IMAGE LICENSE AGREEMENT
THIS AGREEMENT is entered into by and between The Xxxxxxx Co.
(hereinafter "Licensor"), with offices at 0000 Xxxx XxXxx Xxxx, Xxxx
Xxxxxxxxxx, Xxxxxxx 00000, and Xxxxxxx Xxxxxxxxxxxxx Ltd. (hereinafter
"Licensee"), with offices at 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx,
Xxx Xxxx 00000.
WITNESSETH:
WHEREAS, Licensor or its Related Company (as defined herein)
represents and warrants that it is the owner by assignment of the
trademarks IMAGE and/or IMAGE and design in the United States and
certain countries outside the United States, as well as applications
and registrations therefor, as set forth in Exhibit A, for use in
international class 3, including in connection with hair care products
(collectively the "Licensed Trademarks") (as defined herein); and
WHEREAS, Licensee or its Related Company desires to acquire an
exclusive license (except for Licensor and/or its Related Company) of
Licensor's rights in the Licensed Territory (as defined herein) to
use the Licensed Trademarks in the development, manufacture,
distribution, advertising, promotion and sale of the Licensed Products
(as defined herein); and
WHEREAS, Licensor or its Related Company represents and warrants
that it has the power and authority and desires to grant to Licensee
such license of Licensor's rights;
WHEREAS, in consideration of the license granted by Licensor to
Licensee herein, Licensee agrees to use its best efforts to obtain a
license or consent granting Licensor the right to use the xxxx IMAGE
on or in connection with hair care products, as well as fragrance and
cosmetic products ancillary to and for the purpose of promoting the
sale of Licensor's hair care products;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants of this Agreement, the parties hereto agree as follows:
1. DEFINITIONS
A. "Licensed Products" means eau de toilette, eau de cologne,
eau de parfum, parfum, body lotion, body talc and powder, bath and
shower gel, body oil, body soap, body wash, body splash, facial
moisturizer, facial wash, after shave lotion/balm, deodorants,
antiperspirants and such other products commonly sold in a full
fragrance line of goods, all bearing the xxxx or name Cerruti.
B. "Ancillary Hair Care Products" means hair care products that
are sold or given away in combination with the Licensed Products for
purposes of promoting the sale of the Licensed Products, all bearing
the xxxx or name Cerruti. In no event shall Ancillary Hair Care
Products include the sale of individual, regular sized hair care
products in retail or mass market channels of distribution or in
Licensee's premium lines of distribution such as Licensee's Red Door
salon.
C. "Licensed Trademarks" means the trademarks IMAGE or IMAGE and
design.
D. "Licensed Territory" means all countries and territories set
forth in Exhibit A, attached hereto and incorporated by reference
herein. "Licensed Territory" shall also be deemed to include all
countries and territories in which Licensor files a trademark
application to register the Licensed Trademarks prior to Licensee (or
Cerruti) having filed an application for the trademark CERRUTI IMAGE
in connection with the Licensed Products or Ancillary Hair Care
Products. Licensor shall notify Licensee once it has filed an
application for the Licensed Trademarks in countries or territories
not included in Exhibit A. Exhibit A will be modified from time to
time to include these additional countries or territories. The
ultimate rejection of Licensor's application or invalidation of
Licensor's registration in a particular country will not be grounds
for removing that country from Exhibit A.
E. "Related Company" means any parent, subsidiary or affiliate
of either Xxxxxxx Xxxxxxxxxxxxx Ltd. or The Xxxxxxx Co. or any entity
which, directly, or indirectly, controls, is controlled by or is under
common control with either Xxxxxxx Xxxxxxxxxxxxx Ltd. or The Xxxxxxx
Co. For purposes of this Agreement "control" shall mean the ownership
of more than 50% of the voting interests of an entity.
2. LICENSE; RESTRICTIONS; CONSENT OF LICENSEE
A. Licensor hereby grants to Licensee or its Related Company,
upon and subject to all the terms and conditions of this Agreement,
an exclusive (except for Licensor and/or its Related Company) license
of Licensor's right to use or reproduce the Licensed Trademarks
solely on the Licensed Products and Ancillary Hair Care Products and
in connection with the development, manufacture, sale, distribution
and advertising and promotion of the Licensed Products in the
Licensed Territory during the Term of this Agreement.
