EXHIBIT 10.35
TRADEMARK Purchase AND ASSIGNMENT Agreement
by and between
BAYER AKTIENGELLSCHAFT
and
FIRST HORIZON PHARMACEUTICAL CORPORATION
dated as of December 13, 2001
TABLE OF CONTENTS
ARTICLE I. DEFINITIONS....................................................2
ARTICLE II. PURCHASE AND SALE OF ASSETS...................................3
ARTICLE III. PURCHASE PRICE AND PAYMENT...................................3
ARTICLE IV. EFFECTIVE DATE................................................3
ARTICLE V. REPRESENTATIONS AND WARRANTIES.................................4
ARTICLE VI. COVENANTS OF THE PARTIES......................................5
ARTICLE VII. INDEMNIFICATION..............................................6
ARTICLE VIII. TERMINATION AND ABANDONMENT.................................7
RECITALS..................................................................1
AGREEMENT.................................................................1
EXHIBITS
Exhibit A Form of Assignment of Trademarks
SCHEDULES
[Schedule A]: Description of the Trademark
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TRADEMARK PURCHASE AND ASSIGNMENT AGREEMENT
This Trademark Purchase and Assignment Agreement (this "Agreement") is
made and entered into as of December 13, 2001, by and between First Horizon
Pharmaceutical Corporation, a Delaware corporation, having a business address of
000 Xxxxxxx Xxxxxxx, Xxxxx 000, Xxxxxxx, XX 00000, USA("Buyer"), and Bayer
Aktiengellschaft, a company incorporated in the Federal Republic of Germany,
having a business address of 51368 Leverkusen, Germany ("Seller").
RECITALS
WHEREAS, Buyer and AstraZeneca UK Limited ("AstraZeneca") have or will
enter into that certain Asset Purchase Agreement ("AstraZeneca Asset Purchase
Agreement") pursuant to which Buyer will purchase all of AstraZeneca's assets
related to the marketing, selling and distribution of the Product (as defined
below) in the United States.
WHEREAS, AstraZeneca markets, sells and distributes the Product under
the name "Sular" pursuant to a Distribution Agreement dated as of January 1,
1996 by and between Seller and AstraZeneca.
WHEREAS, Seller is the owner of the United Stated trademark "Sular".
WHEREAS, Buyer and Seller are entering into a Distribution Agreement
dated as of December 12, 2001 ("Distribution Agreement") pursuant to which
Seller will manufacture and supply the Product to Buyer and Buyer will market,
sell and distribute the Product in the United States.
WHEREAS, Buyer has been informed that AstraZeneca is the holder of
several domain name registrations for the name "sular" (e.g. xxxxx.xxx,
xxxxx.xxx, xxxxx.xxx) transfer of which to Buyer will have to be agreed upon
between Buyer and AstraZeneca;
WHEREAS, in connection with the AstraZeneca Asset Purchase Agreement
and the Distribution Agreement, Seller desires to sell and assign to Buyer, and
Buyer desires to buy from Seller the United States trademark "Sular" subject to
the terms and conditions of this Agreement.
AGREEMENT
NOW THEREFORE, in consideration of the premises and the mutual
covenants and promises contained herein, and for other good and valuable
consideration, the receipt and sufficiency of which hereby are acknowledged, the
Parties agree as follows:
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ARTICLE I.
DEFINITIONS
SECTION 1.01 DEFINED TERMS.
As used in this Agreement, the following defined terms have the
meanings described below (terms not otherwise defined herein shall have the
meaning assigned in the Distribution Agreement):
(a) "Contract" means any and all legally binding
commitments, contracts, purchase orders, license, security agreements, leases,
or other agreements, whether written or oral.
(b) "Effective Date" shall have the meaning as defined in
the Distribution Agreement
(c) "Order" means any writ, judgment, decree, injunction
or similar order of any Governmental or Regulatory Authority (in each such case
whether preliminary or final).
(d) "Person" means any natural person, corporation,
general partnership, limited partnership, limited liability company,
proprietorship, other business organization, trust, union, association or
Governmental or Regulatory Authority.
(e) "Product" means the pharmaceutical product containing
nisoldipine as the sole active ingredient marketed and/or sold under the
trademark "Sular."
