Exhibit 10.4
TRADEMARK LICENSE AGREEMENT
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This TRADEMARK 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, 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 trademarks and tradenames of Delco Remy Division world-
wide.
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 to it 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 logotypes
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 5 hereof.
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Products. The term "Products" means the products manufactured by the Businesses
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as of the date of the signing of this License and any replacements and
extensions thereof.
Quality Standards. The term "Quality Standards" has the meaning described in
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Paragraph 6(a) herein.
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. GM and Licensee have agreed that Licensee shall be entitled to use
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the Delco Remy Trademarks world-wide. However, the term "Territory" shall mean
initially the United States (its territories and possessions including, without
limitation, Puerto Rico and the U.S. Virgin Islands), Mexico, Canada, and such
other countries set forth on Exhibit B, as may be expanded as provided in
Paragraph 4(e) herein.
Trademarks. "Trademarks" means the "Delco Remy Trademarks", the "Remy
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Trademarks," and any other term that GM authorizes as provided herein for use as
a trademark.
Tradenames. The term "Tradenames" shall mean the Delco Remy Tradenames and the
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Remy Tradenames.
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Tradename License Agreement. The term "Tradename License Agreement"
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shall mean the Tradename License Agreement among GM, DRA and DRI.
Capitalized terms used but not otherwise defined herein shall have the meanings
ascribed to them in the Asset Purchase Agreement.
2. GRANT OF LICENSE
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(a) Authorization For Products. Subject to the terms and conditions of
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this License, GM hereby grants to Licensee and Licensee hereby
accepts, an exclusive, royalty free license to use (i) the Trademarks
on and in connection with existing Products finished goods inventory
as of the Closing, (ii) the Trademarks in the form and manner
specified by GM and/or approved by GM under this Agreement on and in
connection with new and replacement Products made by or for Licensee
developed for supply to GM pursuant to the Component Supply
Agreements; (iii) the Trademarks on and in connection with Products
and replacement and extension Products made by or for Licensee not
supplied to GM, and (iv) the Remy Trademarks on and in connection with
other products.
(b) The grant shall include the manufacture (including the right to have
made), advertising, promotion, distribution, service and sale of such
Products in the Territory by or for Licensee as provided herein.
(c) Term and Royalty. The initial term ("Initial Term") of the license of
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the Delco Remy Trademarks hereby granted shall commence on the
Effective Date, and shall continue for ten (10) years unless otherwise
terminated as provided herein. Upon expiration of the Initial Term,
this Agreement shall continue indefinitely on the same terms except
that Licensee agrees to pay an annual license fee of one hundred
thousand dollars ($100,000) payable upon the date of continuation and
each anniversary date thereof. The license of the Remy Trademarks
hereby granted shall commence on the Effective Date, shall
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be perpetual, fully-paid, and royalty-free, and may be freely assigned,
mortgaged, sublicensed or encumbered, subject, however, to the covenants in
Paragraph 2(f) of this Agreement.
(d) Limitations to Licensee's Rights. Except as provided in the Manufacturers
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Representative Agreement, Licensee shall not use the Delco Remy Trademarks
directly or indirectly on or in connection with, or in relation to, any
product except Products. Licensee shall not combine the Trademarks with any
other trademark without the express written authorization of GM, provided,
however, that Licensee may use the Trademarks together with other
trademarks, service marks, and tradenames including without limitation
"ROAD GANG" and other marks for specific products. Licensee shall not make
trademark use of the Trademarks or any confusingly similar forms of,
variation on, or alternative spelling of the term "DELCO", "GM", "GENERAL
MOTORS", or "DELCO REMY DIVISION", except as provided in this Agreement or
pursuant to Paragraph 8 of this Agreement. No other right or license is
granted hereby by implication or otherwise under any other xxxx, trademark,
service xxxx or trade name of GM. Nothing in this Paragraph (d) shall be
interpreted to limit or expand upon the rights granted Licensee to use the
Tradenames under the Tradename License Agreement.
(e) GM shall not use, and will not directly or indirectly authorize or permit
any third party to use the Trademarks or logotypes created by Licensee (or
any confusingly similar form of variation on, or alternative spelling
thereof), directly or indirectly on or in connection with or in relation to
Products.
(f) Notwithstanding the other provisions of this Agreement, neither Licensee
nor its sublicensees, assigns, or affiliates may use the Remy Trademarks
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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3. GOODWILL
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Licensee recognizes the value of the goodwill associated with the
Trademarks and acknowledges that, except for assignments pursuant to
Paragraph 8 of this Agreement, the Trademarks, and all rights therein and
the goodwill pertaining thereto, belong exclusively to GM and that the
Trademarks have acquired secondary meaning in the mind of the public in
association with 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 Trademarks other than the rights granted
by GM under this License or pursuant to Paragraph 8 of this Agreement.
