LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is made and entered
into as of ________June 19, 1997, by and between FOOD LION, INC.,
a corporation organized and existing under the laws of the State
of North Carolina, United States of America, having its principal
offices at Xxxxxxxx Road, Salisbury, North Carolina ("Food Lion")
and Kash n' Xxxxx, Inc., a corporation organized and existing
under the laws of the State of Delaware, having its principal
offices at 0000 Xxxxxx Xxxx, Xxxxx, Xxxxxxx ("Kash n' Xxxxx")
(hereinafter referred to as "Licensors"), and ETABLISSEMENTS
DELHAIZE FRERES ET CIE "LE LION" S.A., a corporation organized
under the laws of Belgium, having its principal office at rue
Xxxxxxxx 00, 0000 Xxxxxxxx, Xxxxxxx (hereinafter referred to as
"Licensee").
RECITALS
WHEREAS, Licensors are engaged primarily in the operation of
supermarkets in the United States of America;
WHEREAS, Licensee, through itself and its subsidiaries, is
engaged primarily in the operation of supermarkets throughout the
world;
WHEREAS, Food Lion, Inc. is the sole proprietor of the
trademark "Food Lion," registered in the United States of America
under Registration Nos. 1,864,491, 1,560,829, 1,555,907,
1,562,117, 1,554,929, 1,552,177, 1,554,968, 1,534,561, 1,534,160,
1,532,732, 1,533,907, 1,557,579, 1,557,558, 1,558,705, 1,427,887,
together with the goodwill associated therewith (hereinafter
collectively referred to as the "Trademark");
WHEREAS, Kash n' Xxxxx, Inc. is an indirect wholly-owned
subsidiary of Food Lion, Inc. and is the company under which the
Trademark is registered in Thailand;
WHEREAS, Licensee desires to obtain from Licensors and
Licensors desire to grant to Licensee the right in Thailand to
import, manufacture, use and sell goods bearing the Trademark, to
use the Trademark in Thailand in displays, signs, advertising and
promotion of goods bearing the Trademark, and to have
manufactured for it goods bearing the Trademark to be used or
sold in Thailand; and
WHEREAS, Licensee further desires to obtain from Licensors
and Licensors further desire to grant to Licensee, the right to
grant sublicenses to third parties to import, manufacture, use
and sell goods in Thailand bearing the Trademark, to use the
Trademark in displays, signs, advertising and promotion of goods
bearing the Trademark and to have manufactured for it goods
bearing the Trademark to be used or sold in Thailand and to
provide services in connection with the Trademark in Thailand.
NOW, THEREFORE, in consideration of and subject to the
premises and the mutual agreements, terms and conditions herein
contained, the benefits to be derived therefrom, including the
expansion of the goodwill associated with the Trademark, the
mutual cooperation and assistance between the parties, as well as
Licensee's agreement to allow Food Lion to assign to an indirect
wholly-owned subsidiary Food Lion's rights under that certain
License Agreement between the parties having an effective date of
January 1, 1983, and other good and valuable consideration, the
receipt and the sufficiency of which are hereby acknowledged,
Licensors and Licensee agree as follows:
ARTICLE I
THE TRADEMARK
1.1 Registration. In order to protect the rights of the
Licensors in the Trademark the parties agree that Kash n' Xxxxx
alone shall have the right to register the Trademark in Thailand.
1.2 Goods and Services. The goods and services identified
in the application or applications to register the Trademark in
Thailand may include, but are not limited to, those goods and
services recited in United States Trademark Registration Nos.
1,864,491, 1,560,829, 1,555,907, 1,562,117, 1,554,929, 1,552,177,
1,554,968, 1,534,561, 1,534,160, 1,532,732, 1,533,907, 1,557,579,
1,557,558, 1,558,705, 1,427,887 for the Trademark.
ARTICLE II
LICENSE GRANT
2.1 Grant. Licensors grant to Licensee the non-exclusive
right, license and privilege in Thailand to import, manufacture,
use, sell, distribute and advertise goods bearing the Trademark,
use the Trademark in displays, signs, advertising and promotion
of goods to be used or sold in Thailand, and to have manufactured
for it goods bearing the Trademark to be used or sold in Thailand
and to provide services in connection with the Trademark in
Thailand, subject to the terms of this License Agreement.
