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Exhibit 10.7
FORM OF
TRADEMARK LICENSE AGREEMENT
This TRADEMARK LICENSE AGREEMENT ("Agreement"), dated as of
December __, 2000, is by and between AETNA U.S. HEALTHCARE INC. a Pennsylvania
corporation ("LICENSOR"), and AETNA INC., a Connecticut corporation ("AETNA").
RECITALS
WHEREAS, Aetna and Licensor have entered into the Distribution
Agreement, dated December __, 2000, as contemplated by the Agreement and Plan
of Restructuring and Merger, dated July 19, 2000, by and among ING AMERICA
INSURANCE HOLDINGS, INC., a Delaware corporation, ANB ACQUISITION CORP., a
Connecticut corporation, Aetna and, for limited purposes only, ING GROEP N.V.,
a corporation organized under the laws of the Netherlands;
WHEREAS, each of Aetna and its subsidiary, Aetna Life Insurance and
Annuity Company ("ALIAC"), has entered into a trademark assignment agreement,
each dated November 3, 2000 (together, the "Assignment Agreements"), pursuant
to which Aetna and ALIAC assigned to Licensor, inter alia, all of their
respective right, title and interest in and to certain Marks, as defined
below;
WHEREAS, in consideration of the transactions contemplated by the
Distribution Agreement and the Agreement and Plan of Restructuring and Merger,
Licensor desires to license the Marks to Aetna under the terms and conditions
set forth below, and Aetna desires to accept such license.
NOW, THEREFORE, by this document, and for good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Licensor and Aetna agree as follows:
1. DEFINITIONS. Capitalized terms used without definition in this Agreement
have the respective meanings assigned to them in the Distribution Agreement.
As used herein, the following terms have the following respective meanings:
1.1. "CHANGE OF CONTROL" means the occurrence of any of the following
events: (i) any "person" or "group" (as such terms are used in
Sections 13(d) and 14(d) of the Securities and Exchange Act of
1934, as amended (the "EXCHANGE ACT")), not an Affiliate or
Subsidiary of Aetna as of the Distribution Date, is or becomes the
"beneficial owner" (as defined in Rules 13d-3 and 13d-5 under the
Exchange Act, except that a person shall be deemed to have
"beneficial ownership" of all securities that such person has the
right to acquire, whether such right is exercisable immediately or
only after the passage of time), directly or indirectly, of more
than 30% of the total voting stock of Aetna; or (ii) Aetna
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sells, assigns, conveys, transfers, leases or otherwise disposes of
all or a substantial part of its assets to any person, or group of
related persons.
1.2. "MARKS" means the trademarks, service marks and trade names set
forth on Schedule 1, attached hereto.
2. GRANT OF LICENSE.
2.1. Licensor hereby grants to Aetna, subject to the terms and
conditions of this Agreement (and subject to the agreements listed
on Schedule 2 attached hereto), a non-exclusive, royalty-free,
non-assignable, non-transferable, non-sublicensable (except as
expressly provided in this Agreement) right to use the Marks and
the AETNA portion of the Transitional Xxxx, as defined below, in
each case solely in connection with the Aetna Business and during
the Term in a manner consistent with the conduct of the Aetna
Business and with the use of the Marks as at the Distribution Date,
provided, however, that Aetna may
(i) during the Initial Term only, use the Marks in
offering, selling and distributing Aetna Business
products together with products of its Affiliates,
and
(ii) during the Remaining Term, use the Marks only in
the combined format set forth on Schedule 3
attached hereto (the "TRANSITIONAL XXXX") and only
in association with the ING Groep N.V. marks set
forth on Schedule 4 attached hereto, except in
those instances where applicable law requires use
of an entity's legal name including, without
limitation, in the issuance of annuity contracts.
