ASSIGNMENT
Ex. 10.69
This Assignment is made | ||
by Rockford Corporation of Tempe, Arizona and Rockford Europe Vertriebs GmbH (together referred to as “Rockford”) as assignors | ||
and | ||
Fünfundsiebzigste TVG Vermögensverwaltungsgesellschaft mbH (in future: Maxxsonics Europe GmbH, referred to as “Maxxsonics Europe GmbH”) as assignee | ||
pursuant to the Agreement between Xxxxxx Xxxx in his capacity as insolvency trustee for MB Quart GmbH and Rockford of 11 March 2005 (the “March 11 Agreement”) as changed and amended on 22 September, 2005 | ||
for good and valuable consideration receipt of which is hereby confirmed |
1. | Assignment. Rockford hereby assigns to Maxxsoncis Europe GmbH: |
a. | All right, title and interest Rockford may have in the “MB Quart” name and xxxx and the MB Quart Ancillary Marks worldwide, any registrations or applications for registration thereof, including without limitation the MB Quart Registrations, and the goodwill of the business in connection with the “MB Quart” name and xxxx and the MB Quart Ancillary Marks as contained in but not limited to the Marks contained in Schedule 1 (collectively the “MB Quart Marks”); | ||
b. | All right, title and interest of whatever nature in every country in the world in copyrights in instructions, manuals, packages, advertisement, marketing materials, websites, and any other original work that relates or refers to any product marketed under the MB Quart Marks (together: the “Marketing Material”), except for the Marketing Material held in stock by Rockford relating to the Rockford Inventory. (The copyright rights referred to in this Section will be referred to as the “Copyrights”); | ||
c. | All right, title and interest of whatever nature, including without limitation, patents, patent rights, trade secrets, inventions, industrial designs, and maskworks and the right to apply for patents, industrial designs and maskworks protection, on all acoustic products and components of acoustic products designed, developed, engineered or invented by MB Quart or for MB Quart (together, the “Patent Rights” and, when excluding the Excluded Patent Rights, the “MB Quart Patent Rights”), except this transfer does not include, and Rockford retains all rights with respect to (a) |
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Patent Rights developed by Rockford or its agents exclusively for Rockford and (b) patent rights relating to amplifiers and subwoofers in the car audio field (the “Excluded Patent Rights”). For the avoidance of doubt the parties agree that all the technology used for the production of speakers sold under the label MB Quart at MB Quart’s facility in Obrigheim, Germany, or at any other location except Rockford facilities in the US has belonged and will belong to MB Quart and that all the technology for subwoofers and amplifiers for the car audio field has belonged and will belong to Rockford; |
d. | Rockford’s entire right, title and interest in and to any and all claims and demands it may have, at law or in equity, for past infringement of the MB Quart Marks, the Copyrights, and the MB Quart Patent Rights. | ||
e. | In the case of each assignment set forth above, Rockford will retain the right to use the MB Quart Marks, the Copyrights, and the MB Quart Patent Rights in North America solely in connection with (a) sales of the Rockford Inventory (as defined in the March 11 Agreement), which Rockford will have the right to complete in the time and manner it determines is necessary, and (b) warranty and repair service for MB Quart products sold by Rockford. |
2. | Rockford Warranties. Rockford warrants to Maxxsonics Europe GmbH as follows: |
a. Rockford has the right, power and authority to enter into this Agreement and to perform all
terms of this Agreement, including without limitation, the assignment of its rights, title and
interest in the MB Quart Marks, the Copyrights, and the MB Quart Patent Rights and the Rockford MB
Quart Claims.
b. Rockford has not registered, or filed an application to register, and does not claim an
interest, direct or indirect, in any trademark registration or application to register a trademark
anywhere in the world for the MB Quart Marks, or any xxxx confusingly similar thereto, except for
the MB Quart Registrations.
