TRADEMARK LICENSE AGREEMENT
---------------------------
This Trademark License Agreement (hereinafter "this Agreement") is made
between ARM Limited, whose principal place of business is located at 00 Xxxxxxxx
Xxxx, Xxxxxx Xxxxxx, XX XX0 0XX (hereinafter "Licensor"), and Osicom
Technologies Inc. whose principal place of business is located at 000 Xxxxxxxx
Xxxx Xxxx, Xxxxx 000 Xxxxxxx, XX 00000-0000 (hereinafter "Licensee")
(hereinafter collectively "the Parties").
WHEREAS, Licensor is the owner of all right, title and interest in and
to the trademark ARM, including, but not limited to a registration in the U.S.
Patent and Trademark Office under number 1,987,934, issued July 23, 1996 for
computer hardware, namely integrated circuits and printed circuit boards
containing electrical components and sockets; computer programs for use in the
development of computer programs and user manuals for use therewith sold as a
unit, and computer programs for use in the development of integrated circuits
and user manuals for use therewith all sold as a unit, including all goodwill
pertaining thereto;
WHEREAS Licensee has adopted and is using NET and NET+ as a component
term in trademarks for hardware and software for connecting peripherals to
networks, and
WHEREAS Licensee has filed applications to register NET+ARM in the
United States under serial number 75/374969 on October 17, 1997; in Canada under
serial no 866,078 on January 14, 1998; in the European Union under serial no.
703249 on December 15, 1997; and in Japan under serial no. 0000000.1997 on
December 17, 1997, hereafter collectively referred to as THE APPLICATIONS
WHEREAS Licensee is willing to assign THE APPLICATIONS and related
goodwill appurtenant thereto subject to a world wide exclusive license to use
the xxxx covered by THE APPLICATIONS,
WHEREAS, Licensee wishes to use the ARM trademark solely as a part of a
composite xxxx NET+ ARM (hereafter the XXXX) solely for the purpose of promoting
Licensee's embedded solution of ARM-based hardware and networking software
(hereinafter the "Product"); and
WHEREAS, Licensor wishes to grant Licensee a license to use the Xxxx
solely to promote the Product, subject to the provisions of this Agreement;
NOW THEREFORE, for good and valuable consideration, including the mutual
covenants contained herein, the receipt and sufficiency of which are hereby
acknowledged, the Parties agree as follows:
1 ASSIGNMENT
1.1 For good and valuable consideration, the receipt of which is hereby
acknowledged, Licensee without representations or warranties with respect to THE
APPLICATIONS or the title thereto, does hereby assign, transfer, and set over
unto the said Licensor all of its rights, title and interest in and to THE
APPLICATIONS and the registrations therefor, together with the goodwill of the
business symbolized by said marks and the registrations therefor, including all
rights to xxx
and recover for past infringement of said marks covered by THE APPLICATIONS and
the registrations therefor.
1.2 Licensee agrees to execute such other documents as may be
reasonablely required by Licensor to effect a recordable transfer of THE
APPLICATIONS to The Licensor.
1.3 Licensor agrees to allow Licensee to complete prosecution of THE
APPLICATIONS solely on behalf of Licensor and to maintain any registrations
issuing thereon in Licensor's name, so long as Licensee is licensed hereunder.
1.4 Licensee agrees, at its sole expense, to complete prosecution of THE
APPLICATIONS solely on behalf of Licensor and to maintain any registrations
issuing thereon in Licensor's name, so long as Licensee is licensed hereunder.
2 LICENSE GRANT
2.1 Licensor hereby grants Licensee a limited, exclusive,
nontransferable, royalty free, worldwide license to use the XXXX solely to
promote Licensee's Product, subject to the terms and conditions of this
Agreement. Licensee hereby accepts such grant subject to the terms and
conditions of this Agreement.
2.2 Licensor hereby grants to Licensee an exclusive non-transferable
royalty free license to use the subject matter of THE APPLICATIONS subject to
the terms and conditions of this Agreement. Licensee hereby accepts such grant
subject to the terms and conditions of this Agreement.
2.3 Licensor agrees not to itself use or to grant any other party,
during the term of this license and unless terminated for cause for 3 years
thereafter, a license to use the XXXX. Licensor agrees not to itself use or
grant any other party during the term of the license a license to use "NET*ARM,"
"NET/ARM," "NETARM," "NET ARM," "NET'N ARM," or "NET_ARM" where _ indicates a
single character or a single number or a combination of single character and
single number. Licensor will act in good faith when licensing others to protect
Licensee's interest in the subject matter of this agreement.
2.4 Licensor agrees to take reasonable steps, when requested by
Licensee, to preclude others from using trademarks which are confusingly similar
to the Xxxx, and to allow Licensee at its own expense to assist in enforcing
reasonable claims against infringers.
