BRAND LICENSING AGREEMENT
Exhibit
10.3
This
BRAND LICENSING AGREEMENT (this “AGREEMENT”) dated as
of October 31, 2008, is by and between Brink’s Network, Incorporated, a Delaware
corporation (“LICENSOR”), and
Brink’s Home Security Holdings, Inc., a Virginia corporation (“LICENSEE”).
W I T N E S S E T
H
WHEREAS
The Brink’s Company and LICENSEE are parties to a Separation and Distribution
Agreement dated as of October 31, 2008 (the “SEPARATION
AND DISTRIBUTION AGREEMENT”), pursuant to which, among other things, The
Brink’s Company and LICENSEE agreed that LICENSOR and LICENSEE shall execute a
brand licensing agreement; and
WHEREAS,
LICENSEE desires to provide SERVICES, as hereinafter defined, and to market
PRODUCTS, as hereinafter defined, utilizing the TRADE SYMBOLS, as hereinafter
defined, in the TERRITORY, as hereinafter defined, under grant of license by
LICENSOR.
NOW,
THEREFORE, in consideration of the mutual covenants and agreements
hereinafter set forth, the parties hereto agree as follows:
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1.
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Definitions
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Capitalized
terms used herein and not otherwise defined herein have the meanings given to
such terms in the SEPARATION AND
DISTRIBUTION AGREEMENT. For the purposes of this AGREEMENT, the following
terms shall have the following meanings:
“BHS DOMAIN NAMES”
shall mean each of xxxxxxxx.xxx,
xxxxxxxxxxxxxxxxxxxxxx.xxx,
xxxxxxxxxxxxxxxxxx.xxx, xxxxxxxxxxxxxxxxxxxxxx.xxx, xxxxxxxxxxxxxxxxxxxxxx.xxx and xxxxxxxxxxxxxxxxxxxxxxxxxx.xxx.
“BHS TRADE SYMBOLS”
shall mean any of the TRADE SYMBOLS identified in Schedule A as a “BHS TRADE
SYMBOL”.
“BUSINESS DAY” shall
mean any calendar day that is not a Saturday, Sunday or legal holiday in either
Virginia or Texas.
“COMPETITOR” shall
mean any entity that is engaging, directly or indirectly, in (a) the provision
of secured transportation, cash logistics, guarding or other related services
anywhere in the world or (b) the provision, rental, installation, servicing,
repair, distribution, storage, monitoring and maintenance of commercial or
residential security systems outside the TERRITORY.
“EQUITY INTERESTS”
shall mean shares of capital stock, partnership interests, membership interests
in a limited liability company, beneficial interests in a trust or other equity
ownership interests in a PERSON, and any warrants, options or other rights
entitling the holder thereof to purchase or acquire any such equity interest
from the issuer thereof.
“GAAP” shall mean
generally accepted accounting principles in the United States, as in effect from
time to time.
“PRODUCTS” shall mean
any apparatus, component and/or software program used, marketed, leased or sold
in the performance of the SERVICES by LICENSEE.
“SEC” shall mean the
United States Securities and Exchange Commission.
“SERVICES” shall mean
(a) the provision, rental, installation, servicing, repair, distribution,
storage, monitoring and maintenance of (i) security alarm systems for business
and residential premises, including any (A) video surveillance systems,
(B) fire, carbon dioxide, water, temperature, intrusion and/or medical
emergency alarm components and (C) electronic card access systems, in each
case, comprising such security alarm systems, and (ii) personal emergency
response systems for senior citizens; (b) the provision of personal identity
protection services; and (c) the marketing, packaging, advertising and promotion
of any of the services listed in this definition.
“TERM” shall have the
meaning set forth in Section 8.
“TERRITORY” shall mean
the United States of America, Puerto Rico and Canada.
“TRADE SYMBOLS” shall
mean any of the trademarks, trade names, logos, domain names, slogans, labels,
copyrights, emblems, insignia and other trade identifying symbols listed in
Schedule A.
“WHOLLY OWNED
SUBSIDIARY” shall mean a SUBSIDIARY of
LICENSEE all the outstanding EQUITY INTERESTS of which (other than (x)
directors’s qualifying shares and (y) shares issued to a foreign national to the
extent required by applicable law) are owned by LICENSEE and/or by one or more
WHOLLY OWNED SUBSIDIARIES.
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2.
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Grant of Right to Use
of the TRADE SYMBOLS
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(a) Subject
to the terms and conditions set forth in this AGREEMENT, LICENSOR hereby grants
to LICENSEE during the TERM an exclusive, nontransferable (except as provided in
Section 17) license to use the TRADE SYMBOLS in relation to the SERVICES
and PRODUCTS within the TERRITORY.
(b) LICENSEE
shall not have the right to grant sublicenses to the right to use the TRADE
SYMBOLS without the prior written approval of LICENSOR, which LICENSOR may
refuse in its sole discretion. Notwithstanding the foregoing, LICENSEE may,
without LICENSOR’s approval (subject to LICENSEE’s compliance with the last
sentence of Section 12), sublicense its rights hereunder to (i) any WHOLLY
OWNED SUBSIDIARY or
(ii) any agent, subcontractor, dealer, distributor or other representative
of LICENSEE or of a WHOLLY OWNED SUBSIDIARY
sublicensed under clause (i) of this Section 2(b) solely to the extent necessary
to enable such agent, subcontractor, dealer, distributor or other representative
to provide SERVICES or PRODUCTS for or on behalf of LICENSEE or such WHOLLY
OWNED SUBSIDIARY, provided that such sublicense
shall be subject to the terms and conditions of this AGREEMENT and; provided further, that such
sublicense shall terminate automatically upon such sublicensee’s ceasing to be a
WHOLLY OWNED SUBSIDIARY, agent, subcontractor, dealer, distributor or other
representative, as applicable, of LICENSEE or of a WHOLLY OWNED SUBSIDIARY.
LICENSEE shall be responsible for each such sublicensee’s compliance with the
terms of this AGREEMENT and such sublicense and shall be liable for any breach
of this AGREEMENT and such sublicense by each such sublicensee.
