EX-10.5 10 d814206dex105.htm EX-10.5 TRADEMARK LICENSE AGREEMENT
Exhibit 10.5
This Trademark License Agreement (this “Agreement”), effective as of October 30, 2014 (the “Effective Date”), is made and entered by and between Xxxxxxxx-Xxxxx Worldwide, Inc., a Delaware corporation (“Licensor”); and Avent, Inc., a Delaware corporation (“Licensee”).
1.1 “Affiliate” shall mean, with respect to any Person, any other Person that directly or indirectly controls, is controlled by or is under common control with such Person. For the purpose of this definition, the term “control” means the power to direct the management of an entity, directly or indirectly, whether through the ownership of voting securities, by contract or otherwise; and the term “controlled” has the meaning correlative to the foregoing. After consummation of the Distribution Agreement, Halyard and Xxxxxxxx-Xxxxx shall not be deemed to be under common control for purposes hereof due solely to the fact that Halyard and Xxxxxxxx-Xxxxx have common stockholders. Notwithstanding the foregoing definition, Xxxxx-Xxxxxxxx Limited, Xxxxxxxx-Xxxxx de Mexico, Xxxxxxxx-Xxxxx Lever Private Limited, Xxxxxx Xxxxxxxx-Xxxxx Saudi Limited, Xxxxxx Xxxxxxxx-Xxxxx Bahrain and Xxxxxx Xxxxxxxx Child Care Products WLL are Affiliates of Xxxxxxxx-Xxxxx.
1.2 “Change of Control” shall mean a transaction in which there is a change in the person or persons holding a controlling interest in the equity of Licensee (or in the equity of any parent entity of Licensee) and such change results in the controlling interest in the Licensee or such parent entity being held by a Xxxxxxxx-Xxxxx Competitor.
1.3 “Consumer Products” shall mean devices, products, articles or merchandise of common or frequent use, ordinarily bought by individuals or households for private consumption from a retail outlet or otherwise obtained or provided direct to the consumer. Consumer Products expressly includes Xxxxxxxx-Xxxxx Consumer Products. Consumer Products do not include Medical Products, sold by Xxxxxxxx-Xxxxx’x Global Health Care Business as of the Effective Date of this Agreement.
1.4 “Existing Health Care Customer” shall mean any Person that purchases Medical Products from Xxxxxxxx-Xxxxx’x Global Health Care Business immediately prior to the Effective Time. In the event that any such Person consists of multiple divisions, departments, branches, offices, or other subdivisions, the Existing Health Care Customer shall include only such divisions, departments, branches, offices or other subdivisions that purchase Medical Products from Xxxxxxxx-Xxxxx’x Global Health Care Business immediately prior to the Effective Time.
1.5 “Existing K-C Consumer Customer” shall mean any Person that purchases Consumer Products from Xxxxxxxx-Xxxxx’x Global Consumer Business, immediately prior to the Effective Time. In the event that any such Person consists of multiple divisions, departments, branches, offices, or other subdivisions, the Existing K-C Consumer Customer shall include only such divisions, departments, branches, offices or other subdivisions that purchase Consumer Products from Xxxxxxxx-Xxxxx’x Global Consumer Business, as applicable, immediately prior to the Effective Time.
1.6 “Existing KCP Customer” shall mean any Person that purchases Professional Products from Xxxxxxxx-Xxxxx’x Global Professional Business or Global Partnership Products Business immediately prior to the Effective Time. In the event that any such Person consists of multiple divisions, departments, branches, offices, or other subdivisions, the Existing KCP Customer shall include only such divisions, departments, branches, offices or other subdivisions that purchase Professional Products from Xxxxxxxx-Xxxxx’x Global Professional Business or Global Partnership Products Business immediately prior to the Effective Time.
1.7 “Health Care Market” shall mean end users whose primary business is the delivery of medical, veterinary or patient care or treatment, medical diagnostic services, or medical care provided in connection with disaster relief, including, but not limited to: (a) professional medical and healthcare service companies, businesses, institutions and enterprises, (b) medical diagnostics facilities and laboratories having patient interaction, (c) government and private organizations providing medical care in connection with disaster relief, and (d) firms selling products or services into such end users; examples of such end users are:
• | Hospitals, including their pharmacies; |
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• | Integrated medical service provider networks and their member facilities; |
• | Surgery centers, including their pharmacies; |
• | Blood banks; |
• | Bone and tissue centers; |
• | Physician and medical clinic offices, including their pharmacies; |
• | Psychiatric health facilities, including their pharmacies; |
• | Clinics in retail outlets that perform or provide medical services or care; |
• | Long-term medical care facilities, including their pharmacies; |
• | Medical care components of the Red Cross or other disaster relief organizations; |
• | Veterinary and other facilities that primarily provide medical care to animals; and |
• | Dental care facilities. |
1.8 “Xxxxxxxx-Xxxxx Competitor” shall mean a third party that manufactures, sells or distributes products of a type sold by Xxxxxxxx-Xxxxx.