3 OWNERSHIP OF THE XXXX
3.1 Licensee acknowledges Licensor's ownership of all rights in the Xxxx
and the validity of all registrations therefor. Licensee expressly disclaims any
ownership in and to the Xxxx. Except as expressly permitted herein, Licensee
shall not adopt, use, or attempt to register any trademark which is confusingly
similar to any ARM trademark, including but not limited to any trademark which
includes "ARM", "THUMB", or "7TDMI". Licensee will assist Licensor, at
Licensee's sole expense, if necessary, in establishing and maintaining
Licensor's rights in and title to the Xxxx, including assisting Licensor upon
request in effecting any required approvals of this Agreement, in registering
and entering Licensee as a registered user of the Xxxx or in recording or
registering a license of the Xxxx with appropriate government authorities, but
only to the extent that such
assistance or expense relates solely to the Xxxx. Nothing in this Agreement
shall obligate Licensee to incur expense in connection with the ARM trademark
except to the extent it forms part of the xxxx. Licensee agrees to take no
action contrary to Licensor's ownership of and rights in the Xxxx both during
the term of this Agreement and thereafter so long as Licensor owns the Xxxx or
has an interest therein. Licensee's use of the Xxxx shall inure solely to
Licensor's benefit. Upon reasonable requests, Licensee shall furnish Licensor
with a report and specimens, including labels and advertising, showing evidence
of its use of the Xxxx.
3.2 No right, title or interest in the Xxxx or registrations or
applications for the Xxxx is transferred to Licensee by this Agreement, but only
the license to use the Xxxx under the conditions of this Agreement, and Licensor
reserves the right to use and to license others to use the Xxxx.
4 QUALITY CONTROL
4.1 Licensee agrees to maintain such reasonable quality standards for
the Product as prescribed by or acceptable to Licensor. Licensor may take all
reasonable precautions acting in good faith to insure that the quality of the
Product to which the Xxxx is applied is maintained, including inspecting the
quality of the Product. Licensee shall provide one free copy of each version of
the Product to Licensor. In the event that the Product does not meet Licensor's
standards, Licensor shall have the right to rescind its approval of Licensee's
use of the Xxxx and to terminate this Agreement pursuant to Section 6 below.
4.2 Licensee shall include Licensor in its schedule of press release
recipients.
5 FORM OF USE
5.1 Licensee agrees to use and display the Xxxx only in connection with
the advertising promotion and sale of Product and only in the form and manner as
are or shall be reasonably prescribed or approved by Licensor from time to time,
including the use of appropriate legends and markings. Such appropriate legends
and markings may include a trademark notice in the following form:
"NET+ IS A TRADEMARK OF OSICOM TECHNOLOGIES INC." "ARM IS A
REGISTERED TRADEMARK OF ARM LIMITED." "NET+ARM IS A REGISTERED
TRADEMARK OF ARM LIMITED."
5.2 Licensee agrees that the license grant in Section 2 shall entitle
Licensee to use the Xxxx only to promote the Product using "NET+ARM". No
additional use of a logo, cover design, layout, or any other feature, shall be
confusingly similar to the Xxxx. Except as expressly set forth in this
Agreement, Licensee agrees not to use any other trademark, service xxxx, word,
symbol, letter, or design in combination with the Xxxx.
5.3 All other uses of the ARM trademark shall be solely to refer to
Licensor's products or services and shall include the trademark symbol "(R)"
with the first and most prominent use of such trademark, and also include a
trademark notice in the following form:
"ARM IS A REGISTERED TRADEMARK OF ARM LIMITED."
5.4 Licensee may at all times use a house xxxx such as OSICOM on all
promotion, advertising and packaging, in addition to NET+ARM in connection with
the promotion, marketing, and sale of the PRODUCT. Licensor shall have no rights
to OSICOM or to "NET+" and all use thereof enures to the benefit of Licensee.
6 TERM
6.1 Unless terminated earlier pursuant to Section 7, the license granted
in Section 2 shall expire on May 20th, 2008 (the "Expiration Date"). Licensor
may, at its discretion, extend the term of this Agreement beyond the Expiration
Date by providing written notice informing Licensee that such an extension has
been granted. Pursuant to such notice of an extension, the license granted in
Section 2 shall continue until the earlier of the extended expiration date set
forth in the written notice of extension or until sixty (60) days after Licensor
provides written notice to Licensee that the license is terminated; such
termination shall be in Licensor's sole discretion.
7 TERMINATION
7.1 Either Party may terminate this Agreement immediately for breach by
the other Party of any of the provisions hereof, provided the termination is
made by written notice specifying an effective date not less than sixty (60)
days after delivery of the notice, on which termination shall become effective
unless prior thereto the specified breach is cured in Licensor's reasonable
opinion.