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(c) LICENSOR
reserves to itself, for its own use and/or the use of its AFFILIATES and
licensees, in or outside the TERRITORY, the right to use the TRADE SYMBOLS
(other than the BHS TRADE SYMBOLS in the TERRITORY), either alone or as a
component of another trademark, trade name, slogan, logo, domain name, label
copyright, emblem, insignia or other trade identifying symbol, except in
relation to RESTRICTED ACTIVITIES (as defined in the NON-COMPETE AGREEMENT), and
nothing in this AGREEMENT shall prohibit, limit or restrict LICENSOR from
licensing or otherwise disposing of such use, in or outside the TERRITORY,
including during the TERM, to any other PERSON. Notwithstanding the
foregoing, none of LICENSOR, its AFFILIATES or licensees shall have the right,
during the TERM, to use any of the BHS TRADE SYMBOLS, whether or not in relation
to the SERVICES or PRODUCTS, anywhere in the TERRITORY.
(d) Notwithstanding the
foregoing, LICENSEE acknowledges that all rights granted under this AGREEMENT
are subject to all rights granted under the Trademark License Agreement dated as
of January 1, 2005, between Hampton Products International, Corp. and Brink’s
Guarding Services, Inc., as amended from time to time (subject to the
limitations set forth in the NON-COMPETE AGREEMENT).
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3.
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Quality
Control
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(a) The
permitted use by LICENSEE of the TRADE SYMBOLS shall be subject to instructions
of LICENSOR furnished to LICENSEE from time to time, and shall be made only in
relation to the SERVICES and PRODUCTS that conform to standards and
specifications, if any, furnished and/or approved, from time to time in writing,
by LICENSOR, such approval not to be unreasonably withheld. LICENSEE shall not
offer for sale or provide any of the SERVICES or PRODUCTS and shall assure that
no other entity that participates with LICENSEE in the provision of the SERVICES
or PRODUCTS shall offer for sale or provide any such SERVICES or PRODUCTS (i)
that are of a quality or a standard inferior to the quality or standard being
provided by LICENSEE or any of its SUBSIDIARIES on the date of this AGREEMENT or
(ii) that will tend to injure the reputation and goodwill attached to the TRADE
SYMBOLS.
(b) LICENSEE
shall be permitted to use any designs, materials, packages, labels, promotional
materials and advertising materials in relation to the SERVICES and PRODUCTS
that were in use, or approved by LICENSOR or Brink’s Guarding Services, Inc.,
prior to the DISTRIBUTION DATE; provided, however, that in the
event that, after the DISTRIBUTION DATE, any such design, material, package,
label, promotional material or advertising material is materially modified, or
the manner in which any of the foregoing is used is proposed to be materially
modified, LICENSEE shall obtain the written approval of LICENSOR (such approval
not to be unreasonably withheld) for such design, material, package, label,
promotional material, advertising material or such modified use thereof prior to
any use thereof.
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4.
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Inspection
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LICENSEE
shall at all times and in all places permit LICENSOR, by representatives
designated by LICENSOR, to inspect the SERVICES and PRODUCTS provided by
LICENSEE under the TRADE SYMBOLS and any marketing material used by LICENSEE in
marketing the SERVICES and PRODUCTS. At all times, LICENSEE shall comply with
the reasonable quality control procedures furnished or approved, from time to
time, by LICENSOR.
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5.
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Title to the TRADE
SYMBOLS
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(a) LICENSEE
recognizes LICENSOR’s rights, title and interest to the TRADE SYMBOLS and shall
not, at any time, do or suffer to be done, or assist any third party to do or
suffer to be done, any act or thing that will in any way impair the rights,
title and interest of LICENSOR in and to any of the TRADE SYMBOLS. Except as
provided in Section 5(k), LICENSEE shall not acquire or attempt to acquire, or
assist any third party in acquiring or attempting to acquire, title to the TRADE
SYMBOLS, and shall not claim title or assist any third party in claiming title
to the TRADE SYMBOLS. All use of the TRADE SYMBOLS by LICENSEE, and the goodwill
connected therewith and symbolized thereby, shall at all times inure to the
exclusive benefit of LICENSOR. LICENSEE shall use the appropriate statutory
symbol for a registered xxxx or the common law symbol for an unregistered xxxx,
as the case may be, with all uses of the TRADE SYMBOLS. Except as provided in
Section 5(k), neither LICENSEE nor any SUBSIDIARY of LICENSEE or sublicensee
pursuant to Section 2(b) shall register, without the express written permission
of LICENSOR, the TRADE SYMBOLS or any marks, words, symbols, phrases, designs,
trademarks, trade names, slogans, labels, copyrights, emblems, insignia,
packages, logos, domain names, corporate names or any other trade identifying
symbols that are confusingly similar to the TRADE SYMBOLS or that otherwise use
the word "Brink's" or any derivation or variation thereof anywhere in the world.
LICENSEE agrees not to assert any right or interest in any of the TRADE SYMBOLS
or any marks using the word “Brink’s” or any derivation or variation thereof
except as expressly provided for by this AGREEMENT or any subsequent agreement
with LICENSOR or any authorized AFFILIATE of LICENSOR.
(b) LICENSEE
and its sublicensees pursuant to Section 2(b) shall not use, and shall not cause
or permit any third party to use, the TRADE SYMBOLS in any unlawful or deceptive
manner or in any other way that is likely to directly or indirectly tarnish,
dilute, denigrate, diminish, lessen the value of or invalidate any of the TRADE
SYMBOLS or the consumer’s perception of any of the TRADE SYMBOLS. LICENSEE shall
promptly notify LICENSOR in writing when it becomes aware of any such use in any
part of the world. Any violation of this Subsection 5(b) shall constitute a
material breach of this AGREEMENT.