1.9 “Xxxxxxxx-Xxxxx Consumer Products” shall mean Consumer Products whose primary purpose is to help maintain or improve the hygiene, healthy aging process and/or household care and maintenance of the end user. Such products include those intended to be used in connection with enuresis, incontinence, menstruation, personal hygiene, diaper rash, healthy skincare, household cleaning and similar such fields, and may include medical devices, over-the-counter drugs or devices, prescription drugs or devices, or other regulated products or materials. Xxxxxxxx-Xxxxx Consumer Products expressly include those products sold or otherwise transferred to customers or end users by Xxxxxxxx-Xxxxx’x Global Consumer Business as of the Effective Date of this Agreement.
1.10 “Licensed Marks” shall mean (a) the marks shown in Appendix A attached hereto, including the marks that are the subject of the registrations and applications identified in Appendix A; (b) marks that include or incorporate such marks; and (c) any variants or formatives thereof, each as used on, for and in connection with products intended to be used by providers of medical and healthcare services or their patients.
1.11 “Medical Products” shall mean devices, products, articles, methods, systems or merchandise on or in connection with which the Licensed Marks are used and that are primarily utilized by (a) healthcare professionals for the diagnosis, treatment or prevention of disease or injuries or (b) caregivers under the direction and supervision of medical professionals in the treatment or prevention of disease or injuries. Medical Products expressly include those
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devices, products, articles or merchandise sold or otherwise transferred to end users or customers in the Health Care Market by Xxxxxxxx-Xxxxx’x Global Health Care Business as of the Effective Date of this Agreement. Medical Products do not include devices, products, articles or merchandise sold by Xxxxxxxx-Xxxxx’x Global Consumer Business as of the Effective Date of this Agreement.
1.12 “Professional Products” shall mean devices, products, articles or merchandise on or in connection with which the Licensed Marks are used and whose primary purpose is to: (a) help maintain facilities or manufacturing equipment; (b) increase or improve employee or other individuals’ efficiency, safety or protection, or cleanliness; or (c) enhance the safety or cleanliness or efficiency of facilities or equipment or processes. Professional Products expressly include those devices, products, articles or merchandise sold or otherwise transferred to customers or end users by Xxxxxxxx-Xxxxx’x Global Professional Business or Global Partnership Products Business as of the Effective Date of this Agreement.
(a) on or in connection with Medical Products that are marketed solely to the Health Care Market;
(b) in connection with manufacturing Medical Products and distributing Medical Products solely to the Health Care Market; and
(c) in connection with marketing, advertising, promotion, and/or sale of the Medical Products solely to the Health Care Market, including such use by Licensee’s authorized sales representatives.
All of the foregoing uses identified in paragraphs 2.1(a) through 2.1(c) shall hereinafter be referred to collectively as the “Licensed Uses.”
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4. Quality Control and Use of Licensed Marks
4.1 Quality Control. Licensor shall at all times retain the right, in its sole discretion, to control the nature and quality of all Medical Products in accordance with applicable trademark law. Licensee shall comply with all requests or instructions of Licensor relating to the nature or quality of the Medical Products, and shall comply with all quality control guidelines of Licensor, as adopted from time to time by Licensor in writing and provided to Licensee. Licensor and Licensee intend the quality control provisions of this Section 4 to require Licensee to maintain the nature and quality of the Medical Products as required by Licensor, so as to maintain the validity and integrity of the Licensed Marks, as required by applicable law.
4.2 Quality Standards. In furtherance of its quality control rights and obligations set forth in Section 4.1 above, Licensor has furnished to Licensee quality standards applicable to goods bearing the Licensed Marks as of the Effective Date. Licensee shall ensure that all Medical Products conform to the quality standards historically associated with the products of Licensor on which the Licensed Marks have been used prior to the Effective Date, and with such quality standards as Licensor may reasonably adopt after the Effective Date and communicate in writing to Licensee. Licensee represents that, as a principal part of its business, it has acquired all the necessary and appropriate knowledge, skill, experience and expertise to enable it to manufacture, inspect, test, approve, market, advertise, promote, distribute and sell Medical Products in compliance with Licensor’s existing quality standards, including with respect to their performance and safety, in compliance with all applicable laws and regulations, and acknowledges and agrees that, as a result thereof, Licensor may reasonably rely on Licensee to regularly ensure that all Medical Products comply with such quality standards, laws and regulations. Nothing contained herein, however, shall preclude or limit Licensor’s right or ability to inspect any Medical Products or to determine, in Licensor’s reasonable discretion, whether such Medical Products comply with the quality standards communicated by Licensor to Licensee in accordance with this Section 4.2. Licensee shall cooperate fully with Licensor, as requested by Licensor, in connection with any such inspection or determination by Licensor. Licensor and Licensee agree that any subsequent adoption of different quality standards with which Licensee must comply may be made to maintain compliance of all Medical Products with applicable laws and regulations, and Licensor agrees that any different quality control standards adopted during the term of this Agreement shall be reasonable and consistent with the nature and qualities of the products of Licensor on which the Licensed Marks have been used in the past.
