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TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is made as of this
7th day of February, 1997 by and between Biomatrix, Inc., a Delaware corporation
having its principal place of business at 00 Xxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxx
Xxxxxx, X.X.X. ("Biomatrix"), and American Home Products Corporation, a Delaware
corporation having its principal place of business at Five Xxxxxxx Xxxxx,
Xxxxxxx, Xxx Xxxxxx 00000, U.S.A., acting through its unincorporated
Wyeth-Ayerst Laboratories division (such entities are together defined herein as
"Wyeth").
WHEREAS, Biomatrix and Wyeth are parties to that certain International
License Agreement (the "International License Agreement") and United States
License Agreement (the "U.S. License Agreement"), each dated as of February 7,
1997 (together, the "License Agreements"), pursuant to which (i) Biomatrix
agreed to sell and license to Wyeth, and Wyeth agreed to purchase and license
from Biomatrix, Products (as defined in the License Agreements) and Extended
Products and (ii) Biomatrix granted to Wyeth the right and license to use
certain trademarks owned by Biomatrix in any promotional materials used by Wyeth
to market the Products and Extended Products, all on the terms and conditions
set forth in the License Agreements;
WHEREAS, Biomatrix is the owner of rights in, and the goodwill
associated with, the Trademark (as defined below); and
WHEREAS, Biomatrix and Wyeth desire to enter into this Agreement for
purposes of licensing Wyeth to use the Trademark in the Territory (as defined in
each of the License Agreements, respectively).
NOW, THEREFORE, the parties hereto agree as follows:
1. DEFINITIONS; RULES OF INTERPRETATION
1.1 Definitions. Unless otherwise specifically provided
herein, all defined terms herein shall have the meanings ascribed them in the
License Agreements in effect on the effective date of this Agreement. For
purposes of this Agreement, the term "Trademark" shall mean (i) the trademark
"Synvisc(R)" and each other xxxx, trademark or service xxxx described on Exhibit
A hereto, and (ii) any other marks, trademarks or service marks as may be agreed
upon in writing from time to time by the parties hereto for use by Wyeth in
connection with the promotion, marketing and sale of Products and Extended
Products.
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1.2 Rules of Interpretation.
(a) All definitions (whether set forth herein or by reference)
shall apply equally to both the singular and plural forms of the terms
defined. Whenever the context may require, any pronoun shall include the
corresponding masculine, feminine and neuter forms. All references herein
to Sections shall be deemed references to Sections of this Agreement unless
the context otherwise requires.
(b) In the event that any of the terms or provisions of this
Agreement shall be in conflict with or be inconsistent with any of the
terms or provisions of the License Agreements, the terms and provisions of
this Agreement shall govern.
2. GRANT OF LICENSE; ROYALTY.
2.1 License. Subject to the terms and conditions of this Agreement,
Biomatrix grants to Wyeth, and Wyeth accepts from Biomatrix, the exclusive,
right and license (without the right to sublicense), for the term of this
Agreement, to use and display, and Wyeth shall use and display, the Trademark
solely in connection with the sale, distribution, marketing, advertising and
promotion of Products and Extended Products in the Field in the Territory. Wyeth
agrees that it shall not use the Trademark at any time outside the Territory or
use any Trademark for any products other than the Products and Extended Products
within the Territory, or for any other purpose except as provided herein.
2.2 Limitation of Rights. Wyeth shall have the right to use the
Trademark only in the manner and to the extent specifically permitted by this
Agreement. Biomatrix retains all rights not expressly granted to Wyeth in this
Agreement. If Wyeth's license to sell Products or Extended Products terminates
with respect to any country in the Territory then Wyeth's rights to use the
Trademark and all other product specific logos, slogans and other intangibles
used by Wyeth or its Affiliates in association with the sale of Products and
Extended Products (including all registrations relating thereto) shall terminate
with respect to such country and, subject to Wyeth's sell-out rights with
respect to inventory, Wyeth shall (i) immediately with respect to such country
cease using the Trademark and any such logos, slogans, and marketing rights of
Biomatrix or any imitations thereof and (ii) immediately execute and deliver to
Biomatrix any documents or instruments reasonably requested by Biomatrix to give
full effect to the provisions of this Section 2.2.
2.3 Royalty. In consideration of the license granted to Wyeth in
Section 2.1, Wyeth agrees to pay royalties to Biomatrix as follows:
(a) Wyeth shall pay to Biomatrix royalties in an amount equal to
*
*Confidential portions have been omitted and filed separately with
the Commission.