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(c) LICENSEE
further undertakes that in the event any potential infringement of the rights of
LICENSOR to any of the TRADE SYMBOLS in the TERRITORY comes to the notice of
LICENSEE prior to the termination, cancelation or expiration of this AGREEMENT,
LICENSEE shall promptly notify LICENSOR. LICENSEE shall join with LICENSOR, if
requested by LICENSOR, in taking such steps as LICENSOR deems advisable against
the potential infringement of the LICENSOR’s rights to any of the TRADE SYMBOLS.
LICENSOR shall be liable for all costs and expenses, including without
limitation attorneys’ fees, incurred at any time associated with taking such
steps in respect of the TRADE SYMBOLS, excluding the BHS TRADE SYMBOLS. LICENSEE
and LICENSOR shall equally share any costs and expenses incurred prior to
termination, cancelation or expiration of this AGREEMENT associated with taking
such steps in respect of the BHS TRADE SYMBOLS. In the event that LICENSOR
elects not to take action in respect of any of the TRADE SYMBOLS, LICENSEE may,
with LICENSOR’s written approval, and at LICENSEE’s own expense, proceed in
taking steps against the potential infringement necessary for the protection of
rights in the TRADE SYMBOLS.
(d) All
costs associated with registering, maintaining or renewing any TRADE SYMBOL
shall be borne by LICENSOR. Except as praovided in Section 5(k), LICENSOR shall
continue to maintain registration of any registered TRADE SYMBOL prior to
termination, cancelation or expiration of this AGREEMENT.
(e) LICENSEE
shall, at LICENSOR’s request, execute, acknowledge and deliver to LICENSOR any
documents and/or instruments that LICENSOR may, from time to time, deem
necessary or desirable to evidence, protect, enforce or defend its rights or
title in and to the TRADE SYMBOLS.
(f) BHS,
Inc. hereby transfers to LICENSOR, effective upon termination, cancelation or
expiration of this AGREEMENT, all domain names (including the BHS DOMAIN NAMES
and each of the domain names listed in Schedule A) owned by, or registered in
the name of, LICENSEE or any of its SUBSIDIARIES or other AFFILIATES that
include the word “Brink’s”, or any derivation or variation thereof, or any of
the other TRADE SYMBOLS. LICENSOR and BHS, Inc. shall, upon request by LICENSOR
at any time after termination, cancelation or expiration of this AGREEMENT,
execute and deliver all such documents, and take all such other actions, as are
necessary or, in the reasonable opinion of LICENSOR, advisable to effect and
evidence the transfer of such domain names (including the BHS DOMAIN NAMES and
each of the domain names listed in Schedule A) to LICENSOR pursuant to the
immediately preceding sentence. Within ten days after termination, cancelation
or expiration of this AGREEMENT, LICENSOR agrees to pay to BHS, Inc. a total
amount of $100 in cash in respect of such transfer. LICENSEE further agrees not
to effect any sale, transfer or other disposition of any domain name referred to
in this Section 5(f) to any PERSON other than
LICENSOR (except to an assignee of LICENSEE’s rights and obligations under this
AGREEMENT pursuant to Section 17).
(g) Upon
termination, cancelation or expiration of this AGREEMENT, LICENSEE shall, and
shall cause each SUBSIDIARY and other AFFILIATE of LICENSEE to, terminate (or,
if requested by LICENSOR, transfer to LICENSOR) all registrations in the name of
LICENSEE or such SUBSIDIARY or other AFFILIATE, as the case may be, in any
federal, state or foreign office, of any trademarks, trade names,
logos, domain names, slogans, labels, copyrights, emblems, insignia and other
trade identifying symbols included in the TRADE SYMBOLS or that otherwise
contain the word "Brink’s" or any
derivation or variation thereof (other than domain names required to be
transferred to LICENSOR pursuant to Section 5(f)).
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(h) Upon
termination, cancelation or expiration of this AGREEMENT, (i) LICENSEE and its
sublicensees pursuant to Section 2(b) shall immediately discontinue and shall
thereafter refrain from using the TRADE SYMBOLS, or any of them, in any way or
for any purpose whatsoever, and shall not use, at any time, any trademarks,
trade names, logos, domain names, trade names, slogans, labels, copyrights,
emblems, insignia, packages and other trade identifying symbols that are
confusingly similar to any of the TRADE SYMBOLS or that otherwise contain the
word “Brink’s” or any derivation or variation thereof and (ii) all restrictions
contained herein on the use of the TRADE SYMBOLS by LICENSOR and its AFFILIATES
and licensees shall cease to be effective; provided, however, that
(A) LICENSEE may, subject to LICENSEE’s obligations to pay royalties to
LICENSOR and otherwise comply with the terms and provisions of this AGREEMENT as
so terminated, in the regular course of business in the TERRITORY, distribute
any stock of goods used in providing the SERVICES or PRODUCTS remaining in its
hands at the termination, cancelation or expiration of this AGREEMENT, within a
period of six months after the date of termination, cancelation or expiration of
this AGREEMENT, (B) LICENSEE shall not have any obligation to (or to cause
its sublicensees pursuant to Section 2(b) to) remove any TRADE SYMBOLS from
any PRODUCTS
installed prior to the date of termination, cancelation or expiration of this
AGREEMENT in
any residence or place of business of any former or current customer of LICENSEE
or any of its SUBSIDIARIES,
whether such PRODUCTS are owned
by LICENSEE or any of its SUBSIDIARIES, by
such former or current customer or by a third party, and (C) for a
period of two years after termination, cancelation or expiration of this
AGREEMENT, LICENSOR shall, at LICENSEE’s expense, (x) cooperate with LICENSEE to
maintain registration of the BHS DOMAIN NAMES and use reasonable efforts to
redirect internet users that attempt to access any BHS DOMAIN NAME to the domain
name adopted by LICENSEE for its continuing business to replace such BHS DOMAIN
NAME that is provided by LICENSEE to LICENSOR in writing for this purpose and
(y) provide a link on the Brink’s website "xxx.xxxxxx.xxx" to up
to three websites to be adopted by LICENSEE for its continuing business that are
provided by LICENSEE to LICENSOR for this purpose, in each case pursuant to
arrangements reasonably satisfactory to LICENSOR and LICENSEE, provided that LICENSEE shall
indemnify LICENSOR in respect of any claims arising at any time, directly or
indirectly, from LICENSOR’s compliance with this clause (C) on the terms set
forth in Section 13 (treating such claims as having arisen in connection with
LICENSEE’s performance under this AGREEMENT). Notwithstanding any provision
herein to the contrary, this Subsection (h) shall survive the termination,
cancelation or expiration of this AGREEMENT.
