EXHIBIT 10.53
LICENSE AGREEMENT
Parties:
The Company organized and existing under the laws of the Belgium, GC Europe
N.V., with registered office at Xxxxxxxxxxxxxxx 00, 0000, Xxxxxx, Xxxxxxx,
represented for the purposes of this Agreement by Xx. Xxxxxx Xxxxxxxx, duly
empowered by the Articles of Association, hereinafter referred to as GC E:
And
The company organized and existing under the laws of Belgium, D.M.D.S., Ltd.,
with registered office at Xxxxxxxx Xxxxx, Xxxxxx, XX0X 0XX, Xxxxxx Xxxxxxx. The
Belgium office is a registrated company according to Belgium law. For the
purpose of this Agreement, Xxx XxXxxxxx represents DMDS Ltd., duly and empowered
by Articles of Association; hereinafter referred to as DMDS;
WHEREAS, DMDS has developed a high output curing device based on light emitting
diode (LED) technology for the dental field.
WHEREAS, this technology was presented to GC E during a presentation made by Xx.
Xxxxx at the GC headquarters in Japan.
WHEREAS, GC E desires to obtain a device based on the LED technology and DMDS
desires to be the Original Equipment Manufacturer.
WHEREAS, GC E and DMDS have signed a Secrecy Agreement.
WHEREAS, GC E has been informed that SED-R is a French company, owned by Xx.
Xxxxxxxx Xxxxx, which will be manufacturing the DMDS light for shipments
worldwide and SED-R has expressed its willingness to manufacture an OEM light
for GC E, on the condition that DMDS and GC E reach an agreement.
NOW THEREFORE, in consideration of the foregoing premises, and the mutual
covenants contained herein, the parties hereto agree as follows:
ARTICLE 1. PRODUCT/LICENSE
A. DMDS shall supply GC E an exclusive license for its patented Light Emitting
Diode Technology (LED).
In case of a need of further OEM supplies GC E enjoys a most favorable
nation clause.
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B. DMDS, through its production subcontractor SED-R, shall customize the
exterior of the PRODUCT so that it is clearly identifiable as a product of
GC E.
C. GC E is entitled to have all future improvements, features, upgrades,
additions, etc. to the DMDS technology.
D. DMDS acknowledges that it has been contracted for this specific task, and
that it shall report all findings and make all recommendations directly to
the management of XX X.
ARTICLE 2. OBJECT - TERRITORY
A. DMDS hereby grants GC E the worldwide exclusive license for the sale and
distribution of the PRODUCT listed in Article 1. GC E is entitled to
distribute also through other GC organizations worldwide.
ARTICLE 3. STATUS OF GC E
A. GC E shall sell and distribute the PRODUCT under his own name and for his
own account. It shall carry on his business as and represent to be an
independent trader, both in respect of DMDS and in his relations with third
parties and customers.
B. GC E shall not use DMDS's trademark, unless it is clearly indicated that
DMDS is sole proprietor of said trademark.
C. The parties have expressly agreed that GC E's trademark and trade name,
together with all rights incident thereto and the customers and goodwill,
shall remain the exclusive property of XX X. DMDS is not allowed to adopt
for his own use and/or to cause the registration of trademarks or trade
names which are identical or similar to GC E's trademark and trade name.
D. DMDS warrants that to its best of knowledge the patents it owns do not
infringe on any other existing patents.
E. Should any other party outside this Agreement infringe on the DMDS-Light
Technology patents, then DMDS will vigorously defend itself against such
infringements and keep GC E informed about activity and progress in such
case. If DMDS fails to defend the license for sales drops to 50% of the
original value.
F. 1. At present, DMDS owns the following patents (see appendix I)
2. At present, DMDS has filed the following patents applications (see
appendix I)
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DMDS will do best efforts to get applications granted in major markets as
soon as possible.
ARTICLE 4. PRICING & TERMS/CONDITIONS OF BUY
A. DMDS shall supply GC E with the LICENSE sale and distribution at the
following price per unit: 150 (ONE HUNDRED FIFTY) UNITED STATES DOLLARS.
B. The following conditions apply:
- All licenses to be paid in US Dollars.
- All units payable to DMDS's bank account within 30 days upon receipt of
the ordered units.
- An adequate amount of demonstration units given away F.O.C. by GC E are
license free.
C. GC E will, upon signing this agreement, transfer an upfront payment to the
DMDS bank account covering the first 6 months of the agreement. This payment
will total $750,000, (seven hundred and fifty thousand dollars), being 5,000
licenses at $150.
ARTICLE 5. ORDERS AND DELIVERIES
A. Binding Force
All orders placed by GC E are binding if and when confirmed or accepted in
writing by DMDS or when partially executed by the latter.
B. Forecast (3 Months' Advance Notice
At the beginning of every yearly quarter, GC E shall provide DMDS with a
report stating the expected sales volume for the following three monthly
period and shall, as far as possible, place his orders in accordance with
said report.
C. Minimum Purchases (DMDS's right of termination)
GC E shall purchase a MINIMUM OF 25,000 (TWENTY FIVE THOUSAND) LICENSES
OVER THE PERIOD OF THE CONTRACT. Should GC E fail to meet this obligation,
DMDS shall have the right to terminate the Agreement for breach of
contract on GC E's part, by registered letter with a notice period of 3
months.
However, three fifths of the minimum agreed licenses (being 15,000
licenses) ARE CONSIDERED TO BE A NON-REVOCABLE ORDER and GC E commits to
the purchase of these licenses.