(f) "Tax" means (i) any net income, alternative or add-on
minimum tax, gross income, gross receipts, sales, use, ad valorem, transfer,
franchise, profits, license, excise, severance, stamp, occupation, premium,
property, environmental or windfall profit tax, custom, duty or other tax,
governmental fee or other like assessment imposed by an governmental, regulatory
or administrative entity or agency responsible for the imposition of any such
tax in the United States; (ii) any Liability for the payment of any amounts of
the type described in clause (i) above as a result of being a member of any
affiliated, consolidated, combined, unitary or other group for any Taxable
period.
(g) "Termination Agreement" means that certain
Termination Agreement by and between Seller and AstraZeneca pursuant to which
Seller and AstraZeneca terminate their relationship with respect to the Product.
(h) "Trademark" means the United States registered
trademarks, set forth on Schedule A attached hereto together with all of the
following related thereto: (i) goodwill; (ii) any and all rights to xxx for
present or future infringements; or misappropriations; (iii) any and all rights
to use such trademarks as part of a Internet domain name or Internet Web Site;
and (iv) any other rights or interests associated with the trademark.
(i) "Trademark Assignment Agreement" means a trademark
assignment agreement by and between Buyer and Seller, substantially in the form
of Exhibit A.
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(j) "United States" means the United States of America,
its territories and possessions, including Washington, D.C. and Puerto Rico.
ARTICLE II.
PURCHASE AND SALE OF ASSETS
SECTION 2.01 PURCHASE AND SALE OF ASSETS.
(a) Subject to the terms and conditions of this
Agreement, on the Effective Date, Seller shall irrevocably assign, sell,
transfer, convey, and deliver to Buyer any and all of Seller's right, title and
interest, in and to the Trademark.
(b) Subject to the terms and conditions of this
Agreement, on the Effective Date, Buyer shall purchase, acquire and accept from
Seller the Trademark.
ARTICLE III.
PURCHASE PRICE AND PAYMENT
SECTION 3.01 PURCHASE PRICE.
As consideration for the Trademark, and subject to the terms and
conditions of this Agreement, Buyer shall deliver or cause to be delivered to
Seller the sum of Twenty Million and No/100 Dollars (US $20 million) ("Purchase
Price") within fifteen (15) days after the Effective Date. The Purchase Price
shall be delivered into an account specified by Seller in writing.
ARTICLE IV.
EFFECTIVE DATE
SECTION 4.01 OBLIGATIONS.
Except for their obligations set forth in Sections 6.01, 6.02, 6.03 and
6.06, prior to the Effective Date, neither Party shall have any obligations or
liability hereunder.
SECTION 4.02 DELIVERY.
On the Effective Date Seller shall deliver to Buyer the following: (i)
an executed Trademark Assignment Agreement substantially in the form attached
hereto as Exhibit A and (ii) such other certificates, instruments, documents and
agreements as Buyer may reasonably request. On the Effective Date, Buyer shall
deliver to Seller such certificates, instruments, documents and agreements as
Seller may reasonably request.
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ARTICLE V.
REPRESENTATIONS AND WARRANTIES
SECTION 5.01 GENERAL.
Each Party to this Agreement represents and warrants to the other Party
that: (i) such Party has the requisite power and authority to enter into and
perform this Agreement, (ii) this Agreement has been duly authorized by all
necessary action on the part of such Party; (iii) the execution and delivery and
performance by each Party of this Agreement will not conflict with or result in
a violation of or default under such Party's organizational documents or any
judgment, order or decree of any court or arbiter to which such Party is bound
or any contract, understanding or agreement to which such Party is bound or any
applicable Law; (iv) this Agreement constitutes the valid and binding obligation
of such Party, and is enforceable against such Party in accordance with its
terms, subject to applicable bankruptcy, insolvency, reorganization, creditor's
rights and other similar laws; and (v) it has received good, valuable, legal and
sufficient consideration.
SECTION 5.02 LITIGATION.
Seller represents and warrants to Buyer that there is no claim, demand,
litigation, action, suit, inquiry, investigation, arbitration or other
proceeding pending or to its knowledge threatened against Seller, nor to the
knowledge of Seller are there any facts or circumstances which could reasonably
be anticipated to result in any such claims, demands, litigation, action, suit,
inquiry, investigation, arbitration or other proceeding related to the
Trademark, this Agreement or the transactions contemplated hereby which could
have an adverse effect on the Trademark or hinder, delay or prevent the
transactions contemplated hereby.
SECTION 5.03 TITLE TO THE TRADEMARK.