(i) LICENSEE
shall use reasonable best efforts to amend its Articles of Incorporation and
Bylaws (including by filing all documents necessary or otherwise reasonably
requested by LICENSOR), no later than the first shareholder meeting of LICENSEE
during the calendar year 2011, to the extent necessary to change its
corporate name to remove all references to the word “Brink’s”, or any derivation
or variation thereof, and each other TRADE SYMBOL (and any other term that is
confusingly similar to “Brink’s”). In furtherance of and without in any way
limiting the foregoing, LICENSEE shall include in the proxy statement for its
first meeting of shareholders scheduled to occur during the calendar year 2011
(unless approved at an earlier shareholder meeting of LICENSEE) a proposal to
effect such change in LICENSEE’s corporate name and recommendation that its
shareholders approve such change.
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(j) Notwithstanding
anything in this AGREEMENT to the contrary, following the termination,
cancelation or expiration of this AGREEMENT, none of LICENSEE, any SUBSIDIARY or
other AFFILIATE of LICENSEE or any agent, subcontractor, dealer, distributor or
other representative of LICENSEE or any such SUBSIDIARY sublicensed pursuant to
Section 2(b) shall have any right to use the word “Brink’s”, or any derivation
or variation thereof, or any of the other TRADE SYMBOLS licensed hereunder as
part of its corporate name.
(k)
Notwithstanding
anything in this AGREEMENT to the contrary, at all times prior to termination,
cancelation or expiration of this AGREEMENT, BHS Inc. shall maintain, at
LICENSOR’s expense, its registration of each of the domain names listed in
Schedule A. Subject to the right of LICENSEE to (1) use email
addresses that use the domain name “xxxxxx.xxx” for the
term provided in the TRANSITION SERVICES AGREEMENT and (2) use the BHS
DOMAIN NAMES (in accordance with the terms and subject to the conditions of this
AGREEMENT), LICENSEE hereby grants LICENSOR exclusive access to, control over
and use of each of the domain names listed in Schedule A for any purpose
whatsoever on a royalty-free basis. At all times prior to
termination, cancelation or expiration of this AGREEMENT, LICENSOR agrees to
provide a link on the Brink’s website “xxx.xxxxxx.xxx” to up
to three websites to be adopted by LICENSEE for its continuing business, such
websites to be provided by LICENSEE to LICENSOR for this purpose, in each case
pursuant to arrangements reasonably satisfactory to LICENSEE and LICENSOR; provided that LICENSEE shall
indemnify LICENSOR in respect of any claims arising at any time, directly or
indirectly, from LICENSOR’s compliance with this sentence on the terms set forth
in Section 13 (treating such claims as having arisen in connection with
LICENSEE’s performance under this AGREEMENT). Notwithstanding any
provision herein to the contrary, the immediately preceding sentence shall
survive the termination, cancelation or expiration of this
AGREEMENT.
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6.
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License
Fees
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(a) LICENSEE
shall pay to LICENSOR, in consideration of the license granted to LICENSEE by
LICENSOR hereunder, a royalty of 1.25% of NET REVENUES, as hereinafter defined
(the “ROYALTY
AMOUNTS”). The ROYALTY AMOUNTS shall be payable quarterly with respect to
each fiscal quarter of LICENSEE ending after the DISTRIBUTION DATE
but on or before the last day of the first fiscal quarter of LICENSEE ending
after the termination, cancellation or expiration of this AGREEMENT.
(b) The
term NET REVENUES shall mean, in respect of any fiscal quarter of LICENSEE, the
amount reported by LICENSEE as “Revenues” for such fiscal quarter in its
financial statements filed with the SEC (or, if not so reported on or before the
date on which LICENSEE is required to render a statement of account with respect
to such fiscal quarter pursuant to Subsection 6(d), as determined in accordance
with GAAP and the requirements of the SEC applicable to quarterly reports on
Form 10-Q) less the provision for uncollectible accounts receivable for such
fiscal quarter (as set forth in such financial statements or so determined in
accordance with GAAP and such SEC requirements, as applicable). Notwithstanding
the immediately preceding sentence, (i) in respect of the period beginning on
the DISTRIBUTION DATE and ending on the last day of the first fiscal quarter of
LICENSEE ending after the DISTRIBUTION DATE, the term NET REVENUES shall mean
the NET
REVENUES (determined as provided in the first sentence of this
Subsection) for the fiscal quarter of LICENSEE during which the DISTRIBUTION DATE
occurred, multiplied by the number of days from (and including) the DISTRIBUTION
DATE to (and including) the last day of the first fiscal quarter of LICENSEE
ending after the DISTRIBUTION DATE, divided by the total number of days in such
fiscal quarter, and (ii) in respect of the first fiscal quarter of LICENSEE
ending after the termination, cancelation or expiration of this AGREEMENT, the
term NET REVENUES shall mean the NET REVENUES
(determined as provided in the first sentence of this Subsection) for the fiscal
quarter of LICENSEE during which such termination, cancellation or expiration
occurs, multiplied by the number of days in such fiscal quarter of LICENSEE
prior to such termination, cancellation or expiration, divided by the total
number of days in such fiscal quarter. Notwithstanding the foregoing, NET
REVENUES shall exclude the revenues of (i) any PERSON, or business unit or
division of any PERSON, acquired by LICENSEE or any SUBSIDIARY of LICENSEE after
the DISTRIBUTION DATE and (ii) any PERSON merged or consolidated with or into
LICENSEE or any SUBSIDIARY of LICENSEE after the DISTRIBUTION DATE solely to the
extent that, in the case of each of clauses (i) and (ii), (A) such PERSON does
not become a sublicensee of LICENSOR pursuant to Section 2(b), (B) none of the
TRADE SYMBOLS are used in connection with the sale of PRODUCTS or provision of
SERVICES by such PERSON, business unit or division and (C) the operations of
such PERSON, business unit or division after the date of such acquisition,
merger or consolidation are conducted separately from, and remain sufficiently
distinct from, the operations of LICENSEE and its SUBSIDIARIES in existence
prior to such acquisition, merger or consolidation such that it is reasonable to
conclude that the sale of PRODUCTS and provision of SERVICES by such PERSON,
business unit or division are not benefiting from the use of the TRADE SYMBOLS
by LICENSEE and its SUBSIDIARIES.
