INTELLECTUAL PROPERTY AGREEMENT
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THIS INTELLECTUAL PROPERTY AGREEMENT dated as of the first day of April, 2000 is
by and between XXXXXXX PURINA COMPANY, a corporation organized under the laws of
the State of Missouri, having its principal office at Xxxxxxxxxxxx Xxxxxx, Xx.
Xxxxx, Xxxxxxxx 00000 (hereinafter "Xxxxxxx") and ENERGIZER HOLDINGS, INC. a
corporation organized under the laws of the State of Missouri, having its
principal office at Xx. Xxxxx, Xxxxxxxx 00000 (hereinafter "Energizer").
WITNESSETH
WHEREAS, the parties have entered into an Agreement and Plan of Reorganization
of even date herewith; and
WHEREAS, pursuant to said Agreement and Plan of Reorganization, the parties have
agreed to divide certain intellectual property heretofore used in the business
of Xxxxxxx, Energizer, and/or its/their Affiliates;
NOW, THEREFORE, in consideration of the mutual covenants herein contained, and
for other good and valuable consideration, the parties agree as follows:
1. Definitions
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(a) Affiliates
Hereunder, an "Affiliate" of, or persons "Affiliated" with, a
specified person, is a person that directly, or indirectly through one or more
intermediaries, controls, is controlled by or is under common control with the
person specified.
(b) Battery Business
Hereunder, "Battery Business" shall mean a business or portion of a
business devoted to batteries and/or lighting products, including components
therefor and collateral goods related thereto.
(c) Closing
Hereunder "Closing" shall have the same meaning as "Distribution Date"
in the Agreement and Plan of Reorganization.
(d) Intellectual Property
Hereunder, "Intellectual Property" shall include, but not be limited
to, trade secrets, confidential information, registered and unregistered
trademarks, patents, trademarks, and service marks, service names, trade styles
and trade names, trade dress, statutory, common law and registered copyrights,
moral rights, rights of privacy and publicity, Internet or other electronic
communication addresses (e.g., "xxxxxxxxx.xxx"), 800 numbers (e.g.,
1-800-982-ENRS), business addresses (e.g., "Ever Ready House") of a proprietary
nature, other property commonly considered intellectual property, and the
goodwill of the business to the extent associated with any and all of the
foregoing.
(e) Newco
Hereunder, except as limited hereinbelow, "Newco" shall mean Energizer
and any and all subsidiaries and Affiliates of Energizer. "Newco" shall not,
however, include Xxxxxxx and any of its Affiliates whose shares will be owned,
whether directly or indirectly, by Xxxxxxx following Closing.
(f) Oldco
Hereunder, "Oldco" shall mean Xxxxxxx and any and all of its
Affiliates whose shares it will directly or indirectly own following Closing.
(g) Trademark
Hereinafter "Trademark" shall mean a word, symbol or device
registrable as a trademark or service xxxx.
(h) Trade Name
Hereinafter "Trade Name" shall mean corporate name and/or other
business name including, but not limited to, names of corporations, partnerships
and joint ventures, and domain names.
2. Intellectual Property
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(a) Assignments
(i) At Closing, or at such date or dates as Newco may elect, Oldco
will assign to Newco, all of Oldco's rights, if any, in Intellectual Property
Oldco owns which is exclusively associated with Oldco's and/or Newco's Battery
Business. Registrations and applications to register Trademarks to be so
assigned are listed on Schedule 2 (a)(i).
(ii) Anything in this Intellectual Property Agreement to the
contrary notwithstanding, Oldco will not assign to Newco any Intellectual
Property consisting of or containing the words, XXXXXXX, PURINA, CHOW,
CHECKERBOARD, or other word meaning "Checkerboard," the 9-Square or other
Checkerboard or Checkerband designs, any Intellectual Property consisting of or
containing any Intellectual Property now owned by any exclusively
non-Battery-Business Affiliate of Xxxxxxx, any Intellectual Property not
exclusively associated with Oldco's and/or Newco's Battery Business, or any
Intellectual Property confusingly similar to any of the Intellectual Property
comprehended by this Subparagraph 2(a)(ii). To the extent any such Intellectual
Property is currently owned by Newco, it will be assigned to Oldco or canceled
on or before Closing or at such date or dates thereafter as Oldco may elect.
