EXHIBIT 2.6
TRADEMARK ASSIGNMENT AND CONSENT AGREEMENT
THIS TRADEMARK ASSIGNMENT AND CONSENT AGREEMENT (the "Agreement") is
executed as of ____________________ ("Effective Date") by and between BEI
ELECTRONICS, INC. ("Electronics") a Delaware corporation having its principal
place of business at Xxx Xxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000, and BEI
TECHNOLOGIES, INC. ("Technologies"), a Delaware corporation having its principal
place of business at Xxx Xxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000.
RECITALS
Electronics and its wholly-owned subsidiary, BEI Sensors & Systems Company,
Inc. have adopted, are using or intend to use certain trade names and trademarks
in connection with sensors, engineered subsystems and associated components used
for the control of precision machinery and equipment, and Electronics and its
majority-owned subsidiary, BEI Medical Systems Company, Inc., have adopted, are
using or intend to use certain trade names and trade marks in connection with
medical equipment instruments and supplies, some of which, in each case, contain
or comprise the term BEI alone or in combination with other words or designs.
Technologies has been created to independently assume and through
subsidiaries to conduct the portion of Electronics' business related to sensors,
engineered subsystems and associated components used for the control of
precision machinery and equipment.
Electronics desires to grant, and Technologies desires to acquire, rights
in certain of Electronics' trade names and trademarks, some of which contain or
comprise the term BEI alone or in combination with other words or designs.
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Electronics and Technologies further desire to delineate their respective
trademark rights on a worldwide basis.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth below, the parties hereby agree as follows.
1. ASSIGNMENT OF MARKS.
Electronics hereby assigns to Technologies all right, title, and
interest which it may have in and to the marks set forth in Schedule A (the
"Marks"), together with the goodwill of the business symbolized by the Marks.
Electronics will, at Technologies' expense, execute such further instruments and
take such further actions as may be necessary or appropriate to further effect,
evidence and record such assignments as necessary with governmental agencies.
2. DISCLAIMER OF WARRANTY.
All Marks assigned pursuant to this Agreement are assigned "as-is"
with respect to any trademark, service xxxx, trade name, or other designation
subject to this Agreement. Electronics makes no representation or warranty, and
disclaims all representations and warranties as to: (1) the validity of any
trademark or service xxxx registration; (2) its right to use any trademark,
service xxxx, trade name or other designation; (3) the registrability of any
term, designation, or other symbol as a trademark or service xxxx; (4) non-
infringement; or (5) any other right or interest pertaining to any trademark,
service xxxx, trade name, or other designation.
3. CONSENT TO OTHER PARTY'S USE OF BEI MARKS AND NAMES.
3.1 Technologies may use or register, or attempt to register any
trademark, service xxxx, trade name, or other designation containing or
comprising the term BEI, or any
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transliteration or translation thereof, throughout the world in connection with
(1) electronic devices and equipment used in non-medical applications and (2)
services related to the sale or use of those goods (the "Technologies
Business").
3.2 Electronics may use, register, or attempt to register any
trademark, service xxxx, trade name, or other designation containing or
comprising the term BEI, or any transliteration or translation thereof,
throughout the world in connection with (1) medical equipment, instruments and
other goods specifically used for medical care and (2) services related to the
sale or use of those goods (the "Electronics Medical Business").
3.3 Technologies will not use, register or attempt to register
anywhere in the world:
The BEI Triangular logo shown in Schedule B or any xxxx, logo or
designation confusingly similar thereto, provided that it may use the BEI
Rectangular logo shown in Schedule C without restriction;
Any trademark, service xxxx, trade name or other designation
containing or comprising the term BEI in combination with the word "Medical" or
other term connoting the medical or health care fields or any transliteration or
translation thereof; or
Any trademark, service xxxx, trade name or other designation
containing or comprising the term BEI, or any transliteration or translation
thereof, in connection with the Electronics Medical Business.
