EXHIBIT 10.12
ARMOUR TRANSITION TRADEMARK LICENSE AGREEMENT
(Armour and ConAgra Derivative Trademarks)
THIS TRANSITION TRADEMARK LICENSE AGREEMENT ("Agreement") is entered
into on this 19th day of September, 2002 (the "Effective Date") between CONAGRA
FOODS, INC. ("ConAgra Foods") and CONAGRA BRANDS, INC. ("ConAgra Brands") and
SWIFT BRANDS COMPANY, a Delaware corporation ("Licensee").
WITNESSETH
WHEREAS, ConAgra Foods is a shareholder of ConAgra Brands and has used
the trademark "Armour" in the United States, in connection with the production,
distribution, marketing, advertising and sale of fresh beef, fresh pork and
fresh lamb, pursuant to a certain license agreement between ConAgra Foods and
ConAgra Brands;
WHEREAS, ConAgra Foods and Licensee have entered into a certain
agreement ("Purchase Agreement"), pursuant to which Licensee has acquired
certain business assets related to the production, distribution, marketing,
advertising and sale of fresh beef, fresh pork and fresh lamb;
WHEREAS, ConAgra Brands is the owner of certain rights in the trademark
"Armour" in the United States;
WHEREAS, ConAgra Foods is the owner of certain rights in the trademarks
"ConAgra", "ConAgra Foods" and "ConAgra Beef Company" in the United States;
WHEREAS, Licensee desires to obtain a license from ConAgra Foods and
ConAgra Brands (collectively, "Licensor") to use the trademarks "Armour",
"ConAgra", "ConAgra Foods" and "ConAgra Beef Company" (collectively, the
"Licensed Trademarks") in connection with the production, distribution,
marketing, advertising and sale of certain fresh beef, fresh pork and fresh lamb
products as further specified in this Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and mutual covenants
and agreements hereinafter contained, it is agreed as follows:
1. GRANT OF LICENSE
(a) Licensor hereby grants to Licensee (including Licensee's
Affiliates, as the term "Affiliates" is used in the Purchase Agreement), and
Licensee hereby accepts from Licensor, an exclusive (but not as to Licensor)
limited, license to use the Licensed Trademarks in connection with the
production, distribution, marketing, advertising and sale of those fresh beef,
fresh pork and fresh lamb products that ConAgra Foods (and its Affiliates) was
selling under the
Licensed Trademarks as of the effective date of the Purchase Agreement
(collectively, the "Licensed Goods"), pursuant to the terms and conditions of
this Agreement. The license grant shall extend throughout the world with respect
to the "ConAgra" trademarks, and shall extend throughout the United States with
respect to the "Armour" trademark.
(b) Licensee agrees that the foregoing license grant expressly
excludes the right to grant any third party any sublicense to use the Licensed
Trademarks.
(c) Licensee agrees that all rights not expressly granted by
Licensor to Licensee hereunder are expressly reserved by Licensor. Without
limiting the generality of the foregoing, Licensee agrees that, during the term
of this Agreement, (i) Licensor may use the Licensed Trademarks in connection
with the production, distribution, marketing, advertising and sale of any goods
or services other than the Licensed Goods, and (ii) nothing in this Agreement
shall be construed as granting to Licensee any right or license to use any
trademark, service xxxx, corporate name, trade name, domain name or other
designation that contains the word "Armour" other than the Licensed Trademarks.
(d) Notwithstanding anything in this Agreement to the
contrary, with respect to the "ConAgra" derivative trademarks (but not the
"Armour" trademarks), in all jurisdictions except Japan and South Korea, the
license grant set forth herein is expressly limited to the use of such
trademarks on the inventory of product labels, product packaging, stationary,
advertising, promotional materials and other printed materials purchased by
Licensee from ConAgra Foods, pursuant to the terms and conditions of the
Purchase Agreement (collectively, the "Inventory Materials"). Except in the
jurisdictions of Japan and South Korea, nothing contained herein shall be
construed as permitting Licensee to print or otherwise create any new materials
bearing the "ConAgra" derivative trademarks.
(e) Notwithstanding anything in this Agreement to the
contrary, Licensee shall change all corporate names, trade names and other
business designations that incorporate the Licensed Trademarks, or any
derivation of the Licensed Trademarks, within fourteen (14) days after the
Effective Date.
(f) Notwithstanding anything in this Agreement to the
contrary, Licensee shall change all signage that incorporates the Licensed
Trademarks, or any derivation of the Licensed Trademarks, within sixty (60) days
after the Effective Date.
