Exhibit 10.6
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made as of the ____ day of
August, 2000, among MONTANA XXXXX BREAD CO. OF ROCHESTER, INC., a New York
corporation with an office at 0000 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxx Xxxx 00000
("Montana Xxxxx") and SIEMPRE CAFFE ___________ a ___________ corporation with
an address at ______________________________ ("Siempre").
RECITALS
A. Siempre is the rightful and lawful owner of certain trade names,
trademarks and other rights associated with the name "Java Xxx", "Cyclops" and
other brand names as set forth in Schedule A (hereinafter the "Trademarks").
B. Montana Xxxxx is the owner and operator of various retail stores
and plans to open additional stores that make and sell bread and other baked
good products (the "Shops").
C. Siempre is willing to grant to Montana Xxxxx an exclusive license
to use the Marks in connection with the Shops, or other retail establishments
anywhere in the world (the "Territory"), and Montana Xxxxx is willing to accept
such license, upon the terms and conditions contained herein.
NOW THEREFORE, in consideration of the mutual covenants and agreements
hereinafter contained and for other good and valuable consideration, the receipt
and sufficiency of which are acknowledged by each of the parties hereto, the
parties covenant and agree as follows:
1. GRANT OF LICENSE.
1.1 LICENSE. Siempre grants to Montana Xxxxx and Montana Xxxxx
accepts the exclusive right, license and privilege to use the Marks during the
Term (as defined in Section 2) subject to the provisions of this Agreement,
solely in association with its operation of Shops and other retail
establishments within the Territory. As used in this Agreement, the "Marks"
include, collectively, all of the trade names, trademarks, designs, graphics,
logos and other commercial symbols, which are owned and controlled by Siempre
and which are listed in Schedule A attached hereto and made a part hereof, as
supplemented or modified from time to time by the mutual written agreement of
all the parties.
1.2 RESERVATION OF RIGHTS. Subject to the license granted herein, as
between Siempre and Montana Xxxxx, Siempre shall retain ownership of the Marks.
Siempre shall continue to have, during the Term, the right to use the Trademarks
for its own benefit solely in connection with its wholesale business; provided,
Siempre shall not license or otherwise grant to any third party the right to use
the Trademarks for any purpose within the Territory nor shall open and operate
retail establishments without the express written permission of the President of
Montana Xxxxx.
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2. TERM. This Agreement shall become effective as of the date first
written above and shall continue thereafter until terminated pursuant to Section
5.1 of this Agreement (the "Term").
3. CONSIDERATION. As consideration for the rights, privileges and
licenses granted in this Agreement, Montana Xxxxx shall pay to Siempre the sum
of $1,000.00.
4. REPRESENTATIONS AND WARRANTIES. Siempre makes the following
representations and warranties to Montana Xxxxx:
4.1 RIGHT TO LICENSE. Siempre has the sole and exclusive right to
convey the license and rights granted herein. The license and rights granted
herein are free and clear of any liens, obligations or encumbrances of any kind.
Siempre will not grant any rights under any future agreement, nor will it permit
any lien, obligation or encumbrance to conflict with the full enjoyment by
Montana Xxxxx of its rights under this Agreement.
4.2 REGISTRATIONS. Siempre has valid and subsisting registrations
for the Trademarks in the United States and is the sole and beneficial owner of
the Trademarks and the goodwill associated therewith. The Trademarks do not and
will not infringe upon, violate, or misappropriate any United States or foreign
trademark, trade name, trade secret, copyright, or other right or interest of
any third party.
4.3 LITIGATION. There are no claims or lawsuits pending or, to
Siempre knowledge, threatened which could have and adverse effect on the
Trademarks or the rights granted to Montana Xxxxx hereunder.
5. TERMINATION.
5.1 TERMINATION. This Agreement and all rights granted herein shall
terminate:
(a) effective immediately, upon the written consent of all of
the parties;
(b) effective immediately, at Siempre option, if Montana Xxxxx
is in default of any of its material obligations under this Agreement and
Montana Xxxxx fails to cure such default or satisfy Siempre that such default
has been cured within thirty (30) calendar days of receiving notice from Siempre
to cure the same;
(c) effective immediately, at Montana Xxxxx' option,
(d) effective immediately, at Siempre option, upon Montana
Xxxxx' cessation of business, election to dissolve, dissolution, insolvency,
commission of an act of bankruptcy, general assignment for the benefit of
creditors, or the filing by or against Montana Xxxxx of any petition in
bankruptcy or for relief under the provisions of applicable bankruptcy
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laws (if, with respect to any such filing against Montana Xxxxx, such filing is
not dismissed, discontinued or stayed within sixty (60) days of such filing);
(e) effective immediately, at Montana Xxxxx' option, upon
SIEMPRE cessation of business, election to dissolve, dissolution, insolvency,
commission of an act of bankruptcy, general assignment for the benefit of
creditors, or the filing by or against Siempre of any petition in bankruptcy or
for relief under the provisions of applicable bankruptcy laws (if, with respect
to any such filing against Siempre, such filing is not dismissed, discontinued
or stayed within sixty (60) days of such filing).
5.2 MONTANA XXXXX' OBLIGATIONS ON TERMINATION. Upon the
termination of this Agreement for any reason, the licenses and rights granted
herein shall forthwith cease and terminate. Montana Xxxxx shall have the limited
right to continue to use the Trademarks for 120 days solely to use up inventory
on hand at the time of termination.
6. RELATIONSHIP. Each party shall conduct all business in its own name
as an independent contractor. No partnership, employment, agency or similar
arrangement is created between the parties. Neither party has the right or power
to act for or on behalf of the other or to bind the other in any respect, to
pledge its credit, to accept any service of process upon it, or to receive any
notices of any nature whatsoever on its behalf. Except as otherwise provided
herein, each party shall bear all of its own expenses in connection with the
execution and performance of this Agreement.