3.4 Electronics will not use, register or attempt to register:
The BEI Rectangular logo shown in Schedule C or any xxxx, logo or
designation confusingly similar thereto, provided that it may use the BEI
triangular logo shown in Schedule B without restriction;
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Any trademark, service xxxx, trade name or other designation
containing or comprising the term BEI in combination with the word
"Technologies" or "Technology" or any transliteration or translation thereof;
provided that Electronics may use the words "technology" or "technologies" in
their ordinary descriptive sense in identifying its goods, services or business;
or
Any trademark, service xxxx, trade name or other designation
containing or comprising the term BEI, or any transliteration or translation
thereof, in connection with the Technologies Business.
3.5 Technologies will not challenge Electronics' use of, registration
of, or attempt to register, any trademark, service xxxx, trade name, or other
designation comprising or containing the term BEI or any transliteration or
translation thereof in connection with the Electronics Medical Business, unless
such use, registration, or attempt to register violates the terms of paragraph
3.4 herein.
3.6 Electronics will not challenge Technologies' use of, registration
of, or attempt to register, any trademark, service xxxx, trade name, or other
designation comprising or containing the term BEI or any transliteration or
translation thereof in connection with the Technologies Business, unless such
use, registration, or attempt to register violates the terms of paragraph 3.3
herein.
3.7 Neither party may use any trade name comprising the term BEI or
any transliteration or translation thereof solely in combination with any
geographic term to identify its business, goods, or services where doing so
would be likely to cause confusion with the other party.
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3.8 The parties will cooperate with each other as needed in providing
evidence of the consents given herein or otherwise in effecting trademark,
service xxxx, or business name registration or for other purposes for which such
evidence may be needed consistent with the terms of this Agreement.
3.9 The parties believe that there is not likely to be confusion as
to their respective products or businesses if each party complies with the
foregoing terms governing use or registration of marks and names. In the event
such confusion occurs, the parties will cooperate as necessary and use all
commercially reasonable efforts to promptly resolve any such confusion and, if
appropriate, to direct third parties to the correct party. The parties agree to
use all commercially reasonable efforts to correct mistakes appearing in the
communications media regarding their respective corporate or trade names,
trademarks, or service marks and to respond to oral inquiries regarding the
parties' corporate or trade names, trademarks, or service marks by stating, to
the extent necessary to correct mistakes or respond to an inquiry, accurate
information about the parties' respective businesses or products.
4. TERM AND TERMINATION.
4.1 This Agreement shall be effective on the Effective Date. The
consent provisions as set forth in Section 3 shall continue in perpetuity unless
terminated in accordance with the provisions of this Agreement.
4.2 If either party discontinues all use of the xxxx BEI in the
ordinary course of trade everywhere in the world, including all use by
subsidiaries, affiliates, or licensees for the benefit of that party, for a
period of three consecutive years, the limitations on the other party's use of
the xxxx BEI in Paragraph 3.3 or Paragraph 3.4 of this Agreement, as the case
may be, shall terminate.
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5. GOVERNING LAW.
This Agreement shall be governed by and construed in accordance with
the trademark laws of the United States as they apply to trademark matters and
in accordance with the laws of the State of California as applied to contracts
entered into between California residents and to be performed entirely within
the State of California.
6. BREACH AND OPPORTUNITY TO CURE.
6.1 In the event that either party breaches any of its obligations
under this Agreement, the party claiming breach shall give notice in writing to
the other party. If the breach is curable, the party claimed to have breached
the Agreement shall have 45 days to cure the breach before the party claiming
the breach may bring legal action. Any statute of limitation governing such
claim shall be tolled pending the cure period. Notwithstanding the foregoing,
where a party reasonably believes that a breach of an obligation under this
Agreement may result in immediate, irreparable harm, the party shall be entitled
to seek injunctive relief first.
7. ATTORNEYS' FEES AND COSTS.
In the event either party hereto shall bring any action to enforce any
rights hereunder, the prevailing party in such action shall be entitled, in
addition to any other relief awarded by the court, to recover its reasonable
attorneys' fees and litigation expenses.