4.3 Compliance with Law. Licensee shall comply with all applicable laws and regulations and obtain all appropriate government approvals pertaining to its use of the Licensed Marks, including the Licensed Uses and Licensee’s manufacture, sale, distribution, marketing, advertising and promotion of products on or in connection with which the Licensed Marks are used.
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4.4 No Disparagement of Licensor or Licensed Marks. Licensee shall not use the Licensed Marks in connection with any activity that disparages Licensor, its products or services, or the Licensed Marks.
4.5 Licensor’s Maintenance of Licensed Marks. Licensor shall take no actions that derogate or devalue the Licensed Marks, and agrees to make reasonable efforts to maintain the goodwill of the Licensed Marks, as well as any registrations for, and applications for registration of, the Licensed Marks. Licensee agrees to cooperate with Licensor or its representatives by timely obtaining and/or submitting to Licensor or its representatives, as requested by Licensor, documents, information, specimens, verified or sworn statements, assignments or other documents reasonably believed by Licensor to be necessary in order to maintain such registrations or prosecute applications for the Licensed Marks.
5.3 Adverse Use and Enforcement
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third party to protect the Licensed Marks. Notwithstanding the foregoing, if, within twenty (20) days of Licensor’s receipt of a notice from Licensee in accordance with paragraph (a) above, Licensor does not agree in writing to bring or take action to terminate such activities of the unauthorized third party, or if Licensor subsequently decides not to proceed with any such action, and if Licensee has a good faith belief that such activities have or will injure its rights under this Agreement, then Licensee may take such action as is reasonably necessary to halt such activities including filing suit, after providing written notice to Licensor at least seven (7) days in advance of taking such action. Whichever party takes action against such activities shall be responsible for the costs and fees of such action including payment of both Licensor’s and Licensee’s attorneys’ fees, costs and expenses, and the other party shall, if requested, cooperate in such action as shall be reasonably necessary (including joining as a party plaintiff to the extent necessary and requested by the other party), but again at the cost of the party taking action. Any monies recovered as a result of such action shall first be used to pay the legal expenses of the party that took such action and the legal fees of the party cooperating in such action and any remaining amounts after reimbursement of such fees shall be retained by, paid to or recovered by the party that initiated the action.
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or in part from any activities of Licensee relating to the Licensed Marks or the Medical Products, including but not limited to: (i) alleged defects or deficiencies in the Medical Products offered by Licensee; (ii) Licensee’s agreements, policies, promises, or activities relating to the provision or advertising of the Medical Products; (iii) alleged violations of any applicable law or regulation relating to the Medical Products offered by Licensee; (iv) alleged acts of piracy, plagiarism, infringement, fraud, larceny/theft, libel or invasion of privacy; and/or (v) any allegations by third parties asserting claims of fraud, negligence, or gross negligence relating to the provision of the Medical Products. Licensor shall promptly notify Licensee in writing of any such claims asserted against Licensor.
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(a) In the event that Licensee dissolves or liquidates or ceases to engage in its business, files a petition in bankruptcy, is adjudicated a bankrupt or files a petition or otherwise seeks relief under or pursuant to any bankruptcy, insolvency or reorganization statute or proceeding, or if a petition in bankruptcy is filed against it and is not discharged within sixty (60) days thereafter or if Licensee makes an assignment for the benefit of its creditors or if a custodian, receiver or trustee is appointed for it or for a substantial portion of its business or assets and such appointment is not discharged within sixty (60) days thereafter (hereinafter individually and/or collectively referred to as “Bankruptcy or Related Proceedings”), then this Agreement will terminate automatically. In the event of Licensee’s Bankruptcy or Related Proceedings, Licensor and/or its custodian, receiver, or trustee retains the right to reject and terminate this Agreement in its entirety.
(b) In the event Licensee, in its sole discretion, ceases to use the Licensed Marks with intent not to resume such use, the license granted under this Agreement will terminate following receipt of written notice from Licensee without any penalty, payment or other form of remuneration from one party to the other.