2. PAYMENT
The license fee for the license grant set forth herein is included in
the purchase price to be paid by Licensee under the terms and conditions of the
Purchase Agreement. No additional royalty or other payment to Licensor shall be
required hereunder.
3. OWNERSHIP AND PROTECTION OF LICENSED TRADEMARKS
(a) Licensee acknowledges and agrees that Licensor is the
owner of all right, title and interest in the Licensed Trademarks, including all
goodwill associated therewith, subject
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only to the specific rights granted to Licensee pursuant to this Agreement. All
goodwill arising from Licensee's use of the Licensed Trademarks will inure
solely to the benefit of Licensor.
(b) The Licensed Goods shall bear the Licensed Trademarks in
the logo style, type style and trade dress as they exist as of the Effective
Date of this Agreement. Licensor may not modify the Licensed Trademarks nor may
Licensee combine the trademark with any other trademark, logo or trade dress.
Nothing set forth herein shall limit or affect the right of Licensor to modify
or change the Licensed Trademarks as used by Licensor.
(c) Licensee shall promptly notify Licensor in writing of any
known or suspected infringements, imitations, or unauthorized uses of the
Licensed Trademarks by third parties. Licensor shall have the sole right and
discretion to institute actions against third parties for infringement of the
Licensed Trademarks. Licensor shall have the sole right to control any such
action instituted by it, including employment of counsel selected by Licensor.
Licensee shall cooperate with Licensor, at Licensor's expense, in connection
with any such action instituted by Licensor.
4. REQUIRED APPROVALS
(a) Licensor is aware of the Licensed Goods sold by Licensee
as of the Effective Date and such Licensed Goods are hereby approved for sale by
Licensee provided that such Licensed Goods continue to reflect the same high
level of quality as of the Effective Date, and such Licensed Goods conform with
all applicable laws and regulations, including but not limited to the
regulations of the United States Department of Agriculture and the United States
Food and Drug Administration, and the HACCP plans currently approved by the
USDA. Licensee may not produce, distribute, market, advertise or sell any
Licensed Goods which constitute a material departure from those Licensed Goods
sold by Licensee as of the Effective Date of this Agreement, without the prior
written approval of Licensor which approval may be withheld in the sole
discretion of Licensor.
(b) Licensor is aware of the labels, packaging, advertising
and promotional materials (collectively, the "Promotional Materials") used by
Licensee as of the Effective Date and such Promotional Materials are hereby
approved for use by Licensee provided that such Promotional Materials conform
with all applicable laws and regulations. Licensee may not publish or otherwise
disseminate any Promotional Materials which constitute a material departure from
those used as of the Effective Date of this Agreement, without the prior written
approval of Licensor which approval may be withheld in the sole discretion of
Licensor.
5. INSPECTIONS
Licensee acknowledges and agrees that Licensor shall have reasonable
access to all facilities in which any Licensed Goods are produced, packaged,
stored or otherwise handled, for the purpose of confirming Licensee's compliance
with the terms and conditions of this Agreement. In connection with such
inspections, Licensee shall provide Licensor with such samples of Licensed Goods
as Licensor may reasonably request. Unless Licensor has a reasonable basis for
believing that Licensee has violated the terms and conditions of this
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Agreement, Licensor agrees that it will not seek access to such facilities more
than one time each in any twelve (12) month period and then only during regular
business hours, or such other times as the parties may mutually agree.
6. INSURANCE
(a) Licensee agrees to maintain the following insurance during
the term of this Agreement:
(i) Commercial general liability insurance, including
products liability insurance, written on an occurrence form, including blanket
contractual liability coverage against claims for bodily injury, affording
minimum single limit protection of two million dollars ($2,000,000) per
occurrence, and two million dollars ($2,000,000) in the aggregate, with respect
to personal injury or death and property damage;
(ii) Automobile liability insurance against claims
for bodily injury, death and property damage, affording minimum single limit
protection of two million dollars ($2,000,000) with respect to personal injury
or death and property damage occurring or resulting from one occurrence; and
(iii) Employer's liability insurance against claims
for bodily injury and death, affording minimum single limit protection of two
million dollars ($2,000,000) with respect to personal injury or death occurring
or resulting from one occurrence and worker's compensation insurance in
accordance with the statutory requirements of each state in which Licensee's
employees may be found.
(b) All such insurance is to be purchased from an insurance
company that carries an A.M. Best Rating of "A" or better. Licensee agrees to
provide Licensor upon request with certificates of insurance properly executed
by Licensee's insurance company evidencing such insurance, and to give Licensor
thirty (30) days prior written notice of any cancellation or material alteration
of such insurance coverage.