8. DISPUTE RESOLUTION.
8.1 ALTERNATIVE DISPUTE RESOLUTION. In the event of a controversy,
dispute or claim (other than controversies, disputes or claims related to
infringement, validity or enforceability of the Marks) arising out of, in
connection with, or in relation to the interpretation, performance,
nonperformance, validity or breach of this Agreement or otherwise arising out
of, or in any way related to this Agreement, including, without limitation, any
claim
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based on contract, tort, statute or constitution (collectively, "Agreement
Disputes"), such matters shall be resolved in accordance with the provisions of
Article 4 of the Distribution Agreement between the parties dated as of the
Effective Date.
8.2 CONSENT TO JURISDICTION. This Section 8.2 shall not limit the
provisions of Sections 8.1 hereof. Each party irrevocably submits to the
exclusive personal jurisdiction and venue of (a) the Superior Court for the City
and County of San Francisco, California and (b) the United States District Court
for the Northern District of California for the purposes of any suit, action or
other proceeding arising out of this Agreement or any transaction contemplated
hereby. Each party agrees to commence any action, suit or proceeding relating
hereto either in the United States District Court for the Northern District of
California located in San Francisco, California or if such suit, action or other
proceeding may not be brought in such court for jurisdictional reasons, in the
Superior Court for the City and County of San Francisco, California. Each party
further agrees that service of any process, summons, notice or document by U.S.
registered mail to such Party's address set forth above shall be effective
service of process for any action, suit or proceeding in California with respect
to any matters to which it has submitted to jurisdiction in this Section 8.2.
Each party irrevocably and unconditionally waives any objection to the laying of
venue of any action, suit or proceeding arising out of this Agreement or the
transactions contemplated hereby in (i) the Superior Court for the City and
County of San Francisco, California, or (ii) the United States District Court
for the Northern District of California located in San Francisco, California,
and hereby further irrevocably and unconditionally waives and agrees not to
plead or claim in any such court that any such action, suit or proceeding
brought in any such court has been brought in an inconvenient forum.
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9. NOTICES.
All notices and other communications hereunder shall be in writing and
hand delivered or mailed by registered or certified mail (return receipt
requested) or sent by any means of electronic message transmission with delivery
confirmed (by voice or otherwise) to the parties at the following addresses (or
at such other addresses for a party as shall be specified by like notice) and
will be deemed given on the date on which such notice is received:
To BEI ELECTRONICS, INC.:
Prior to the Effective Time:
Xxx Xxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000
Attn: President
After the Effective Time:
00 Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attn: President
With a copy to:
Xxx Xxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000
Attn: Chairman
To BEI TECHNOLOGIES, INC.:
Xxx Xxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000
Attn: President
10. ENTIRE AGREEMENT.
This Agreement constitutes the complete, final and exclusive agreement
between the parties with respect to the subject matter hereof and shall
supersede any and all prior oral
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or written representations, conditions, warranties, understandings, proposals or
agreements between the parties regarding the subject matter hereof.
11. AMENDMENT AND WAIVER.
No provision of this Agreement may be amended or waived except by a
writing signed by both parties.
12. SEVERABILITY.
In the event any one or more of the provisions contained in this
Agreement should be held invalid, illegal or unenforceable in any respect, the
validity, legality and enforceability of the remaining provisions contained
herein and therein shall not in any way be affected or impaired thereby. The
parties shall endeavor in good-faith negotiations to replace the invalid,
illegal or unenforceable provisions with valid provisions, the economic effect
of which comes as close as possible to that of the invalid, illegal or
unenforceable provisions.
13. ASSIGNMENT.
13.1 LIMITATIONS ON ASSIGNMENT. This Agreement shall not be assigned
by either party to a third party without the prior written consent of the other
party, which consent shall not be unreasonably withheld, except to: a Subsidiary
of a party, or a successor to the business of such party to which this Agreement
relates, or a successor to all or substantially all of the assets of such party,
provided that the successor agrees in writing to accept the rights and to be
bound by the obligations of the assigning party, any other assignment being
void.