(iii) All assignments contemplated by this Intellectual Property
Agreement will be on a quit claim basis. The assignee will assume all
limitations, undertakings and liabilities related to such assigned Intellectual
Property, including, but not limited to, limitations in contracts relating to
such Intellectual Property entered into by the assignor and binding upon its
successors and/or assigns and liability for any charge that any such
Intellectual Property infringes rights of any third party, without regard to
whether any such charge arises before or after Closing.
(iv) With respect to Intellectual Property to be assigned pursuant
to this Intellectual Property Agreement in cases where such property exists in
the name of a single owner in more than one country, the assignor will deliver
to the assignee at or before Closing a beneficial, multi-country assignment of
such Intellectual Property. The assignor shall thereafter promptly execute and
return to the assignee one or more country-specific assignments of such
Intellectual Property prepared by the assignee and delivered to the assignor for
such purpose.
(v) With respect to Intellectual Property to be assigned pursuant
to this Intellectual Property Agreement in cases where such property exists in
the name of a single owner in a single country, the assignor will deliver to the
assignee at or before Closing a country-specific assignment of such property in
recordable form.
(vi) Intellectual Property which is to be assigned hereunder, but
which is not assigned at Closing, will be maintained by its putative assignor
for a reasonable period of time for the benefit of the person to whom it is to
be assigned; however, the putative assignee shall reimburse the putative
assignor for all out-of-pocket expenses incurred for such maintenance.
(vii) Battery Business-related Intellectual Property whether or
not assigned hereunder remains the responsibility of Newco; and Newco retains
such Intellectual Property subject to all limitations, undertakings and
liabilities related to such retained Intellectual Property, including, but not
limited to, undertakings in contracts relating to such Intellectual Property and
liability for any charge that any such Intellectual Property infringes rights of
any third party, without regard to whether such charge arises before the
Closing.
(viii) Non-Battery Business-related Intellectual Property whether
or not assigned hereunder remains the responsibility of Oldco; and Oldco retains
such Intellectual Property subject to all limitations, undertakings and
liabilities related to such retained Intellectual Property, including, but not
limited to, undertakings in contracts relating to such Intellectual Property and
liability for any charge that any such Intellectual Property infringes the
rights of any third party, without regard to whether such charge arises before
the Closing.
(b) Cost of Recordation
Xxxxxxx shall pay the cost of preparing and recording country-specific
assignments contemplated by Subparagraph 2(a)(v) above. Xxxxxxx shall pay the
cost of preparing and recording country-specific assignments contemplated by
Subparagraph 2(a)(iv) above to the extent such cost relates to marks for which
the Oldco assignor is record owner at Closing. Otherwise, such costs shall be
borne by the assignee.
3. XXXXXXX and PURINA Trademarks
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(a) Name Changes
Anything in this Intellectual Property Agreement to the contrary
notwithstanding, and without limitation as to duration or territory, Newco
agrees not to use or register any Trademark, Trade Name, or other Intellectual
Property consisting of or containing the word XXXXXXX, PURINA, "Checkerboard,"
"Checkerboard Square," or any word, phrase, symbol or device confusingly similar
thereto in connection with any product, service or activity. To the extent a
Newco trade name consists of or contains the word "Xxxxxxx" or other word,
phrase, symbol, or device proscribed by this Subparagraph 3(a), Newco will
change such trade name on or before Closing to a name which does not include
such word, phrase symbol, or device.
(b) Cost of Name Changes
Xxxxxxx agrees to pay the cost of name changes required by Paragraph
3(a) above, including the cost of recording the name change against trademarks
for which the company whose name is changed is record owner.
4. Third-Party Agreements
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(a) To the extent assignable without third-party consent, and, if not,
to the extent such consent is obtained, at Closing, license agreements and other
contracts between Oldco and unaffiliated third parties, to the extent related to
the rights in Intellectual Property to be owned by Newco at Closing, will be
assigned from Oldco to Newco. Newco agrees to assume Oldco's obligations under
such agreements and to indemnify Oldco with respect to any of Newco's breaches
or failures to perform thereunder.