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If to Licensor: | Xxxxxxxx-Xxxxx Worldwide, Inc. | |
0000 Xxxxxxxxxx Xxxx | ||
Xxxxxx, Xxxxxxxxx 00000 | ||
Attention: General Counsel | ||
If to Licensee: | Avent, Inc. | |
0000 Xxxxxxxx Xxxxxxx, Xxxxx 000 Xxxxx | ||
Xxxxxxxxxx, Xxxxxxx 00000 | ||
Attention: General Counsel |
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8.9 Choice of Law and Forum. This Agreement shall be governed by and construed and enforced in accordance with the federal trademark laws of the United States of America as to trademark issues and the substantive laws of the State of Delaware, as though all acts and omissions related hereto occurred in Delaware, as to contract formation, interpretation and construction. The Parties hereby irrevocably submit to the non-exclusive jurisdiction of the
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state and federal courts located in the State of Delaware, and each party hereby irrevocably agrees that all disputes, controversies or claims may be heard and determined in the state and federal courts located in Wilmington, Delaware. The Parties hereby irrevocably waive, to the fullest extent permitted by applicable law, any objection which they may now or hereafter have to the laying of venue of any such dispute brought in such court or any defense of inconvenient forum for the maintenance of such dispute. Each of the Parties hereto agrees that a judgment in any such dispute may be enforced in other jurisdictions by suit on the judgment or in any other manner provided by law.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective Date.
XXXXXXXX-XXXXX WORLDWIDE, INC. | ||
(Licensor) | ||
By: | /s/ Xxxx Xxxxxxx | |
Name: | Xxxx Xxxxxxx | |
Title: | Senior Director | |
AVENT, INC. | ||
(Licensee) | ||
By: | /s/ Xxxx X. Xxxxxx | |
Name: | Xxxx X. Xxxxxx | |
Title: | Senior Vice President, General Counsel and | |
Chief Ethics and Compliance Officer |
EXHIBIT A
ROYALTIES
A. The license granted in this Agreement shall bear royalties at the rate of three-fourths of one percent (0.75%), payable each calendar quarter during the term of this Agreement, commencing on the Effective Date.
B. Licensee shall remit to Licensor, within thirty (30) days after the close of each calendar quarter, an accounting of all royalties due to Licensor, accompanied by payment of such royalties in U.S. dollars. The royalties shall be calculated by multiplying the royalty rate set forth in paragraph A above by the Net Sales by Licensee of Medical Products during the preceding calendar quarter, exclusive of taxes and less returns during such period. The term “Net Sales” shall be consistent with generally accepted accounting principles in the United States of America as applied by Licensor in publishing its annual reports. Licensee shall report such royalties on the form prescribed by Licensor, which shall identify all Medical Products and state the volume and Net Sales for each Licensed Product with specificity.
C. Licensee shall not be obligated to pay royalties to Licensor based on any sales by Licensee of any Medical Products that were in Licensor’s inventory as of the Effective Date and are transferred to Licensee. Licensor and Licensee shall agree, in writing, as to the value of such inventory, and Licensee may deduct from its royalty payments to Licensor any royalties that would otherwise be payable to Licensor based on the sales of such inventory by Licensee. Licensee shall report all such sales to Licensor in Licensee’s accountings in accordance with paragraph B above, and may make such deduction(s) either as one or more lump-sum deduction(s) from its initial royalty payment(s) or on a rolling basis, as such inventory is sold by Licensee.
D. Licensee shall keep complete and accurate books and records relating to Licensee’s sales of Medical Products, and Licensor shall have the right, upon reasonable notice to Licensee but no more frequently than once every two (2) years, to have an independent certified public accountant of Licensor’s choice to audit such books and records at Licensor’s expense. If any such audit finds that Licensee has under-reported or underpaid the royalties due to Licensor under this Agreement, Licensee shall remit to Licensor all unpaid royalties within thirty (30) days after the receipt by Licensee of the report of the audit. If any such audit finds that Licensee has under-reported or underpaid royalties by more than five percent (5%), Licensee shall, in addition to remitting all unpaid royalties, also reimburse Licensor for all costs incurred by Licensor in connection with such audit, including all fees and expenses of the accountant that conducted the audit.
EXHIBIT A
APPENDIX A
MARKS AND REGISTRATIONS
X. XXXXX
The marks, whether registered or not, that (a) are used both on or in connection with Medical Products marketed to the Health Care Market and other products; and (b) are not the subject of any other license agreement between Licensor and Licensee, including but not limited to:
XXXXXXXX-XXXXX
X-X
XXXXXXXX-XXXXX KIMPACK
KIMCARE
KIMFLEX
KIMLIFE
KIMPACK
KIMSMART
KIMTHERM
KIMTRACH
KIMVENT
the distinctive configurations of any such Medical Products
the trade dress used for any such Medical Products
APPENDIX A
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II. APPLICATIONS AND REGISTRATIONS
The marks that are the subject of the applications and registrations shown in the attached chart.
APPENDIX A
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