Exhibit C
TRANSITION AGREEMENT
This Transition Agreement ("Agreement") is entered into this 5th day of
October, 2004 among E. I. du Pont de Nemours and Company, a Delaware corporation
("DuPont"), DuPont Photomasks, Inc., a Delaware corporation (the "Company"), and
Toppan Printing Co., Ltd., a Japanese corporation ("Toppan").
RECITALS
WHEREAS, concurrently with the execution of this Agreement, the Company
and Toppan are entering into an Agreement and Plan of Merger dated October 5,
2004 (the "Merger Agreement"), pursuant to which a wholly owned subsidiary of
Toppan will merge with and into the Company and the Company will survive as a
wholly owned subsidiary of Toppan (the "Merger");
WHEREAS, DuPont and the Company are parties to that certain Corporate
Tradename and Trademark Agreement entered into May 7, 1998, as amended (the
"Trademark Agreement");
WHEREAS, pursuant to the Trademark Agreement, DuPont granted (i) to the
Company the non-assignable and non-exclusive license to use the tradename
"DuPont" (the "Licensed Tradename") as part of the Company's Corporate Name (as
such term is defined in the Trademark Agreement), or as part of the Corporate
Name of an Affiliated Company (as such term is defined in the Trademark
Agreement), and (ii) to the Company and its Affiliated Companies the
non-exclusive and non-transferable right to use the trademark DuPont in Oval
(the "Licensed Trademark") as part of its corporate logotype and for the sale of
products manufactured by the Company, subject to the limitations set forth in
the Trademark Agreement;
WHEREAS, under Section 5.1(c) of the Trademark Agreement, upon
consummation of the transactions contemplated by the Merger Agreement, DuPont
will have the right to terminate the Trademark Agreement; and
WHEREAS, in order to induce Toppan to enter into the Merger Agreement,
DuPont, the Company and Toppan desire to enter into this Agreement.
NOW, THEREFORE, the parties agree as follows:
1. Transition Period. Conditioned upon the effectiveness of the Merger in
accordance with the terms of the Merger Agreement (the "Effective Date"), DuPont
agrees to waive its right to terminate the Trademark Agreement during the period
commencing on the Effective Date and ending on the six-month anniversary of the
Effective Date (the "Transition Period").
2. Termination Date of Trademark Agreement. Notwithstanding Article 6 of the
Trademark Agreement, the parties agree that the Company and its Affiliated
Companies shall have no further right to the use of the Licensed Tradename or
Licensed Trademark from and after the end of the Transition Period and the
Trademark Agreement shall terminate as of such date. No notice of termination of
the Trademark Agreement or of the Company's right to use the Licensed Tradename
or Licensed Trademark shall be required for such termination. Toppan and the
Company shall provide written notice to DuPont promptly following completion of
the
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Transition Period, notifying DuPont of such completion and confirming that
the Company has no further right to use the Licensed Tradename or Licensed
Trademark and that the Company has (a) changed its tradename so that the word
"DuPont" is omitted therefrom, (b) ceased using the word "DuPont" or any word
similar thereto as, or as part of, its Corporate Name or in any other manner
whatsoever, and (c) ceased using the Licensed Trademark.
3. Indemnity. Toppan shall indemnify and hold DuPont harmless from any and all
losses, costs and liability (including, without limitation, attorney's fees,
settlements, judgments and arbitration awards) that arise directly or indirectly
from, or relate directly or indirectly to, the Company's use of the Licensed
Tradename and Licensed Trademark following the Effective Date. This provision
shall survive the termination of this Agreement.
4. Effectiveness. This Agreement shall be of no force or effect unless and until
the execution of the Merger Agreement by each of the parties thereto.
5. Representations and Warranties. Each party represents and warrants to the
other parties that:
(a) this Agreement has been duly executed and delivered by such party
and constitutes the legal, valid and binding obligation of the party,
enforceable in accordance with its terms;
(b) such party has the full right, power and authority to enter into
this Agreement and to perform its obligations under this Agreement;
(c) no consent, approval, authorization or order of, or filing with,
any governmental agency or body or any court is required to be obtained or made
by such party for the consummation of the transactions contemplated by this
Agreement; and
(d) the execution, delivery and performance of this Agreement and the
consummation of the transactions herein contemplated will not violate or
conflict with, result in the loss of any material benefit under, constitute a
default (or an event which, with notice or lapse of time, or both, would
constitute a default) under, result in the termination of or a right of
termination or cancellation under, or accelerate the performance required by
such party under any material agreement or instrument to which it is a party or
by which it is bound, or result in the creation of any lien upon any of the
properties or other assets of such party, except for such violations, conflicts,
losses, defaults, terminations, cancellations or liens as, individually or in
the aggregate, would not reasonably be expected to have a material adverse
effect on the business, assets, results of operations or financial condition of
the party.