(b) To the extent assignable without third-party consent, and, if not,
to the extent such consent is obtained, at Closing, license agreements and other
contracts between Newco and unaffiliated third parties, to the extent related to
rights in Intellectual Property to be owned by Oldco at Closing, will be
assigned from Newco to Oldco. Oldco agrees to assume Newco's obligations under
such agreements and to indemnify Newco with respect to any of Oldco's breaches
or failures to perform thereunder.
5. Newco Phase-Out of Retained Marks
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Newco agrees to remove all Oldco Intellectual Property not assigned to
Newco as well as Intellectual Property assigned from Newco to Oldco, from
Newco's labels, packaging, advertising, signs, letterhead, business cards, and
other materials within six (6) months following Closing. Oldco agrees to remove
all Intellectual Property assigned to Newco from Oldco's labels, packaging,
advertising, signs, letterhead, business cards, and other materials within the
same six (6) month period.
6. Heritage
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Oldco, Newco and their successors and assigns, will each be allowed to
refer to its or their pre-spin-off heritage in good faith in truthful articles,
histories and the like to the extent such references do not express or imply a
continuing relationship between Oldco and Newco.
7. Good Faith
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The parties agree not to do indirectly, through subsidiaries, Affiliates or
otherwise, what they could not do directly under this Intellectual Property
Agreement.
8. Scope and Modification
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This Intellectual Property Agreement, including its schedules, sets forth
the entire agreement between the parties relating to the subject matter hereof
and it supersedes all prior agreements and understandings relating to such
subject matter. None of the terms of this Intellectual Property Agreement may
be waived or modified except as expressly agreed to, in writing, by both
parties.
9. Successors and Assigns
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This Intellectual Property Agreement shall be binding upon and inure to the
benefit of the parties and each of their successors and assigns.
10. Interpretation
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The section headings in this Intellectual Property Agreement are solely for
the purpose of reference, are not part of the agreement of the parties hereto,
and shall not in any way affect the meaning or interpretation of this
Intellectual Property Agreement.
11. Counterparts
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This Intellectual Property Agreement may be executed in two or more
counterparts, each of which may be deemed an original, but all of which together
shall constitute one and the same instrument.
12. Governing Law
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This Intellectual Property Agreement is made and entered into, and shall be
governed by and construed and interpreted in accordance with the laws of the
State of Missouri, United States of America, without regard to its conflicts of
laws principles, as to all matters, including those relating to validity,
construction, performance, effect and remedies under this Intellectual Property
Agreement. All matters relating to this Intellectual Property Agreement shall
be adjudicated exclusively in the courts of the State of Missouri located in St.
Louis, Missouri, or in the United States District Court for the Eastern District
of Missouri; and each party hereto consents to the exclusive jurisdiction and
venue of such courts for all such matters.
13. Amendment and Modification; Non-Waiver
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This Intellectual Property Agreement may be amended, modified or
supplemented, or rights, powers or options thereunder waived or impaired, only
by a written agreement signed by an officer of Xxxxxxx and Energizer. Neither
party shall be deemed to have waived or impaired any right, power or option
created or reserved by this Intellectual Property Agreement (including without
limitation, each party's right to demand compliance with every term herein, or
to declare any breach a default and exercise its rights in accordance with the
terms hereof) by virtue of: (i) any custom or practice of the parties at
variance with the terms hereof; (ii) any failure, refusal or neglect to exercise
any right hereunder, or to insist upon compliance with any term; (iii) any
waiver, forbearance, delay, failure or omission to exercise any right or option,
whether of the same, similar, or different natures, under this Intellectual
Property Agreement or in any other circumstances; or (iv) the acceptance by
either party of any payment or other consideration from the other following any
breach of this Intellectual Property Agreement. The rights and remedies set
forth in this Intellectual Property Agreement are in addition to any other
rights or remedies which may be granted by law.
14. Additional Documents
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The parties agree to execute such additional documents as may be reasonably
required to give effect to their undertakings in this Intellectual Property
Agreement.
IN WITNESS WHEREOF, the parties have executed this Intellectual Property
Agreement as of the date first above written.
XXXXXXX PURINA COMPANY ENERGIZER HOLDINGS, INC.
By:__________________________________ By:__________________________________
Title:_________________________________
Title:_________________________________