7. INDEMNIFICATION
Licensee shall indemnify Licensor for any third party product liability
claims arising out of the sale of any Licensed Goods by Licensee, except to the
extent that the Licensed Goods at issue were acquired by Licensee from Licensor
under the Purchase Agreement and Licensee could not have prevented the claim at
issue by exercising commercially reasonable precautions.
8. REPRESENTATIONS AND COVENANTS OF LICENSEE
(a) Licensee recognizes Licensor's exclusive right, title and
interest in the Licensed Trademarks and agrees that it will not, at any time, do
or cause to be done any act or thing impairing or tending to impair any part of
Licensor's right, title and interest therein. Licensee agrees that it will not
directly or indirectly, during the term of this Agreement or thereafter, attack
or contest Licensor's exclusive right, title and interest in the Licensed
Trademarks.
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(b) Licensee agrees that Licensee will not seek to register
the Licensed Trademarks or any other trademark, service xxxx, corporate name,
trade name, domain name or other designation that incorporates the Licensed
Trademarks, in any jurisdiction without the express written consent of Licensor
which may be withheld in the sole discretion of Licensor.
(c) Licensee agrees that it will take no action likely to
damage the goodwill and reputation associated with the Licensed Trademarks.
(d) Licensee agrees that its use of the Licensed Trademarks
will comply with all applicable laws and regulations. Without limiting the
generality of the foregoing, on any new Promotional Materials that Licensee
creates after the Effective Date, Licensee agrees that it shall cause
appropriate "(TM)" or "(R)" designations to appear on all such Promotional
Materials that are used in connection with the Licensed Goods.
9. REPRESENTATIONS AND COVENANTS OF LICENSOR
(a) Licensor represents that (i) it has the right to enter
into this Agreement, (ii) Licensor has not granted any third party any license
or right to use the Licensed Trademarks that would conflict with the license
grant set forth in this Agreement, and (iii) to the knowledge of Licensor, no
third party has asserted any claim, in the United States, that would conflict
with the license grant set forth in this Agreement.
(b) Licensor warrants that during the term of this Agreement
it will not (i) grant to any third party any license or right to use the
Licensed Trademarks that would conflict with the license grant set forth in this
Agreement, or (ii) use for itself or its own account, the Licensed Trademarks in
connection with the Licensed Goods. Nothing contained herein shall be construed
as in any manner restricting or limiting Licensor from producing, distributing,
marketing, advertising or selling any goods under any other trademark other than
the Licensed Trademarks, including but not limited to goods that compete with
the Licensed Goods.
(c) Except as expressly set forth herein, the license grant
set forth in this Agreement is made on an AS IS basis without any warranty or
representation whatsoever. Without limiting the generality of the foregoing,
Licensee acknowledges and agrees that Licensor has not registered the Licensed
Trademarks in every jurisdiction throughout the world and Licensee acknowledges
and agrees that Licensor has made no warranty or representation to Licensee that
the Licensed Trademarks are available for use in any jurisdiction other than the
United States.
10. TERM AND TERMINATION
(a) This Agreement shall commence as of the Effective Date and
shall terminate upon termination of all license grants or as otherwise set forth
herein. The license to use "ConAgra" derivative trademarks shall terminate in
all jurisdictions except Japan and South Korea upon the earlier of (i) the date
on which Licensee exhausts the supply of Inventory Materials purchased from
ConAgra Foods, or (ii) one hundred and twenty (120) days from the
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Effective Date of this Agreement, whichever is earlier. The license to use the
"ConAgra" derivative trademarks in Japan and South Korea shall terminate upon
the earlier of (i) twelve (12) months after the Effective Date or (ii) the date
on which Licensee obtains a license from Nippon Meat Packers, Inc. (or its
successor in interest) to use a "Swift" derivative trademark in connection with
the sale of fresh beef and fresh pork in Japan and the shipment of fresh beef
and fresh pork through Japan. However, if Licensee has not substantially
exhausted the Inventory Materials by such termination dates despite commercially
reasonable efforts to do so, Licensee shall request in writing a reasonable
extension, permission for which will not be unreasonably withheld by Licensor.
The license to use the "Armour" derivative trademarks shall terminate twelve
(12) months after the Effective Date.