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*
(b) The amount of royalties due hereunder shall be computed
quarterly. Within
*
after the close of each calendar quarter, Wyeth shall pay to
Biomatrix in cash the royalties owed hereunder with respect to such
quarter. Each such payment shall be accompanied by a statement describing
in reasonable detail the calculation of the amount of the accompanying
royalty payment.
*
(c) All royalty payments shall be made in U.S. Dollars. The amount
of Net Revenues paid in another currency shall be converted into U.S.
Dollars in accordance with Section 4 of the International License
Agreement.
2.4. Intangibles. Biomatrix shall have exclusive ownership rights
to the Trademark and all other product specific logos, slogans and other
intangibles relating to the Products and Extended Products possessed or
controlled by Wyeth or any of its Affiliates.
3. TERM AND TERMINATION. Unless earlier terminated pursuant to this
Paragraph 3, this Agreement shall continue in force, on a country-by-country
basis,
*
Notwithstanding the foregoing, this Agreement may be terminated by Biomatrix at
any time upon written notice thereof to Wyeth upon the occurrence of any of the
following:
(a) Breach of any duty or obligation of Wyeth
hereunder not cured within
*
after receipt of written notice thereof from Biomatrix;
(b) Termination of each of the International License
and U.S. License by Biomatrix as a result of Wyeth's breach;
(c) Termination of each of the International License
and U.S. License by Wyeth;
(d) Institution by Wyeth of bankruptcy, insolvency,
liquidation or receivership proceedings, or proceedings for
reorganization under bankruptcy or comparable laws;
(e) Institution against Wyeth of any of the
proceedings listed in (d) above, the effectiveness of which is
not stayed or dismissed within sixty (60) days after such
institution;
*Confidential portions have been omitted and filed separately with the
Commission.
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(f) Wyeth's making of a general assignment for the
benefit of creditors; and
(g) Wyeth's failure to use the Trademark for a
material amount of time in connection with material amounts of
sales of Products or Extended Products.
4. EFFECTS OF TERMINATION.
Wyeth shall not have, and hereby waives, any claim for lost
profits or goodwill relating to the termination of this Agreement. Upon the
expiration or termination of this Agreement, Wyeth shall (i) immediately
discontinue all use of the Trademark, its component parts or any colorable
imitations thereof, by itself or in combination with any other words, letter,
symbols or designs and all other logos, slogans, marketing rights and other
intangibles (or any imitations thereof) relating to the Products or Extended
Products and (ii) immediately take all necessary action and execute and deliver
to Biomatrix any documents and instruments reasonably requested by Biomatrix to
give full effect to the provisions of this Section 4, including without
limitation those necessary to remove Wyeth as a registered user and/or a
recorded licensee of the Trademark.
*
Thereafter, Biomatrix shall have the right, but not the obligation,
*
The termination of this Agreement shall not affect any obligation accruing prior
to such termination. In the event that Wyeth fails promptly upon written request
by Biomatrix to comply with any of its agreements in this Section 4, Wyeth
hereby irrevocably consents to Biomatrix's taking any action necessary to give
effect to such agreements.
5. QUALITY CONTROL
Throughout the term of this Agreement, Wyeth shall maintain
the quality of products manufactured, sold or distributed under the Trademark at
least at the level of quality maintained for products currently sold and
distributed under the Trademark. Any products sold under the Trademark shall be
made strictly to the same specifications as the Product and/or Extended Product
made by Biomatrix under the Supply Agreement between Biomatrix and Wyeth dated
as of February 7, 1997. If any product sold under the Trademark is not
manufactured by Biomatrix, at least
*
prior to use or distribution thereof, Wyeth shall deliver to Biomatrix for
inspection, testing and/or review samples of product to be sold and all new, or
changes to existing, product signs, labels, packaging materials, advertising and
other materials bearing the Trademark; and Wyeth shall not offer for sale, sell,
distribute or use any such new or changed product or materials without
Biomatrix's express prior written approval. Biomatrix' approval
*
In order to determine Wyeth's compliance with this Paragraph 5, Biomatrix or its
authorized representative may inspect and/or test, at reasonable times and
*Confidential portions have been omitted and filed separately with the
Commission.