Seller hereby represents and warrants to Buyer that (i) it has good and
marketable title to the Trademark, (ii) there are no adverse claims of ownership
on or to the Trademark; and (iii) to Seller's knowledge, there exists no set of
facts or circumstances that would indicate that there is any reasonable basis to
believe that any Person or persons could or would assert a claim of ownership,
right of possession or use in any way adverse to Buyer's rights in and to the
Trademark.
SECTION 5.04 OWNERSHIP.
Seller represents and warrants to Buyer that (i) Schedule A constitutes
a true and complete list and description of all United States trademarks
licensed or controlled by the Seller in connection with the Product (ii) the
Seller is the sole and exclusive owner of all right, title and interest in the
Trademark, and has the exclusive right to use, license and sell the same, free
and clear of any claim or conflict with the rights of others; (iii) no
royalties, honorariums or fees are payable by the Seller to any Person by reason
of the ownership or use of any of the rights in conjunction to the Trademark;
(iv) to the knowledge of Seller, there have been no claims made against the
Seller asserting the invalidity, abuse, misuse, or unenforceability of any of
the Trademark and no grounds for any such claims exist; (v) the Seller has not
made any claim of any violation or infringement by others of any of its
Trademark or interests therein and, to the knowledge of the Seller, no grounds
for any such claims exist; (vi) the Seller has not received any notice that is
in conflict with or infringing upon the asserted intellectual property rights of
others in connection with the Trademark.
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SECTION 5.05 SURVIVAL.
All representations and warranties shall survive until the expiration
of the applicable statute of limitations but no longer than the expiration date
of the Distribution Agreement.
ARTICLE VI.
COVENANTS OF THE PARTIES
SECTION 6.01 CONDUCT PRIOR TO CLOSING.
From the date of this Agreement until the Effective Date, neither the
Seller nor any of the Seller's Affiliates shall (i) take or fail to take any
action which will or could be reasonably expected to have an adverse effect on
the Trademark or (ii) assign, sell, transfer, or convey any right title or
interest in the Trademark.
SECTION 6.02 REASONABLE EFFORTS.
Each of the Parties shall use its reasonable efforts to take, or cause
to be taken, all action, or to do, or cause to be done, all things necessary,
proper or advisable under applicable Laws to consummate and make effective the
transactions contemplated by this Agreement and to cause the conditions to the
obligations of the other Party hereto to consummate the transactions
contemplated hereby to be satisfied.
SECTION 6.03 PUBLIC ANNOUNCEMENTS.
Each of Seller and Buyer agree that, prior and subsequent to the
Effective Date, it and its representatives shall keep the facts surrounding the
terms and negotiation of this Agreement and the transactions contemplated
hereby, disclosures made herein and hereunder, and the results of investigations
and audits conducted hereunder, confidential and shall not disclose such
information to any other Person through a press release or otherwise (except as
necessary to carry out the express terms of this Agreement or to the extent such
information becomes public information or generally available to the public
through no fault of such Party or its Affiliates) without the prior written
consent of the other Party, (which will not be unreasonably withheld) unless
such Party is legally obligated to publish.
SECTION 6.04 RECORDATION.
The Buyer shall be responsible for applying for the registrations of
the Trademark to be transferred to it hereunder. The Seller undertakes to sign
the requisite assignment approvals in due form without delay. The Buyer shall
assume the costs of assignments and other measures taken by it.
SECTION 6.05 GERMAN TAXES.
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(a) Buyer is only entitled to withhold from the purchase
price payable to Seller under this Article the Taxes levied or assessed thereon
in as far as Seller shall receive a tax-credit for such payments in the Federal
Republic of Germany.
(b) Buyer shall provide Seller as soon as reasonably
practicable with certified tax receipts required by the German tax authorities
for the Taxes deducted from the payments hereunder and paid to the tax
authority.
SECTION 6.06 MAINTENANCE AND MONITORING.
(a) After the Effective Date, the Seller shall send the
files relating to the Trademark to the Buyer or to an attorney appointed by the
Buyer. Responsibility for monitoring of the Trademark, in particular of the
renewal dates and of any conflicting trademarks of third parties, shall thus
transfer to the Buyer.
(b) Until such time as the transfer of the Trademark will
have been entered into the official trademark register, but in no event longer
than six months following the Effective Date, the Seller shall administer the
Trademarks on a fiduciary basis and shall in this respect work together with the
Seller. However, after transfer of responsibility for monitoring of the
Trademark to the Buyer, the Seller shall only be obliged and entitled to take
measures related to renewal or defence, in particular the filing of oppositions
or the institution of legal proceedings, at the explicit request of the Buyer.