2.2. Licensor hereby grants to Aetna the royalty-free, non-exclusive,
non-assignable right to sublicense use of the Marks to Aetna
Affiliates, only to the extent necessary to exercise Aetna's rights
under Section 2.1(i) and (ii), above, and only to the extent
consistent with all of the restrictions, exceptions and termination
provisions contained in this Agreement. Any Affiliate granted a
sublicense pursuant to this Section 2.2 shall be deemed a
"Sublicensee". Each Sublicensee must agree in writing to be bound
by all of the terms and conditions of this Agreement.
2.3. Except as permitted by Section 2.1(i) and (ii) and Section 2.2, in
no event shall Aetna use or permit any Affiliate to use any Xxxx or
the Transitional Xxxx (i) in connection with any other business of
Aetna or its Affiliates, or (ii) as a composite with another
trademark, except as to which in each case Licensor has given its
prior written consent.
2.4. Notwithstanding the grant or the terms of the license herein,
Licensor and the Spinco Group shall retain the right to use the
Marks during the Term in connection with any action or activity
subject to the restrictions set forth in Section 7.04 of the
Distribution Agreement.
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2.5. During the Term, Licensor will not license the Marks in any manner
that would conflict with the Aetna Business as such business is
conducted at the Distribution Date.
2.6. Notwithstanding anything to the contrary in this Section 2, during
the Initial Term, the Aetna Group may use signs, labels,
containers, stationery, forms (including policy forms) and other
printed material or matter that are in the assets or inventory of
the Aetna Group immediately after the Distribution Time, provided
that the Aetna Group will use reasonable efforts to deplete and
discontinue use of such materials or matter containing or bearing
any of the Marks as soon as practicable in the ordinary course of
business.
3. ASSIGNMENT AND SUBLICENSE.
3.1. This Agreement shall not be directly or indirectly, in whole or in
part, sublicensed (except as provided in Section 2.2, above)
assigned or transferred by either party to any third party (except
by Spinco to a member of the Spinco Group and by Aetna to a member
of the Aetna Group) including, without limitation, any bankruptcy
trustee, by operation of law (other than in connection with an
internal restructuring of the Spinco Group or the Aetna Group) or
otherwise, provided that any such assignment, transfer or
sublicense shall be subject in all respects to the restrictions,
exceptions and termination provisions contained in this Agreement
and, with respect to Aetna, only upon prior written notice to
Spinco,
4. TERM AND TERMINATION.
4.1. This Agreement shall commence on the Distribution Date and continue
for three (3) years (the "Term"). The "Initial Term" shall be the
first 18-month period following the Distribution Date, and the
"Remaining Term" shall be the 18-month period immediately following
the Initial Term.
4.2. Once Aetna and a Sublicensee cease the use of all Marks or the
Transitional Xxxx with respect to a particular product or service,
the license granted herein and any sublicense granted by Aetna with
respect to such product or service shall terminate on the day which
is sixty (60) days after the date on which such use ceased, but, in
no event, later than the expiration of the Term.
4.3. Licensor may terminate the license granted herein and any
sublicense granted by Aetna with respect to a particular product or
service in the event of a material breach by any member of the
Aetna Group or any Affiliate of the Aetna Group that has not been
cured within thirty (30) days (or sixty (60) days, if substantial
progress is being made at the end of such thirty (30) day period)
of written notice by Licensor to Aetna.
4.4. This Agreement shall terminate automatically (i) in the event of a
Change of Control of Aetna; (ii) in the event of the sale of all or
substantially all of the Aetna Business; (iii) if Aetna shall
generally fail to pay its debts in the ordinary course of its
business, or shall admit in writing its inability to pay its debts
generally, or shall make a general
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assignment for the benefit of creditors or any proceeding shall be
instituted by or against Aetna seeking to adjudicate it bankrupt or
insolvent, or seeking liquidation, winding up, reorganization,
arrangement, adjustment, protection, relief or composition of it or
its debts under any law relating to bankruptcy, insolvency or
reorganization or relief of debtors, or seeking the entry of an
order for relief or the appointment of a receiver, trustee, or
other similar official for it or for any substantial part of its
property, and in the case of any proceeding instituted against
Aetna, such proceeding shall not be stayed or dismissed within
thirty (30) days from the date of institution thereof, or (iv)
Aetna shall take any corporate action to authorize any of the
actions set forth in clause (iii) above.