2.2 Sublicenses. Licensor grants to Licensee the right to
grant one or more sublicenses to joint venture entities in which
Licensee has at least a direct or indirect 20% equity interest
(hereinafter referred to as "Sublicensees") organized under the
laws of Thailand to:
(a) import, manufacture, use, sell, distribute and
advertise in Thailand goods bearing the Trademark;
(b) use the Trademark in displays, signs, advertising and
promotion of goods to be used or sold in Thailand;
(c) have goods manufactured for the Sublicensees bearing
the Trademark; and
(d) provide services in connection with the Trademark in
Thailand.
All sublicenses pursuant to this section 2.2 shall be subject to
the terms of a License Agreement between the Sublicensees and
Licensee pursuant to which the Sublicensees agree to maintain the
quality standards set forth in this Agreement for goods used,
sold, distributed or advertised by the Sublicensees in Thailand
bearing the Trademark and for services provided in connection
with the Trademark.
2.3 Ownership and Goodwill. It is the intent of Licensors
and Licensee that nothing contained in this License Agreement
shall be deemed in any way to confer on Licensee any proprietary
interest in the Trademark. Licensee acknowledges and agrees that
Licensors retain full and exclusive ownership of the Trademark
and that neither Licensee nor any of its Sublicensees shall
acquire any rights in the Trademark other than those rights
expressly granted by the Licensors pursuant to and during the
term of this Agreement, and that use of the Trademark by Licensee
and its Sublicensees inures to the benefit of Licensors.
Licensee further acknowledges Licensors' exclusive ownership of,
the validity of, and Licensors' exclusive right to use the
Trademark. Licensee agrees to cooperate fully with Licensors in
securing, registering, maintaining and evidencing the Trademark,
and to execute and deliver any and all agreements, instruments
and other documents necessary or appropriate to secure, register,
maintain and evidence such Trademark. Further, Licensee agrees
not to contest, impugn, dispute or challenge, or to assist in any
challenge during the term of this License Agreement, including
any extension thereof, or at any time thereafter, Licensors'
exclusive ownership of, validity of and Licensors' exclusive
right (subject to Licensees rights hereunder) to use the
Trademark.
2.4 Similar Trademark. Licensee agrees that neither during
the term of this Agreement nor at any time thereafter shall
Licensee ever use or register or cause or permit any of its
Sublicensees to use or register any trademark or service xxxx
that is identical or confusingly similar to the Trademark
(including its phonetic equivalents) without the prior written
consent of Licensors.
ARTICLE III
QUALITY CONTROL
3.1 Quality. Licensee acknowledges that Licensors, by
reason of their maintenance of high standards of quality of goods
and services at supermarkets and retail food outlets operated by
it, have established over a period of years a reputation which is
of great importance to Licensors. Accordingly, in the event that
Licensee shall not maintain and operate its supermarkets in
Thailand in accordance with Licensors' standards or maintain the
quality of goods bearing the Trademark, Licensors may terminate
this License Agreement as hereinafter provided. Licensee agrees
that all advertising, publicity, and promotion of goods bearing
the Trademark shall be in good taste and comport with the high
standards established by Licensors. Licensee further agrees that
it will cause to appear whenever proper or necessary and in the
correct manner and position or place, notices of registration in
connection with any and all uses of the Trademark.
3.2 Inspection. Licensee shall permit Licensors or their
authorized representatives to inspect the goods and monitor the
services in conjunction with which the Trademark is used and the
methods of manufacturing the goods upon the premises of Licensee
or of any person, firm, or corporation manufacturing any of the
goods for Licensee, at all reasonable times to ensure that the
required quality of the goods and services is maintained. In the
event that Licensors shall be of the opinion that the quality of
the goods bearing the Trademark or the services provided in
connection with the Trademark fail to meet the quality standards
set forth in the prior sentence, Licensors shall notify Licensee
in writing (hereinafter referred to as the "notification"), and
the notification shall specify the basis for such opinion in
sufficient detail so as to enable Licensee to determine the
objectionable practice or practices. Upon receiving the
notification, Licensee shall forthwith make such changes in its
methods of operation and the promotion of its affairs as shall be
necessary to remedy the matters specified in the notification..
