EXHIBIT 10.11
TRADE NAME AND TRADEMARK LICENSE AGREEMENT
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Agreement made as of __________, 1999, by and between XXXX CORPORATION, a
Virginia corporation with offices at 000 Xxxxxxx 0, Xxxxxxx, Xxxxxxxxxxx 06856-
4500 ("Xxxx") and ARCH CHEMICALS, INC., a Virginia corporation with offices at
000 Xxxxxxx 0, Xxxxxxx, Xxxxxxxxxxx 00000 ("ARCH ").
In consideration of the mutual covenants and obligations hereunder, Olin
and ARCH (the "Parties" and each individually a "Party") agree as follows:
WHEREAS, Olin has transferred to ARCH the Arch Assets and the Arch Business
pursuant to the Distribution Agreement dated as of [ ] between Olin
and ARCH (the "Distribution Agreement"), in anticipation of the spin-off of ARCH
to the shareholders of Olin; and
WHEREAS, ARCH wishes to use, and Olin is willing to license ARCH to use,
certain trade names and trademarks associated with the Arch Business for the
limited purposes provided herein.
NOW, THEREFORE, Olin and ARCH agree as follows:
1 DEFINITIONS. Capitalized terms used herein without definitions shall have
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the respective meanings ascribed thereto in the Distribution Agreement
1.1 AFFILIATE. "Affiliate" shall mean, when used with respect to a
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specified Person, another Person that directly, or indirectly through one or
more intermediaries, Controls or is Controlled by or is under common Control
with the Person specified.
1.2 CONTROL. "Control" shall mean the possession, directly or indirectly,
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of the power to direct or cause the direction of the management or policies of a
Person, whether through the ownership of voting securities, by contract or
otherwise, and the terms "Controlling" and "Controlled" shall have meanings
correlative thereto.
1.3 PERSON. "Person" shall mean any natural person, corporation,
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business trust, joint venture, association, company, partnership or government,
or any agency or political sub-division thereof.
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1.4 TRADE NAMES. "Trade Names" shall mean all of, and "Trade Name" shall
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mean any of, the following: XXXX, XXXX CORPORATION, XXXX MICROELECTRONIC
MATERIALS, and XXXX CHEMICALS.
1.5 TRADEMARKS. "Trademarks" shall mean any or all of the trademarks
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listed in Appendix A.
2. LICENSE. Olin hereby grants to ARCH and its Subsidiaries companies a
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worldwide, nonexclusive, royalty-free license to use the Trade Names and
Trademarks in accordance with the terms of this Agreement.
3. LIMITED USE.
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3.1 ARCH shall use the Trade Names and Trademarks only to the extent
reasonably necessary:
(i) To inform its customers and the public that ARCH includes the
Arch Business and products formerly conducted or sold by Olin under
the Trade Names and/or the Trademarks. In all uses of the Trade Names,
ARCH shall ensure that the Trade Name appear in a less prominent
position than its current business name, and appears only to inform
the public (e.g., "ARCH Chemicals, Inc., formerly Xxxx Microelectronic
Materials").
(ii) For purposes of operating under permits, licenses, and other
governmental authorizations granted to Olin and assigned to ARCH
(collectively "Permits"), and to provide ARCH the time necessary to
amend the existing Permits or file applications for new Permits in
ARCH's own name, and to continue required reporting or product
delivery under the Trade Name(s) until the earlier of the effective
date of the amended or new permits or the expiration of this
Agreement.
(iii) For completion of contracts and other agreements entered into by
Olin prior to the Distribution Date under the Trade Names.
(iv) To use up stocks of packaging and forms purchased by Olin and
any of its subsidiaries prior to the Distribution Date and transferred
to ARCH and any of its Subsidiaries.
3.2 ARCH shall not use any of the Trade Names and/or Trademarks in any
manner that suggests an agency, partnership, or joint venture relationship with
Olin.
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3.3 Olin reserves all rights in the Trade Names and/or Trademarks not
expressly granted to ARCH herein.
3.4 Olin agrees not to use any of the Trademarks or to renew the
registration of any Trademarks which include as a part thereof, any trademark
transferred to ARCH as of the Distribution Date pursuant to a certain
Intellectual Property Transfer and License Agreement between ARCH and Olin of
even date herewith. Olin further agrees not to use any of the Trademarks or to
renew the registration of any Trademarks with respect to products for swimming
pool, spa or hot tub applications.
4. REASONABLE EXTENSION. Olin shall not withhold its approval of any
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extension of time that ARCH may reasonably request to continue to use any of the
Trade Names or Trademarks, so long as (i) in Olin's reasonable judgment, ARCH is
diligently proceeding in good faith to eliminate its use of any of the Trade
Names and Trademarks, and (ii) in no event shall any such extension exceed 18
months following the Distribution Date.
