AGREEMENT made in duplicate and made effective this 31st day of January 1997
BETWEEN:
MOOSEHEAD BREWERIES LIMITED, a corporation organized under the
laws of the Province of New Brunswick, Canada and having its
principal place of business at 00 Xxxx Xxxxxx Xxxx, Xxxxx
Xxxx, Xxx Xxxxxxxxx X0X 0X0 (hereinafter referred to as
"Licensor")
and
INDEPENDENCE BREWING COMPANY, a corporation organized under
the laws of the Commonwealth of Pennsylvania, having its
principal place of business at 0000 Xxxx Xxxxx Xxxxxx,
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000 (hereinafter referred to as
"Licensee")
LICENSE AND ASSIGNMENT AGREEMENT
WHEREAS, Licensor owns rights to and is owner of the entire interest of
the following United States Trademark Registration and pending United States
Trademark Application (herinafter individually and collectively referred to as
"the Moosehead Marks"):
Reg. Number Xxxx and Goods
----------- --------------
1,917,057 THE TASTE OF INDEPENDENCE for beer and ales
Ser. Number Xxxx and Goods
----------- --------------
74/673,536 INDEPENDENCE for brewed alcoholic beverages
WHEREAS, Licensee is in the business of selling a brewed alcoholic
beverage product, namely beers and ales, that are marketed and sold under a
trademark which depicts the well known Independence Hall building located in
Philadelphia, PA and includes the words "INDEPENDENCE BREWING COMPANY"; and
WHEREAS, Licensee has been previously refused U.S. federal trademark
registration of its said trademark based upon the trademark rights of
Licensor in the Moosehead Marks; and
WHEREAS, Licensor and Licensee desire to enter into a mutually
acceptable agreement regarding Licensee's licensed use of and subsequent
acquisition of the Moosehead Marks.
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and adequacy of which is hereby
acknowledged, the parties hereto agree one with the other as follows:
1. GRANT OF TRADEMARK LICENSE
1.1 Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee an exclusive license and right to use the Moosehead
Marks in connection with the goods identified within the registration
and the application (the "Products") and to affix the Moosehead Marks to
or on the Products and on or
2
with the packaging, advertising and promotional materials sold, used and
distributed in connection with the Products, throughout the United
States, its territories and possessions.
1.2 Licensee may sublicense the use of the Moosehead Marks licensed to it to
any entity that directly or indirectly controls, is controlled by, or is
under common control with Licensee, including Independence Brewing
Company of Florida, Inc.; provided any such sublicense is made subject
to the same territorial restrictions and inspection and quality
maintenance standards as imposed on Licensee and provided further that
Licensee is and remains a licensee of Licensor in good standing and is
not in default of any of its obligations herein contained.
2. TERM OF THE TRADEMARK LICENSE
2.1 The trademark license shall extend for a maximum period of two (2) years
from the effective date of this Agreement as set forth above, provided
Licensee has paid Licensor all moneys due as set forth below and is
otherwise not in default.
3. MONETARY PAYMENTS
3.1 Licensee shall make the following monetary payments to Licensor during
the term of the trademark license:
3
3.11 A first irrevocable up-front payment of $30,000.00 (U.S.) in cash or by
way of certified cheque made payable to Licensor upon the signing of
this Agreement; and,
3.12 A second irrevocable payment of $30,000.00 (U.S.) in cash or by way of
certified cheque made payable to Licensor on the first year anniversary
from the effective date of this Agreement as set forth above.
4. ASSIGNMENT OF LICENSOR'S REGISTERED TRADEMARK AND PENDING TRADEMARK
APPLICATION
4.1 On the second year anniversary of this Agreement from the effective date
as first set forth above, Licensee shall acquire and Licensor shall
assign, transfer and convey all right, title and interest in the
Moosehead Marks to Licensee, provided a third and final irrevocable
monetary payment is first made by Licensee to Licensor in the amount of
$30,000.00 (U.S.) by way of cash or certified cheque ("Final Payment").
