICES, including use in packaging, labeling,
general publicity, letterheads, signs and other forms of advertising,
instruction books, and other literature relating to PRODUCTS, PRE-COMMERCIAL
UNITS, and SERVICES. In no event, however, shall LICENSEE use the LICENSED MARKS
as part of a trade name or authorize others to do so, except as may be expressly
provided for in this Agreement.
B. LICENSOR hereby grants to LICENSEE, during the term of this Agreement,
a worldwide, non-exclusive license to use the LICENSED NAME in its corporate
name and trade names.
C. Notwithstanding the foregoing grants of license, LICENSEE acknowledges
that the use of the LICENSED MARKS and the LICENSED NAME in the United Kingdom
and the Republic of Ireland may be limited or prohibited in connection with some
or all of the PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES as a result of prior
agreements entered into by and between LICENSOR and The General Electric
Company, p.l.c., an unrelated British company of similar name. LICENSOR shall
provide LICENSEE, and LICENSEE agrees to fully comply with, all guidelines
adopted from time to time by LICENSOR for the purpose of distinguishing its
trademarks, service marks, trade names, and the like, and preventing confusion
with any other entity, including The General Electric Company, p.l.c., and its
affiliates and licensees.
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ARTICLE III
EXAMINATION OF PRODUCTS, PRE-COMMERCIAL UNITS, AND SERVICES
A. LICENSEE shall use the LICENSED MARKS only on and in connection with
PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES, and then only to the extent that
such use is in strict accordance with the STANDARDS OF QUALITY.
B. LICENSOR or its authorized representative shall have the right at any
time or times to conduct during regular business hours an examination of
LICENSEE's manner of marketing and selling PRODUCTS and PRE-COMMERCIAL UNITS and
performing SERVICES under the LICENSED MARKS and of the facilities where
PRODUCTS and PRE-COMMERCIAL UNITS are marketed and sold and SERVICES are
performed. LICENSEE shall furnish to LICENSOR, from time to time as requested,
representative samples of PRODUCTS and PRE-COMMERCIAL UNITS to which it affixes
the LICENSED MARKS and representative samples showing all other uses of the
LICENSED MARKS by LICENSEE. If, at any time, PRODUCTS, PRE-COMMERCIAL UNITS, or
SERVICES sold or performed under the LICENSED MARKS by LICENSEE fail, in the
sole opinion of LICENSOR, to conform to any of the required STANDARDS OF QUALITY
or any other requirement in this agreement, and LICENSOR notifies LICENSEE of
such failure, LICENSEE shall promptly cease marketing and performing such non-
conforming PRODUCTS, PRE-COMMERCIAL UNITS and SERVICES.
ARTICLE IV
USE OF THE LICENSED MARKS AND LICENSE NAME
A. LICENSEE shall comply with LICENSOR's written guidelines and rules
provided to LICENSEE from time to time by LICENSOR with respect to the
appearance and manner of use of the LICENSED MARKS and the LICENSED NAME. Any
form of use of the LICENSED MARKS and the LICENSED NAME not specifically
provided for by such guidelines and rules shall be adopted by LICENSEE only upon
prior approval in writing by LICENSOR. Representative specimens showing the use
of the LICENSED XXXX and LICENSED NAME by LICENSEE shall be sent to LICENSOR
from time to time upon request by LICENSOR. LICENSEE specifically agrees that
the LICENSED NAME contained in the corporate name and trade names will not
appear in any type face differing from, or in a size, color or emphasis
differing from, the other words and elements of the corporate name and trade
names.
B. LICENSEE shall comply with all applicable laws and regulations,
including those pertaining to the proper use and designation of trademarks,
corporate names and trade names in the LICENSED TERRITORY and pertaining to the
sale of PRODUCTS and PRE-COMMERCIAL UNITS and the rendering of SERVICES in the
LICENSED TERRITORY.