4. 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 Trademarks and various U.S. and foreign
registrations for use on and in connection with Products; (ii) it has
the power to grant the rights and licenses granted to Licensee herein
and has not granted rights and licenses to the Trademarks to any
person other than Licensee hereunder with respect to Products; (iii)
it has not abandoned the Trademarks; (iv) the aforementioned
registrations have not been adjudged or declared invalid by any court
in any jurisdiction; (v) such trademark registrations are not, as of
the date of this License, the subject of any claim, litigation or U.S.
Patent and Trademark Office proceeding; (vi) it is not aware of any
rights of any third party which would be infringed by Licensee's use
of the Trademarks as authorized herein; and (vi) it is not aware of
any rights of any third party which would be infringed by Licensee's
use of the Trademarks on or in connection with Products outside the
initial Territory.
(b) Conduct of Licensee. Licensee agrees that it will not knowingly do or
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suffer to be done during the Term or any renewal period of this
License any act or
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thing that will materially impair the rights of GM in and to the Trademarks
then licensed hereunder. GM hereby agrees to indemnify and defend 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 Trademarks as authorized in this License with respect to
Products, 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 interests. GM shall keep
Licensee informed on 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 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 Trademarks with respect to Products.
(c) Assistance. Licensee agrees to assist GM to the extent reasonably necessary
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in the procurement of any protection or to protect any of GM's rights in
and to the Trademarks for Products. To this end, GM may commence or
prosecute, at GM's expense, any claims or suits in its own name, in the
name of Licensee or may join Licensee as a party thereto provided that GM
indemnifies and defends and holds Licensee harmless from any claims, suits
or counterclaims resulting therefrom. Each party shall promptly notify the
other in writing of any material infringement or imitation by others of the
Trademarks on goods the same as or similar to the Products covered by this
License which may come to such party's attention. The parties shall
promptly consult with each other and use their best efforts to agree upon a
course of action to be taken with respect to such infringement, provided,
however, that,
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GM shall have the sole right to determine whether or not it takes any
action on account of any such infringement or imitation. If GM decides not
to take action, Licensee may then take action in its own name and at its
expense and discretion and may join GM as a party to the extent necessary,
provided that Licensee indemnifies and defends and holds GM harmless from
any claims, suits, or counterclaims resulting therefrom.
(d) No Registration. Except as otherwise provided in this Agreement, Licensee
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shall not attempt to register the Trademarks, the term "DELCO", or any
formative thereof, alone or as part of its own trademark, nor shall
Licensee use or attempt to register any marks which are likely to be
confusingly similar to or constitute a colorable imitation of the
Trademarks.
(e) Registration and Registered User. GM shall seek and maintain in GM's name
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registrations of the Trademarks in the Territory for those Products which
Licensee sells or intends to sell in the Territory. GM shall pay the
initial cost for registration of the Delco Remy Trademarks in the Territory
and for the recordal or registration of this License, any related
agreements and of Licensee as a registered user. In addition, Licensee may
request that GM register and maintain the Remy Trademarks for such products
in such countries as Licensee deems necessary or desirable, for which
Licensee will reimburse GM for its out-of-pocket costs. In the event that
Licensee desires to market Products bearing Delco Remy Trademarks in any
country not then included in the Territory, Licensee shall first promptly
notify GM so appropriate trademark applications can be filed by GM before
any marketing of such products shall commence; provided that GM shall
instruct the filing of any application within thirty (30) days after
receipt of the notice to GM. Licensee agrees to cooperate with GM in
having Licensee recorded as a registered user where GM in its sole
discretion deems that such recordal is necessary. Licensee agrees to pay
the out-of-pocket costs incurred by GM for the registration and recordal in
any country which Licensee has requested to add to the Territory, and for
the maintenance and renewal of other registrations and recordals, provided
that
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GM gives Licensee 6 months prior notice of the deadlines for such
maintenance and renewal and in countries where there is no actual or
contemplated use the option of declining to maintain or renew such
registrations or recordals. Each party shall furnish the other with
all reasonably requested information and documentation (including the
execution and delivery of any appropriate and accurate affidavits,
declarations, oaths and other documentation) to assist the other in
obtaining or maintaining trademark registrations or other forms of
intellectual property protection and registrations and in any
litigation or administrative proceeding related thereto.
(f) No Assignment. It is agreed that nothing contained in this License
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shall be construed as an assignment or grant to Licensee of any right,
title or interest in or to the Trademarks, 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 Trademarks
only as specifically and expressly provided in this License and (2)
the assignment to Licensee of the trademarks and tradenames under the
Asset Purchase Agreement and pursuant to Paragraph 8 of this
Agreement.
5. 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
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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.