SECTION 6.07 ACKNOWLEDGMENT OF RIGHTS.
Seller acknowledges that as of the Effective Date, Buyer will succeed
to any and all of its right, title, and standing to: (i) receive all rights and
benefits pertaining to the Trademarks; (ii) institute and prosecute all suits
and proceedings and take all actions that the Buyer, in its sole discretion, may
deem necessary or proper to collect, assert, or enforce any claim, right, or
title of any kind in and to the Trademarks (iii) defend and compromise and all
such actions, suits or proceedings relating to such transferred and assigned
rights, title, interest, and benefits, and do all other such acts and things in
relations thereto as the Buyer, in its sole discretion, deems advisable.
ARTICLE VII.
INDEMNIFICATION
SECTION 7.01 SELLER INDEMNIFICATION.
Seller shall indemnify, reimburse, defend and hold harmless Buyer, its
Affiliates, and their respective officers, directors, employees, agents,
successors and assigns from and against any and all costs, losses, Liabilities,
damages, lawsuits, deficiencies, taxes, fines, penalties, interest, claims and
expenses (including reasonable fees and disbursements of attorneys)
(collectively, the "Damages"), incurred in connection with, arising out of, or
resulting from (i) any breach of any covenant or agreement of Seller herein,
(ii) the inaccuracy or breach of any representation or warranty made by Seller
in this Agreement; and (iii) any liability or obligation of Seller arising prior
to the Effective Date with respect to the Trademarks,
SECTION 7.02 BUYER INDEMNIFICATION.
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Buyer shall indemnify, defend and hold harmless Seller, its Affiliates
and their respective officers, directors, employees, agents, successors and
assigns from and against any and all Damages incurred in connection with,
arising out of, or resulting from (i) any breach of any covenant or agreement of
Buyer herein, and (ii) the inaccuracy or breach of any representation or
warranty made by Buyer in this Agreement.
ARTICLE VIII.
TERMINATION AND ABANDONMENT
SECTION 8.01 METHODS OF TERMINATION.
The transactions contemplated herein may be terminated and/or abandoned
at any time prior to the Closing:
(a) by mutual written agreement of Seller and Buyer; or
(b) by either Seller or Buyer if the conditions prior to
Effective Date shall not have occurred by June 30th, 2002; provided that the
terminating Party is not in material breach of its representations, warranties
or obligations hereunder and the terminating Party is not unreasonably causing
delay of the Effective Date;
(c) by either Seller or Buyer if prior to Effective Date
the other Party becomes insolvent or seeks protection under any bankruptcy,
receivership, trust deed, creditors arrangement, composition or comparable
proceeding, or if prior to the Effective Date any such proceeding is instituted
against the other Party which proceeding remains undismissed for a period of
thirty (30) days;
(d) by either Seller or Buyer if there shall be in effect
any Law that prohibits the Closing or if the Closing would violate any
non-appealable Order as defined in Article 1 (c); or
(e) by either Seller or Buyer, until fulfillment of all
material obligations of both Parties, if the other Party has breached any
material obligation hereunder that remains uncured for a period of thirty (30)
days after written notice and demand for cure thereof by the non-breaching
Party, unless such breach is not capable of cure in which event the
non-breaching Party may terminate immediately.
SECTION 8.02 NOTICES.
All notices, requests and other communications hereunder must be in
writing and delivered personally or by facsimile transmission or by nationally
recognized overnight courier at the following addresses or facsimile numbers:
If to Buyer to:
First Horizon Pharmaceutical Corporation
000 Xxxxxxx Xxxxxxx, Xxxxx 000
Xxxxxxx, XX 00000
Attn: Office of the President
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With copies to:
Xxxxx, Xxxxxx, MacKay & Xxxxxxxxxx, P.C.
000 X. Xxxxxx, Xxxxx 0000
Xxxxxxx, XX 00000
Attn: Xxxxxxxxxxx X. Xxxxxxx
If to Seller to:
Bayer Aktiengesellschaft
Konzernzentrale RP
X-00000 Xxxxxxxxxx
Xxxxxxx Xxxxxxxx of Germany
Fax: x00-000-00-00000
SECTION 8.03 ENTIRE AGREEMENT.
This Agreement (and all Exhibits and Schedules attached hereto and all
other documents delivered in connection herewith) supersedes all prior
discussions and agreements between the Parties with respect to the subject
matter hereof and contains the sole and entire agreement between the Parties
with respect to the subject matter hereof.
SECTION 8.04 AMENDMENT.