5. QUALITY STANDARDS.
5.1. As a condition to the license granted by this Agreement, Aetna
shall use the Marks and operate the Business and shall ensure that
each Sublicensee uses the Marks and operates the Business (i) at a
level of quality at least as high as that established prior to the
Distribution Date; and (ii) in compliance with all applicable laws
and regulations.
5.2. Licensor shall have the right to exercise quality control over
Aetna's and Sublicensees' presentation of the Marks and the
Transitional Xxxx to that degree reasonably necessary, in the
opinion of Licensor, to maintain the validity and enforceability of
the Marks and to protect the goodwill associated therewith.
5.2.1. Aetna shall, upon request by Licensor, submit to Licensor
materials bearing the Marks and the Transitional Xxxx as
Licensor may reasonably require to ensure Aetna's and
Sublicensees' compliance with the obligations set forth in
this Agreement. In the event Licensor reasonably determines
that such samples are of a materially lesser quality than
those generated prior to the Distribution Date, Aetna
shall, upon notice from Licensor of the specific deviation,
immediately take steps necessary to correct the
deviation(s) and to cure such deficiencies within thirty
(30) days; provided, however, that in the event Licensor
reasonably determines that the deviation(s) pose a threat
to the validity of the Xxxx(s) or to the goodwill
associated therewith, Aetna shall, upon notice from
Licensor, immediately cease and desist, and shall
immediately direct its Sublicensees to cease and desist,
all use of such non-conforming materials. Aetna's or any
Sublicensee's failure to comply with such cease and desist
order shall be deemed a breach of this Agreement for
purposes of Section 7.3 hereof.
5.2.2. Upon execution of a reasonable and mutually acceptable
confidentiality agreement, Licensor shall have the right to
inspect, upon reasonable notice and during normal business
hours (but in no event more than twice in any calendar
year), any premises of Aetna or its Sublicensees where
activities relating to the marketing and provision of
products and services bearing the Marks or the Transitional
Xxxx are conducted.
6. USE AND OWNERSHIP OF THE MARKS.
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6.1. Aetna shall use and ensure that its Sublicensees use the Marks and
the Transitional Xxxx in accordance with sound trademark and trade
name usage principles and in accordance with all applicable laws
and regulations, including, without limitation, all laws and
regulations relating to the maintenance of the validity and
enforceability of the Marks. Aetna shall not use and shall ensure
that its Sublicensees do not use the Marks or the Transitional Xxxx
in any manner which might dilute, tarnish, disparage or reflect
adversely on Licensor or the Marks.
6.2. Aetna acknowledges that the Marks and the AETNA portion of the
Transitional Xxxx and all rights therein (with the exception of
those rights expressly granted to Aetna under this Agreement) and
the goodwill pertaining thereto belong exclusively to Licensor.
Aetna's and Sublicensees' use of the Marks shall inure to the
benefit of Licensor for the purpose of trademark ownership,
registration, enforcement and maintenance. Without limiting the
generality of the foregoing, Aetna agrees and covenants that it
will not challenge the validity of Licensor's ownership of the
Marks and the AETNA portion of the Transitional Xxxx or any
registration or application for registration thereof or contest the
fact that Aetna's and its Sublicensees' rights under this Agreement
are solely those of non-exclusive licensees to use the Marks and
the Transitional Xxxx solely in connection with the Aetna Business
during the Term.
6.3. After the Term, Aetna and its Sublicensees will not use the Marks
or the Transitional Xxxx in any jurisdiction in connection with
health care, financial services or otherwise.