If Licensee shall fail to remedy the matters specified in the
notification within thirty 30 days following the date of the
notification, then this License Agreement shall be terminated.
3.3 Sublicensee Quality Control. Licensee agrees to ensure
that the Sublicensees maintain the quality of the goods bearing
the Trademark and the services provided in connection with the
Trademark. If any one or more of the Sublicensees' goods or
services fail to meet the quality standards set forth in Sections
3.1 or 3.2, Licensee agrees to send such Sublicensees with the
notification provided for in Section 3.2 so that such
Sublicensees can remedy the failure to meet the quality
standards. Such Sublicensees shall forthwith make such changes in
its methods of operation and the promotion of its affairs as
shall be necessary to remedy the matters specified in the
notification. If such Sublicensees shall fail to remedy the
matters specified in the notification within thirty 30 days
following the date of the notification, then the Licensee agrees
to terminate such Sublicensees' sublicenses as appropriate.
3.4 Samples of Goods. From time to time at Licensors'
reasonable request, Licensee agrees to submit to Licensors
samples of the goods in conjunction with which the Trademark is
used in Thailand by Licensee and the Sublicensees.
3.5 Advertising, Promotional or Other Materials. Licensors
may from time to time require that Licensee furnish Licensors
with samples of advertising, promotional or other materials
including the Trademark that are to be used or being used by
Licensee and any of its Sublicensees in connection with the
advertising, promotion and sale of goods bearing the Trademark in
Thailand. Licensee agrees that it and its Sublicensees will use
the Trademark in a reasonable manner required by Licensors in
order to identify Licensor's rights in the Trademark. .
ARTICLE IV
TERM AND TERMINATION
4.1 Term. The term of this License Agreement shall be
ten (10) years from the date hereof and shall be automatically
extended for successive additional terms of five (5) years each,
unless terminated pursuant to Section 4.2 hereof.
4.2 Termination. This Agreement may be terminated by the
parties hereto:
(a) By mutual written consent of Licensors and Licensee;
(b) By Licensors or Licensee if any Governmental Authority
shall have issued an injunction or other order permanently
restraining, enjoining or otherwise prohibiting Licensee from
performing according to the terms of this Agreement;
(c) By Licensors, in their sole discretion, effective
thirty (30) days after giving written notice to Licensee to such
effect, whenever Licensee shall do anything, or permit anything
to be done, whether by action or inaction, contrary to any
covenant or agreement required to be performed by Licensee under
the terms of this License Agreement and shall fail within said
thirty (30) days after written notice by Licensors to Licensee
specifying the same to remedy the same; or
(d) By Licensors, at their sole discretion, immediately
upon written notice to Licensee, if: Licensee is adjudicated
bankrupt or insolvent, or enters into a compromise arrangement
with its creditors, or if a receiver or sequestrator is appointed
to manage the affairs of Licensee.
4.3 Sublicense Termination. All sublicense agreements
granted by Licensee pursuant to this Agreement shall be
automatically terminated upon the expiration or termination of
this Agreement.
4.4 Cessation of Rights. Upon expiration or termination of
this Agreement for any reason, all rights granted to Licensee
hereunder shall cease, and Licensee shall immediately:
(1) Discontinue all use of the Trademark and any term
confusingly similar thereto;
(2) Cooperate with Licensors to apply to the appropriate
authorities to cancel recording of this Agreement from all
government records;
(3) Take down all signs displaying the Trademark; and
(4) Destroy or return to Licensors all printed materials
bearing the Trademark and any other materials containing,
displaying or using the Trademark.