B. In no event shall Licensee be licensed to use the Licensed
Trademarks on any Licensed Products or Ancillary Hair Care Products
that do not also bear the xxxx or name CERRUTI.
C. In the event that a trademark registration or registrations
for the Licensed Trademarks in a country or countries in the Licensed
Territory do not cover all of the goods within the definition of
Licensed Products, Licensee may request Licensor to file a new
trademark application or applications covering additional goods
within the definition of Licensed Products, and Licensor agrees to
file such new trademark applications solely at Licensee's cost and
expense for the Licensed Trademarks in connection with the Licensed
Products in the Licensed Territory at the request of Licensee, in
those countries requested by Licensee. Licensor will file such
trademark applications, prosecute such applications to registration,
all at Licensee's cost and expense, and Licensee agrees to execute
whatever consents, authorizations, or licenses are reasonably
necessary to enable Licensor to obtain such trademark registrations
or protection of the IMAGE xxxx or design in the Licensed Territory.
D. In consideration of the license granted by Licensor to
Licensee herein, Licensee agrees to use its best efforts to obtain
an exclusive license(except for Licensee and its Related Company
and/or Cerruti) from Licensee, its Related Company and/or Cerruti
granting Licensor the right to use the xxxx IMAGE and/or IMAGE and
design in any country or territory where Licensee, its Related
Company and/or Cerruti claims superior rights to the xxxx IMAGE, on
or in connection with hair care products, as well as fragrance and
cosmetic products ancillary to and for the purpose of promoting the
sale of Licensor's hair care products. Licensee represents that it
has no knowledge of any prior rights granted by Licensee or any
Related Company and/or Cerruti that would prevent Licensor from
obtaining the license or consent set forth in this paragraph.
3. LICENSOR'S TRADEMARK RIGHTS
A. Licensee acknowledges that Licensor acquired the applications
and/or registrations of the Licensed Trademarks in the Licensed
Territory by assignment. Licensee shall not, at any time during or
after the effective Term of the Agreement, dispute or contest,
directly or indirectly, Licensor's right and title to the Licensed
Trademarks in the Licensed Territory. Licensor, however, makes no
representation or warranty with respect to (i) the validity or
enforceability of the applications and/or registrations for the
Licensed Trademarks; or (ii) Licensee's or its Related Company's right
or ability to use the Licensed Trademarks in any particular country or
territory of the Licensed Territory.
B. Licensee agrees that its use of the Licensed Trademarks in
the Licensed Territory inures to the benefit of Licensor and that the
Licensee shall not acquire any rights in the Licensed Trademarks as a
result of this license in the Licensed Territory.
4. SUBLICENSE; SUBDISTRIBUTORS; THIRD PARTY MANUFACTURERS
Licensee shall be prohibited from granting any sublicense of the
license granted herein without the written consent of Licensor;
provided however, that Licensee may grant a sublicense to any Related
Company of Licensee without the written consent of Licensor. Licensee
may have the Licensed Products and Ancillary Hair Care Products
manufactured by third parties as submanufacturers and distributed by
third parties as subdistributors.
5. EFFECTIVE DATE; TERM
This Agreement shall be effective as of December 15, 1998 (the
"Effective Date") and shall continue through December 31, 2003 (the
"Initial Term"), and shall automatically renew for successive five (5)
year periods without any additional payment other than that specified
in Paragraph 7 herein, unless sooner terminated by the parties
pursuant to the terms of this Agreement.
6. TERMINATION
A. Either party may terminate this Agreement on ninety (90)
days' written notice by notice to the other party of a material
breach of any provision of this Agreement by that other party, which
shall be effective unless the party alleged to be in breach shall
make its best efforts to cure said breach within ninety (90) days'
of receipt of the notice, or as soon as possible after receipt of
written notice of such breach from the non-breaching party.
B. Licensee shall have the right to terminate this Agreement at
any time on 30 days' written notice to Licensor, such termination to
become effective at the conclusion of such 30-day period.