8 EFFECT OF TERMINATION
8.1 Upon expiration or termination of this Agreement for any reason,
Licensee shall immediately discontinue all use of the Xxxx and any term
confusingly similar thereto, except Licensee may fill all existing orders and
may exhaust all inventory on hand at the time of notification beyond the date of
termination, provided however, any use of the Xxxx after receiving the written
notice of termination shall comply with the standards set under paragraph 3
hereof. The parties rights and obligations under Sections 3, 6, 7, 8, 9,10, 11,
12, 13, 14, 15, 16, 17, 18 and 19 shall survive termination and expiration of
this Agreement.
8.2 Promptly upon termination of this Agreement or the licenses granted
hereunder Licensor shall expressly abandon THE APPLICATIONS and any
registrations issuing thereon.
9 RELATIONSHIP OF THE PARTIES
9.1 This Agreement does not constitute and shall not be construed as
constituting an agency, partnership or joint venture relationship between
Licensor and Licensee; Licensee shall not have any right to obligate or bind
Licensor in any manner whatsoever, and nothing herein contained shall give or is
intended to give any rights of any kind to any third persons.
10 ASSIGNMENT/TRANSFER
10.1 Without Licensor's prior specific written consent Licensee shall
not assign, transfer, mortgage, sublicense, or otherwise part with any of its
rights or obligations under this Agreement.
11 NOTICE OF INFRINGEMENT
11.1 In the event that any infringement or conflicting use of the Xxxx,
or unfair competition involving the Xxxx, shall come to Licensee's attention,
Licensee agrees promptly to inform Licensor thereof. It shall be within
Licensor's reasonable discretion to instigate litigation against any such
infringer.
12 NOTICE
12.1 All notices, requests, consents and other communications hereunder
shall be in writing and shall be mailed by First Class mail, postage prepaid or
delivered by messenger to the Parties at the addresses given above, and such
notices shall be deemed to be effective upon the date mailed to the correct
address with correct postage.
13 LIMITATION OF LIABILITY
13.1 LICENSOR SHALL NOT BE LIABLE FOR ANY DAMAGES, INCLUDING BUT NOT
LIMITED TO DIRECT, INDIRECT, INCIDENTAL, SPECIAL, COVER, RELIANCE, OR
CONSEQUENTIAL DAMAGES ARISING PROM ANY CLAIMS, ACTIONS, LIABILITIES, COSTS OR
ANY OTHER LOSSES RESULTING FROM LICENSEE'S USE OF THE XXXX OR LICENSEE'S
PUBLICATION, DISTRIBUTION, OR ANY OTHER USE OF THE PRODUCT.
14 ALLOCATION OF RISK
14.1 There is no license fee for the rights granted to Licensee herein.
The provisions of this Agreement allocate the risks between Licensor and
Licensee. The license rights granted to Licensee herein at no charge reflects
this allocation of risk and the limitation of liability specified herein.
15 INDEMNIFICATION
15.1 Licensee will defend, indemnify and hold Licensor harmless against
any claims, actions, damages, liabilities and any other costs arising out of
Licensee's publication, distribution and/or use of the Product and/or use of the
Xxxx licensed to Licensee herein, except to the extent a third party asserts
claims of superior rights to the Xxxx for the PRODUCTS.
16 GOVERNING LAW/JURISDICTION
16.1 This Agreement, and all matters arising out of or relating to this
Agreement, shall be governed by the laws of the State of California, and shall
be deemed to be executed in Los Gatos, California. Any legal action or
proceeding relating to this Agreement shall be instituted in a state or federal
court in Santa Xxxxx County, California. ARM and Customer agree to submit to the
jurisdiction of, and agree that venue is proper in, these courts in any such
legal action or proceeding.
17 EXECUTION IN COUNTERPARTS
17.1 This Agreement may be executed in counterparts, each of which shall
constitute a duplicate original.
18 AUTHORITY TO EXECUTE AGREEMENT
18.1 The undersigned represent that they have authority to execute this
Agreement on behalf of the respective Parties and to carry out all obligations
imposed hereunder. The undersigned have read, understand, and agree to the terms
of this Agreement and have had the opportunity to consult with counsel regarding
this Agreement.
19 ENTIRE AGREEMENT
19.1 This Agreement constitutes the sole and only agreement of the
Parties with respect to the subject matter hereof, contains all of the covenants
and agreements between the parties with respect thereto, and supersedes any
previous communications, representations, or agreements, verbal or written,
related to the subject matter of this Agreement. This Agreement shall only be
amended by a writing signed by the Party to be charged or its successor(s) in
interest. In the event any paragraph or provision of this Agreement is held to
be void or unenforceable by a court of competent jurisdiction, the remaining
provisions of this Agreement shall nevertheless be binding upon the Parties with
the same force and effect as though the void and unenforceable parts had been
severed or deleted.
20 EFFECTIVE DATE
20.1 The effective date of this Agreement shall be the later execution
date set forth below.
ARM LIMITED OSICOM TECHNOLOGIES INC.
By:__________________________________ By:__________________________________
Name:________________________________ Name:________________________________
Title:_______________________________ Title:_______________________________
Date:________________________________ Date:________________________________