4.5 Cessation of Sublicensee's Rights. Upon expiration or
termination of any sublicense granted by Licensee pursuant to
this Agreement for any reason, all rights granted to the
Sublicensee shall cease twelve (12) months from the date of such
expiration or termination, and Licensee shall ensure that such
Sublicensee shall by the end of such twelve (12) month period:
(1) Discontinue all use of the Trademark and any term
confusingly similar thereto;
(2) Cooperate with Licensee to apply to the appropriate
authorities to cancel the recording of the relevant Sublicense
Agreement from all government records;
(3) Take down all signs displaying the Trademark; and
(4) Destroy or return to Licensee all printed materials
bearing the Trademark and any other materials containing,
displaying or using the Trademark.
ARTICLE V
INDEMNIFICATION
5.1 Licensee's Agreement to Indemnify. Licensee agrees
that it is wholly responsible for all goods and services offered
or sold by it, and that Licensors shall have no liability for or
in connection with any goods or services offered, sold or
otherwise provided by Licensee in connection with the Trademark.
Subject to the terms of this Agreement, Licensee shall indemnify,
defend and hold harmless Licensors, their subsidiaries and their
respective officers, directors, shareholders, employees and
agents, from and against any and all claims, demands, losses,
assessments, fines, penalties, liabilities, damages, reasonable
expenses of investigations, reasonable fees of experts,
reasonable disbursements and other reasonable costs (including
reasonable attorneys' fees) (collectively referred to herein as
"Damages") asserted against, resulting to, imposed upon or
incurred by any of them, which arise from and to the extent they
are attributable to, the use by Licensee or its Sublicensees of
the Trademark in Thailand, the offer, sale or provision of any
goods or services in connection with the Trademark in Thailand, a
claim of defects in the materials, manufacture, production,
bottling or packaging of any of the goods manufactured, produced,
bottled, packaged, sold or distributed by or for Licensee or its
Sublicensees under the Trademark in Thailand, including without
limitation, claims or actions for negligence, breach of contract,
strict liability and patent, trademark or copyright infringement.
Licensor will give Licensee immediate notice of any such action,
suit or proceeding and afford Licensee the opportunity to defend
the same at Licensee's expense.
5.2 Limitation on Damages. LICENSORS SHALL NOT BE LIABLE
FOR ANY CONTINGENT, INCIDENTAL OR CONSEQUENTIAL DAMAGE OR OTHER
DAMAGE OR EXPENSE ASSOCIATED WITH THE TRADEMARK LICENSED TO
LICENSEE PURSUANT TO THIS AGREEMENT FOR ANY REASON WHATSOEVER.
ARTICLE VI
INFRINGEMENT
6.1 Third Party Infringement. Licensee agrees, promptly
upon learning thereof, to notify Licensor in writing of the name,
address, and to furnish such other pertinent information as may
be available, of any third party who may be infringing or
otherwise violating any of the Licensors' rights in and to the
Trademark, or of any third party who makes a claim that use of
the Trademark infringes upon or otherwise violates any property
or rights of any nature of said third party. Licensee agrees to
cooperate in all necessary respects as required by Licensors in
any action which Licensors deem advisable or necessary to protect
Licensors' rights in the Trademark or to contest a claim by a
third party that use of the Trademark infringes upon or otherwise
violates any property or rights of any nature of said third
party. However, Licensors shall be under no obligation to
prosecute infringers of the Trademark. In any case in which
Licensors determine not to do so, Licensee may do so with the
prior written permission of and on behalf of Licensors but at
Licensee's own expense and subject to whatever conditions
Licensors may impose.
6.2 Reimbursement. Licensee shall reimburse Licensors for
any expenses incurred by Licensors in defending any claims of
third parties concerning the use of the Trademark by Licensee or
Sublicensees, goods manufactured, assembled or sold by Licensee
or Sublicensees or the services provided by Licensee or
Sublicensees and for any liability paid by Licensors under order
of any court or in good faith, in consultation with Licensee, to
third parties with respect to goods manufactured, assembled or
sold by Licensee or Sublicensees or services provided by Licensee
or Sublicensees.