C. LICENSEE shall immediately cease use of the LICENSED MARKS and/or any
corporate name or trade name containing the LICENSED NAME upon notice from
LICENSOR that, in the sole opinion of LICENSOR, such use of the LICENSED MARKS
or the LICENSED NAME (i) is in violation of LICENSOR's guidelines, rules, or
STANDARDS OF QUALITY, or (ii) results or is likely to result in an adverse claim
against either LICENSOR or LICENSEE by a third party.
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D. If, in the sole discretion of LICENSOR, it is required or advisable for
the purpose of making this Agreement enforceable, or for the purpose of
maintaining, enhancing, or protecting LICENSOR's rights in the LICENSED MARKS or
the LICENSED NAME, to record this Agreement or to enter LICENSEE as registered
or authorized user of the LICENSED MARKS or the LICENSED NAME, LICENSOR will
attend (at LICENSEE's expense) to such recording or entry. LICENSEE will execute
and deliver to LICENSOR such additional instruments or documentation as LICENSOR
may reasonably request, including without limitation execution and delivery of
substitute or short-form license agreements, with terms consistent with this
Agreement, for recordation or registration in specified countries in the event
that this Agreement shall be deemed to be unsuitable for recordation or entry in
such countries. The terms and conditions of this Agreement (and not the terms
and conditions of such substitute or short-form license agreements entered into
for recording or entry purposes) shall be binding between the parties throughout
the world and shall govern and control any controversy that should arise with
respect to each party's rights and obligations hereunder; provided, however,
-------- -------
that if specific terms and conditions of any such substitute or short-form
agreement differ from the comparable terms and conditions of this Agreement and
enforcement of the comparable terms and conditions of this Agreement pursuant to
this provision either would be improper under the laws of the applicable country
or would adversely affect LICENSOR's rights in the LICENSED MARKS and LICENSED
NAME in such country, then the specific terms and conditions of the substitute
or short-form agreement shall be controlling in such country.
E. LICENSEE shall supply LICENSOR, with such information concerning the
use of the LICENSED MARKS and the LICENSED NAME by LICENSEE on or in connection
with the PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES as LICENSOR may reasonably
request to aid LICENSOR in the acquisition, maintenance, and renewal of
registrations of the LICENSED MARKS, to record this Agreement and to enter
LICENSEE as a registered or authorized user of the LICENSED MARKS, or for any
other purpose.
ARTICLE V
OWNERSHIP AND VALIDITY OF LICENSED MARKS AND LICENSED NAME
A. LICENSEE admits the validity, and LICENSOR's ownership, of the LICENSED
MARKS and the LICENSED NAME and agrees that any and all rights that might be
acquired by the use of the LICENSED MARKS or the LICENSED NAME by LICENSEE shall
inure to the sole benefit of LICENSOR. LICENSEE admits and agrees that, as
between the parties, LICENSEE has been extended only a mere permissive right to
use the LICENSED MARKS and LICENSED NAME as provided in this Agreement which is
not coupled with any ownership interest.
B. Other than as expressly set forth in this Agreement, LICENSEE further
agrees not to use or file any application to register, in any class and in any
country, any trademarks, service marks, trade names, or corporate names
resembling, similar to, or containing, in whole or in part, the LICENSED MARKS
or the LICENSED NAME. Whenever the attention of LICENSEE is called by LICENSOR
to any such confusion or risk of confusion, LICENSEE agree to take appropriate
steps immediately to remedy or avoid such confusion or risk of confusion.
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C. LICENSEE shall give LICENSOR notice of any known or presumed
infringements of the LICENSED MARKS or unauthorized use of the LICENSED NAME by
others, and LICENSEE shall render LICENSOR full cooperation for the protection
of the LICENSE MARKS and the LICENSED NAME. LICENSOR shall have and retain all
rights to bring all actions and proceedings in connection with infringement or
unauthorized use of the LICENSED MARKS and LICENSED NAME at its sole discretion,
and LICENSEE shall have no rights to make any such claims or bring any actions
or proceedings, whether in its own name or on behalf of LICENSOR, without the
express prior written consent of LICENSOR. If LICENSOR decides to enforce its
rights in the LICENSED MARKS or the LICENSED NAME against an infringer, all
costs incurred and recoveries made shall be for the account of LICENSOR.
