1
EXHIBIT 10.18
Execution Copy
FIRST AMENDMENT TO TRADEMARK LICENSE AGREEMENT
This First Amendment to Trademark License Agreement (the "Amendment")
dated as of this ___ day of __________, 1999, between (a) Pelikan Holding AG, a
company organized under the laws of Switzerland ("Pelikan Holding"); Pelikan
Vertriebsgesellschaft mbH & Co. KG ("PVG"), (formerly known as Pelikan
International Handelsgesellschaft mbH & Co. KG (Hannover)), a company
organized under the laws of Germany; and Pelikan GmbH (Hannover), a company
organized under the laws of Germany (collectively, "Licensors"), on the one
hand, and (b) Nu-kote Holding, Inc., a Delaware corporation ("Licensee"), on the
other hand.
WITNESSETH:
WHEREAS, pursuant to the Asset and Stock Purchase Agreement, dated as
of November 15, 1994, as amended, between Pelikan Holding and Licensee (the
"Purchase Agreement"; capitalized terms used herein without definition being
used as defined therein), the Licensee purchased or acquired, directly or
indirectly through Subsidiaries, from Pelikan Holding or the Selling
Subsidiaries, and Pelikan Holding and such Selling Subsidiaries sold, assigned
or transferred to the Licensee, the Hardcopy Business, and executed and
delivered the Trademark License;
WHEREAS, at the time of the Closing, PIH was the owner of the Licensed
Xxxx;
WHEREAS, PVG changed its name from Pelikan International
Handelsgesellschaft mbH & Co. KG (Hannover) effective January 1, 1996 and is the
owner of the Licensed Xxxx;
WHEREAS, Pelikan GmbH is the successor of Pelikan AG which transferred
all of its ownership rights in the Licensed Xxxx to PIH but retains for fiscal
reasons an option of retransfer at first demand; and
WHEREAS, on February 13, 1998 Licensors sent a Notice of Breach in
accordance with the provisions of the Trademark License, and on both June 9,
1998 and June 22, 1998, and again on October 9, 1998, Licensors sent Notices of
Termination pursuant to Section 11(b) of the Trademark License giving 30 days
notice of termination of the Trademark License;
WHEREAS thereafter Nu-kote and certain of its subsidiaries commenced
cases under Chapter 11 of the United States Bankruptcy Code in the United
States Bankruptcy Court for the Middle District of Tennessee designated numbers
98-10600 through 98-10606 on the docket of said Court, which cases said Court
has ordered substantively consolidated for certain purposes under Case No.
98-10600;
WHEREAS, Nu-kote desires to sell a portion of the Hardcopy Business,
including Produktions, indirectly to Pelikan Hardcopy Europe Limited, a
corporation organized under the laws of Scotland ("PHE"), and thereby to cause
Produktions to cease to be an Affiliate of Nu-kote, and, in connection
therewith, desires to induce Pelikan
2
Holding to grant to PHE a license to use the Licensed Marks and to rescind
Licensors' termination of the above Notices of Termination of the Trademark
License;
WHEREAS, Licensors are willing, in connection with Nu-kote's sale of a
portion of the Hardcopy Business to PHE, to grant to Produktions a license to
use the Licensed Xxxx upon terms that are mutually agreeable to Licensors and
PHE, subject to the condition that the Trademark License is amended as provided
herein and that the Non-Competition Agreement is amended to limit the geographic
scope of the Non-Competition Agreement to the United States of America
(including the District of Columbia, the Commonwealths of Puerto Rico, the
Northern Mariana Islands, and the Virgin Islands of the United States, and the
unincorporated United States territories of American Samoa and Guam), Mexico and
Canada;
NOW, THEREFORE, in consideration of the covenants contained herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties agree as follows:
1. Amendment of Section 1a. Section l(a) of the Trademark license
shall be amended to read as follows:
"1. Licensed Grant. (a) From and after the Effective Date, Licensors
hereby grant an exclusive, royalty-free, fully paid-up, license, during
the Term (as defined in Section 11), to Licensee: (i) to use the Licensed
Xxxx, but only within United States of America (including the District of
Columbia, the Commonwealths of Puerto Rico, the Northern Mariana Islands,
and the Virgin Islands of the United States, and the unincorporated United
States territories of American Samoa and Guam), Mexico and Canada within
the field of use of the Hardcopy Venture (including but not limited to the
development, manufacture, procurement, distribution and sale of goods
relating thereto); and (ii) to permit any existing or future Subsidiary of
Licensee to use, but only within the United States of America (including
the District of Columbia, the Commonwealths of Puerto Rico, the Northern
Mariana Islands, and the Virgin Islands of the United States, and the
unincorporated United States territories of American Samoa and Guam),
Mexico and Canada, the name and xxxx "PELIKAN" as part of the trade name
"PELIKAN IMAGING SUPPLIES" and "PELIKAN HARDCOPY" (and appropriate
translations thereof) (or such other trade name as Licensor may consent,
such consent not to be unreasonably withheld or derivations thereof).