(b) Either party may terminate this Agreement upon written
notice to the other party in the event that the other party commits a material
breach of this Agreement and such breaching party fails to cure such breach
within thirty (30) days after receiving written notice of such breach. If the
breach is of a nature such that it cannot be cured using commercially reasonable
efforts, however, the non-breaching party shall not be able to terminate this
Agreement for that particular breach, provided that the breach was not willful
and the breaching party takes commercially reasonable steps to ensure that such
breaches do not occur again in the future.
(c) Licensor may terminate this Agreement upon written notice
to Licensee in the event that (i) a petition in bankruptcy is filed by or
against Licensee, (ii) Licensee is adjudicated a bankrupt or insolvent, (iii)
Licensee makes an assignment for the benefit of creditors or an arrangement
pursuant to any bankruptcy law, (iv) Licensee discontinues its business, or (v)
a receiver is appointed for Licensee or Licensee's business and such receiver is
not discharged within thirty (30) days.
(d) Upon the termination of this Agreement, unless otherwise
provided herein, any and all rights of Licensee to use the Licensed Trademarks
shall automatically cease. Licensee shall promptly cease all use of the Licensed
Trademarks, and Licensee will not adopt or use any word, logo or trademark which
is confusingly similar to the Licensed Trademarks. Notwithstanding the
foregoing, Licensor agrees that Licensee shall not be required to recall or
remove any Licensed Goods from the channels of distribution into which such
Licensed Goods were placed prior to termination.
(e) Upon termination of this Agreement, Licensee shall assign
or cause to be assigned to Licensor all right, title and interest, if any, to
any "Armour" derivative or "ConAgra" derivative trademark, service xxxx, domain
name, trade name or other business designation registered in the name of
Licensee or any Affiliates of Licensee.
(f) Notwithstanding anything to the contrary provided herein,
the provisions of Sections 3, 8(a), 8(b), 10(d), 10(e), 10(f), 15 and 16 shall
survive the termination of this Agreement.
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11. RELATIONSHIP BETWEEN PARTIES
Nothing contained in this Agreement shall be construed to place the
parties in the relationship of legal representatives, partners, joint venturers,
agents or fiduciaries, and no party shall take any action nor incur any debts,
obligations or liabilities in the name of the other. The rights of inspection
and approval set forth herein shall not create any duty or responsibility of
Licensor with respect to any Licensed Goods or Promotional Materials, and
Licensee agrees that Licensee shall remain solely responsible for compliance
with all labeling laws and regulations, advertising laws and regulations, and
all other laws and regulations relating to the production, distribution,
marketing, advertising and sale of the Licensed Goods and the publication or
other dissemination of the Promotional Materials.
12. ASSIGNMENT
(a) Licensee agrees that Licensor may freely assign its
rights and obligations under this Agreement.
(b) Licensee agrees that the rights and obligations of
Licensee under this Agreement are personal to Licensee, and this Agreement may
not be assigned by Licensee, in whole or in part, without the express written
consent of Licensor which may be withheld in the sole discretion of Licensor.
Any assignment in violation of this Agreement shall be void and a material
breach of this Agreement.
13. AMENDMENTS
This Agreement may not be amended or modified except in a writing
signed by the party against whom enforcement of such change is sought.
14. NOTICE
All notices required or permitted to be given by this Agreement shall
be in writing and sent by registered or certified mail, return receipt
requested, and shall be addressed to the party to whom it is to be served at the
address of such parties stated below. If either party changes his address, a
written notice thereof shall be given to the other party in accordance with this
Section.
If to Licensor: ConAgra Foods, Inc.
Xxx XxxXxxx Xxxxx
Xxxxx, Xxxxxxxx 00000
Attn: Corporate Controller
Telephone: (000) 000-0000
Fax: (000) 000-0000
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Copy to: Xxxxx Xxxxx
XxXxxxx, North, Xxxxxx & Xxxxx, P.C.
0000 Xxx Xxxxxxx Xxxx Xxxxx
000 Xxxxx 00xx Xxxxxx
Xxxxx, Xxxxxxxx 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
If to Licensee: Swift Brands Company
0000 Xxxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: President
Fax: (000) 000-0000
Copy to: Hicks, Muse, Xxxx & Xxxxx Incorporated
000 Xxxxxxxx Xxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
Attention: Xxxxxx Xxxxxxx
Fax: (000) 000-0000
Copy to: Xxxxxxx Xxxxxxx
Xxxxxx & Xxxxxx, L.L.P.