ARTICLE VI
ROYALTIES AND REPORTS
A. LICENSEE shall pay LICENSOR royalties at the rate of [***] of the net
selling price of PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES sold or otherwise
disposed of or performed by LICENSEE under one or more of the LICENSED
MARKS.
B. The term "net selling price" for the purpose of computing royalties
means LICENSEE's gross invoice price for such PRODUCTS, PRE-COMMERCIAL UNITS,
or SERVICES, less deduction, to the extent included in the gross invoice price,
of regular trade and quantity discounts, insurance, shipping, sales taxes and
return credits. PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES shall be considered
to be sold when billed, except that upon any termination or expiration of this
Agreement all SERVICES performed, and all shipments of PRODUCTS and
PRE-COMMERCIAL UNITS made, on or prior to the date of such expiration or
termination which have not been billed prior thereto shall be considered to have
been sold (and therefore subject to royalty), Where PRODUCTS, PRE-COMMERCIAL
UNITS, or SERVICES are not sold, but are otherwise disposed of or performed, the
net selling price of such PRODUCTS, PRE-COMMERCIAL UNITS or SERVICES shall be
the net selling price of products or services of like kind and quality being
offered for sale by LICENSEE or, in the event that LICENSEE is not offering
such similar products or services, the net selling price that would reasonably
be anticipated by LICENSOR in the event that such PRODUCTS, PRE-COMMERCIAL
UNIT, or SERVICES where being offered by LICENSEE. The term "otherwise disposed
of or performed" as used herein shall refer to (i) PRODUCTS or PRE-COMMERCIAL
UNITS put into use by LICENSEE for any purpose other than routine testing (ii)
PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES not sold but otherwise delivered
to, or performed for, other regardless of the basis of compensation, if any, and
(iii) PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES sold to others for
compensation which is less than the compensation which be paid by a willing
unaffiliated buyer to a willing unaffiliated seller in an arm's length
transaction. In order to assure to LICENSOR the full royalty payments
contemplated in this Agreement, LICENSEE agrees that, in the event that any
PRODUCTS, PRE-COMMERCIAL UNITS, or SERVICES for which royalties are payable
shall be sold for resale to a party that is affiliated with LICENSEE (or to and
through a series of such affiliated parties), the royalties to be paid with
respect to such PRODUCTS, PRE-COMMERCIAL UNITS, or SERVICES shall be computed
upon the net selling price at which such PRODUCTS, PRE-COMMERCIAL UNITS, or
SERVICES are finally sold to a non-affiliated party.
CONFIDENTIAL INFORMATION HAS BEEN OMITTED PURSUANT TO RULE 406 UNDER THE
SECURITIES ACT AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. THE LOCATIONS OF THE OMITTED INFORMATION HAVE BEEN INDICATED WITH
ASTERISKS.
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C. LICENSEE agrees to make written reports to LICENSOR quarterly within
thirty (30) days after the first days of each January, April, July, and October
during the term of this Agreement, and effective as of such dates, stating in
each such report the description and aggregate net selling prices of PRODUCTS,
PRE-COMMERCIAL UNITS, and SERVICES sold or otherwise disposed of or performed
during the preceding three (3) calendar months and upon which royalties are
payable hereunder. The first such report shall include all such PRODUCTS, PRE-
COMMERCIAL UNITS, and SERVICES sold or otherwise disposed of or performed
between the effective date of this Agreement and the date of such first report.