5. QUALITY CONTROL. Upon Olin's request, ARCH will provide Olin with samples
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of each use of a Trade Name or Trademark for Olin's review and approval. ARCH
shall immediately correct any deficiencies noted by Olin for failure to comply
with this Agreement. The products sold by ARCH using a Trademark shall be of at
least the same quality as those sold by Olin under such Trademark prior to this
Agreement.
6. NO WARRANTY. Olin is licensing the Trade Names and Trademarks to ARCH "AS
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IS." Olin makes no representations or warranties as to the Trade Names or
Trademarks, and hereby excludes all warranties, express or implied.
7. OWNERSHIP. ARCH acknowledges that Olin is the owner of the Trade Names
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and Trademarks and owns all rights in the Trade Names and Trademarks, except for
trademarks transferred by Olin to ARCH on the Distribution Date. ARCH shall
take no action during or following the term of this Agreement contrary to, or in
conflict with, Olin's rights in the Trade Names and Trademarks. Olin shall take
no action during or following the term of this Agreement contrary to, or in
conflict with, ARCH's rights in any trademark transferred by Olin to ARCH as of
the Distribution Date.
8. INDEMNIFICATION. ARCH agrees to defend, indemnify, and hold Olin harmless
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from and against all losses, expenses (including reasonable legal fees and
costs), damages, injuries, liabilities, and claims arising out of or relating to
ARCH's use of any of the Trade Names and Trademarks.
9. TERM AND TERMINATION.
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9.1 This Agreement shall be effective for one (1) year beginning on the
Distribution Date, unless sooner terminated as provided herein.
9.2 If either Party commits a material breach of this Agreement, then the
non-breaching Party may give notice thereof in writing to the breaching
Party. Upon receipt of such notice, the breaching Party shall have thirty
(30) days from the date of receipt of such notice to cure such material
breach. If the alleged material breach is not cured within such thirty
(30) day period, the non-breaching Party may terminate this Agreement by
sending a written notice of termination to the breaching Party. In such
event, neither Party waives any rights to recover damages from such
termination.
9.3 Immediately upon expiration or termination of this Agreement, ARCH
will cease and desist from all uses of any of the Trade Names and
Trademarks except for those trademarks transferred by Olin to ARCH as of
the Distribution Date.
9.4 Each Party's obligations under Articles 6, 7, 8 and 9 shall survive
expiration and termination of this Agreement.
10. FURTHER ASSURANCES. Each Party will execute all documents reasonably
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requested by the other to effect any of the provisions of this Agreement.
11. NOTICES. Notices or requests to be given or made hereunder shall be
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delivered in person or sent by registered mail or telefax or telex acknowledged
by the operator of the addressee at the following addresses or other addresses
that each Party may from time to time designate.
(a) for ARCH:
ARCH CHEMICALS, INC.
000 Xxxxxxx 0
Xxxxxxx, Xxxxxxxxxxx 00000
ATTENTION: General Counsel
Tel:
Fax:
(b) for OLIN:
XXXX CORPORATION
000 Xxxxxxx 0
Xxxxxxx, Xxxxxxxxxxx 00000-0000
Attention: Corporate Secretary
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Tel: (000) 000-0000
Fax: (000) 000-0000
12. ASSIGNMENT
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12.1.1 - The Agreement shall not be assigned by either Party to a third party
without the prior written consent of the other Party and any other assignment
shall be void.
12.1.2 - Notwithstanding the foregoing, this Agreement may be assigned to an
AFFILIATE OF A PARTY, OR A SUCCESSOR IN THE BUSINESS TO WHICH THE AGREEMENT
RELATES, OR A SUCCESSOR IN ALL OR SUBSTANTIALLY ALL OF THE ASSETS OF EITHER
PARTY, PROVIDED THAT THE SUCCESSOR AGREES IN WRITING TO ACCEPT THE RIGHTS AND TO
BE BOUND BY THE OBLIGATIONS OF THE ASSIGNING PARTY. THE PARTIES AGREE TO
GUARANTEE THE PERFORMANCE OF THEIR AFFILIATES UNDER THIS AGREEMENT.