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under reasonable circumstances, all uses of the Trademark by Wyeth and all
underlying goods. Each product produced or distributed hereunder shall comply
with all applicable laws and regulations and shall conform in all respects to
the sample of such product approved by Biomatrix hereunder. In the event of any
nonconformity or any deterioration in the quality of a product sold under the
Trademark (as determined by Biomatrix in good faith), Biomatrix may, in addition
to other available remedies, by written notice to Wyeth, require that such
product be immediately withdrawn from the market and Wyeth shall promptly cause
such withdrawal.
6. INTELLECTUAL PROPERTY
6.1 Use and Display of the Trademarks. Wyeth shall use and
display the Trademark in a conspicuous manner in connection with all Products
and Extended Products. Without limiting the generality of the foregoing:
(a) Wyeth shall include in all advertising and
promotional material created by or for Wyeth in which the Trademark
appears such legends, markings, and notices (such as "TM" or "(R)"
superscript, as appropriate) as required or permitted by any foreign,
federal, state or local law or regulations.
(b) Subject to applicable laws and regulations in the
Territory, Wyeth shall ensure that all trade literature, publications
and promotional materials relating to any product sold under the
Trademark shall specify the concept of viscosupplementation and that
such concept has been conceived and introduced by Biomatrix.
(c) Wyeth shall not use the Trademark or any marks
confusingly similar thereto (i) in connection with any goods or
services other than products made to the specifications for the
Products or Extended Products or (ii) as part of or in connection with
the legal name of any Person or the tradename of any Person;
(d) Wyeth shall not have the right to use any
variation of the Trademark without Biomatrix's written approval (which
approval shall be in Biomatrix's sole discretion) and, in the event
that Biomatrix approves the use of any variation of a Trademark, such
approved variation shall become a Trademark owned by Biomatrix and
governed by the terms of this Agreement;
(e) Wyeth shall not use the Trademark with any other
trademark or tradename, other than Wyeth's standard "house xxxx,"
without Biomatrix's prior written approval (which approval shall not be
unreasonably withheld).
6.2 Ownership and Maintenance of Trademark. Biomatrix
expressly reserves the sole and exclusive ownership of the Trademark and all
rights relating thereto. Wyeth hereby acknowledges that Biomatrix is the sole
and exclusive owner of the
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Trademark. Wyeth shall not question or otherwise challenge, either directly or
indirectly, during the term of this Agreement or after its termination or
expiration, Biomatrix's ownership of, and rights in, the Trademark and the
goodwill associated therewith or the validity of this Agreement. All use of the
Trademark by Wyeth shall inure to the benefit of Biomatrix. Upon Biomatrix's
request, whether during or after the term of this Agreement, Wyeth shall provide
necessary samples and information to permit Biomatrix to effect trademark or
service xxxx registrations and execute and deliver to Biomatrix any documents
required by Biomatrix to confirm Biomatrix's ownership of the Trademark. Wyeth
shall not at any time, either during or after the term of this Agreement, apply
to register the Trademark, or any xxxx confusingly similar thereto, as a
trademark or service xxxx anywhere in the world. The parties shall execute a
short form Trademark license agreement to the extent that it is necessary to
record the Trademark license hereunder in any country in the Territory where
Biomatrix deems such recordation to be necessary or desirable.
6.3 No Assignment. It is understood and agreed that nothing in
this Agreement will be deemed in any way to constitute an assignment by
Biomatrix of the Trademark or of the goodwill associated therewith, or to give
Wyeth any right, title, or interest in and to the Trademark or the goodwill
associated therewith (except the right to make use thereof as herein provided).
6.4 Infringements by Third Parties. Wyeth shall notify
Biomatrix promptly of any use by any Person of the Trademark or a xxxx similar
to the Trademark. Biomatrix in its sole discretion shall decide whether or how
to proceed against a third party infringer. Wyeth shall cooperate fully with
Biomatrix in connection with the prosecution of any claim against any such third
party infringer. If requested by Biomatrix, Wyeth shall join with Biomatrix, at
Biomatrix's expense, in any such action as Biomatrix in its sole discretion may
deem advisable, provided, however, that Wyeth shall have no right to take any
action with respect to the Trademark without Biomatrix's prior written approval,
which approval may be withheld in Biomatrix's sole discretion. The proceeds of
any settlement of, or recovery from, any such action shall belong entirely to
Biomatrix. If Biomatrix declines in writing to bring any action against an
alleged third party infringer, Wyeth may proceed and will bear all expenses of
the action. If necessary for Wyeth to proceed, Biomatrix shall join with Wyeth,
at Wyeth's expense. The proceeds of any settlement of, or recovery from, any
such action initiated by Wyeth shall belong entirely to Wyeth.