ARTICLE VII
GOVERNMENTAL APPROVALS AND LAWS
7.1 Compliance With Laws. The parties expressly agree
that, in carrying out the terms of this Agreement, they shall not
take or cause or present any of their respective subsidiaries to
take any act inconsistent with the requirements of any Laws in
Thailand or of any other applicable jurisdiction as the same may
be in effect from time to time.
7.2 Governmental Approval. Licensee and Licensors
acknowledge that this Agreement may be required to be approved
and registered by the Trademark Office of Thailand to be
effective. The parties agree to cooperate fully in obtaining
such approval and registration of this Agreement and in
demonstrating to the Trademark Office of Thailand the
satisfaction of any conditions required to maintain the approval
and registration of this Agreement. Neither Licensee nor
Licensors shall submit anything to the Trademark Office of
Thailand or any Governmental Authority of any other applicable
jurisdiction in connection with the approval process without the
express consent of the other party. Any and all expenses
associated with obtaining the approval and registration of this
Agreement shall be paid directly by Licensee.
ARTICLE VIII
MISCELLANEOUS
8.1 Notices. All reports, approvals, and notices required
or permitted by this Agreement to be given to a party (each a
"Notice") shall be given in writing, by personal delivery,
telecopy or overnight courier, to the party concerned at its
address as set forth below (or at such other address as a party
may specify by written notice pursuant to this Section 8.1 to the
other parties).
If to Licensors: FOOD LION, INC.
KASH n' XXXXX, INC.
Xxxxxxxx Road
Salisbury, North Carolina
Fax: 704/000-0000
Attn: R. Xxxxxxx XxXxxxxxx
with a copy to: Akin, Gump, Strauss, Xxxxx & Xxxx, L.L.P.
0000 Xxx Xxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Fax: 202/000-0000
Attn: Xxxxx X. Xxxxxxxxxx
If to Licensee: Pierre-Xxxxxx Xxxxxxx
ETABLISSEMENTS DELHAIZE FRERES
ET CIE "LE LION" X.X
xxx Xxxxxxxx 00, 0000 Xxxxxxxx, Xxxxxxx
All Notices shall be deemed effective, delivered and received
(i) if given by personal delivery, when actually delivered and
signed for, (ii) if given by telecopy, when such telecopy is
transmitted to the telecopy number specified above and receipt
thereof is confirmed; or (iii) if given by overnight courier, on
the second Business Day immediately following the day on which
such Notice is delivered to a reputable overnight courier
service.
8.2 Assignment. This Agreement may be assigned by
Licensors, however, except as otherwise set forth in this
Agreement, neither this Agreement nor the rights granted
hereunder may be assigned or transferred by Licensee (by
operation of law or otherwise) without the prior written consent
of Licensors and any attempted assignment, delegation or transfer
in Violation hereof, shall be void and of no force and effect.
8.3 Entire Agreement. This Agreement contains the entire
understanding and agreement between the parties with respect to
the subject matter thereof and supersedes all prior oral and
written understandings and agreements as well as all prior
negotiations, representations, and proposals relating thereto.
Any alteration in the provisions of this Agreement will only be
valid between the parties upon written confirmation by both
parties stating the commencement date for such alteration.
8.4 Expenses. All expenses incurred by a party or on its
behalf in connection with this Agreement or related to the
preparation, negotiation, execution and performance of this
Agreement, shall be borne by the party incurring such expenses.
8.5 Waivers; Amendments. Any waiver by any party of a
breach of any provision of this Agreement shall not operate as or
be construed to be a waiver of any other breach of such provision
or of any breach of any other provision of this Agreement. The
failure of a party to insist upon strict adherence to any term of
this Agreement on one or more occasions shall not be considered a
waiver or deprive that party of the right thereafter to insist
upon strict adherence to that term or any other term of this
Agreement. Any waiver must be in writing by the waiving party.
This Agreement may only be amended with the written consent of
Licensors and Licensee.
