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Exhibit 99.2
TRADEMARK ASSIGNMENT AGREEMENT
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between the undersigned:
1. PEARLE, INC., a company established under the laws of Delaware, United
States, having its registered office at 0000 Xxxxx Xxxx, Xxxxxx, Xxxxx
00000 (United States of America), hereinafter referred to as "Pearle",
represented in this matter by Xxxxx, Day, Xxxxxx & Xxxxx;
2. PEARLE VISION, INC., a company established under the laws of Delaware,
United States, having its registered office at 0000 Xxxxx Xxxx, Xxxxxx,
Xxxxx 00000 (United States of America), hereinafter referred to as "PVI"
(Pearle and PVI hereinafter also collectively referred to as "Assignors"),
represented in this matter by Xxxxx, Day, Xxxxxx & Xxxxx;
3. PEARLE B.V., a company established under the laws of the Netherlands and an
indirect wholly owned subsidiary of PVI, represented in this matter by
Xxxxx Dutilh;
and
4. PEARLE TRUST B.V. I.O., a company to be established under the laws of the
Netherlands, having its registered office at Amersfoort, the Netherlands,
hereinafter referred to as "Assignee", represented in this matter by HAL
Investments B.V., established under the laws of the Netherlands, with its
registered office at Xxxxx 000, Xxxxxxxxx, Xxx Xxxxxxxxxxx;
WHEREAS:
x. Xxxx National Corporation ("CNC") and HAL Investments B.V. ("HAL") have
entered into a purchase agreement on September 24, 1996 pursuant to which
all of the Shares and Other Assets have been sold to HAL; CNC, HAL and
Assignee have subsequently entered into an assignment dated on or around 14
November 1996 pursuant to which all rights and obligations of HAL under the
aforementioned purchase agreement have been transferred to Assignee; CNC,
Assignee and the Assignors have entered into an agreement dated on or
around 14 November 1996 pursuant to which among others, all rights and
obligations of CNC have been transferred to PVI and, in as far as the
European Intellectual Property Rights are concerned, to Pearle (these
documents together to be referred to as the "Purchase Agreement");
b. Pursuant to article 7.1.a. of the Purchase Agreement, CNC, PVI and Pearle
have undertaken to have executed and delivered to Assignee a Trademark
Assignment Agreement;
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c. Assignors are the proprietors of various trademarks and/or trademark
applications, including Community trademarks and/or trademark applications
(hereinafter referred to as "the Trademarks") in Buyer's Territory
(hereinafter referred to as "the Countries");
d. CNC and Assignors have undertaken to see to it that all the Trademarks in
the Countries are assigned from Assignors to Assignee. A list of the
Trademarks including registration numbers and classes, are attached to this
agreement as Annex A;
e. Assignors are furthermore the proprietors of other Intellectual Property
Rights than the Trademarks (hereinafter referred to as "Other Intellectual
Property Rights");
f. CNC and Assignors have undertaken to see to it that all the Other
Intellectual Property Rights related to the Countries are assigned from
Assignors to Assignee. If however certain Other Intellectual Property
Rights are necessary or helpful for the continuation of the present
business of Assignors, CNC and Assignors have undertaken to see to it that
instead of assignment thereof, a royalty free perpetual license will be
given to Assignee;
IT IS THEREFORE HEREBY AGREED AS FOLLOWS:
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Article 1 - Transfer Of The Trademarks
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1.1 Each of the Assignors hereby assigns unto Assignee, who hereby accepts, all
the property, right, title and interest in its respective Trademarks in the
Countries, together with that part of the goodwill of the business
connected with the use of and symbolized, together with all rights to apply
for registrations and to renew and continue the Trademarks in the Countries
and all common law rights associated therewith, together with the right to
xxx and recover damages for all past, present and future infringements
thereof.
1.2 Each of the Assignors hereby covenants, at any time and from time to time
after the date hereof, at Assignee's reasonable request and expense and
without further consideration, to execute and deliver such other
instruments of sale, transfer, conveyance, assignment, and delivery and
confirmation and take such action as Assignee may deem necessary or
desirable in order more effectively to transfer, convey and assign to
Assignee and to place Assignee in possession and control of, and to confirm
Assignee title to, the Trademarks in the Countries, and to assist Assignee
in exercising all rights and enjoying all benefits with respect thereto.
1.3 Each of the Assignors hereby appoints Assignee and/or assigns its lawful
attorneys in fact with full power of substitution, which power is
irrevocable and coupled with an interest, to take on its behalf proceedings
for purposes of making
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all filings and recordation necessary for absolutely vesting and perfect
Assignee's full right, title and interest in and to the Trademarks in the
Countries.
1.4 Assignee will take care of all necessary filings and recordations of this
assignment at its own expense.
Article 2 - Transfer Of The Other Intellectual Property Rights
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2.1 Each of the Assignors hereby assigns unto Assignee, who hereby accepts, all
its property, right, title and interest in the Other Intellectual Property
Rights related to the Countries, together with that part of the goodwill of
the business connected with the use of and symbolized, together with all
rights to apply for registrations to renew and continue the Other
Intellectual Property Rights in the Countries and all common law rights
associated therewith, together with the right to xxx and recover damages
for all past, present and future infringements thereof.