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(c) LICENSEE
shall maintain itemized, complete and accurate books of account with respect to
its performance under this AGREEMENT.
(d) LICENSEE
shall render to LICENSOR a statement of account, certified by a financial
officer of LICENSEE, of the NET REVENUES and computations of the ROYALTY AMOUNTS
for each fiscal quarter of LICENSEE (including the first fiscal quarter of
LICENSEE ending after the termination, cancelation or expiration of this
AGREEMENT) within 40 days after the end of such fiscal quarter. The ROYALTY
AMOUNTS determined to be due to LICENSOR hereunder with respect to each fiscal
quarter (or portion of the first fiscal quarter of LICENSEE ended after the
DISTRIBUTION
DATE or portion of the first fiscal quarter of LICENSEE ending after the
termination, cancelation or expiration of this AGREEMENT) shall be paid to
LICENSOR within 45 days after the end of such fiscal quarter.
(e) In
the event of termination, cancelation or expiration of this AGREEMENT, in
addition to the ROYALTY AMOUNTS, LICENSEE shall pay to LICENSOR a royalty of
1.25% of INVENTORY REVENUES, as hereinafter defined (the “INVENTORY AMOUNTS”).
The INVENTORY AMOUNTS shall be payable monthly with respect to each month ended
after the termination, cancellation or expiration of this AGREEMENT during which
any goods are sold, pursuant to Section 5(h), by LICENSEE or its sublicensees
pursuant to Section 2(b). For the purposes of this Subsection
(e), INVENTORY REVENUES shall mean, in respect of any month, the amount actually
invoiced by LICENSEE or its sublicensees pursuant to Section 2(b) for goods sold
during such month pursuant to Section 5(h). LICENSEE shall render to LICENSOR a
statement of account, certified by a financial officer of LICENSEE, of the
INVENTORY REVENUES and computations of the INVENTORY AMOUNTS for the first month
ending after the termination, cancellation or expiration of this AGREEMENT and
each subsequent month during which goods were so sold pursuant to Section 5(h).
The INVENTORY AMOUNTS determined to be due to LICENSOR pursuant to this
Subsection (e) in respect of any month shall be paid to LICENSOR within 30 days
after the end of such month.
(f) Notwithstanding
anything to the contrary contained herein, any payment that would otherwise be
due and payable to LICENSOR hereunder on a day that is not a BUSINESS DAY shall
not be due and payable until the first BUSINESS DAY after such day.
(g) In
the event that LICENSEE does not make any payment required under the provisions
of this AGREEMENT, including payments required after the termination,
cancelation or expiration of this AGREEMENT, to LICENSOR when due in accordance
with the terms hereof, LICENSOR shall, at its option, charge LICENSEE interest
on the unpaid amount at the rate of 2% per annum above the prime rate charged by
JPMorgan Chase Bank, N.A. (or its successor). LICENSEE shall keep complete and
accurate records of the sales of the SERVICES and PRODUCTS, including all
information relevant to the computation of the ROYALTY AMOUNTS due hereunder.
LICENSOR may review or may designate, at its expense, a recognized firm of
public accountants to review the accounts of LICENSEE to determine whether
proper accounting and payments have been made; provided, however, that if
there is an error in favor of LICENSEE in excess of 2% in computing such
accounting, all expenses in connection with such review shall be borne by
LICENSEE.
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(h) All
payments due to LICENSOR hereunder shall be made to LICENSOR in United States
dollars at LICENSOR’s Treasurer’s office by wire transfer in immediately
available funds to an account specified by LICENSOR, or at such other place or
in such other manner as may be designated by LICENSOR in writing.
(i) Any
taxes, duties or imposts, other than income or profit taxes, assessed or imposed
upon the sums due hereunder to LICENSOR or upon or with respect to this
AGREEMENT, shall be borne and discharged by LICENSEE and no part thereof shall
be deducted from any amount payable to LICENSOR under any clause of this
AGREEMENT, said amounts to be net to LICENSOR, free of any and all deductions,
(other than for such income or profit taxes) except as otherwise provided
herein.
(j) Notwithstanding
any provision herein to the contrary, this Section 6 shall survive the
termination, cancelation or expiration of this AGREEMENT.
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7.
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Disclaimer of
Warranty
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While
LICENSOR believes that none of the TRADE SYMBOLS licensed hereunder will
infringe any rights, trademarks or other property interests owned by any other
PERSON,
LICENSOR does not warrant that any TRADE SYMBOLS do not or will not infringe on
any rights, trademarks or other property interests in any part of the world.
LICENSOR agrees to indemnify LICENSEE and its AFFILIATES and each of their
respective officers, directors, employees, contractors, agents, dealers and
representatives against, and to hold such persons harmless from, any and all
founded and unfounded claims, suits, losses, damages, liabilities, costs and/or
expenses, including reasonable attorneys’ fees, arising out of or in connection
with any infringement by any of the TRADE SYMBOLS, excluding the BHS TRADE
SYMBOLS, on any rights, trademarks or other property interests in any part of
the world. LICENSEE and LICENSOR shall equally share the costs of all claims,
suits, losses, damages, liabilities, costs and/or expenses, including reasonable
attorneys’ fees, made, brought or incurred prior to termination, cancelation or
expiration of this AGREEMENT arising out of any infringement of any of the BHS
TRADE SYMBOLS on any rights, trademarks or other property interests in any part
of the world (such costs, the “SHARED
COSTS”), and each of LICENSOR and LICENSEE shall indemnify the other, and
its AFFILIATES and each of their respective officers, directors, employees,
contractors, agents, dealers and representatives against, and hold such persons
harmless from, the portion of any SHARED COSTS
incurred by such persons in excess of 50% of such SHARED COSTS.