4.2 Upon receipt of the third and Final Payment as provided for herein,
Licensor undertakes and agrees to forthwith deliver to Licensee at no
further cost or expense a fully executed assignment of the Moosehead
Marks employing for that purpose
4
a form of assignment as set out in Schedule "A" attached or such other
form as Licensor and Licensee shall mutually agree.
4.3 Without representing the trademark INDEPENDENCE which is the subject of
application 74/673,536 is registrable, Licensor agrees that during the
term of this Agreement it shall, at its sole cost and expense, use its
best efforts to obtain in an expeditious manner Federal U.S.
registration from this pending application, and shall take all steps
necessary or appropriate to maintain in force/renew any Federal U.S.
trademark registration resulting therefrom and with respect to the
issued registration for the trademark THE TASTE OF INDEPENDENCE
identified above. Licensor shall promptly notify Licensee as to the date
of registration of the pending U.S. application. Licensee agrees to
execute all papers and offer such other assistance on a no charge basis
as is reasonably requested by licensor to further effect registration
of, maintenance and renewal of the Moosehead Marks.
5. LICENSOR'S SLOGAN
5.1 Notwithstanding anything in this Agreement to the contrary, Licensee
acknowledges and agrees that Licensor has the current and continuing
right to use the slogan "CANADA'S OLDEST INDEPENDENT BREWERY" (the
"Slogan") in connection with its brewed alcoholic beverages in the same
geographic area to which this Agreement applies, and that such continued
use by Licensor shall not be considered to be in derogation of the
Moosehead Marks licensed to Licensee
5
under the terms of this Agreement or an infringement of or other form of
passing off or dilution of the Moosehead Marks upon assignment of same
to Licensee as contemplated herein.
5.2 Notwithstanding the above, Licensor agrees not to use the xxxx THE TASTE
OF INDEPENDENCE for beer and ale and INDEPENDENCE for brewed alcoholic
beverages within the U.S. its territories and possession either during
the term of this license or following assignment of the marks to
Licensee.
5.3 Licensor agrees that Licensee's use in its capacity as a licensee or
assignee of the Moosehead Marks as described in this Agreement shall not
be considered an infringement of the Slogan, and Licensor shall not file
any opposition to or petition for cancellation of any U.S. application
or U.S. registration for the Moosehead Marks once assigned to Licensee
on the basis that the Slogan so resembles the Moosehead Marks as to be
likely to cause confusion, or to cause mistake, or to deceive, or to
take any further action adverse to Licensee's continued right following
assignment of the Moosehead Marks.
6. TRADEMARK RIGHTS
6.1 Licensor represents and warrants that to the best of its current actual
knowledge:
6.11 the Moosehead Marks in the United States are its sole property;
6
6.12 the U.S. registration and the U.S. application for the Moosehead
Marks referred to above are currently in good standing and are
presently uncontested;
6.13 the use by Licensee of the Moosehead Marks in accordance with the
terms and conditions of this Agreement do not infringe any U.S.
Federally registered trademark rights of any third party.
7. INSPECTION AND QUALITY MAINTENANCE
7.1 During the term of the license, Licensee warrants that all of the
brewed alcoholic beverage manufactured by it or by its sublicensees for
sale in connection with the Moosehead Marks shall, in all material
respects, meet or exceed Licensee's brewing, production, inspection and
packaging standards that were in existence immediately prior to this
Agreement so as to thereby ensure its established quality and control
standards will be met and maintained during the term of the license
granted herein.