8.6 Reformation and Severability. Whenever possible, each
provision of this Agreement will be interpreted in such a manner
as to be effective and valid under applicable Law, but if any
provision of this Agreement is held to be illegal, invalid or
unenforceable under present or future Laws effective during the
term hereof, then (i) in lieu of such illegal, invalid or
unenforceable provision, there shall be added automatically as a
part of this Agreement a provision as similar in terms to such
illegal, invalid or unenforceable provision as may be possible
and be legal, valid and enforceable, and (ii) the legality,
validity and enforceability of the remaining provisions of this
Agreement shall not in any way be affected or impaired thereby
provided that such invalidity of any clause does not
substantially adversely affect the interest of either party.
8.7 Governing Law; Venue. This Agreement shall be governed
by and construed in accordance with the internal laws of the
State of North Carolina, regardless of the laws that might
otherwise govern under applicable principles of conflicts of laws
thereof. Subject to Section 8.13, each of the parties hereto
irrevocably and unconditionally submits to the exclusive
jurisdiction of any North Carolina Federal court, and any
appellate court from any thereof, in any action or proceeding
arising out of or relating to this Agreement, and hereby
irrevocably and unconditionally agrees that all claims in respect
of such action or proceeding may be heard and determined in such
North Carolina State court or, to the extent permitted by law, in
such North Carolina Federal court. Each of the parties hereby
irrevocably and unconditionally waives, to the fullest extent it
may effectively do so, any defense of any inconvenient forum or
improper venue to the maintenance of such action or proceeding in
any such court and any right of jurisdiction on account of the
place of residence or domicile. Each of the parties irrevocably
and unconditionally consents to the service of any and all
process and in any such action or proceeding in such North
Carolina State or North Carolina Federal court by the sending of
copies of such process to each of the parties in Section 8.1.
Each of the parties agrees that the 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.
8.8 Waiver of Immunity. To the extent that a party hereto
or any of its property is or becomes entitled at any time to any
immunity on the grounds of sovereignty or otherwise from any
legal action, suit or proceeding, from set-off or counterclaim,
from the jurisdiction and/or venue of any competent court, from
service of process, from attachment prior to judgment, from
attachment in aid of execution, or from execution prior to
judgment, enforcement, or other legal process in any
jurisdiction, such party, for itself and its property, does
hereby irrevocably and unconditionally waive, and agree not to
plead or claim, any such immunity with respect to its
obligations, liabilities or any other matter under or arising out
of or in connection with this Agreement or the subject matter
hereof. Such agreement shall be irrevocable and not subject to
withdrawal in any and all jurisdictions.
8.9 Counterparts. This Agreement may be executed in
counterparts, each of which shall be deemed an original, but all
of which together shall constitute one and the same instrument.
8.10 Headings. The headings in this Agreement are solely
for convenience of reference and shall be given no effect in the
construction or interpretation of this Agreement.
8.11 Language of the Agreement. This Agreement is being
executed in the English language, which will be controlling over
any translations into another language. If any translation of
this Agreement or such materials is required by any court having
jurisdiction or by any other tribunal or arbitration panel,
Licensee will pay the costs and expenses connected with such
translation.
8.12 Income Taxes. Any tax, duty or impost imposed because
of this Agreement, shall be borne and discharged by Licensee.
8.13 Arbitration. All disputes arising in connection with
this Agreement shall be finally settled by arbitration pursuant
to the rules of arbitration of the International Chamber of
Commerce and judgment upon the award rendered may be entered in
any court having jurisdiction or application may be made to such
court for a judicial acceptance of the award and an order of
enforcement, as the case may be.
IN WITNESS WHEREOF, the parties hereto have executed this
License Agreement as of the date and year first above written.
FOOD LION, INC.
By: /s/ R. Xxxxxxx XxXxxxxxx
R. Xxxxxxx XxXxxxxxx
Senior Vice President
KASH n' XXXXX, INC.
By: /s/ R. Xxxxxxx XxXxxxxxx
R. Xxxxxxx XxXxxxxxx
Executive Vice President
ETABLISSEMENTS DELHAIZE FRERES
ET CIE "LE LION" S.A.
By: /s/ G. de Vaucleroy
G. de Vaucleroy
Chief Executive Officer
/s/ P. O. Beckers
P. O. Beckers
Director
Executive Vice President of the
Excutive Committee
President of the International Management
Committee
