EXHIBIT 10.23
*** Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. (S)(S) 200.80(b)(4),
200.83 and 240.24b-2
TRADEMARK AGREEMENT
This Trademark Agreement (this "Agreement") is entered into as of
August 1, 2001 (the "Effective Date") by and between Xxxxxx Xxxxx Medicament,
organized under the laws of France having an address of 00, xxxxx Xxxx-Xxxxx,
00000 Xxxxxxxx xxxxx, Xxxxxx ("Xxxxxx Xxxxx"), and Cypress Bioscience, Inc., a
Delaware corporation having an address of 0000 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxx
Xxxxx, XX 00000, X.X.X. ("Cypress"). Capitalized terms used in this Agreement
that are not otherwise defined shall have the meaning set forth in the License
Agreement of even date herewith between Cypress and Xxxxxx Xxxxx (the "License
Agreement").
Recitals
Whereas, Xxxxxx Xxxxx and Cypress are entering into the License
Agreement concurrently with the execution of this Agreement; and
Whereas, in connection with the license granted under the License
Agreement, Xxxxxx Xxxxx desires to grant Cypress a license to use certain
trademarks in the Licensed Territory.
Now, Therefore, in consideration of the foregoing premises and the
mutual covenants and agreements contained herein and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereto agree as follows:
1. Trademark License.
1.1 Trademarks; Ownership of Trademarks. Xxxxxx Xxxxx and Cypress
shall mutually agree upon one or more trademarks under which Cypress, its
Affiliates and sub-licensees will exclusively market the Licensed Products (the
"Trademarks") in the Licensed Territory. Xxxxxx Xxxxx shall own and shall retain
the ownership of the entire right, title and interest in and to the Trademarks.
1.2 Registration of the Trademarks. While Cypress is marketing the
Licensed Products using the Trademarks, Xxxxxx Xxxxx shall, at its own cost and
expense, file in the Licensed Territory and endeavor in good faith to obtain the
registration of the applicable Trademarks in the Licensed Territory, and when
registered, thereafter maintain the applicable Trademarks in the Licensed
Territory at its own expense. Xxxxxx Xxxxx shall keep Cypress informed of
progress with regard to the prosecution, maintenance, enforcement and defense of
the Trademarks by providing Cypress copies of official actions, amendments and
responses with respect to such prosecution. In the event that Xxxxxx Xxxxx
desires to abandon any of the Trademarks in the Licensed Territory, Xxxxxx Xxxxx
shall provide reasonable prior written notice to Cypress of such intention to
abandon and provide Cypress an opportunity to discuss with Xxxxxx Xxxxx the
possibility of assuming responsibility for such Trademarks. If Cypress assumes
responsibility for any Trademarks, such Trademarks shall be assigned to Cypress
and shall no longer be included in the Trademarks subject to this Agreement.
1.3 License to Trademarks. Xxxxxx Xxxxx hereby grants to Cypress an
exclusive license, with the right to sublicense to a sub-licensee of rights
under the License Agreement, to identify the Licensed Product to be packaged and
sold by Cypress under the License Agreement
1.
under the Trademarks in the Licensed Territory and to promote, market, sell and
use such Licensed Products in the Licensed Territory under the Trademarks during
the Term.
1.4 Quality Control. The nature and quality of the Licensed Products
advertised or sold by Cypress on which the Trademarks appear shall conform to
quality standards and Licensed Product specifications for packaging and quality
control of the Licensed Product mutually agreed between Xxxxxx Xxxxx and
Cypress. Cypress agrees to cooperate with Xxxxxx Xxxxx to enable Xxxxxx Xxxxx to
control the nature and quality of the use of the Trademarks such that Xxxxxx
Xxxxx may verify that the use of the Trademarks is consistent with the agreed
quality standards and Licensed Product specifications. From time to time and
upon request by Xxxxxx Xxxxx, Cypress shall provide Xxxxxx Xxxxx with samples of
the Licensed Product.
1.5 Rights as Between Parties. Cypress acknowledges, as between the
Parties, the exclusive rights, title and interest of Xxxxxx Xxxxx in and to the
Trademarks and will not do or cause to be done any act or thing contesting or,
in any way, impairing or tending to impair any part of said right, title and
interest for the Term and after its expiry. Cypress will not make any
representations or take any actions, which may be taken to indicate that it has
any right title or interest in or to the ownership or use of the Trademarks
except under the terms of this Agreement and acknowledges that nothing contained
in this Agreement shall give Cypress any right, title or interest in or to the
Trademarks save as granted hereby.
1.6 Infringement.
(a) Infringement by Third Parties. Xxxxxx Xxxxx and Cypress
shall promptly notify the other in writing of any alleged or threatened
infringement or any challenge to the validity of the Trademarks or any challenge
to Xxxxxx Xxxxx'x ownership of or Cypress' and/or its sub-licensees' right to
use the Trademarks of which they become aware. Both parties shall use their best
efforts in cooperating with each other to terminate such infringement without
litigation. Xxxxxx Xxxxx shall have the sole right to bring and control any
action or proceeding with respect to infringement of any of the Trademarks at
its own expense and by counsel of its own choice. With respect to infringement
of any of the Trademarks in the Licensed Territory, if Xxxxxx Xxxxx fails to
bring an action or proceeding within (a) 60 days following the notice of alleged
infringement or (b) 10 days before the time limit, if any, set forth in the
appropriate laws and regulations for the filing of such actions, whichever comes
first, Cypress shall have the right to bring and control any such action at its
own expense and by counsel of its own choice, and Xxxxxx Xxxxx shall have the
right, at its own expense, to be represented in any such action by counsel of
its own choice. In the event a party brings an infringement action, the other
party shall cooperate fully, including if required to bring such action, the
furnishing of a power of attorney. Neither party shall have the right to settle
any infringement litigation under this Section 1.6(a) relating to the Trademarks
without the prior written consent of the other party. Except as otherwise agreed
to by the parties as part of a cost-sharing arrangement, any recovery realized
as a result of such litigation, after reimbursement of any litigation expenses
of Xxxxxx Xxxxx and Cypress, shall be retained by the party that brought and
controlled such litigation.
(b) Infringement of Third Party Rights. Each party shall
promptly notify the other in writing of any allegation by a Third Party that the
activity of either of the parties pursuant to this Agreement infringes or may
infringe the intellectual property rights of such
2.
Third Party. Xxxxxx Xxxxx shall have the first right to control any defense
of any such claim alleging that the use of the Trademarks in relation with the
Licensed Product infringes any Third Party rights in the Licensed Territory, at
its own expense and by counsel of its own choice, and Cypress shall have the
right, at its own expense, to be represented in any such action by counsel of
its own choice. If Xxxxxx Xxxxx fails to proceed in a timely fashion with regard
to such defense, Cypress shall have the right to control any such defense of
such claim at its own expense and by counsel of its own choice, and Xxxxxx Xxxxx
shall have the right, at its own expense, to be represented in any such action
by counsel of its own choice. Neither party shall have the right to settle any
trademark infringement litigation under this Section 1.6(b) relating to the use
of the Trademarks in the Licensed Territory without the consent of such other
party.
1.7 Goodwill. Any accretion of goodwill derived by Cypress, its
Affiliates or sub-licensees from the use of the Trademarks shall accrue to
Xxxxxx Xxxxx and Xxxxxx Xxxxx may call for a confirmatory assignment thereof.
1.8 Registered User.
(a) Where required, Xxxxxx Xxxxx shall make applications to the
Registrar of Trademarks (or equivalent) for the registration of Cypress as a
registered user of the Trademarks in respect of each registration of the
Trademark and Cypress shall co-operate with Xxxxxx Xxxxx in making such
applications.
(b) Cypress shall execute further documents, depose to or swear
or procure the deposing to or swearing of such declarations or oaths and do any
act or thing and provide any information or evidence which may be necessary or
desirable for registering and maintaining registration of Cypress as a
registered user.
1.9 Reasonable Assistance. Cypress will, upon request, supply Xxxxxx
Xxxxx or its authorized representative with any information as to its use of the
Trademarks which Xxxxxx Xxxxx may require and will render any assistance
reasonably required by Xxxxxx Xxxxx in securing and maintaining the
registration(s) of the Trademarks in the Licensed Territory.
1.10 Royalty Payments.
(a) Earned Royalties. In consideration of the right and license
hereby granted, during the Term, Cypress shall pay Xxxxxx Xxxxx a royalty of
[...***...] of Net Sales of the Licensed Product made by Cypress, its Affiliates
and sub-licensees in the Licensed Territory.
(b) Payments- Records - Audits.
(i) Payment; Reports. Royalty payments and reports for the
sale of the Licensed Products shall be calculated and reported for each calendar
quarter. All payments due to Xxxxxx Xxxxx shall be paid within [...***...] of
the end of each calendar quarter, unless otherwise specifically provided herein.
Each payment of royalties shall be accompanied by a report of Net Sales of the
Licensed Products in sufficient detail to permit confirmation of the accuracy of
the payment made, including, without limitation and on a country-by-country
basis, the number of the Licensed Products sold, the gross sales and Net Sales
of the Licensed
*Confidential Treatment Requested
3.
Products, the royalty payment calculated in United States dollars, the
method used to calculate the royalty payment and the exchange rates used.
(ii) Exchange Rate; Manner and Place of Payment. All
payments hereunder due and payable by Cypress to Xxxxxx Xxxxx shall be payable
in Euros. With respect to each quarter, whenever conversion of payments from any
foreign currency shall be required, such conversion shall be made at the rate of
exchange reported in The Wall Street Journal, Western Edition, on the last
business day of the applicable quarter. All payments owed under this Agreement
shall be made by wire transfer to a bank and account designated in writing by
the party entitled to receive such payment, unless otherwise specified in
writing by such party.
(iii) Withholding of Taxes. Xxxxxx Xxxxx will pay any and
all taxes levied on account of such payment. If any taxes are required to be
withheld by Cypress, Cypress will (a) deduct such taxes from the remitting
payment, (b) timely pay the taxes to the proper taxing authority, and (c) send
proof of payment to Xxxxxx Xxxxx and certify its receipt by the taxing authority
within 60 days following such payment.
(iv) Records and Audits. During the Term and for a period
of five years thereafter, Cypress shall keep complete and accurate records
pertaining to gross sales and Net Sales of the Licensed Product, including the
expenses incurred by Cypress, in sufficient detail to permit the other party to
confirm the accuracy of all payments due hereunder. Xxxxxx Xxxxx shall have the
right to cause an independent, certified public accountant reasonably acceptable
to Cypress to audit such records to confirm Net Sales and payments for a period
covering not more than the preceding three years. Such audits may be exercised
during normal business hours upon reasonable prior written notice to Cypress;
provided, however, such audits may not be performed more than one time in each
calendar year. Prompt adjustments shall be made by the parties to reflect the
results of such audit. Xxxxxx Xxxxx shall bear the full cost of such audit
unless such audit discloses a variance of more than 5% from the amount of the
Net Sales or payments due under this Agreement. In such case, Cypress shall bear
the full cost of such audit. In the event of underpayment, Cypress shall
promptly remit to Xxxxxx Xxxxx the amount of any underpayment.
(v) Prohibited Payments. Notwithstanding any other
provision of this Agreement, if Cypress is prevented from paying any payments
due hereunder by virtue of the statutes, laws, codes or governmental regulations
of the country from which the payment is to be made, then such payments may be
paid by depositing funds in the currency in which accrued to Xxxxxx Xxxxx
account in a bank acceptable to Cypress in the country whose currency is
involved.
1.11 Ownership of the Trademarks. Xxxxxx Xxxxx has the right to grant
Cypress the exclusive license granted under Section 1.3 hereof and such license
does not conflict with or violate the terms of any agreement between Xxxxxx
Xxxxx and any Third Party.
1.12 Term and Termination.
(a) Term. The term of this Agreement (the "Term") shall commence
on the Effective Date and shall remain in full force and effect for so long as
Cypress, its Affiliates and
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sub-licensees continue to sell the Licensed Product under any of the Trademarks
in the Licensed Territory unless earlier terminated pursuant to Section 1.12(b)
or 1.12(c).
(b) Termination for Cause. Termination by either party. A party
shall have the right to terminate this Agreement upon 90 days' prior written
notice to the other upon the occurrence of any of the following:
(i) Upon or after the bankruptcy, insolvency, dissolution
or winding up of the other party (other than a dissolution or winding up for the
purpose of reconstruction or amalgamation); or if a party admits in writing its
inability to pay its debts as they become due, or
(ii) Upon or after the breach of any material provision of
this Agreement by the other party if the breaching party has not cured such
breach within the 90-day period following written notice of termination by the
non-breaching party.
(c) Termination of the License Agreement. In the event the
License Agreement is earlier terminated prior to the expiration of the License
Term, for any reason other than by Cypress pursuant to Section 14.2(a)(i) or
(ii) thereof, then this Agreement shall be terminated without any further act or
notice and Cypress shall no longer have any right to use the Trademarks in the
Licensed Territory. In the event that the License Agreement is terminated by
Xxxxxx Xxxxx pursuant to Section 14.2(a)(i) of the License Agreement and this
Agreement is terminated pursuant to Section 1.12(b)(i), then any sublicenses
granted under Section 1.3 shall survive the termination of the Term and become
direct licenses from Xxxxxx Xxxxx under this Agreement.
(d) Effect of Termination; Surviving Obligations.
(i) Upon expiration or termination of the Term, all rights
and obligations under this Agreement shall automatically terminate except as
provided in Section 1.12(c).
(ii) Expiration or termination of this Agreement shall not
relieve the parties of any obligation accruing prior to such expiration or
termination.
(iii) Within 30 days following the expiration or termination
of this Agreement, each party shall deliver to the other party any and all
Confidential Information of the other party in its possession.
(iv) The license granted under this Agreement will be
deemed a license of rights to intellectual property for purposes of Section
365(n) of the U.S. Bankruptcy Code and a licensee under the Agreement will
retain and may fully exercise all of its rights and elections under the US
Bankruptcy Code.
(e) Exercise of Right to Terminate. The use by either party
hereto of a termination right provided for under this Agreement shall not give
rise to the payment of damages or any other form of compensation or relief to
the other party with respect thereto.
5.
(f) Damages; Relief. Termination of this Agreement shall not
preclude either party from claiming any other damages, compensation or relief
that it may be entitled to upon such termination.
2. Miscellaneous.
2.1 Governing Law and Venue. This Agreement shall be governed by, and
construed and enforced in accordance with, the laws of the State of New York
excluding its conflicts of law principles. Each party irrevocably submits to the
jurisdiction and venue of New York and any such court in any such action or
proceeding and irrevocably waives any objection thereto.
2.2 Entire Agreement; Modification. This Agreement is both a final
expression of the parties' agreement and a complete and exclusive statement with
respect to all of its terms. This Agreement supersedes all prior and
contemporaneous agreements and communications, whether oral, written or
otherwise, concerning any and all matters contained herein. No rights or
licenses with respect to any intellectual property of either party are granted
or deemed granted hereunder or in connection herewith, other than those rights
expressly granted in this Agreement. No trade customs, courses of dealing or
courses of performance by the parties shall be relevant to modify, supplement or
explain any term(s) used in this Agreement. This Agreement may not be modified
or supplemented by any purchase order, change order, acknowledgment, order
acceptance, standard terms of sale, invoice or the like. This Agreement may only
be modified or supplemented in a writing expressly stated for such purpose and
signed by the parties to this Agreement.
2.3 Relationship between the Parties. The parties' relationship, as
established by this Agreement, is solely that of independent contractors. This
Agreement does not create any partnership, joint venture or similar business
relationship between the parties. Neither party is a legal representative of the
other party, and neither party can assume or create any obligation,
representation, warranty or guarantee, express or implied, on behalf of the
other party for any purpose whatsoever.
2.4 Non-Waiver. The failure of a party to insist upon strict
performance of any provision of this Agreement or to exercise any right arising
out of this Agreement shall neither impair that provision or right nor
constitute a waiver of that provision or right, in whole or in part, in that
instance or in any other instance. Any waiver by a party of a particular
provision or right shall be in writing, shall be as to a particular matter and,
if applicable, for a particular period of time and shall be signed by such
party.
2.5 Assignment. Except as expressly provided hereunder, neither this
Agreement nor any rights or obligations hereunder may be assigned or otherwise
transferred by either party without the prior written consent of the other party
(which consent shall not be unreasonably withheld); provided, however, that
either party may assign this Agreement and its rights and obligations hereunder
without the other party's consent in connection with the transfer or sale of all
or substantially all of the business of such party to which this Agreement
relates to a Third Party, whether by merger, sale of stock, sale of assets or
otherwise In the event of such transaction, however, intellectual property
rights of the acquiring party to such transaction (if
6.
other than one of the parties to this Agreement) shall not be included in the
technology licensed hereunder. The rights and obligations of the parties under
this Agreement shall be binding upon and inure to the benefit of the successors
and permitted assigns of the parties. Any assignment not in accordance with this
Agreement shall be void.
2.6 No Third Party Beneficiaries. This Agreement is neither expressly
nor impliedly made for the benefit of any party other than those executing it.
2.7 Severability. If, for any reason, any part of this Agreement is
adjudicated invalid, unenforceable or illegal by a court of competent
jurisdiction, such adjudication shall not affect or impair, in whole or in part,
the validity, enforceability or legality of any remaining portions of this
Agreement. All remaining portions shall remain in full force and effect as if
the original Agreement had been executed without the invalidated, unenforceable
or illegal part.
2.8 Notices. Any notice to be given under this Agreement must be in
writing and delivered pursuant to the License Agreement.
2.9 Force Majeure. Except for the obligation to make payment when due,
each party shall be excused from liability for the failure or delay in
performance of any obligation under this Agreement by reason of any event beyond
such party's reasonable control including but not limited to Acts of God, fire,
flood, explosion, earthquake, or other natural forces, war, civil unrest,
accident, destruction or other casualty, any lack or failure of transportation
facilities, any lack or failure of supply of raw materials, any strike or labor
disturbance, or any other event similar to those enumerated above. Such excuse
from liability shall be effective only to the extent and duration of the
event(s) causing the failure or delay in performance and provided that the party
has not caused such event(s) to occur. Notice of a party's failure or delay in
performance due to force majeure must be given to the other party within 10
calendar days after its occurrence. All delivery dates under this Agreement that
have been affected by force majeure shall be tolled for the duration of such
force majeure. In no event shall any party be required to prevent or settle any
labor disturbance or dispute. Notwithstanding the foregoing, should the event(s)
of force majeure suffered by a party extend beyond a three month period, the
other party may then terminate this Agreement by written notice to the
non-performing party, with the consequences of such termination as set forth in
Sections 1.12(c), (d), (e) and (f).
2.10 Legal Fees. If any party to this Agreement resorts to any legal
action or arbitration in connection with this Agreement, the prevailing party
shall be entitled to recover reasonable fees of attorneys and other
professionals in addition to all court costs and arbitrator's fees which that
party may incur as a result.
2.11 Interpretation.
(a) Captions & Headings. The captions and headings of clauses
contained in this Agreement preceding the text of the articles, sections,
subsections and paragraphs hereof are inserted solely for convenience and ease
of reference only and shall not constitute any part of this Agreement, or have
any effect on its interpretation or construction.
7.
(b) Singular & Plural. All references in this Agreement to the
singular shall include the plural where applicable, and all references to gender
shall include both genders and the neuter.
(c) Articles, Sections & Subsections. Unless otherwise
specified, references in this Agreement to any article shall include all
sections, subsections, and paragraphs in such article; references in this
Agreement to any section shall include all subsections and paragraphs in such
sections; and references in this Agreement to any subsection shall include all
paragraphs in such subsection.
(d) Days. All references to days in this Agreement shall mean
calendar days, unless otherwise specified.
(e) Ambiguities. Ambiguities and uncertainties in this
Agreement, if any, shall not be interpreted against either party, irrespective
of which party may be deemed to have caused the ambiguity or uncertainty to
exist.
2.12 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original document, and all of
which, together with this writing, shall be deemed one instrument.
8.
In Witness Whereof, the parties hereto have duly executed this
Agreement.
Xxxxxx Xxxxx Medicament Cypress Bioscience, Inc.
By: /s/ Xxxxxxxxxx X. Xxxx By: /s/ Xxxx X. Xxxxxxxxx
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Name: Xxxxxxxxxx X. Xxxx Name: Xxxx X. Xxxxxxxxx
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Title: President and CEO Title: COO and EVP
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9.