12.2 CHANGE OF CONTROL
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For purposes of Section 12.1.2 the following shall be deemed an assignment by a
Party of this AGREEMENT WHICH SHALL REQUIRE THE WRITTEN ASSUMPTION OF
OBLIGATIONS PROVIDED FOR THEREIN:
12.2.1: a Person (or two or more Persons acting as a "person"
within the meaning of Section 13(d)(3) of the Securities Exchange Act
of 1934, as amended (the "1934 Act")), other than such Party, or an
employee benefit plan (or related trust) of such Party, becomes the
"beneficial owner" (as defined in Rule 13d-3 under the 0000 Xxx) of
15% or more of the then outstanding voting stock of such Party, or
during any period of two consecutive years, individuals who at the
beginning of such period constitute the Board of Directors of such
Party (together with any new director whose election by the Board or
whose nomination for election by such Party's shareholders was
approved by a vote of at least two-thirds of the directors then still
in office who either were directors at the beginning of such period
or whose election or nomination for election was previously so
approved) cease for any reason to constitute a majority of the new
directors then in office, and/or
12.2.2: any consolidation or merger of such Party in which such
Party is not the continuing or surviving corporation or pursuant to
which shares of such Party's common stock would be converted into
cash, securities or other property other than a merger in which
holders of such Party's common stock immediately prior to the merger
will
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have the same proportionate ownership of common stock of the
surviving corporation immediately after the merger, and/or
12.2.3: any sale, lease, exchange or other transfer (in one
transaction or a series of related transactions) of all or
substantially all the assets of such Party, and/or
12.2.4: adoption of any plan or proposal for the liquidation or
dissolution of such Party.
12.3 VIOLATION. Any assignment made in violation of this Article 12
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shall be considered void.
13. GENERAL PROVISIONS.
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13.1 ENTIRE AGREEMENT. This Agreement embodies the entire understanding
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of the Parties. No amendment or modification of the Agreement shall be valid or
binding upon the Parties unless it is in writing and signed by the respective
duly authorized officers of the Parties.
13.2 PARTIES ARE INDEPENDENT. This Agreement does not and shall not be
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deemed to make either Party the agent, legal representative or partner of the
other Party for any purpose whatsoever, and neither Party shall have the right
or authority to assume or create any obligation or responsibility whatsoever,
expressed or implied, on behalf of or in the name of the other Party or to bind
the other Party in any respect whatsoever.
13.3 WAIVER. The failure of either Party at any time to require
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performance by the other Party of any provision hereof shall in no way affect
the full right to require such performance within a reasonable time or
thereafter the performance of that and all other provisions, nor shall the
waiver of any succeeding breach of such provision or any other provision operate
as a waiver of the provision itself.
13.4 SEVERABILITY. The invalidity or unenforceability of any one or more
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of the provisions of This Agreement shall not affect the validity or
enforceability of the remaining provisions.
13.5 GOVERNING LAW. This Agreement shall be construed and governed, in
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all respects, by the law of the State of Connecticut applicable to contracts
made and to be performed in that state without reference to any provisions
relating to conflicts of law.
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13.6 JURISDICTION. Each Party hereby irrevocably and unconditionally
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submits, for itself and its property, to the nonexclusive jurisdiction of any
Connecticut State court or Federal court of the United States of America sitting
anywhere within a radius of 50 miles from Norwalk, Connecticut, and any
appellate court from any thereof, in any action or proceeding arising out of or
relating to this Agreement, or for recognition or enforcement of any judgment,
and each of the Parties hereby irrevocably and unconditionally agrees that all
claims in respect of any such action or proceeding may be heard and determined
in such Connecticut State court or, to the extent permitted by law, in such
Federal court. Each of the Parties hereto agrees that a final judgment in any
such action or proceeding shall be conclusive and may be enforced in other
jurisdictions by suit on the judgment or in any other manner provided by law.
13.7 VENUE. Each Party hereby irrevocably and unconditionally waives, to
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the fullest extent it may legally and effectively do so, any objection that it
may now or hereafter have to the laying of venue of any suit, action or
proceeding arising out of or relating to this Agreement in any Connecticut State
court or such Federal court located anywhere within a radius of fifty (50) miles
from Norwalk, Connecticut. Each of the Parties hereto hereby irrevocably waives,
to the fullest extent permitted by law, the defense of an inconvenient forum to
the maintenance of such action or proceeding in any such court.
13.8 SERVICE OF PROCESS. Each Party to this Agreement irrevocably
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consents to service of process in the manner provided for notices in Article 11
hereof. Nothing in this Agreement will affect the right of any Party to this
Agreement to serve process in any other manner permitted by law.