7. INDEMNIFICATION
7.1 Indemnification by Biomatrix. Biomatrix agrees to defend,
indemnify and hold harmless Wyeth from and against any and all claims of third
parties and liabilities, judgments, penalties, losses, costs, damages and
expenses resulting therefrom, arising from infringement claims by third parties
by reason of
*
In the event of any such claim, upon written request by Biomatrix, Wyeth shall
immediately cease and desist from any and all further use or display of the
Trademark.
*Confidential portions have been omitted and filed separately with the
Commission.
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7.2 Indemnification by Wyeth. Wyeth agrees to defend,
indemnify and hold harmless Biomatrix from and against any and all claims of
third parties and liabilities, judgments, penalties, losses, costs, damages and
expenses resulting therefrom, arising by reason of
*
7.3 Procedures for Indemnification. With respect to any claims falling
within the scope of the foregoing indemnifications:
(a) Each party agrees to notify the other promptly
and in writing of such claims, and to keep the other fully advised with
respect to such claims and the progress of any legal actions relating
thereto in which the other party is not a participant.
(b) Biomatrix shall have the sole right to undertake
and control the defense and settlement of any claims relating to the
ownership or validity of the Trademark or of any pending application or
registration of the Trademark. Wyeth shall cooperate fully with
Biomatrix in connection with the defense of any such claims brought by
third parties. If requested by Biomatrix, Wyeth shall join with
Biomatrix, at Biomatrix's expense, in any such action as Biomatrix in
its sole discretion shall deem advisable.
(c) Wyeth shall have the right to participate at its
own expense in the defense of any claim instituted against it, and, if
it does so participate, it shall not have the right to recover against
Biomatrix the costs and expenses (including its attorneys' fees) of its
participation in such suit.
(d) In the event that a party assumes the defense of
a claim against the other party, the party assuming the defense shall
not enter into any compromise or settlement of the claim without the
prior written consent of the other party, which consent shall not be
unreasonably withheld.
8. MISCELLANEOUS PROVISIONS
8.1 Assignment. The rights and obligations of the parties hereto
shall inure to the benefit of and shall be binding upon the authorized
successors and permitted assigns of each party. Neither party may, without the
prior written consent of the other party, take any of the following actions
(collectively referred to herein as an "Assignment"): (i) assign or transfer its
rights or obligations under this Agreement, (ii) license or sublicense any of
its rights or obligations under this Agreement, or (iii) designate another
person to perform all or part of its obligations under this Agreement or have
all or part of its rights and benefits under this Agreement; provided, however,
that a party may make Assignments to Affiliates of such party or to a successor,
by merger, and provided, further that in the case of an Assignment to an
Affiliate the assigning party shall promptly notify the other party in writing
of such
*Confidential portions have been omitted and filed separately with the
Commission.
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Assignment and shall remain liable (both directly and as guarantor) with respect
to all obligations so assigned. In the event of any permitted Assignment or in
the event that an Affiliate of either party shall exercise rights and/or perform
obligations hereunder pursuant to the terms of this Agreement, the assignee or
Affiliate, as the case may be, shall specifically assume and be bound by the
provisions of the Agreement by executing and agreeing to an assumption agreement
satisfactory to the other party hereto.
8.2 Governing Law; Specific Performance. (a) This Agreement
and the respective rights and obligations of the parties shall be governed by
and construed in accordance with the internal and substantive laws of the State
of New Jersey, United States of America (without regard to principles of
conflicts of laws). The parties hereby agree that the United Nations Convention
on Contracts for the International Sale of Goods shall not apply to this
Agreement or any other document contemplated hereby. In the event of any dispute
touching or concerning this Agreement, the parties hereby agree to submit such
dispute to their respective chief executive officers or their designees by
notice delivered in accordance with the provisions of Section 8.6 hereof. Each
of the parties agrees that any suit relating to this Agreement may be brought in
the courts of the State of New Jersey or any federal court and service of
process in any such suit being made by mail at the address specified in Section
8.6. Each party hereby waives any objection that it may now or hereafter have to
the venue of any such suit or any such court or that such suit is brought in an
inconvenient court.