2.2 Each of the Assignors hereby covenants, at any time and from time to time
after the date hereof, at Assignee's reasonable request and expense and
without further consideration, to execute and deliver such other
instruments of sale, transfer, conveyance, assignment, and delivery and
confirmation and take such action as Assignee may deem necessary or
desirable in order more effectively to transfer, convey and assign to
Assignee and to place Assignee in possession and control of, and to confirm
Assignee title to, the Other Intellectual Property Rights related to the
Countries, and to assist Assignee in exercising all rights and enjoying all
benefits with respect thereof.
2.3 Each of the Assignors hereby appoints Assignee and/or assigns its lawful
attorneys in fact with full power of substitution, which power is
irrevocable and coupled with an interest, to take on its behalf proceedings
for purposes of making all filings and recordation necessary for absolutely
vesting and perfect Assignee's full right, title and interest in and to the
Other Intellectual Property Rights related to the Countries.
2.4 Assignee will take care of all necessary filings and recordations of this
assignment at its own expense.
Article 3 - License Of The Other Intellectual Property Rights
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3.1 If certain Other Intellectual Property Rights related to the Countries are
necessary or helpful for the continuation of the present business of
Assignors and therefore cannot be assigned unto Assignee, Assignors hereby
grant to Assignee a perpetual royalty free license to use the Other
Intellectual Property Rights related to the Countries.
3.2 Assignee will take care of all necessary registrations of these licenses at
its own expense. Assignors will give full cooperation in this respect, thus
Assignors
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covenants to execute all such documents, forms and authorizations and
depots to or swear any declaration of oath as may be required by any
registrar for vetting this license of the Other Intellectual Property
Rights in favor of Assignee.
Article 4 - Price
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In consideration of the present assignment and as consideration for the Purchase
Agreement, Assignee shall pay to Pearle an amount of NLG 19,500,000 and to PVI
an amount of NLG 19,500,000.
Article 5 - Assignment
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Assignee is entitled to assign its rights under this Trademark Assignment
Agreement or any part thereof to one of its Subsidiaries.
Article 6 - Effective Date
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This Agreement will be effective as from the Closing.
Article 7 - Cancellation Of Prior License
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The parties to this agreement hereby agree to terminate the Master License
Agreement between Pearle and Pearle B.V. dated 1 November 1988, as amended.
Assignee and Pearle B.V. shall enter into a License Agreement in relation to the
Trademarks and Other Intellectual Property Rights.
Article 8 - General
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a. Capitalized terms used and not otherwise defined herein shall have the
meanings ascribed to such terms in the Purchase Agreement.
b. If any provision of this agreement is declared by any tribunal of competent
jurisdiction to be invalid or void, the remaining portions or provisions of
the agreement nevertheless shall remain in full force and effect.
c. This agreement shall be governed by and shall be construed in accordance
with the laws of The Netherlands.
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d. All disputes arising in connection with this agreement, if not otherwise
resolved, shall be submitted in accordance with Section 9.11 of the
Purchase Agreement.
Pearle, Inc. Pearle Vision, Inc.
/S/ Xxxxxx Xxxxxxxx /S/ Xxxxxx Xxxxxxxx
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By: Xxxxxx Xxxxxxxx By: Xxxxxx Xxxxxxxx
Title: Vice President and Treasurer Title: Vice President and Treasurer
Date: November 15, 1996 Date: November 15, 1996
Pearle Trust B.V. i.o. Pearle B.V.
/S/ Xxx Xxxxx /S/ Joop X.X. Xx Xxxxx
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By: Hal Investments B.V. By: Joop X.X. Xx Xxxxx
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Title: By Power of Attorney Title: Managing Director
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Date: November 15, 1996 Date: November 15, 1996
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ANNEX A
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The following Trademarks in the now existing European Union
countries, the now existing European Free Trade Association countries, Albania,
Andorra, Belarus, Bulgaria, the Czech Republic, Cyprus, Estonia, Hungary,
Latvia, Lithuania, Malta, Poland, Romania, Russia, Slovakia, Slovenia, Turkey,
Ukraine, the former Yugoslavia and any other territories that as of the date
hereof are usually referred to as being part of Europe:
TRADEMARK-/DESCRIPTION
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Brilmij - Word and Device
Brilmij - Word Xxxx
Brilmij Pearle Express - Word and Device
Brilmij Pearle Vision Center - Word and Device
Brilmij Pearle Vision Center - Word Xxxx
Brilmij Pearle Vision Center - Word and Device
Brilmij Pearle Vision Center - Word Xxxx
Xxxxx Xxxxxxxxx - Word Xxxx
Optique Pearle - Word Xxxx
Xxxxxx - Word Xxxx
Xxxxxx Royale - Word Xxxx
Xxxxxx Vision Center - Word Xxxx
Xxxxxx Vision Center - Word Xxxx
Xxxxxx Vision Center - Word and Device
Pearle Vision Center - Word and Device
Pearle Vision Center - Word Xxxx
Brilmij Pearle Vision Express - Word and Device
Kidsafe - Word Xxxx
Xxxxx Express - Word Xxxx
Xxxxxx Opticiens - Word Xxxx
Xxxxxx Vision Center - Word and Device