LICENSEE shall promptly notify LICENSOR in writing when it becomes aware of any
claim by any third party that any of the TRADE SYMBOLS infringes any rights,
trademarks or other property interests in any part of the world.
9
|
|
8.
|
Term
|
This
AGREEMENT shall commence on the DISTRIBUTION DATE
and shall continue in force for a period of three years thereafter (the “TERM”) unless earlier
terminated as provided by any applicable law or in accordance with
Section 9.
|
|
9.
|
Termination
|
(a) LICENSEE
may terminate this AGREEMENT in its entirety on 30 days prior written notice to
LICENSOR.
(b) Either
party to this AGREEMENT shall have, in addition to any other rights and remedies
it may have, the right to terminate this AGREEMENT on ten days’ prior written
notice to the other, if the other party shall breach or default in the
performance of any material provision of this AGREEMENT; provided, however, that if it
is possible for such breach or default to be cured and the party receiving such
notice of termination shall cure such breach or default within a 30-day period
after receipt of such notice, then this AGREEMENT shall continue in full force
and effect.
(c) LICENSOR
shall have the right, notwithstanding any other provisions of this AGREEMENT,
and in addition to any other rights and remedies it may have, to terminate this
AGREEMENT forthwith and at any time if LICENSEE becomes insolvent; or if
LICENSEE files a petition in bankruptcy or insolvency; or if LICENSEE is
adjudicated bankrupt or insolvent; or if LICENSEE files any petition or answer
seeking reorganization, readjustment or arrangement of LICENSEE’s business under
any law relating to bankruptcy or insolvency; or if a receiver, trustee or
liquidator is appointed for any of the property of LICENSEE and within 60 days
thereof LICENSEE fails to secure a dismissal thereof; or if LICENSEE makes any
assignment for the benefit of creditors; or in the event of government
expropriation of a material portion of the assets of LICENSEE.
(d) If
LICENSEE shall fail to pay any financial obligation to LICENSOR incurred by it
under this AGREEMENT within
ten days after notice from LICENSOR, then LICENSOR shall have the right,
notwithstanding Subsection (b) of this Section 9 or any other provisions of this
AGREEMENT,
and in addition to any other rights and remedies it may have, to terminate this
AGREEMENT
forthwith.
(e) Notwithstanding
any other provision of this AGREEMENT, if any COMPETITOR is, or becomes, an
AFFILIATE of LICENSEE or merges or consolidates with or into LICENSEE, whether
or not such COMPETITOR is the surviving entity, then LICENSOR shall have the
right to terminate this AGREEMENT upon 180 days’ prior written notice to
LICENSEE.
(f) In
any event, no termination, cancelation or expiration of this AGREEMENT shall
prejudice the right of either party hereto to recover any payment due at the
time of termination, cancelation or expiration (or any payment accruing as a
result thereof), nor shall it prejudice any cause of action or claim of either
party hereto accrued or to accrue by reason of any breach or default by the
other party hereto.
10
|
|
10.
|
Confidentiality
|
This
AGREEMENT and the information provided to each party hereunder shall be subject
to the confidentiality provisions set forth in Sections 7.07 and 7.08 of the
SEPARATION AND DISTRIBUTION AGREEMENT.
|
|
11.
|
Exoneration from
Responsibility
|
None of
LICENSOR or its AFFILIATES or any of their respective officers, directors,
employees, agents, dealers, contractors or other representatives shall have any
responsibility for the provision of the SERVICES or use or marketing of the
PRODUCTS contemplated under this AGREEMENT or for any decisions that may be made
in connection therewith.
|
|
12.
|
Insurance
|
LICENSEE
agrees to maintain throughout the TERM and for at least three years after the
termination, cancelation or expiration of this AGREEMENT, at LICENSEE’s sole
cost and expense, Comprehensive General Liability insurance, including
contractual liability, product and completed operations and errors and omissions
liability on a worldwide basis and advertising liability, including coverage for
punitive damages to the extent permitted by applicable law, applicable to the
SERVICES and PRODUCTS covering both LICENSOR and LICENSEE and each of their
respective AFFILIATES for claims made anywhere in the world with at least a
Bodily
Injury and Property Damage Liability Combined
Single Limit of U.S. $50,000,000. Such
policies shall name LICENSOR as an additional insured and contain a broad
form vendors endorsement in favor of such additional insured. LICENSEE
shall obtain such insurance from a qualified insurance company (a) having an
A-VIII rating from A.M. Best or (b) if having less than an A-VIII rating
from A.M. Best, reasonably satisfactory to LICENSOR. LICENSEE shall deliver to
LICENSOR (i) promptly after execution of this AGREEMENT, a copy of such
insurance policies, in effect as of the DISTRIBUTION DATE,
evidencing such coverage and (ii) promptly after LICENSEE obtains any new,
renewal or replacement insurance policy required by this Section 12 at any
time after the DISTRIBUTION DATE,
a copy of such new, renewal or replacement insurance policy. All insurance
policies required by this Section 12 shall provide that such insurance
policies shall not be canceled, non-renewed, allowed to expire or
materially changed except on 60 days’ prior written notice to LICENSOR. If
LICENSEE shall fail to maintain any insurance required by this Section 12,
LICENSOR may obtain such insurance and charge the cost thereof to LICENSEE or
may treat such failure as a breach of a material provision of this AGREEMENT.