(b) Injunctive Relief. Each of the parties hereto acknowledges and
agrees that damages will not be an adequate remedy for any material breach or
violation of this Agreement if such material breach or violation would cause
immediate and irreparable harm (an "Irreparable Breach"). Accordingly, in the
event of a threatened or ongoing Irreparable Breach, each party hereto shall be
entitled to seek, in any state or federal court in the State of New Jersey,
equitable relief of a kind appropriate in light of the nature of the ongoing
threatened Irreparable Breach, which relief may include, without limitation,
specific performance or injunctive relief; provided, however, that if the party
bringing such action is unsuccessful in obtaining the relief sought, the moving
party shall pay the non-moving party's reasonable costs, including attorney's
fees, incurred in connection with defending such action. Such remedies shall not
be the parties' exclusive remedies, but shall be in addition to all other
remedies provided in this Agreement.
8.3 Section Headings. References herein to sections and
Exhibits are to sections and Exhibits to this Agreement. The title of this
Agreement and the section headings contained herein are for convenience of
reference only and shall not define or limit the provisions hereof.
8.4 Severability. If any term, provision, covenant or
condition of this Agreement is declared to be invalid, void or unenforceable,
the remainder of the provisions shall remain in full force and effect and shall
in no way be affected, impaired or invalidated.
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8.5 Waiver. The failure of either party to require the
performance of any provision of this Agreement by the other party shall not be
deemed a waiver and shall not deprive the party of its full right to require
such performance in the particular instance or at any other time.
Any waiver must be in writing executed by the waiving party.
8.6 Notices. All communications in connection with this
Agreement shall be in writing and sent by postage prepaid first class mail,
courier, or telefax, and if relating to default, late payment or termination, by
certified mail, return receipt requested, telefax or courier, addressed to each
party at the address above, in the case of Biomatrix, Attn: Chief Executive
Officer, with a copy to: Xxxxxx X. Xxxxxxxx, Esq., Xxxxxxx, Xxxx & Xxxxx LLP,
000 Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000, U.S.A., and in the case of
Wyeth, 000 Xxxx Xxxxxxxxx Xxxxxx, Xx. Xxxxxx, Xxxxxxxxxxxx 00000, Attn: Senior
Vice President, Global Business Development, with a copy to American Home
Products Corporation, Five Xxxxxxx Xxxxx, Xxxxxxx, Xxx Xxxxxx 00000, Attn:
Senior Vice President and General Counsel or to such other address as the
addressee shall last have designated by notice to the communicating party. The
date of giving any notice shall be the date of its actual receipt.
8.7 No Agency or Franchise. This Agreement and the relations
hereby established by and between Biomatrix and Wyeth do not constitute a
partnership, joint venture, agency, franchise or contract of employment between
them.
8.8 Complete Agreement. This Agreement, the Supply Agreement
and the License Agreements embody all of the terms and conditions of the
agreement between the parties with respect to the matters set forth herein and
supersedes any and all prior or contemporaneous agreements, representations,
understandings or discussions of any kind between the parties.
8.9 Modifications. This Agreement may not be modified or
amended except by writing which refers specifically to this Agreement signed on
behalf of both parties by their duly authorized officers.
8.10 Other Documents The parties agree to implement this
Agreement by executing or causing to be executed such additional documents and
agreements as may be necessary to fully protect the Trademark and effectively
carry out the terms of this Agreement in accordance with applicable laws and
regulations.
8.11 EU REGULATIONS. It is the intention of the parties hereto
that this Agreement shall at all times qualify for the exemption from the
provisions of Article 85(1) of the Treaty of Rome dated 25 March 1957, as
amended, which either (a) is available under EEC Regulation Number 1983/83, or
(b) may otherwise be available under any other regulations or successor
regulation thereto. In the event that any provision of this Agreement is deemed
to violate the conditions for qualifying for the exemption, set out in whichever
of those regulations may be in effect at the relevant time, or if any such
regulation is amended after the date of this Agreement so as to cause this
Agreement to fail to qualify
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for the exemption, the parties hereto agree that they will, as soon as it is
practicable to do so, enter into good faith negotiations to amend this Agreement
as necessary in order to re-qualify for the exemption or notify the Agreement.
THE PARTIES HERETO, intending to be legally bound, have duly
executed this Agreement on the date first written above.
AMERICAN HOME PRODUCTS CORPORATION
By: /s/ Xxxx Xxxxxx
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Title: Executive Vice President
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BIOMATRIX, INC.
By: /s/ Xxxxx X. Xxxxxx
--------------------------
Title: Chief Executive Officer
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Exhibit A
Trademark
*
*Confidential portions have been omitted and filed separately
with the Commission.
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Country Registration No. Term Expiration Date
------- ---------------- ---- ---------------
*
*Confidential portions have been omitted and filed separately
with the Commission.