7.2 Upon reasonable request by Licensor, Licensee shall ship to Licensor at
Licensee's own cost and expense a randomly selected case of the brewed
alcoholic beverage marketed under the Moosehead Marks by Licensee or any
of its sub-licensees so that Licensor can sample and inspect same in
order to satisfy itself the aforesaid standards are being met. Licensor,
acting reasonably, shall notify Licensee in
7
writing of any item which it regards as not meeting the established
standard, and shall also in the notice specify in what material respects
the item in question does not meet the established standard. Licensee
for itself, and on behalf of any of its sublicensees agrees to cure and
make good on any sub-standard item within sixty (60) days from the date
of receipt of written notification from Licensor as provided for herein.
8. INFRINGEMENT AND INDEMNIFICATION
8.1 Licensee shall be solely and entirely responsible for enforcing the
Moosehead Marks against third parties including the commencement of
court proceedings against such third parties. To the extent Licensor is
required to be a named plaintiff in any such third party proceedings,
Licensee shall be entitled to name the Licensor in the proceedings
provided the express written permission of Licensor is first requested
and obtained and provided further Licensee is responsible for the
payment of all costs, including legal fees arising out of such third
party proceedings. Licensee shall be entitled to all costs and damages
assessed against the third party and awarded the Licensee, Licensor or
the Licensee and the Licensor. Should Licensor elect not to be named a
plaintiff in any third party proceeding, Licensee shall have the right
to receive assignment of the marks immediately notwithstanding the term
of the trademark license in Section 2.1 provided licensee has paid
licensor all moneys as set forth above.
8
8.2 In the event of third party proceedings instituted against Licensor or
Licensee as a result of Licensee's use of the Moosehead Marks in its
capacity as exclusive Licensee or assignee of the Moosehead Marks,
Licensee in its sole discretion shall decide if the proceedings should
be defended or settled on terms acceptable to Licensee. Licensee shall
be solely responsible for all costs, including legal fees, incurred in
connection with the defence or settlement of proceedings of this nature
including, but not limited to, all costs and damages assessed in a final
and unappealable judgment entered against Licensee or Licensor or both
of them, and in furtherance thereof, Licensee agrees to protect,
indemnify, defend and hold Licensor harmless from and against any and
all claims, demands, assessments, awards and liabilities of whatever
nature, and all costs or expenses including reasonable attorney fees
arising out of the foregoing.
9. Liability Insurance
9.1 Licensee agrees to be solely and entirely responsible for any and all
product liability claims as same relate, either directly or indirectly,
to Licensee's or its sub-licensees use of the Moosehead Marks. To the
extent that Licensor may in any way be joined as a party to any such
product liability proceedings as a result of Licensee's or its
sub-licensees use of the Moosehead Marks, Licensee undertakes and
agrees to defend, indemnify and save Licensor harmless from any damages
or other monetary awards or costs, including court costs and legal fees,
which are declared, imposed or granted against Licensor or which are
incurred by Licensor as a result thereof.
9
9.2 So long as this Agreement remains in force, Licensee undertakes and
agrees that a fully paid up insurance policy of the foregoing general
description in Licensee's or its sub-licensees favour shall at all times
be maintained in place, in order to provide reasonable and adequate
third party product liability coverage as contemplated herein. In
furtherance of the foregoing, within thirty (30) days of a written
request by Licensor not made more than once in each calendar year to do
so, Licensee shall furnish Licensor with evidence sufficient to
establish that as of the notice date, adequate insurance coverage of the
foregoing description was in force. Failure by Licensee to produce
evidence of insurance coverage within the time period specified shall
result in this Agreement being deemed automatically terminated.
10. WARRANTIES
A. The Parties
10.1 Licensor and Licensee warrant that they have not assigned or
subrogated any claims settled by this Agreement.
B. The Individuals
10.2 Each signatory hereto warrant his/her authority to execute this
Agreement on behalf of his/her respective entities and agrees to hold
harmless all other parties against any claims against it arising out
of any lack of such authority by his/her respective business entity.