Notwithstanding any provision in this AGREEMENT to the contrary, LICENSEE shall
not grant any sublicenses under Section 2(b) to any third party (other than a
WHOLLY OWNED SUBSIDIARY) and shall not otherwise enter into any arrangement
whereby any agent, subcontractor, dealer, distributor, representative of
LICENSEE or other PERSON shall provide SERVICES or PRODUCTS for or on behalf of
LICENSEE or a WHOLLY OWNED SUBSIDIARY unless (i) such agent, subcontractor,
dealer, distributor, representative of LICENSEE or other PERSON obtains
insurance to the same extent that LICENSEE is required to maintain insurance
pursuant to this Section 12, which insurance shall comply with all requirements
applicable to the insurance that LICENSEE is required to maintain pursuant to
this Section 12, or (ii) the insurance policies obtained by LICENSEE pursuant to
this Section 12 provide coverage (including for the benefit of LICENSOR) in
respect of the activities of such agent, subcontractor, dealer, distributor,
representative of LICENSEE or other PERSON as if such activities were being
conducted by LICENSEE.
11
|
|
13.
|
Indemnification
|
LICENSEE
agrees to indemnify LICENSOR and its AFFILIATES and each of their respective
officers, directors, employees, contractors, agents, dealers and representatives
against, and to hold such persons harmless from, any and all founded and
unfounded claims, suits, damages, liabilities, losses, costs and/or expenses,
including reasonable attorneys’ fees, arising out of or in connection with
LICENSEE’s performance or failure to perform or any of its sublicensee’s
(pursuant to Section 2(b)) performance or failure to perform under this
AGREEMENT and/or for copyright infringement, patent infringement and/or unfair
competition caused by or arising out of the provision of the SERVICES and/or the
manufacture, use, marketing, advertising, distribution or sale of the PRODUCTS.
In addition, without limiting the foregoing, LICENSEE agrees to indemnify
LICENSOR and its AFFILIATES and each
of their respective officers, directors, employees, contractors, agents, dealers
and representatives against, and shall hold such persons harmless from, any and
all founded and unfounded claims, suits, damages, liabilities, losses,
consequential damages, costs and/or expenses, including attorneys’ fees, arising
out of or in connection with allegations that LICENSEE’s use or any of its
sublicensee’s (pursuant to Section 2(b)) use of the TRADE SYMBOLS constitutes
false, deceptive or misleading advertising. In addition, without limiting the
foregoing, LICENSEE agrees to indemnify LICENSOR and its AFFILIATES and each
of their respective officers, directors, employees, contractors, agents, dealers
and representatives against, and shall hold such persons harmless from, any and
all founded and unfounded claims, suits, damages, losses, consequential damages,
liabilities, costs and/or expenses, including attorneys’ fees, arising out of
the sale, advertising, use, performance and/or alleged defects of the SERVICES
or PRODUCTS. LICENSEE will take all necessary steps to ensure that (a) any
claim tendered by LICENSOR to LICENSEE as described in Section 5.06(a) of the
SEPARATION AND DISTRIBUTION AGREEMENT for indemnity and defense pursuant to this
Section 13 and (b) any claim tendered by any third party to LICENSEE for which
LICENSOR would be indemnified pursuant to this Section 13, in each case, is
promptly and properly filed with LICENSEE’s insurer in order
to effect coverage for LICENSOR for such claim under LICENSEE’s insurance
policy(ies).
|
|
14.
|
Dispute
Resolution
|
All
disputes, controversies, and claims directly or indirectly arising out of or in
relation to this AGREEMENT or any
schedule hereto or the validity, interpretation, construction, performance,
breach or enforceability of this AGREEMENT or any
schedule hereto shall be finally, exclusively and conclusively settled in
accordance with the provisions of Article VIII of the SEPARATION AND
DISTRIBUTION AGREEMENT, which shall apply mutatis mutandis to this
Agreement.
|
|
15.
|
Miscellaneous
|
Except as
otherwise expressly set forth in this AGREEMENT, the provisions in Article XI of
the SEPARATION AND
DISTRIBUTION AGREEMENT (which Article XI addresses counterparts, entire
agreement, corporate power, governing law, assignability, third party
beneficiaries, notices, severability, force majeure, publicity, expenses,
headings, survival of covenants, waivers of default, specific performance,
amendments, interpretation, jurisdiction and service of process, currency and
late payments) other than the provisions thereof relating to assignability,
shall apply mutatis mutandis to this AGREEMENT.
12
|
|
16.
|
Independent
Contractor
|
(a) LICENSEE
is an independent contractor and nothing contained in this AGREEMENT shall
constitute LICENSEE or any sublicensee pursuant to Section 2(b), the agent or
the legal representative of LICENSOR for any purpose whatsoever. LICENSEE is not
granted any right or authority to assume or create any obligation or
responsibility, express or implied, on behalf of or in the name of LICENSOR, or
to bind LICENSOR in any manner, or with respect to anything whatsoever. LICENSEE
shall have, at its sole cost and expense, the sole responsibility to comply with
all laws relating to the provision of the SERVICES and the manufacture and
marketing of the PRODUCTS.
|
|
17.