13.2 VIOLATION. Any assignment in violation of this Section 13 shall
be void and any attempt to assign or actual assignment in derogation of this
prohibition shall be a material breach of this Agreement.
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14. THIRD PARTY BENEFICIARIES.
This Agreement is solely for the benefit of the parties hereto and
their respective Subsidiaries and should not be deemed to confer upon third
parties any remedy, claim, liability, reimbursement, claim of action or other
right in excess of those existing without reference to this Agreement.
15. FORCE MAJEURE.
15.1 ACTS CONSTITUTING FORCE MAJEURE. Neither party shall be liable to
the other for a delay in its performance of this Agreement arising from causes
beyond its reasonable control. Without limiting the generality of the foregoing,
such events include any act of God; accident; explosion; fire; earthquake;
flood; strikes; labor disputes; riots; sabotage; embargo; equipment failure;
federal, state, or local legal restriction or limitation. Neither party shall be
required to resolve labor disputes, but shall use commercially reasonable
efforts to seek alternative sources to the extent practicable.
15.2 NOTICE REQUIREMENT. When circumstances occur that delay the
performance of either party under this Agreement, whether or not such
circumstances are excused pursuant to Section 15.1 above, such party shall, when
it first becomes aware of such circumstances, promptly notify the other party,
by facsimile or by telephone confirmed in writing within two (2) business days
in the case of oral notice. Within ten (10) business days of the date when
either party first becomes aware of the event which it contends is responsible
for the delay, it shall supply to the other party in writing the reason(s) for
and anticipated duration of such delay, the measures taken and to be taken to
prevent or minimize the delay, and the timetable for the implementation of such
measures.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
BEI TECHNOLOGIES, INC. BEI ELECTRONICS, INC.
a Delaware corporation a Delaware corporation
By: ___________________________ By: _______________________
Its: ___________________________ Its: _______________________
Address: Xxx Xxxx Xxxxxx, Xxxxx 0000 Address: Xxx Xxxx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000 Xxx Xxxxxxxxx, XX 00000
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SCHEDULE A
ELECTRONICS' COMMON-LAW, PENDING OR REGISTERED TRADEMARKS
TO BE ASSIGNED
XXXX APPLICATION/REGISTRATION NO. COUNTRY
BEI 1,109,920 United States
BEI and CODE DISK DESIGN 1,097,296 United States
BEI and ROCKET DESIGN 1,107,102 United States
BEI THE ENCODER COMPANY 1,223,228 Xxxxxx Xxxxxx
XXXXXXX Xxxxxx Xxxxxx
XXXXXXXX 000,000 Xxxxxx Xxxxxx
DIGISEC 757,742 United States
EDCLIFF 705,558 United States
EXPRESS ENCODER United States
GYROCHIP 1,787,945 United States
HORIZON 00/000,000 Xxxxxx Xxxxxx
XXXXXXXXXX Xxxxxx Xxxxxx
MICRO-LOC 1,142,345 United States
MICROSERIES United States
MODEL H2O 75/087,544 United Xxxxxx
XXXXX X00 00/000,000 Xxxxxx Xxxxxx
MOTIONPAK 1,898,649 United States
OPTICAL RESOLVER 1,128,865 United States
SLIDELINE 951,891 United States
ULTRA-LOC 1,102,029 United States
WAVELABS 917,159 United States
BEI TMA290,044 Canada
BEI and DESIGN 94520745 France
BEI and DESIGN 0000000 Xxxxxx
BEI and DESIGN 1062171 Germany
BEI and DESIGN 2077915 Germany
BEI and DESIGN 000000 Xxxxx
BEI and DESIGN 0000000 Xxxxx
BEI and DESIGN 1202771 United Kingdom
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SCHEDULE B
BEI TRIANGULAR LOGO
[THE LETTERS "BEI" ON A DARK BACKGROUND
WITH A TRIANGULAR BORDER]
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SCHEDULE C
BEI XXXXXXXXXXX LOGO
[THE LETTERS "BEI" ON A DARK BACKGROUND
WITH A LOZENGE-SHAPED BORDER]
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