LICENSEE also agrees to make a written report to LICENSOR within thirty (30)
days after any expiration or termination of this Agreement, stating in such
report the description and aggregate net selling prices of PRODUCTS, PRE-
COMMERCIAL UNITS, and SERVICES sold or otherwise disposed of or performed and
upon which royalties are payable hereunder, but which have not been previously
reported to LICENSOR.
D. Concurrently with the making of each report pursuant to Paragraph VI.C.
hereof, LICENSEE shall pay to LICENSOR royalties at the rate specified by
Paragraph VI.A. hereof on all PRODUCTS, PRE-COMMERCIAL UNITS, and SERVICES
included therein. All payments to be made under this Agreement shall be made in
the City of New York, State of New York, U.S.A. in United States Dollars by
electronic transfer to an account designated by LICENSOR. Where the provisions
of this Agreement require the conversion into United States Dollars of an amount
initially computed in the currency of another country, the amount of United
States Dollars payable under this Agreement shall be determined on the basis of
the applicable exchange rate quoted by The Wall Street Journal, Eastern Edition,
most recently prior to the date each such payment is made or due, whichever is
earlier. If no exchange rate is quoted for any period, LICENSOR shall determine
the rate in accordance with an alternative LICENSOR deems reasonable.
E. LICENSEE shall keep records, in sufficient detail to enable the
royalties payable hereunder by LICENSEE to be determined, for at least a period
of two years following the expiration or termination of this Agreement.
LICENSEE shall permit its books and records to be examined from time to time
upon reasonable written notice to the extent necessary to verify the reports
provided for hereunder, such examination to be made at the expense of LICENSOR
by any auditor appointed by LICENSOR who shall be acceptable to LICENSEE, or, at
the option and expense of LICENSEE, by a certified independent accountant
appointed by LICENSOR and approved by LICENSEE, which approval shall not be
unreasonably withheld.
ARTICLE VII
TERMINATION
A. Until terminated pursuant to any provision of this Article VII, this
Agreement shall have a term of five (5) years from its effective date and shall
thereafter be automatically renewed from year to year for one (1) year terms
each commencing upon the expiration of the previous term. This Agreement may be
terminated at the end of any such term by either LICENSOR or LICENSEE giving
notice of termination at least ninety (90) days prior to the expiration of said
term. Notwithstanding the foregoing, this Agreement shall automatically
terminate without further notice in the event that the Distributor Agreement
terminates without being replaced by another such agreement between the parties
thereto.
-6-
B. This Agreement shall automatically terminate without further notice on
the date that LICENSOR ceases to own, directly or indirectly, in excess of fifty
percent (50%) of the outstanding voting securities or other membership interests
of LICENSEE or ceases to have the right and power to exercise effectively all of
the rights and powers of ownership therein.
C. This Agreement shall terminate as to a particular country with notice
on a date established by either LICENSOR or LICENSEE if a controlling substitute
or short-form agreement is required in such country pursuant to Paragraph IV.D.
hereof and such controlling replacement agreement contains provisions
unacceptable to the party giving notice hereunder.
D. In the event LICENSEE does not comply with any provisions of this
Agreement and LICENSOR elects to give LICENSEE written notice of such non-
compliance, LICENSEE shall have twenty (20) days from the receipt of such notice
to remedy such non-compliance. If such non-compliance is not remedied within
said twenty (20) days, LICENSOR shall have the right to terminate this Agreement
at any time thereafter by giving LICENSEE written notice of the effective date
of such termination.
E. Upon any termination of this Agreement for any reason, LICENSEE agrees
to cease and discontinue completely further use of the LICENSED MARKS and the
LICENSED NAME; provided, however, that LICENSEE shall have a period of three (3)
months from the date of such termination to (i) fill any outstanding orders for
PRODUCTS, PRE-COMMERCIAL UNITS, or SERVICES placed prior to the effective date
of termination (provided, however, such terminal use shall comply with the other
provisions of this Agreement) (ii) change its corporate name and trade names to
exclude the LICENSED NAME therefrom. At the expiration of such three (3) month
period, LICENSEE shall have no further right to use the LICENSED MARKS and
LICENSED NAME, or any xxxx or name the same as, substantially similar to, or
likely to cause confusion with the LICENSED MARKS and LICENSED NAME.