0000 Xxxx Xxxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
Fax: (000) 000-0000
15. CHOICE OF LAW
This Agreement shall be deemed to have been made and shall be
interpreted, and the rights and liabilities of the parties hereto determined, in
accordance with the laws of the State of Delaware applicable to agreements made
and to be performed solely in such State.
16. CONFIDENTIALITY
(a) The term "Confidential Information" shall mean all
information that is, directly or indirectly, disclosed by either party to the
other party, that should reasonably be understood by the receiving party, due to
legends or other markings, the circumstances of disclosure or the nature of the
information itself, to be proprietary or confidential to the disclosing party,
regardless of whether such information is disclosed in writing, verbally or by
virtue of inspection or observation of any tangible or intangible objects,
facilities, processes or information.
(b) The parties agree that all Confidential Information
disclosed by either party to the other party shall be maintained in secrecy by
the receiving party using the same safeguards as the receiving party uses to
protect its own commercially confidential information of a similar
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character, but at least using reasonable care. The parties agree that neither
party shall disclose any Confidential Information received from the other party
to any third party and that both parties shall use Confidential Information
received from the other party for the sole purpose of fulfilling its contractual
obligations to the other party. The parties agree that they will each disclose
Confidential Information received from the other party only to those employees
who have a bona fide need to know such Confidential Information. The parties
agree that they shall each be responsible for ensuring that their respective
employees safeguard all Confidential Information in accordance with the terms
and conditions of this Agreement.
(c) The parties agree that the term "Confidential Information"
does not include any information that is: (i) already known to or otherwise in
the possession of the receiving party at the time it is received from the
disclosing party, (ii) publicly available or otherwise in the public domain, or
(iii) rightfully obtained by the receiving party from any third party without
restriction and without breach of this Agreement by the receiving party.
17. BINDING EFFECT
This Agreement shall inure to the benefit of and shall bind the
respective parties, their permitted successors and assigns, and their parents,
subsidiaries and Affiliates.
18. SEVERABILITY
If any portion of this Agreement shall be held to be unenforceable or
illegal, such portion of this Agreement shall be deemed cancelled, but such
cancellation shall not affect any of the other terms, conditions or provisions
of this Agreement.
19. NONWAIVER
The failure of either party to require the performance of any term of
this Agreement or the waiver by either arty of any breach under this Agreement
shall not prevent subsequent enforcement of such term, nor be deemed a waiver of
any subsequent breach.
20. HEADINGS
The section headings within this Agreement are for convenience only and
shall not be deemed to affect in any way the language of the provision to which
they refer.
21. LANGUAGE
The language in this Agreement shall in all cases be construed as a
whole, according to its fair meaning, and not strictly for or against any of the
parties.
22. CONSENT TO JURISDICTION. THE PARTIES HERETO HEREBY IRREVOCABLY
SUBMIT TO THE EXCLUSIVE JURISDICTION OF ANY UNITED STATES FEDERAL OR DELAWARE
STATE COURT SITTING IN WILMINGTON, DELAWARE IN ANY ACTION OR PROCEEDING ARISING
OUT OF OR RELATING TO
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THIS AGREEMENT AND EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY AGREES THAT ALL
CLAIMS IN RESPECT OF SUCH ACTION OR PROCEEDING SHALL BE HEARD AND DETERMINED IN
ANY SUCH COURT AND IRREVOCABLY WAIVES ANY OBJECTION IT MAY NOW OR HEREAFTER HAVE
AS TO THE VENUE OF ANY SUCH SUIT, ACTION OR PROCEEDING BROUGHT IN SUCH A COURT
OR THAT SUCH COURT IS AN INCONVENIENT FORUM.
23. ENTIRE AGREEMENT
This Agreement and the Purchase Agreement constitutes the entire
agreement and supersedes any and all other understandings and agreements between
the parties with respect to the subject matter hereof and no representation,
statement or promise not contained herein shall be binding on either party.
[Signature Page to Follow]
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
CONAGRA FOODS, INC.
By: /s/ XXXXX X. XXXXXXXX
---------------------------------------
Name: Xxxxx X. Xxxxxxxx
-------------------------------------
Title: Assistant Secretary
------------------------------------
CONAGRA BRANDS, INC.
By: /s/ XXXXX X. XXXXXXXX
---------------------------------------
Name: Xxxxx X. Xxxxxxxx
-------------------------------------
Title: Assistant Secretary
------------------------------------
SWIFT BRANDS COMPANY
By: /s/ XXXXXXX X. XXXXX
---------------------------------------
Name: Xxxxxxx X. Xxxxx
-------------------------------------
Title: Vice President
------------------------------------
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