6. QUALITY CONTROL
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(a) Quality Standards. GM acknowledges that the Products currently
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manufactured by its Delco Remy Division meets its high standards for
quality. Licensee acknowledges that if the Products it manufactures
after the Closing were to be of inferior quality in design, material
or workmanship, the substantial goodwill that GM has built up and now
possesses in the Trademarks would be impaired. Accordingly, it is an
essential condition of this License, and Licensee hereby covenants and
agrees: (i) that the overall quality of the Products covered by this
License, and any use or depiction of the Delco Remy Trademarks in
connection therewith, shall continue to meet or exceed the overall
standard and quality as those manufactured by or for the Delco Remy
Division as of the Closing; and (ii) that products bearing the Delco
Remy Trademarks or Remy Trademarks will be manufactured, imported,
promoted, sold, distributed and exploited in all material respects in
accordance with all applicable and material federal, state and local
laws and regulations. In addition, if any Product sold by Licensee to
GM under the Component Supply Agreements is resourced by GM because of
Licensee's breach of the quality requirements of such agreement, then
Licensee will not thereafter use the Delco Remy Trademarks to promote
that particular Product for sale in the same application as original
equipment or new service parts. All products sold bearing the Remy
Trademarks under this License will be of merchantable quality as
defined in the Uniform Commercial Code.
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(b) Reporting and Inspection. In order to verify that Licensee is
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continuing to maintain the Quality Standards as required under this
License, at GM's reasonable request Licensee shall deliver to GM or
its designee sample Products bearing the Delco Remy Trademarks and
products bearing the Remy Trademarks, together with information
relating to the design, specification, manufacture and reliability of
products including but not limited to those supplied to GM pursuant to
the Component Supply Agreements. This requirement shall survive the
termination of such Component Supply Agreements.
(c) 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, brochures, catalogs, marketing
and promotional materials, bearing the Delco Remy Trademarks not
previously provided pursuant to this provision (individually or
collectively, the "Material") for GM's review of: (i) the manner in
which the Delco Remy Trademarks are used and depicted; (ii) conformity
to the Quality Standards; and (iii) the notices required in Paragraph
7 below. GM shall use its best efforts to respond with any reasonable
objections 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.
7. TRADEMARK AND LICENSE NOTICES
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Licensee agrees that, on or before six (6) months after the Effective Date
and throughout the Term of this License, it will cause to appear where
practical or appropriate when a Delco Remy Trademark is used (a) on all
advertising, promotional
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and point-of-sale materials (including, without limitation, brochures and
catalogs) used by Licensee in connection with the Products; and (b) within
the bulk shipment of any large quantity of Products shipped in bulk to an
end user, a notice that the term "DELCO REMY" is a registered trademark of
GM ("Trademark Notice") and a notice that the Delco Remy Trademarks are
being used by Licensee pursuant to this License from GM ("License Notice"),
unless other notice is authorized by GM or is necessary or desirable under
the law or practice of the country. The Trademark Notice shall consist
substantially of the following: "DELCO REMY is a registered trademark of
General Motors Corporation used under license." All advertising and
promotional materials bearing a Delco Remy Trademark used by Licensee in
connection with the Products shall contain the foregoing notice, unless
other notice is authorized by GM or is necessary or desirable under the law
or practice of the country.
8. RIGHT TO ACQUIRE REMY TRADEMARKS
--------------------------------
GM will, within 30 days after Licensee's written request, transfer and
assign, or cause to be transferred and assigned, to a Licensee or its
designee the right, title and interest to the Remy Trademarks in such
country or countries as Licensee may designate, to the extent that such
transfer and assignment is permissible under applicable law, together with
all assignments and other documents necessary to effect such transfer and
all records relating to the registration of such marks. Licensee's use of
the Remy Trademarks after any such transfer will remain subject to
Licensee's covenants under Paragraph 2(f) of this Agreement. 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 Trademarks
from time to time in such countries as its chooses until it has acquired
all right, title and interest to the Remy Trademarks 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 Trademarks as to Licensee and the Delco Remy Trademarks as to
GM.
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Contemporaneous with each such transfer and assignment, GM will, to the
extent requested by Licensee in writing, voluntarily partially cancel,
abandon, relinquish or limit any of its or its affiliates' rights to and
registrations of Delco Remy Trademarks in such country or countries with
respect to Products, provided, however, that Licensee will not thereafter
sell Products in such country or countries under the Delco Remy Trademarks
if registration with respect to Products would be required there. Nothing
herein will limit GM's ability to use, license, register, or maintain
registrations for the Delco Remy Trademarks on or in connection with, or in
relation to, any product or service of the Delco Remy Division as of the
Closing Date other than the Products. With respect to each country in which
Licensee has been assigned the Remy Trademarks, as of the effective date of
any such assignment the Remy Trademarks will no longer be subject to this
License in such country, the definition of the term "Trademarks" in this
Agreement will exclude the Remy Trademarks as to such country, and
Licensee's covenants and acknowledgements in Paragraphs 2(d), 3 and 4 with
respect to the Delco Remy Trademarks will not be interpreted to limit or
restrict Licensee's use of or rights to the Remy Tradenames as to such
country, provided, however, that such changes will not alter Licensee's
covenants under Paragraph 2(f) of this Agreement.