F. The following provisions of this Agreement shall survive any
termination: Paragraph IV.D., Paragraph IV.E., Paragraph V.A., Paragraph V.B.,
Paragraph V.C. Article VI, Paragraph VII.E., Paragraph VII.F, and Paragraphs
VIII.A., C., D., E., and F.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
A. LICENSEE shall fully indemnify and hold harmless LICENSOR against any
and all claims, losses, damages, expenses or liability asserted against or
suffered by LICENSOR and arising out of or relating to this Agreement or the
sale or disposition of PRODUCTS or PRE-COMMERCIAL UNITS, or performance of
SERVICES, by LICENSEE under the LICENSED MARKS or the conduct of business
activities by LICENSEE under the LICENSED NAME, whether or not such PRODUCTS,
PRE-COMMERCIAL UNITS, and SERVICES conform to the required STANDARDS OF QUALITY
and whether or not LICENSOR has specifically approved sale of PRODUCTS or PRE-
COMMERCIAL UNITS or the performance of SERVICES or the conduct of the business
activities under the LICENSED NAME.
B. This Agreement or any rights hereunder may not be assigned or otherwise
transferred or extended by LICENSEE to any party including without limitation
subsidiaries and affiliates of LICENSEE
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without the written consent of LICENSOR, and any attempted assignment, transfer
or extension without such consent shall be null and void.
C. Any notices or requests with reference to this Agreement shall be in
writing and shall be directed by one party to the other at its respective
address as follows:
LICENSOR
GENERAL ELECTRIC COMPANY
Attention: General Counsel
Xxx Xxxxx Xxxx
Xxxxxxxxxxx, XX 00000
LICENSEE
GE FUEL CELL SYSTEMS, LLC
Attention: President
Xxx Xxxxx Xxxx
Xxxxxxxxxxx, XX 00000
Any party may change its address to which notices or requests shall be directed
by notice to the other party, but until such change of address has been
received, any notices or requests sent to the above addresses shall be effective
upon transmittal and shall be considered as having been received.
D. This instrument contains the entire agreement between the parties
hereto regarding the use of the LICENSED MARKS and the LICENSED NAME, and this
Agreement supersedes and cancels all previous, understandings or agreements in
regard to the subject matter hereof. This Agreement may not be released or
modified in any manner, orally or otherwise, except by an instrument in writing
signed by duly authorized representatives of the parties hereto.
E. This Agreement shall be governed by the laws of the State of New York,
United States of America, without regard to its rules regarding the conflict of
laws.
F. Failure by LICENSOR at any time to enforce or require strict
compliance with any provision of this Agreement shall not affect or impair that
provision in any way or the rights of LICENSOR to avail itself of the remedies
it may have in respect of any subsequent breach of that or any other provision.
-8-
IN WITNESS WHEREOF, LICENSOR and LICENSEE have caused this instrument to be
executed in duplicate by their duly authorized representatives as of the date
first written above.
GENERAL ELECTRIC COMPANY
ATTEST:
/s/ illegible /s/ Xxxxxx X. Xxxxxx
_________________________________ By: ___________________________________
Xxxxxx X. Xxxxxx
Name: _________________________________
General Patent Counsel
Title: ________________________________
GE FUEL CELL SYSTEMS, L.L.C.
ATTEST:
/s/ Xxxxx Xxxxxxxx
_________________________________ By: ___________________________________
Xxxxx Xxxxxxxx, President
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EXHIBIT A
LICENSED XXXX REGISTRATION NO.
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[GENERAL ELECTRIC
LOGO APPEARS HERE]
_______________
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