7. TRADEMARKS; INFRINGEMENT.
7.1 PROTECTION OF TRADEMARKS. Siempre shall be exclusively
responsible for the protection of the Trademarks. Accordingly, Siempre shall
prevent and stop use of the Trademarks by third parties and shall take necessary
actions against uses by third parties that may constitute infringement of the
Trademarks and defend against challenges to Montana Xxxxx' use of the
Trademarks.
7.2 NOTICE. If Montana Xxxxx becomes aware of any violation of any
of the Trademarks, it shall notify Siempre of any suspected infringement of,
challenge to, or litigation involving the Trademarks, and Montana Xxxxx shall
also furnish all available related information and data available to it in order
to permit Siempre to proceed with all necessary actions against any illegal or
improper use of the Trademarks.
7.3 MONTANA XXXXX' RIGHTS. If Siempre does not proceed with actions
to protect its rights in the Trademarks within thirty (30) days following
notification by Montana Xxxxx, in accordance with the provisions of this Section
7, then Montana Xxxxx shall have the right to direct and control, in its sole
discretion but at SIEMPRE expense, any judicial or extrajudicial order or
measure including negotiation, administrative proceedings, unfair competition
proceedings or litigation, and any settlement thereof, to protect the
Trademarks. Siempre shall reimburse Montana Xxxxx for Montana Xxxxx' reasonable
costs and expenses, including reasonable attorneys' fees, incurred in protecting
the Trademarks in accordance with this Section 7.3, provided such measures are
not required due to the negligence or fault of Montana Xxxxx.
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7.4 INDEMNIFICATION. Siempre agrees to indemnify, defend and save
harmless Montana Xxxxx and its officers, directors, agents, employees,
shareholders, legal representatives, successors and assigns, and each of them,
from any and all claims, actions and suits, whether groundless or otherwise, and
from and against any and all liabilities, judgments, losses, damages, costs,
charges, reasonable attorneys' fees, and other expenses of every nature and
character by reason of any breach of Siempre representations, warranties or
covenants contained in this Agreement including, without limitation, any of the
foregoing arising from any third-party claim that the Trademarks or Montana
Xxxxx' use of the Trademarks violate any third party's copyright, trade name,
trademark, or similar proprietary right in the United States or any foreign
jurisdiction. Siempre acknowledges and agrees that its obligations under this
Section 7.4 shall survive the termination, for any reason, of this Agreement.
8. GENERAL.
8.1 SUCCESSORS AND ASSIGNS. Neither this Agreement nor any rights or
benefits thereof shall be assigned, transferred or sublicensed, in whole or in
part, in any manner by any party without the prior written consent of each of
the other parties, which consent may not be unreasonably withheld; provided,
however that any party may, on notice to but without the consent of the other
parties, assign this Agreement or any of its rights or obligations hereunder, to
any of its affiliates or to the success or an interest to that portion of the
business to which the Trademarks pertain. This Agreement shall inure to the
benefit of and be binding upon the parties and their respective successors and
permitted assigns.
8.2 NOTICE. All written notices, consents and approvals (herein
referred to as a "Notice") permitted or required to be given hereunder shall be
deemed to be sufficiently and duly given if in writing and (a) delivered
personally, (b) sent in certified or registered mail, with proper postage
affixed, deposited in a post office in the United States or Australia, (c)
delivered by overnight courier with signature required, or (d) sent by facsimile
transmission, to a party at its address first set forth above. Any Notice so
given or made shall be deemed to have been given or made and received on the
date of delivery if confirmation of receipt is obtained. Any party from time to
time by notice may change its address for the purpose of this Agreement by
giving Notice in the foregoing manner.
8.3 FURTHER ASSURANCES. The parties agree to do or cause to be done
all acts or things necessary to implement and give effect to this Agreement.
8.4 ENTIRE AGREEMENT. This Agreement and any documents incorporated
by reference constitute the entire agreement between the parties pertaining to
the subject matter hereof and supersede all prior agreements, understandings,
negotiations and discussions with respect to the subject matter hereof whether
oral or written. No supplement, modification or waiver of this Agreement shall
be binding unless executed in writing by all parties.
8.5 CHOICE OF LAW. This Agreement shall be governed by and construed
in accordance with the provisions of the laws of the State of New York, without
regard to principles of conflicts of law.
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8.6 SEVERABILITY OF PROVISIONS. The invalidity or unenforceability
of any provision of this Agreement or any covenant herein contained shall not
affect the validity or enforceability of any other provision or covenant hereof
or herein contained and any such invalid provision or covenant shall be deemed
to be severable.
8.7 NON-WAIVER. No failure to exercise and no delay in exercising,
on the part of any party, any right, power or privilege hereunder shall operate
as a waiver thereof; nor shall any single or partial exercise of any right,
power or privilege hereunder preclude any other or further exercise thereof or
the exercise of any other right, power or privilege. The rights and remedies
herein provided are cumulative and not exclusive of any rights or remedies
provided by law.
8.8 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be an original but all of which together shall
constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereunto affixed their corporate seals
and have duly executed and delivered this Agreement as of the date first above
written.
MONTANA XXXXX BREAD CO., OF ROCHESTER, INC.
By: /s/ Xxxxxx X'Xxxxxxx
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Name: Xxxxxx X'Xxxxxxx
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Title: President
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SIEMPRE CAFFE
By: /s/Xxxxxx X. Xxxxxxx
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Name: Xxxxxx X. Xxxxxxx
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Title: Vice President (Acting President)
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