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In case GC E exceeds the number of licenses (25,000) for the exceeding
number the license fee will be newly determined.
D. In case of serious obstacles in the market, which do not fall under the
responsibility of GC E, which influences the potential sales significantly
the number of minimum licenses will be re-negotiated.
E. If SED-R fails to produce forecasted quantities of GC E for more than 3
months, DMDS has the obligation to take over the responsibility for
manufacturing. In case DMDS also fails to comply with adequate deliveries
after another 3 months, GC E has the right to terminate the supply agreement
immediate or to take over manufacturing by themselves. In such case, SED-R
and DMDS are obliged to supply the relevant technical assistance for
transfer of manufacturing. Also in this case, according to the possible
delays in marketing the minimum purchase, license has to be newly adjusted.
ARTICLE 6. WARRANTIES
A. Warranties from DMDS's conformity of the PRODUCT
DMDS warrants that the PRODUCT shall be suitable for its intended use and shall
meet prevailing standards applicable to such a PRODUCT. DMDS shall extend a 1
(one) year warranty on parts and labor with respect to the PRODUCT. Additional
further details will be supplied in a supply agreement between GC E and SED-R.
B. The supply agreement will contain an appendix on agreed technical
specifications set up between DMDS, GC E and SED-R.
ARTICLE 7. EXEMPTIONS
1. DMDS and all of its affiliates will market its Light Emitting Diode
Technology, Apollo e light (PRODUCT) through all of its existing channels of
distribution.
2. DMDS and all of its affiliates will continue to market its WAVELIGHT e
light, through all of its existing channels of distribution.
3. DMDS and all of its affiliates will not pursue new OEM agreements with other
dental manufacturers for this PRODUCT, with the exception of existing
agreements such as: Plasma X (Polyflash unit), Xxxxx Xxxxxx (EasyCure unit)
and WAVElight (WAVElight unit).
ARTICLE 8. RESELLERS/DISTRIBUTORS
GC E is allowed to appoint Resellers/Distributors in view of the sale and
distribution of the PRODUCT within the Territory.
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ARTICLE 9. DURATION & TERMINATION OF THE AGREEMENT
A. This Agreement is entered into for an initial term of 5 years and is
automatically renewed for another 3 years if not terminated with a notice
period of 6 months prior to the end of initial term.
B. No Notice Period - Breach of Contract
Clause B of this Article in no way affects or limits the right to
terminate the Agreement in the event of breach of contract. A serious
breach of contract is considered to be any serious infringement of one or
more of the provisions of this agreement that is likely to have a
detrimental effect upon the results which the other party is entitled to
expect from the normal performance of the Agreement.
C. Registered Letter
Termination of the Agreement must in all cases be notified by registered
letter.
ARTICLE 10. NO INTERDEPENDENCE OF INDIVIDUAL CLAUSES
If one or several of the clauses of this Agreement should prove invalid or
unenforceable, this shall in no way affect the validity of the remaining
clauses.
ARTICLE 11. NOTIFICATIONS
Every notification effected under the provisions of this Agreement must be given
in writing and shall:
a. either be delivered personally,
b. or be transmitted by fax or by similar means of electronic mail,
c. or be forwarded by registered mail, to the addressee, at the address as
indicated in the preamble to this Agreement or communicated to the notifying
party if the recipient should have changed his address during the currency
of this Agreement. All such notifications shall be deemed duly served and
notified (barring proof of prior receipt):
a. if personally delivered, on the date of service;
b. if sent by fax, 2 hours after transmittal;
c. if forwarded by mail, as specified above, 5 days after the posting date
ARTICLE 12. ASSIGNMENTS
Written Authorization from GC E
This Agreement shall be binding upon the successors and beneficiaries of each of
the parties. DMDS may not assign or transfer this Agreement without written
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authorization of XX X. GC E shall not withhold such authorization without due
motive.
ARTICLE 13. ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties and
supersedes and replaces any and all prior verbal, written or tacit agreements or
arrangements between the parties.
ARTICLE 14. JURISDICTION - APPLICABLE LAW
A. All disputes resulting from or in relation with this Agreement must be
settled by the Courts having jurisdiction in Belgium.
B. This Agreement is ruled by and shall be construed according to the laws of
Belgium.
ARTICLE 15: EFFECTIVE DATE
THIS AGREEMENT SHALL BE EFFECTIVE AS OF THE DATE OF EXECUTION.
ARTICLE 16. OUTSOURCED PRODUCTION
GC E has been informed and has accepted that this Agreement will be executed by
DMDS, but that the final unit will be produced by SED-R, Xxxxxxx xx Xxxxxxxxx,
00000, Xxxxxx X'Xxxx, France. GC E will enter into a separate manufacturing
agreement with SED-R, outlining all manufacturing specifics. Based upon coming
to such an agreement, SED-R has expressed its willingness to produce the PRODUCT
for a price of 850 (eight hundred fifty) US dollars.
Made in two counterparts, each party acknowledging having received a duly signed
copy.
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IN WITNESS WHEREOF, the parties have executed this Agreement by their duly
authorized representatives on the dates below written.
On behalf of On behalf of
GC Europe N.V. D.M.D.S., Ltd.
Date: June 27, 2000 Date: June 27, 2000
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/s/ Xx. Xxxxxx Xxxxxxxx /s/ Guy De Vreese
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Xx. Xxxxxx Xxxxxxxx Guy De Vreese
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