7. COMPENSATION
In consideration of the license granted hereunder, Licensee
agrees to pay to Licensor the sum of $U.S. 350,000 (three hundred
and fifty thousand dollars) as a one-time non-refundable fully paid
license fee, to be paid by wire transfer in immediately available
funds within 106 days of the Effective Date of this Agreement.
Licensee shall not be entitled to a return in full or part of the
said sum of $U.S. 350,000 (three hundred and fifty thousand
dollars).
8. RECORD INSPECTION AND AUDIT; QUALITY CONTROL
A. Licensor shall have the right, upon reasonable notice (but
not more than twice per calendar year), to inspect Licensee's product
lists and other related documents showing the products on which
Licensee is using the Licensed Trademarks. In no event shall
Licensor have the right to examine information with respect to
Licensee's costs, pricing, formulas, or percentages of markup.
B. Licensor agrees to use its reasonable efforts to ensure that
the reputation, image and the goodwill of the Licensed Trademarks
retains its present standing. Licensee agrees that the Licensed
products shall be of a high quality, at least equal to comparable
fragrances and related products currently sold by Licensee, and
Licensee agrees to submit samples of the Licensed Products bearing
the Licensed Trademarks to Licensor from time to time at Licensor's
reasonable request to ensure that the Licensed Products meet the
standard set forth herein.
9. WARRANTIES AND OBLIGATIONS
A. Subject to paragraph 3 hereof, Licensor and/or its Related
Company has the right and power to grant the license of Licensor's
rights granted herein.
B. Licensee shall be solely responsible for the manufacture,
production, sale, and distribution of the Licensed Products and
Ancillary Hair Care Products and will bear all costs associated
therewith.
C. Upon termination of this Agreement for whatever reason, all
rights given to Licensee to use the Licensed Trademarks shall cease.
Licensee shall, however, be entitled to sell off its existing stock of
Licensed Products and Ancillary Hair Care Products for a period up to
eighteen (18) months following the date of termination and to use up
the existing materials for the manufacture of the Licensed Products
and Ancillary Hair Care Products and to sell off the so produced
Licensed Products within this sell-off period.
10. INFRINGEMENTS
The parties agree to inform each other about any and each violation or
infringement of the Licensed Trademarks in the Licensed Territory by
third parties which come to their knowledge. Licensor may take what
action, if any, it deems appropriate to protect its rights, at its own
expense, and Licensee agrees to cooperate with Licensor in such
action. If Licensor does not take any action, Licensee, at its own
expense, shall have the right, but not the obligation, to institute
trademark infringement, unfair competition and/or other actions
against any third party to protect the Licensed Trademarks, and
Licensor agrees to cooperate with Licensee in such action.
11. INDEMNITY
A. Licensee agrees to defend, indemnify, and hold Licensor, and
its officers, directors, agents and employees, harmless against all
costs, expenses, and losses (including reasonable attorneys' fees and
costs) incurred through claims of third parties against Licensor based
on the manufacture or sale of the Licensed Products bearing the
Licensed Trademarks in the Licensed Territory, including, but not
limited to, actions founded on product liability.
B. Licensor agrees to defend, indemnify, and hold Licensee, and
its officers, directors, agents and employees, harmless against all
costs, expenses, and losses (including reasonable attorneys' fees and
costs) resulting from any breach by Licensor of its representations
and warranties made in this Agreement.
12. INSURANCE
Licensee shall, throughout the Term of the Agreement, obtain and
maintain at its own cost and expense from a qualified insurance
company standard Product Liability Insurance naming Licensor, and its
officers, directors, employees, agents, and shareholders, as an
additional insured. Such policy shall provide protection against all
claims, demands and causes of action arising out of any defects or
failure to perform, alleged or otherwise, of the Licensed Products or
any material used in connection therewith or any use thereof. The
amount of coverage shall be $1,000,000 per occurrence/claim. The
policy shall provide for 30 days' notice to Licensor from the insurer
by registered or certified mail, return receipt requested, in the
event of any modification, cancellation, or termination thereof.