4. Maxxsonics Europe GmbH’s Obligation. Unless Rockford and Maxxsonics Europe GmbH
reach other agreements for the handling of MB Quart warranty claims, Maxxsonics Europe GmbH shall
deliver MB Quart products to Rockford at reasonable prices (no more than cost plus 20%) to put
Rockford in a position to fulfill its warranty obligations from the sale of MB Quart products built
in Obrigheim.
5. Termination period for the use of the Oracle system. According Section 3 d of the
March 11 Agreement Maxxsonics Europe GmbH has the right to use the Oracle Computer System until
December 31, 2005 at the costs specified in Section 3 d of the March 11 Agreement. Rockford and
Maxxsonics Europe GmbH agree that Maxxsonics Europe GmbH has the right to terminate this use
earlier than December 31, 2005, by giving seven days notice. Maxxsonics Europe GmbH acknowledges
that such services will terminate no later than December 31, 2005, and will not be available after
that date.
6. Miscellaneous. This Assignment shall be signed in two counterparts and one
original shall be delivered to Rockford and Maxxsonics Europe GmbH respectively.
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IN WITNESS WHEREOF, the parties, intending to be bound, have by their duly authorized
representatives executed this Agreement as of the dates written below.
Rockford Corporation |
Rockford Europe Vertriebs GmbH |
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(“Rockford US”) |
(“Rockford GmbH”) |
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By:
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/s/ Xxxxxxx X. Xxxxx | By: | /s/ Xxxxxxx X. Xxxxx | |||
Name:
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Xxxxxxx X. Xxxxx | Name: | Xxxxxxx X. Xxxxx | |||
Title:
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CFO/Secretary | Title: | CFO/Secretary | |||
Date:
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09/22/05 | Date: | 09/22/05 | |||
and |
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Maxxsonics Europe Gmbh |
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By: |
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Name: |
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Title: |
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Date: |
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Schedule 1
To the Assignment
MB Quart Marks and Ancillary Marks
1. | Trademarks |
Xxxx | Kind | Country | Owner | Status | Reg. no. | Application Date | Expiry Date | Class | ||||||||
MB QUART
|
National | USA | reg. by MB USA, assignment recorded | live | 74545648 | 05.07.1994 | ||||||||||
MB QUART
|
National | USA | reg. by MB USA, assignment recorded | live | 74540016 | 20.06.1994 | ||||||||||
MB QUART
|
National | USA | reg. by MB USA, assignment recorded | live | 74540015 | 20.06.1994 | ||||||||||
MUSICOMP
|
National | USA | Rockford Corp. | live | 74676239 | 15.05.1995 | ||||||||||
BALCONY
|
National | USA | Rockford Corp. | live | 74667468 | 04.6.1996 | ||||||||||
MB QUART
|
National | Canada | Rockford Corp. | live | XXX000000 | 12.06.1996 | ||||||||||
MB AND DESIGN
|
National | Thailand | Rockford (Europe) Elektronik |
live | TM 117661 | 01.11.1990 | 01.10.2010 | 9 | ||||||||
MB QUART
|
National | Indonesia | Rockford Corp. | live | 516425 | 10.08.2001 | 10.08.2011 | 20 | ||||||||
MB QUART
|
National | Indonesia | Rockford Corp. | live | 516424 | 10.08.2001 | 10.08.2011 | 9 | ||||||||
MB QUART
|
National | Saudi Arabia | Rockford Corp. | Pending | 86955 (Appl.) | 30.12.2003 | 0 | |||||||||
XX XXXXX
|
Xxxxxxxx | Xxxxxx Xxxx Xxxxxxxx | Rockford Corp. | Pending | 58051 (Appl.) | 29.12.2003 | 9 | |||||||||
XXXX
|
USA | Rockford Corp. | 2,809,456 | ?? | ?? | S |
2. | Design Rights |
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US Design Patent (US D484,494), registered on 19.11.2002 and assigned to Rockford Corporation,
Tempe, Arizona, USA
3. | Domain names |
xxx.xxxxxxx.xxx
(owner is MB USA)
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