6.4. Aetna shall use its best efforts in accordance with sound trademark
practices to identify the Marks as trademarks, service marks or
logos of Licensor by appropriate statutory notice. Aetna shall use
and shall instruct its Sublicensees to use such additional required
statutory trademark notice or other proprietary markings as may
reasonably be requested in writing by Licensor from time to time.
7. PROTECTION OF MARKS; LITIGATION.
7.1. During the Term, Aetna agrees to notify Licensor immediately upon
notice of (i) any conflicting uses of, or any applications of or
registrations for, a trademark, service xxxx or logo that may
conflict with the Marks, (ii) any acts of infringement or unfair
competition involving the Marks, or (iii) any allegations that the
use of the Marks by Licensor, Aetna or the Sublicensees infringe
upon the trademark or service xxxx or other rights (including,
without limitation, rights relating to unfair competition) of any
other person.
7.2. During the Term, Licensor shall have the sole right to initiate any
opposition, cancellation or infringement proceedings necessary to
enforce the Marks. Licensor shall have the right to include Aetna
as a party in any such enforcement proceedings where necessary, and
Aetna agrees to join in such proceedings, at Licensor's expense, as
a voluntary plaintiff or claimant upon request of Licensor, and
Aetna shall cooperate with Licensor in such proceedings, at
Licensor's expense. Licensor shall have the sole right to control
and settle any such proceedings.
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7.3. Aetna acknowledges and agrees that Licensor may be irreparably
injured by a breach of this Agreement and that, in such event,
Licensor shall be entitled to injunctive relief, in addition to any
other legal or equitable remedy, without the need to post any bond
or to adduce further evidence of such irreparable injury.
8. REPRESENTATIONS AND WARRANTIES.
8.1. Licensor represents and warrants to Aetna, and Aetna represents and
warrants to Licensor, as follows:
8.1.1. It is duly organized, validly existing and in good standing
under the laws of the jurisdiction of its organization.
8.1.2. It has all requisite power and authority to execute and
deliver, and to perform its obligations under, this
Agreement.
8.1.3. The execution and delivery by it of this Agreement, and the
performance by it of its obligations hereunder, have been
duly authorized by all necessary corporate action on the
part of it.
8.1.4. This Agreement has been duly executed and delivered by it
and constitutes a valid and binding obligation of it,
enforceable against it in accordance with its terms, except
as such enforceability (a) against Aetna may be limited by
bankruptcy, insolvency and other laws affecting creditors'
rights generally, or (b) against Licensor may be limited by
bankruptcy, insolvency, reorganization, rehabilitation,
liquidation, conservation and other laws affecting the
rights of creditors of insurance companies generally or (c)
against Aetna or Licensor may be limited by general
principles of equity (whether considered in a proceeding at
law or in equity).
9. INDEMNIFICATION.
9.1. Aetna hereby agrees to indemnify, defend and hold each member of
the Spinco Group, their Affiliates and their respective directors,
officers and employees (the "Licensor Indemnitees") harmless from
and against any and all Damages resulting from the marketing,
offering, issuance, sale or performance of any products or services
bearing the Marks or the Transitional Xxxx or offered under the
Marks or the Transitional Xxxx by Aetna and/or any of its
Affiliates following the Distribution Date or otherwise arising in
any manner out of the use of the Marks or the Transitional Xxxx by
Aetna and/or any of its Affiliates.
9.2. Licensor hereby agrees to indemnify, defend and hold each member of
the Aetna Group, their Affiliates and their respective directors,
officers and employees (the "Aetna Indemnitees") harmless from and
against any and all Damages (a) resulting solely from Licensor's
failure to have or maintain valid intellectual property rights in
the Marks, to
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the extent such failure is not attributable to actions by Aetna or
any Aetna Affiliate or failure by Aetna or an Aetna Affiliate to
take actions required by the terms of this Agreement, and (b)
arising out of any third party claim that Aetna's and/or an Aetna
Affiliate's use of the Marks pursuant to this Agreement infringes
such third party's intellectual property rights.