13.9 COUNTERPARTS. This Agreement may be executed in any number of
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counterparts, each of which shall be deemed an original, but all of this shall
constitute one and the same instrument
14. SETTLEMENT OF DISPUTES. In the event of any disputes arising out of or in
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connection with the execution, interpretation, performance or nonperformance of
this Agreement, ARCH and Olin shall use the following procedure prior to either
Party pursuing other available legal remedies:
14.1 ALTERNATIVE DISPUTE RESOLUTION. Upon signing of this Agreement each
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Party will designate one representative ("Representative") for the purpose of
resolving disputes which may arise from time to time. Upon a dispute arising,
either or both Representatives may request in writing a conference with the
other. If so requested, the conference shall occur within ten (10) days of the
initial written request and shall be held via telephone or at Norwalk,
Connecticut, or
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elsewhere, at the option of the Representatives. The purpose and scope of the
conference shall be limited to issues related to resolving the dispute. At the
conference, each Representative, or his or her designee, shall use best efforts
to attempt to resolve the dispute. If the dispute has not been settled within
thirty (30) days of the first meeting of the Representatives, the Parties shall
establish a Management Appeal Board ("MAB") within ten (10) days of receipt of a
request by either Party to set up an MAB. The MAB shall consist of two (2)
members of each Party's respective management. The President of OLIN shall
appoint two members to represent OLIN and the President of ARCH shall appoint
two members to represent ARCH. The sole purpose of MAB shall be to resolve any
dispute over which the Representatives failed to resolve. The MAB members shall
be persons other than the Representatives. The MAB shall meet at Norwalk,
Connecticut or otherwise confer to resolve the dispute by good faith
negotiations, which may include presentations by the Representatives or others.
14.2 ARBITRATION. In the event the Parties are unable to resolve their
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disputes after availing themselves of the processes set forth in Section 14.1
above for a period of ninety (90) days, such disputes, shall be solely and
finally settled by three arbitrators in accordance with the Commercial
Arbitration Rules of the AAA (the "Arbitration Rules"). The Party electing
arbitration shall so notify the other Party in writing in accordance with the
Arbitration Rules, and such notice shall be accompanied by the name of the
arbitrator selected by the Party serving the notice. The second arbitrator shall
be chosen by the other Party, and a neutral arbitrator shall be chosen by the
two arbitrators so selected. If a Party fails to select an arbitrator or to
advise the other Party of its selection within thirty (30) days after receipt by
such a Party of the notice of the intent to arbitrate, the second arbitrator
shall be selected by the AAA. If the third arbitrator shall not have been
selected within thirty (30) days after the selection of the second arbitrator,
the appointment of the third arbitrator shall be made by the AAA. All such
proceedings shall be conducted in New York, New York. The arbitrator shall make
detailed findings of fact and law in writing in support of the decision of the
arbitrator panel, and is empowered to award reimbursement of attorneys' fees and
other costs of arbitration to the prevailing Party, in such manner as the
arbitrator panel shall deem appropriate. The provisions of this Section 14.2
shall not be deemed to preclude any Party hereto from seeking preliminary
injunctive relief to protect or enforce its rights hereunder, or to prohibit any
court from making preliminary findings of fact in connection with granting or
denying such preliminary injunctive relief, or to preclude any Party hereto from
seeking permanent injunctive or other equitable relief after and in accordance
with the decision of the arbitrator panel. Whether any claim or controversy is
arbitrable or litigable shall be determined solely by the arbitrator panel
pursuant to the provisions of this Section 14.2. Any monetary award of the
arbitration panel shall include interest from the date of any breach or any
violation of this Agreement. The arbitrators shall fix an appropriate rate of
interest from the date of the breach or other violation to the date when the
award is paid in full. The Parties agree that judgment on
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the arbitration award may be entered in any court having jurisdiction over the
Parties or their assets.
14.3 CONTINUING OBLIGATIONS. It is expressly agreed that the failure of
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the Parties to resolve a dispute on any issue to be resolved hereunder shall not
relieve either Party from any obligation set forth in this Agreement. In
addition, notwithstanding the pendency of any such dispute, neither Party will
be excused of its obligations hereunder to cooperate with the other to
effectuate the purposes of this Agreement.
IN WITNESS WHEREOF, each Party has caused its duly authorized
representative to execute this Agreement as of the date first set forth above.
XXXX CORPORATION ARCH CHEMICALS, INC.
By______________ By___________________
Name: Name:
Title: Title:
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APPENDIX A
TRADEMARKS
CARECAR
BROMOLIN
XXXX
XXXX (WITH A SPLIT O)
OLIN (WITH A SPLIT O) AND DESIGN
OLIN DURATION
XXXX XXXX
XXXX HYPOCAL (STYLIZED)
OLIN PH PLUS
ISOLIN (STYLIZED WITH A SPLIT O)
OLIN HTH SUPER SHOCK AND DESIGN (WITH A SPLIT O) PISCINE ET LOISIRS (STYLIZED)
PHOSPHOLIN
THERMOLIN
HTH OLIN
HTH (SUB) OLIN (WITH SPLIT O) S.O.S. PISCINAS AND DESIGN
OLIFILM
OLIMINE
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