9. TERMINATION
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(a) Bankruptcy. If Licensee: (i) files a voluntary petition for an order
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of 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
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this License upon ninety (90) days prior 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 writing by the breaching
party and the breaching party is working in good faith to fully remedy
such breach.
10. DISPOSAL OF STOCK UPON EXPIRATION OR TERMINATION
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After expiration or termination of this License under the provisions of
Paragraph 9, Licensee may dispose of Products bearing Trademarks which were
manufactured prior to the time of expiration or termination. Licensee shall
in no event manufacture, promote, assemble, sell, exploit or dispose of any
Product bearing Trademarks after termination of this License, where such
termination was based on the material departure by Licensee from the
Quality Standards required by Paragraph 6(a) of this License.
11. EFFECT OF EXPIRATION OR TERMINATION
-----------------------------------
Upon and after the expiration or termination of this License, the license
granted to Licensee hereunder shall forthwith revert to GM, except as
provided in Paragraph 10, 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 8 of this Agreement.
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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:
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
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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 Rower
0000 Xxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attention: G. Xxxxxx X'Xxxxxxx, Esquire
Fax: (000) 000-0000
14. RELATIONSHIP BETWEEN GM AND LICENSEE
------------------------------------
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 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
------------------------
With the exception of the license of the Remy Trademarks and Licensee's
rights under Paragraph 8, 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. If Licensee
determines that it needs to enter into a sublicense or joint license with
respect to the Delco Remy Trademarks, it should make such request in
writing to GM. Such request should state the name and address of the
company for which the sublicense or joint license is sought, a description
of such company and
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sufficient financial information with respect to such company which will
enable GM to satisfy itself as to financial health and standing of such
company. Licensee must also set forth the Products for which a sublicense
or joint license is sought, the intended customers and why it believes a
sublicense or joint license is necessary and what steps will be taken to
protect the trademarks and assure the quality of the Products involved.
Notwithstanding the foregoing, GM may assign this License without first
obtaining Licensee's written consent to any wholly owned subsidiary company
of GM, and Licensee may assign this License as part of an internal
reorganization or to the successor of all or substantially all of its
business.
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, and 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.
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.
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(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
-----------------------------
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
--------
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,
----------------
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
----------------------
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.
18
(h) Signature Representation. Each person who signs this License on
------------------------
behalf of a party hereto represents and warrants that he has the proper
authority to execute this License on 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.
GENERAL MOTORS CORPORATION
BY: /s/ Xxxxxxx X. Xxxxxx
-----------------------------
NAME: Xxxxxxx X. Xxxxxx
---------------------------
TITLE: Attorney in fact
---------------------------
DR INTERNATIONAL, INC.
BY: /s/ Xxxxx X. Xxxxxxx
-----------------------------
NAME: Xxxxx X. Xxxxxxx
---------------------------
TITLE: Executive V.P.
---------------------------
DRA, Inc.
BY: /s/ Xxxxx X. Xxxxxxx
-----------------------------
NAME: Xxxxx X. Xxxxxxx
---------------------------
TITLE: Executive V.P.
---------------------------
19
EXHIBIT A
---------
DELCO REMY AMERICA LOGO
-----------------------
[LOGO OF DELCO REMY APPEARS HERE]
PMS #185 and Black
4-20-94
Trademark License Agreement
Exhibit A
EXHIBIT B
---------
LICENSED TERRITORIES
--------------------
TERRITORY TERRITORY
--------- ---------
Algeria Morocco
Argentina Namibia
Australia New Zealand
Austria Nicaragua
Bangladesh Nigeria
Benelux Norway
Bolivia O.A.P.I.
Bophuthatswana Pakistan
Botswana Papua New Guinea
Brazil Paraguay
Canada People's Republic of China
Chile Peru
Colombia Poland
Costa Rica Portugal
Czech Republic Russia
Denmark Saudi Arabia
Ecuador Singapore
Egypt South Africa
El Salvador Spain
Fiji Islands Sri Lanka
Finland Sudan
France Swaziland
Germany Sweden
Ghana Switzerland
Greece Syria
Hong Kong Taiwan
Hungary Tanganyika
Iceland Thailand
India Transkei
Indonesia Turkey
Iran Ukraine
Ireland United Arab Emirates
Israel United Kingdom
Italy United States
Japan Uruguay
Korea Xxxxx
Xxxxxx Xxxxxxxxx
Xxxxxxx Xxxxxxx Xxxxx
Xxxxxx Xxxxxx
Trademark License Agreement
Exhibit B