Licensee agrees to furnish Licensor a certificate of insurance
evidencing same within 30 days after execution of this Agreement and,
in no event, shall Licensee manufacture, distribute, or sell the
Licensed Products prior to receipt by Licensor of such evidence of
insurance.
13. NOTICES
A. Any notice required to be given pursuant to this Agreement
shall be in writing and mailed by certified or registered mail, return
receipt requested, or delivered by a national overnight express
service, to the addresses of the parties set forth on page I of this
Agreement.
B. Either party may change the address to which notice is to be
sent by written notice to the other party pursuant to the provisions
of this paragraph.
14. JURISDICTION AND DISPUTES
A. This Agreement shall be governed by the laws of the State of
New York applicable to contracts made and wholly performed therein.
B. In connection with any claim by Licensor against Licensee
(other than a claim for declaratory relief) which may arise under
this Agreement or any other agreement between Licensor and Licensee
or any amendment of, or supplement to, any of them, Licensee hereby
irrevocably submits to, consents to, and waives any objection to, the
jurisdiction of the courts of the State of Florida located in the
County of Broward or in the United States District Court for the
Southern District of Florida, or, at Licensor's option, to the courts
of any jurisdiction in which Licensee may be located, and waives any
objection to the laying of venue in such a court. Licensee admits
that any such dispute may be resolved at least as conveniently in
such a court as in any other court, and will not seek dismissal or a
change of venue on the ground that resolution of such an action in
any such court is not convenient or in the interests of justice.
C. In connection with any claim by Licensee against Licensor
(other than a claim for declaratory relief) which may arise under
this Agreement or any other agreement between Licensee and Licensor
or any amendment of, or supplement to, any of them, Licensor hereby
irrevocably submits to, consents to, and waives any objection to, the
jurisdiction of the courts of the State of New York located in the
County of New York or in the United States District Court for the
Southern District of New York, or, at Licensee's option, to the
courts of any jurisdiction in which Licensor may be located, and
waives any objection to the laying of venue in such a court.
Licensor admits that any such dispute may be resolved at least as
conveniently in such a court as in any other court, and will not seek
dismissal or a change of venue on the ground that resolution of such
an action in any such court is not convenient or in the interests of
justice.
15. AGREEMENT BINDING ON SUCCESSORS
This Agreement shall be binding on and shall inure to the
benefit of the parties hereto, and their heirs, administrators,
successors, and permitted assigns.
16. WAIVER
No waiver by either party of any default shall be deemed as a
waiver of any prior or subsequent default of the same or other
provisions of this Agreement.
17. SEVERABILITY
If any provision hereof is held invalid or unenforceable by a
court of competent jurisdiction, such invalidity shall not affect the
validity or operation of any other provision and such invalid
provision shall be deemed to be severed from the Agreement.
18. ASSIGNABILITY
This Agreement may not be transferred or assigned, in whole or in
part, by either party without the prior written consent of the other
party, except that either party shall have the right to transfer or
assign this Agreement to its Related Company, or any company to whom
either party is sold, or assets sold as part of a transfer of the
business.
19. RELATIONSHIP OF PARTIES
Nothing herein shall create, or be deemed to create, any
partnership, employer-employee, joint venture, or agency relationship
between the parties hereto.
20. INTEGRATION
This Agreement constitutes the entire understanding of the
parties, and revokes and supersedes all prior agreements between the
parties and is intended as a final expression of their Agreement. It
shall not be modified or amended except in writing signed by the
parties hereto and specifically referring to this Agreement. This
Agreement shall take precedence over any other documents that may be
in conflict therewith.
21. COUNTERPARTS; FACSIMILES.
This Agreement may be executed in any number of counterparts, each
of which shall be deemed an original. Facsimile copies hereof shall
be deemed to be originals.
IN WITNESS WHEREOF, the parties hereto, intending to be legally
bound hereby, have each caused to be affixed hereto its or his/her
hand and seal the day indicated.
THE XXXXXXX CO. XXXXXXX XXXXXXXXXXXXX LTD.
Title: President Title: Executive Vice President
Global Marketing