10
11. RELEASE OF LICENSEE
11.1 Upon Licensee tendering the third and Final Payment to Licensor,
Licensor shall thereby, and without any further action on the part of
the parties hereto, release, relinquish and discharge Licensee and its
representatives, officers, successors, and assigns from any and all
rights, claims and actions which Licensor had or may have had against
Licensee regarding infringement of the Moosehead Marks prior to this
Agreement.
11.2 Each party warrants and represents that in executing this release it
has relied upon legal advice from their respective legal counsel, that
the terms of this release and its consequences have been completely
read and explained to it by said counsel, and the terms of this release
are fully understood.
12. ENTIRE AGREEMENT AND AMENDMENTS
12.1 This instrument contains all of the representations and items of this
Agreement between the parties and is the entire Agreement between the
parties respecting the subject matter hereof. This instrument may not
be changed or modified in any manner except by an instrument in writing
referred to by this Agreement and signed by duly authorized officers or
a representative of Licensor and Licensee.
12.2 Moreover, this Agreement is binding on the parties' successors,
assignees, officers, and representatives.
11
13. NO WAIVER
13.1 Failure of a party to insist upon the strict performance of any
provision of this Agreement or to exercise any option shall not be
construed as a waiver thereof or to deprive the party of the right to
strict adherence in the future with respect to that or any other
provision of this Agreement.
14. FORMS AND NOTICES AND STATEMENTS
14.1 All notices and statements shall be in writing and shall be given at
the respective addresses of the parties as set forth above unless
notification of change of address is given in writing.
15. JOINT VENTURE
15.1 Nothing herein contained shall be construed to place the parties in
relationship of partners or joint venturers, and Licensee shall have no
power to obligate or bind Licensor in any manner whatsoever.
16. CONTROLLING LAW
16.1 In the event of any conflict, it is the intention of the parties that
this Agreement is to be interpreted under and governed by the laws of
the Commonwealth of Pennsylvania.
12
17. SURVIVAL
17.1 The provisions of Sections 4.2 and 11 shall survive the termination of
this Agreement, which termination date shall be deemed to be the date
upon which the third and Final Payment is made as provided for herein.
IN WITNESS WHEREOF this Agreement has been executed by the parties hereto.
MOOSEHEAD BREWERIES LIMITED
Per: /s/ Xxxx X. XxXxxx
--------------------------------
Name: Xxxx X. XxXxxx
Title: Corporate Secretary and
Vice President of Finance
INDEPENDENCE BREWING COMPANY
Per: /s/ Xxxxxx X. Xxxxxx, Xx.
--------------------------------
Name: Xxxxxx X. Xxxxxx, Xx.
Title: President
13
Schedule A
Assignment of Trademarks
WHEREAS, MOOSEHEAD BREWERIES LIMITED, a corporation organized under the
laws of the Province of New Brunswick, Canada and having its principal place of
business at 00 Xxxx Xxxxxx Xxxx, Xxxxx Xxxx, Xxx Xxxxxxxxx X0X 0X0, is the
owner of U.S. trademark registration No. 1,917,057 for the trademark THE TASTE
OF INDEPENDENCE, and is also the owner of U.S. trademark application Serial No.
74/673,536 to register the trademark INDEPENDENCE and any U.S. registration
which may have resulted therefrom;
WHEREAS, INDEPENDENCE BREWING COMPANY, a corporation organized under the
laws of the Commonwealth of Pennsylvania, of 0000 Xxxx Xxxxx Xxxxxx,
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000, is desirous of acquiring said marks.
NOW, THEREFORE, for good and valuable consideration, receipt of which is
hereby acknowledged, said MOOSEHEAD BREWERIES LIMITED does hereby assign unto
the said INDEPENDENCE BREWING COMPANY all of its right, title and interest in
and to the said marks in the United States of America, its territories and
possessions and any applications or registrations therefor, together with the
goodwill of the business symbolized by the marks as herein assigned.
This Assignment is executed this _____ day of _______________, 1996.
MOOSEHEAD BREWERIES LIMITED
Per:
-------------------------------
Name:
Title:
