TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "License") is made and entered
into effective as of November 14, 1997 ("Effective Date") between TENERA,
INC., a Delaware corporation ("Licensor"), and SPEAR TECHNOLOGIES, INC., a
California corporation ("Licensee").
RECITALS AND DEFINITIONS
WHEREAS, pursuant to that certain Asset Acquisition Agreement dated
November 14, 1997 by and among Licensor, TENERA TECHNOLOGIES, LLC, a Delaware
limited liability company ("LLC"), and Licensee, Licensor and LLC have agreed
to sell to Licensee all of the assets and liabilities of Licensor's
performance improvement and computerized maintenance management software
consulting business for the mass transit industry ("Business");
WHEREAS, Licensor is the owner of the entire right, title and
interest in and to the names, marks or designations whether or not registered
as trademarks in connection with which the Business has been conducted and as
set forth in Attachment A (hereinafter referred to as "Trademarks"); and
WHEREAS, in connection with continuing the Business after the
purchase of its assets, Licensee desires for a limited period the right to use
the Trademarks and Licensor is willing to grant such right on the terms and
conditions hereinafter appearing.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants and conditions hereinafter set forth, the parties hereto agree as
follows:
X. XXXXX AND USE
1.1 Licensor hereby grants to Licensee a world-wide, royalty free,
non-transferable, exclusive license to use the Trademarks only for the term of
this License and solely (i) in the same manner as the Trademarks were used
immediately prior to the Effective Date, and (ii) in connection with the
conduct of the Business as it was conducted immediately prior to the Effective
Date.
1.2 The grant of license includes the right for the term of this
License only, unless earlier terminated by Licensor, to use the name "Tenera
Technologies" as its fictitious business or trade name but not as part of any
registered corporate name. Licensee may only use "Tenera Technologies" in its
entirety as its business or trade name as this grant of License does not
include a license to use the name "Tenera" alone or in connection with any
other
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word or any variation thereof as a business or trade name. Licensee shall not
use any other Trademark in its business or trade name. Upon the expiration of
this License or its earlier termination, Licensee shall immediately cease to
use the name "Tenera Technologies" and shall take any and all steps necessary
to commence doing business under a new name which bears no similarity
whatsoever to the name "Tenera."
1.3 Notwithstanding anything to the contrary contained herein,
sublicensing of the Trademarks is not permitted without the prior written
consent of Licensor, except in compliance with the terms of this Agreement to
(i) British Rail Business Systems, (ii) ICL Enterprises, and (iii) IBM.
II. TERM
The term of this License shall be for one year, commencing on the
Effective Date and ending on November 14, 1998.
III. CONDUCT AND USE
3.1 Licensee agrees during the term of this License and while it is
using the Trademarks or the name "Tenera Technologies": (a) to conduct its
business in a manner that reflects favorably at all times on the good name,
goodwill and reputation of Licensor; (b) to avoid deceptive, misleading or
unethical practices that are or might be detrimental to Licensor, including,
but not limited to, disparagement of Licensor; (c) to make no false or
misleading representations with regard to Licensor; and (d) not to publish or
employ or cooperate in the publication or employment of any misleading or
deceptive advertising material.
3.2 Licensee must use the Trademarks in compliance with all
specifications and procedures reasonably prescribed by Licensor. Licensee
will give such notices of Trademark ownership and registration as Licensor
reasonably specifies.
3.3 Unauthorized use of any of the Trademarks, including without
limitation use in connection with any business or commercial practice other
than the Business or use of the name "Tenera" as a business or trade name
alone or in combination with any other word or xxxx, by Licensee will
constitute infringement of Licensor's rights in the Trademarks or in the name
"Tenera", and any such infringement which is adverse to Licensor will
constitute a material breach of this License.
3.4 Licensee may not use any of the Trademarks: (a) with any
prefix, suffix or other modifying words, terms, designs, or symbols; (b) in
any modified form or in any form that has not been specified by Licensor; or
(c) in selling any product or service not being sold in relation to the
Business on the date of this License.
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IV. PACKAGING/APPROVALS
4.1 Licensee, immediately on Licensor's request, shall submit to
Licensor for review, all packaging, labels, advertising and other material on
which the Trademarks appear and Licensee specifically undertakes to amend to
the reasonable satisfaction of Licensor any such packaging, labels,
advertising and other material which are not approved by Licensor, which
approval shall not be unreasonably withheld.
4.2 Licensor has the right, at all reasonable times during business
hours, to inspect any services or products, including without limitation
software products, upon and in connection with which the Trademarks are to be
used as well as the methods of creating such products or providing such
services, if any, in order that Licensor may satisfy itself that the products
or services associated with the Trademarks meet the quality standards approved
by Licensor. Licensee shall submit for Licensor's prior written approval, at
least 30 days prior to their intended distribution, a limited number of
samples of any products, including without limitation working demonstration
copies of any software programs making use of the Trademarks. Licensor may
disapprove any use or appearance of the Trademarks if in Licensor's reasonable
determination such use (a) jeopardizes the validity of any of the Trademarks,
(b) causes disparagement to, reflects badly on or decreases the quality
associated with Licensor or Licensor's products or services (c) does not
conform to previously approved uses of the Trademarks or (d) does not conform
to Licensor's established Trademark presentation and use policies, protocols
or standards, which may vary from time to time.
V. OWNERSHIP
5.1 Licensee acknowledges and agrees that: (a) Licensor owns all
right, title, interest and goodwill in and to the Trademarks; (b) Licensee's
right to use the Trademarks comes solely from this License and is limited to
use in compliance with this License; (c) all use of the Trademarks will inure
to Licensor's exclusive benefit; and that (d) this License does not confer any
goodwill or other interest in the Trademarks upon Licensee. Licensee may not
during or after the term of this License contest the validity or ownership of
any of the Trademarks or assist any other person or entity in doing so.
5.2 Licensor shall continue to be responsible for maintaining the
Trademarks in force.
VI. INFRINGEMENTS
6.1 Licensee shall promptly report to Licensor particulars of any
use by any other party of a Trademark, trade name or model of advertising
which might amount to infringement of the Trademarks or to unfair competition.
6.2 In the event that it comes to the notice of Licensee that any
party alleges that the Trademarks are invalid or that they infringe any rights
of that party or that the
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Trademarks are open to any other form of attack, Licensee shall not make any
admissions but shall promptly report the matter to Licensor.
6.3 Licensor shall have the conduct of and responsibility for any
proceeding relating to the Trademarks.
6.4 Licensee agrees to indemnify Licensor (including reasonable
attorneys' fees and cost of litigation) against, and hold Licensor harmless
from, any and all claims by any other party resulting from the provision of
services or products in connection with any Trademarks regardless of the form
of action; provided however, that Licensee shall not be required to indemnify
Licensor for any loss arising from the fact that such Trademark infringes the
rights of any third party.
VII. TERMINATION
7.1 Notwithstanding Section 2.1 hereof, this License may be
terminated immediately by Licensor by written notice to Licensee in the event
of (i) the bankruptcy or judicial or administrative declaration of insolvency,
or the assignment of all or a substantial part of the assets of Licensee to or
for the benefit of any creditor or Licensee admits in writing Licensee's
inability to pay Licensee's debts as they come due; or (ii) Licensee
transfers, sublicenses or attempts to transfer or sublicense this License or
the rights or interests conferred by this License to any other person without
the prior written consent of Licensor.
7.2 Upon termination or expiration of this License, for any reason,
Licensee shall immediately discontinue use of the Trademarks, including the
name "Tenera Technologies", and shall return to Licensor or destroy
immediately all documentation, advertising, promotional materials, packaging
or products marked with the Trademarks.
7.3 If either party shall default in the performance of any of its
obligations under this License and shall fail to remedy such default within 30
days written notice thereof by the other party calling attention to such
default, then the injured party, by written notice, may terminate this
License.
7.4 Termination of this License shall be without prejudice to any
rights accruing prior to the date of termination.
7.5 No waiver of any breach of this License shall constitute a
waiver of any subsequent or other breach.
VIII. NOTICES
All notices, requests, demands and other communications hereunder shall
be deemed to have been duly given if the same shall be in writing and shall be
delivered personally or sent by
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registered or certified mail, postage prepaid or by reputable overnight
courier (e.g. Federal Express) and addressed as set forth below:
If to Licensor: Tenera, Inc.
Xxx Xxxxxx, Xxxxx Xxxxx
Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000
Attention: Chief Executive Officer
copy to:
Xxxxx Xxxx LLP
000 Xxxxxxxx, Xxxxx 000
Xxxxx Xxxxxx, Xx 00000
Attention: Xxxxxx Xxx, Esq.
If to Licensee: Spear Technologies, Inc.
Xxx Xxxxxx, Xxxxx Xxxxx
Xxxxx 0000
Xxx Xxxxxxxxx, XX 00000
Attention: Xxxxxxx X. Xxxxxx
copy to:
Xxxx Xxxx Xxxx & Freidenrich
000 Xxxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Attention: Xxxxxx Xxxxxxx, Esq.
Any such notice personally served shall be deemed received upon
receipt. Any notice sent by mail, certified or registered, shall be deemed
received three (3) business days after deposit in the mail. Any notice sent by
reputable overnight courier shall be deemed received on the next business day
following deposit with the courier. Any party may change the address to which
notices are to be addressed by giving the other parties notice in the manner
herein set forth.
IX. ASSIGNMENT; BINDING AGREEMENT
9.1 Neither this Agreement nor any of the rights or obligations
hereunder may be assigned without prior written consent of the Parties.
9.2 This Agreement shall be binding upon, and shall inure to the
benefit of the Parties and their respective successors and permitted assigns.
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X. MISCELLANEOUS
10.1 This License is made pursuant to and shall be governed by the
law of the State of California without regard to its principles of conflicts
of laws.
10.2 The titles of paragraphs used in this License shall in no
event be read as part of this License.
10.3 In the event of a breach or threatened breach of any of
Licensee's duties and obligations under the terms and conditions of this
License, Licensor shall be entitled, in addition to any other legal or
equitable remedies it may have in connection therewith (including any right to
damages that it may suffer), to temporary, preliminary and permanent
injunctive relief restraining such breach or threatened breach. Licensee
hereby expressly acknowledges that the harm which might result to Licensor's
business as a result of any noncompliance by Licensee with any the provisions
of this License would be largely irreparable.
IN WITNESS WHEREOF, the parties hereto have caused this License to be
executed by their duly authorized officers and their corporate seals affixed
as of the day and year first written above.
Licensor
TENERA, INC.,
a Delaware corporation
By: /s/ XXXXXXX X. XXXXXXXX
----------------------------------
Name: Xxxxxxx X. Xxxxxxxx
Title: Chief Financial Officer
Licensee
SPEAR TECHNOLOGIES, INC.,
a California corporation
By: /s/ XXXXXXX X. XXXXXX
----------------------------------
Name: Xxxxxxx X. Xxxxxx
Title: Chief Executive Officer
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ATTACHMENT A
LICENSED TRADEMARKS
Xxxx Registration
1. TENERA & Design U.S. trademark
2. TENERA & Design U.S. service xxxx
3. TENERA U.S. trademark
4. TENERA U.S. service xxxx
5. TENERA 2000 I.T.U. trademark application
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