|
Assignment
|
Neither
this AGREEMENT nor any of the rights, licenses and obligations of LICENSEE
hereunder shall be assigned, conveyed, sublicensed (except as otherwise provided
in Section 2) or transferred in whole or in part by LICENSEE without LICENSOR’s
prior written consent; provided, however, that
LICENSEE may assign this AGREEMENT without the consent of LICENSOR to any third
party that acquires, by any means, including by merger or consolidation, assets
of LICENSEE or its SUBSIDIARIES, including EQUITY INTERESTS in
any SUBSIDIARIES of LICENSEE, that constitute all or substantially all the
consolidated assets of LICENSEE and its SUBSIDIARIES that are used in connection
with the BHS BUSINESS (as
defined in the TRANSITION SERVICES
AGREEMENT); provided further, that if
LICENSEE effects an assignment to a COMPETITOR pursuant
to the foregoing proviso, LICENSOR shall have the right to terminate this
AGREEMENT upon 180 days’ prior written notice to LICENSEE. Notwithstanding
anything herein to the contrary, LICENSOR agrees not to effect (or allow any of
its SUBSIDIARIES to effect), or enter into (or allow any of its SUBSIDIARIES to
enter into) any agreement to effect, any sale, transfer or other disposition by
any means of assets constituting all or substantially all the consolidated
assets of LICENSOR and its SUBSIDIARIES to any PERSON (other than LICENSOR or
any of its SUBSIDIARIES) if the successor, surviving or acquiring PERSON will
not automatically succeed to the obligations of LICENSOR under this AGREEMENT by
operation of law, unless such PERSON agrees in writing, for the benefit of
LICENSEE, to assume the obligations of LICENSOR hereunder. Any purported
assignment in violation of this Section 17 shall be void and shall constitute a
material breach of this AGREEMENT. Except as expressly provided herein, this
AGREEMENT shall inure to the benefit of the parties hereto and their respective
successors and permitted assigns and the parties entitled to indemnification
hereunder and no other PERSON shall have
any right, obligation or benefit hereunder. The rights of LICENSEE under the
licenses granted pursuant to Section 2 in respect of any TRADE SYMBOL shall
continue in full force and effect after any transfer of such TRADE SYMBOL by
LICENSOR to a third party during the TERM, and LICENSOR agrees that prior to any
transfer of any TRADE SYMBOL LICENSOR shall obtain the agreement of the
transferee in a writing addressed to LICENSEE to be bound by the licenses
granted under this AGREEMENT with respect to such TRADE SYMBOL. Further, in the
event of an assignment of this AGREEMENT by LICENSOR, to the extent LICENSOR
retains ownership of any of the TRADE SYMBOLS, the rights of LICENSEE under the
licenses granted pursuant to Section 2 in respect of such TRADE SYMBOLS
shall continue in full force and effect after such assignment.
13
IN
WITNESS WHEREOF, each of the parties hereto has caused this AGREEMENT to be
executed and sealed by its duly authorized representative on the date
indicated.
|
BRINK’S
NETWORK, INCORPORATED,
|
|
|
by
|
|
|
Name:
|
|
|
Title:
|
|
|
Acknowledged
and Agreed as to Sections 5(f) and 5(k):
|
||
|
by
|
||
|
Name:
|
||
|
Title:
|
||
14
Schedule
A
|
I.
|
TRADEMARK
|
INTERNATIONAL
CLASS
|
U.S. REG. NO./APP.
NO.
|
|
BRINK’S
|
35
|
529,622
|
|
|
BRINK’S
INCORPORATED
Oval
with Wings & Letter “B”
|
35
|
627,536
|
|
|
Oval
with Wings & Letter “B” & Money Box
|
36
|
643,998
|
|
|
Shield
With Wings & Letter “B”
|
36
|
754,329
|
|
|
BRINK’S
|
39
|
1,309,375
|
|
|
BRINKS
+ design
|
35,
36, 39
|
1,313,790
|
|
|
BRINKS
+ design
|
35
|
1,411,610
|
|
|
*BRINK’S
HOME SECURITY
|
35
|
1,412,587
|
|
|
AFFORDABLE
PROTECTION.
A
NAME YOU CAN TRUST.
|
35
|
1,578,050
|
|
|
BRINKS
+ design
|
9
|
App.
No. 76/689,349
|
|
|
A
TRUSTED NAME IN SECURITY SINCE 1859
|
|||
|
SECURITY
SINCE 1859
|
|||
|
DEPICTION
OF BRINK’S TRUCK
|
|
*
BHS TRADE SYMBOL
|
15
|
II.
|
TRADEMARK
|
CLASS
|
CANADA REG./APP.
NO.
|
|
BRINK’S
|
35,36,39
|
TMA316,696
|
|
|
BRINKS+D
|
35,36,37,49
|
TMA310,611
|
|
|
Shield
Design and Letter “B”
|
35,36,39,41
|
TMA281,451
|
|
|
MONEY
AND VALUABLES Wings
|
35,36
|
TMA133,222
|
|
|
*BRINK’S
HOME SECURITY
|
45
|
TMA450,039
|
|
|
*BRINK’S
HOME SECURITY
|
6,13,21
|
TMA506,613
|
|
|
*BRINKS
HOME SECURITY+D
|
6,13,21
|
TMA506,657
|
|
|
*BRINKS
HOME SECUR1TY+D
|
9
|
TMA541,336
|
|
* BHS
TRADE SYMBOL
16
|
III.
|
TRADE NAME
|
|
Brink’s
Business Security
|
|
|
Brink’s
Home Technologies
|
|
| Brink’s Home Security Canada | |
| Brink's Home Security Holdings |
* BHS TRADE
SYMBOL
17
|
IV.
|
DOMAIN
NAMES
|
|
|
xxxxxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxx-xxxxx.xxx
|
xxxxxxxxxx.xxx
|
|
|
xxxxxx-xxxxx.xxx
|
xxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxx-xxxx.xxx
|
xxxxxxxxxxx.xxx
|
|
|
xxxxxx-xxxx.xxx
|
xxxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxx.xxx
|
xxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxx.xxx
|
xxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxxxxxxxx.xxx
|
*xxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxx.xxx
|
*xxxxxxxxxxxxxxxxxxxxxx.xxx
|
|
|
*xxxxxxxxxxxxxxxxxxxxxx.xxx
|
xxxxxxxx.xxx
|
|
|
xxxxxxxxxxxx.xxx
|
xxxxxxxxxxxxxx.xxx
|
|
|
xxxxxxxxxxxx.xxx
|
xxxxxxxxxxx.xxx
|
|
|
*xxxxxxxxxxxxxxxxxxxxxxxxxx.xxx
|
*xxxxxxxxxxxxxxxxxx.xxx
|
|
|
*xxxxxxxxxxxxxxxxxxxxxxxxxx.xxx
|
xxxxxx.xxx
|
|
|
*xxxxxxxxxxxxxxxxxxxxxxxxxx.xxx
|
*xxxxxxxx.xxx
|
|
|
xxxxxx-xxxxx.xxx
|
xxxxxxxx.xxx
|
|
|
xxxxxx-xxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxx
|
|
|
xxxxxx-xxxxx.xxx
|
xxxxxxxxxxxxxxxxxx.xxxx
|
* BHS TRADE
SYMBOL
18
BRINK’S
19