2. Adjustment to Maintenance Expense Share. Section 5(a) of the
Trademark License shall be amended to substitute "25%" for "50%."
2
3
3. Effectiveness of Trademark License. It shall be a condition
precedent to the effectiveness of this Amendment that:
(i) PHE shall pay to Pelikan Holding the sum of Three Million
Five Hundred Thousand U.S. Dollars (US$3,500,000) by wire transfer to an
account in Zurich, Switzerland, designated by Pelikan Holding; and
(ii) the United States Bankruptcy Court for the Middle District
of Tennessee shall have entered an order in Case No. 398-10600
(Consolidated) after due notice approving this amendment and the
amendments referred to in clause (iii) hereof, and the other transactions
contemplated in connection herewith, said order shall have become a Final
Order (the date of the last of the foregoing to occur being hereinafter
referred to as the "Effective Date").
(iii) Nu-kote and Pelikan Holding shall have executed and
delivered an amendment to the Non-Competition Agreement among Nu-kote,
Pelikan Holding and certain other parties thereto dated as of February 24,
1995 to change the word "world" at the end of paragraph 1(a) thereof to
"United States of America, (including the District of Columbia, the
Commonwealths of Puerto Rico, the Northern Mariana Islands, and the Virgin
Islands of the United States, and the unincorporated United States
territories of American Samoa and Guam), Mexico and Canada;"
(iv) The existing sublicense from Nu-kote to Produktions under
the Nu-kote License referred to in the second recital to this First
Amendment to Trademark License Agreement shall have been terminated by
written agreement of the parties thereto, and a copy of such termination
shall have been delivered to Pelikan Holding;
(v) PHE (or a Subsidiary of PHE acceptable to PVG) and PVG shall
have executed a distribution agreement providing for PHE and its
Subsidiaries to sell to PVG, and PVG to purchase from PHE and its
Subsidiaries and to distribute to certain customers in Germany, certain
Pelikan brand Hardcopy Products.
For purposes of this Agreement, the term "Final Order" shall mean an order or
judgment that has not been modified, vacated or stayed, and as to which (a) the
time to appeal or seek review, rehearing, reargument or certiorari has expired
and as to which no appeal or petition for review, rehearing, reargument or
certiorari proceeding is pending, or (b) an order or judgment which has been
appealed, has been affirmed on appeal or certiorari and as to which appeal or
certiorari the time for further appeal or certiorari has expired, provided, such
an order shall be a "Final Order" whenever (i) a period of ten days after the
entry thereof on the Clerk's docket shall have expired (ii) no stay of the order
shall be in effect, and (iii) Pelikan shall so elect by written notice to
Nu-kote.
4. Release of Certain Claims. If this Amendment becomes effective, then
Licensors hereby expressly waive and release any claims against Nu-kote or any
of
3
4
Nu-kote's Subsidiaries or sublicensess that Licensors may have by reason of the
Notices of Termination referred to above or the matters referred to in said
Notices of Termination, and the Trademark License shall continue in full force
and effect, notwithstanding any and all Notices of Termination or Notices of
Breach that Licensors may have given to Licensee at any time prior to the date
hereof.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized officers on the day and year first above
written.
Licensors: Licensee:
PELIKAN HOLDING AG NU-KOTE HOLDING, INC.
By: By:
------------------------------ ----------------------------
Name: Xxxxx Xxxxxxx Name:
Title: Director ----------------------------
Title:
----------------------------
PELIKAN VERTRIEBSGESELLSCHAFT
MBH & CO. KG
By:
------------------------------
Name:
------------------------------
Title:
------------------------------
PELIKAN GMBH (HANNOVER)
By:
------------------------------
Name:
------------------------------
Title:
------------------------------
4