6. Specific Performance. The parties hereto acknowledge that the parties will be
irreparably harmed and that there will be no adequate remedy at law for a
violation of any of the covenants or agreements set forth herein. Therefore, it
is agreed that, in addition to any other remedies that may be available to any
party upon any such violation, such party shall have the right to enforce such
covenants and agreements by specific performance, injunctive relief or by any
other means available to such party at law or in equity.
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7. Notices. All notices, requests and other communications to any party
hereunder shall be in writing and shall be deemed given if delivered personally,
facsimiled (which is confirmed) or sent by overnight courier (providing proof of
delivery) to the parties at the following addresses:
If to DuPont, to:
E. I. du Pont de Nemours and Company
0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Treasurer
Facsimile: (000)000-0000
with a copy (which shall not constitute notice) to:
E. I. du Pont de Nemours and Company
0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Corporate Secretary
Facsimile: (000) 000-0000
If to the Company, to:
DuPont Photomasks, Inc.
000 Xxx Xxxxxxxx Xxxxxxxxx
Xxxxx Xxxx, Xxxxx 00000
Attention: General Counsel
Facsimile: (000) 000-0000
with a copy (which shall not constitute notice) to:
Xxxxxx & Xxxxxx L.L.P.
Terrace 7
0000 Xxx Xxxxxxx, Xxxxx 000
Xxxxxx, Xxxxx 00000
Attention: X. Xxxxx Xxx, III
Facsimile: 512.236.3216
If to Toppan, to:
Toppan Printing Co., Ltd.
1 Xxxxx Xxxxx-xxx,
Xxxxxxx-xx, Xxxxx 000-0000
Xxxxx
Attention: General Manager of Legal Department
Facsimile: x00.0.0000.0000
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with copy (which shall not constitute notice) to:
Squire, Xxxxxxx & Xxxxxxx L.L.P.
Ebisu Prime Squire Tower, 16F
0-0-00 Xxxxx
Xxxxxxx-xx, Xxxxx 000-0000
Xxxxx
Attention: Xxxxxxx X. Xxxxxxxx
Facsimile: x00.0.0000.0000
or such other address or facsimile number as such party may hereafter specify
for the purpose by notice to the other parties hereto. All such notices,
requests and other communications shall be deemed received on the date of
receipt by the recipient thereof if received prior to 5:00 P.M. in the place of
receipt and such day is a business day in the place of receipt. Otherwise, any
such notice, request or communication shall be deemed not to have been received
until the next succeeding business day in the place of receipt.
8. Amendment and Waiver. This Agreement may not be changed orally and no waiver
of compliance with any provision or condition hereof shall be effective unless
evidenced by an instrument in writing duly executed by the proper party.
Compliance with any of the covenants or conditions contained in this Agreement
may be waived only by written instrument executed by the party entitled to
enforce such compliance. No such waiver, however, shall be deemed to constitute
the waiver of any such covenant or condition in any other circumstance or the
waiver of any other covenant or condition.
9. Assignment. This Agreement shall not be assigned by operation of law or
otherwise without the prior written consent of each of the parties.
10. Parties in Interest. This Agreement shall be binding upon and inure solely
to the benefit of each party hereto and their respective successors and assigns,
and nothing in this Agreement, express or implied, is intended to or shall
confer upon any other person any right, benefit or remedy of any nature
whatsoever under or by reason of this Agreement.
11. Counterparts. This Agreement may be executed in one or more counterparts,
each of which shall be deemed to be an original, but all of which together shall
constitute one and the same instrument.
12. Governing Law; Waiver of Jury Trial. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware, without regard
to the principles of conflicts of laws thereof. Each of the parties hereto
hereby irrevocably waives any and all rights to trial by jury in any legal
proceeding arising out of or related to this Agreement.
13. Entire Agreement; Severability. This Agreement (i) constitutes the entire
agreement and supersedes all prior agreements and understandings, both written
and oral, among the parties, or any of them, with respect to the subject matter
hereof, and (ii) is not intended to confer upon any other persons any rights or
remedies hereunder. In case any provision in this Agreement shall be
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invalid, illegal or unenforceable, the validity, legality and enforceability of
the remaining provisions shall not in any way be affected or impaired thereby.
[SIGNATURE PAGE FOLLOWS]
Execution Copy
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed and delivered as of the date first written above.
E. I. du Pont de Nemours and Company
By: /s/ XXXX X. XXXXXX
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Name: Xxxx X. Xxxxxx
Title: Vice President and Treasurer
DuPont Photomasks, Inc.
By: /s/ XXXXXXXX XXXXXX
-------------------------------
Name: Xxxxxxxx Xxxxxx
Title: Chief Executive Officer
Toppan Printing Co., Ltd.
By: /s/ XXXXX XXXXXX
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Name: Xxxxx Xxxxxx
Title: President and CEO
[SIGNATURE PAGE TO TRANSITION AGREEMENT]