9.3. The indemnities referred to in the preceding two paragraphs shall
be in addition to and shall not supersede the indemnities set
forth in Article 4 of the Distribution Agreement, provided that if
any of the Licensor Indemnitees or the Aetna Indemnitees
determines that it is or may be entitled to indemnification
pursuant to this Agreement, the procedures set forth in Sections
4.04 to 4.06 of the Distribution Agreement shall apply and, for
this purpose, such person shall be referred to as the "INDEMNIFIED
PARTY" and Aetna or Licensor, as the case may be, shall be
referred to as the "INDEMNIFYING PARTY."
9.4. Nothing in this Section 9 shall be deemed to limit a party's
entitlement to injunctive relief, or any other right or remedy
available at law or in equity, in an appropriate case.
10. MISCELLANEOUS.
10.1. Survival. Sections 6.3, 7, 8, 9, 10.1, 10.4 and 10.10 shall
survive the termination of this Agreement for any reason.
10.2. Notices. Any notice or other communication required or permitted
hereunder shall be delivered in accordance with the Notice
provisions of the Distribution Agreement.
10.3. Waivers and Amendments; Non-Contractual Remedies; Preservation of
Remedies. This Agreement may be amended, superseded, canceled,
renewed or extended, and the terms hereof may be waived, only by a
written instrument signed by each of the parties hereto, or in the
case of a waiver, by the party waiving performance. No delay on
the part of any party in exercising any right, power or privilege
hereunder shall operate as a waiver hereof, nor shall any waiver
on the part of any party of any right, power or privilege,
preclude any further exercise thereof or the exercise of any other
such right, power or privilege. The rights and remedies herein
provided are cumulative and are not exclusive of any rights or
remedies that any party may otherwise have at law or in equity.
10.4. Governing Law. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED
IN ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK, WITHOUT
GIVING EFFECT TO THE PRINCIPLES OF CONFLICTS OF LAWS THEREOF. Each
of the parties hereto agrees that any legal action or proceeding
with respect to this Agreement may be brought in the Courts of the
State of New York or the United States District Court for the
Southern District of New York in the borough of Manhattan and, by
execution and delivery of this Agreement, each party hereto
irrevocably submits itself in respect of its property, generally
and unconditionally to the non-exclusive jurisdiction of the
aforesaid courts in any legal action or proceeding arising out of
this Agreement. Each of the parties hereto
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irrevocably waives any objection which it may now or hereafter have
to the laying of venue of any of the aforesaid actions or
proceedings arising out of or in connection with this Agreement
brought in the courts referred to in the preceding sentence. Each
party hereby consents to process being served in any such action or
proceeding by the mailing of a copy thereof in accordance with the
Notice provisions of this Agreement and agrees that such service
upon receipt shall constitute good and sufficient service of
process or notice thereof. Nothing in this Section 10.4 shall
affect or eliminate any right to serve process in any other matter
permitted by law.
10.5. Entire Agreement. This Agreement and the other Distribution
Documents contain the entire agreement among the parties hereto
with respect to the subject matter hereof and supersede all
previous written or oral negotiations, commitments and writings.
The section headings of this Agreement are for convenience of
reference only and do not form a part hereof and do not in any way
modify, interpret or construe the intentions of the parties.
10.6. Further Assurances. At any time and from time to time, each party
hereto agrees, without further consideration, to take such actions
and to execute and deliver such documents as may be reasonably
necessary to effectuate the terms of this Agreement.
10.7. Counterparts. This Agreement may be executed in counterparts, and
such counterparts will constitute one and the same instrument.
10.8. Severability. If any term or clause of this Agreement is held to
be illegal, invalid or unenforceable, the validity or
enforceability of the remainder of this Agreement shall not be
affected thereby.
10.9. Successors and Assigns. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective
successors, permitted assigns and legal representatives.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date written below.
Date:
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AETNA INC.
By:
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Name:
Title:
AETNA LIFE INSURANCE COMPANY
By:
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Name:
Title:
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