This Agreement may be amended, supplemented or modified only by a
written instrument duly executed by each Party hereto.
SECTION 8.05 ASSIGNMENT; BINDING EFFECT.
Neither this Agreement nor any right, interest or obligation hereunder
may be assigned by either Party without the prior written consent of the other
Party which will not be unreasonably withheld or delayed and any attempt to do
so will be void. Notwithstanding the foregoing, the Buyer may assign this
Agreement and its rights and interests hereunder to any party which acquires all
or substantially all of its assets without the consent of the Seller. This
Agreement is binding upon, inures to the benefit of and is enforceable by the
Parties and their respective successors and permitted assigns.
SECTION 8.06 HEADINGS.
The headings used in this Agreement have been inserted for convenience
of reference only and do not define or limit the provisions hereof.
SECTION 8.07 SEVERABILITY.
If any provision of this Agreement is held to be illegal, invalid or
unenforceable under any present or future law, and if the rights or obligations
of either Party under this
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Agreement will not be materially and adversely affected thereby, (a) such
provision will be fully severable, (b) this Agreement will be construed and
enforced as if such illegal, invalid or unenforceable provision had never
compromised a part hereof, (c) the remaining provisions of this Agreement will
remain in full force and effect and will not be affected by the illegal, invalid
or unenforceable provision or by its severance herefrom, and (d) in lieu of such
illegal, invalid or unenforceable provision, there will be added automatically
as a part of this Agreement a legal, valid and enforceable provision as similar
to terms to such illegal, invalid or unenforceable provision as may be possible
and reasonably acceptable to the Parties herein.
SECTION 8.08 GOVERNING LAW.
THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH
THE LAWS OF GERMANY EXCEPT THAT ISSUES RELATING TO THE TRADEMARK ITSELF SHALL BE
GOVERNED BY THE LAWS OF THE UNITED STATES.
SECTION 8.09 CONSENT TO JURISDICTION AND FORUM SELECTION.
The place of performance of all claims arising from this Agreement and
in conjunction with the performance of this Agreement shall be Leverkusen,
Germany. The place of jurisdiction for all disputes arising from this Agreement
shall for both parties be the District Court in Cologne, Germany.
SECTION 8.10 EXPENSES.
Except as otherwise provided in this Agreement, each Party shall pay
its own expenses and costs incidental to the preparation of this Agreement and
to the consummation of the transactions contemplated hereby.
SECTION 8.11 COUNTERPARTS.
This Agreement may be executed in any number of counterparts and by
facsimile, each of which will be deemed an original, but all of which together
will constitute one and the same instrument.
SECTION 8.12 SCHEDULES, EXHIBITS AND OTHER DOCUMENTS.
The Exhibits, Schedules, certificates and notices specifically referred
to herein, and delivered pursuant hereto, are an integral part of this
Agreement.
[Signature Page Follows]
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IN WITNESS WHEREOF, this Agreement has been executed by the Parties all
as of the date first above written.
BAYER AKTIENGELLSCHAFT
By: /s/ Xxxxxx
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Title: Trademark Counsel
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Name Xxxxxx
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By: /s/ Xx. Xxxxxx
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Title: Head of ICL Europe
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Name Xx.Xxxxxx
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FIRST HORIZON PHARMACEUTICAL
CORPORATION
By: /s/ Xxxxxxxx X. Xxxx, Ph.D.
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Title: CEO/Chairman
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Name Xxxxxxxx X. Xxxx
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EXHIBIT A
FORM OF ASSIGNMENT OF TRADEMARKS
WHEREAS, Bayer Aktiengesellschaft, a corporation organized and existing
under the laws of Germany, having a business xxxxxxx xx 00000 Xxxxxxxxxx,
Xxxxxxx (hereinafter "Assignor"), is the registered owner of the following
trademarks set forth on the attached Schedule (hereinafter the Trademarks);
WHEREAS, First Horizon Pharmaceutical Corporation, a Delaware
corporation, having a business address of 000 Xxxxxxx Xxxxxxx, Xxxxx 000,
Xxxxxxx, XX 00000, XXX (hereinafter "Assignee"), is desirous of acquiring all
right, title and interest in and to the Trademarks, together with the goodwill
symbolized by the Trademarks and the registrations thereof;
WHEREAS, the assignment of said Trademarks, and registrations thereof
be made of record in the United States Patent and Trademark Office and other
appropriate patent and trademark offices;
NOW, THEREFORE, for good and valuable consideration, the receipt of
which is hereby acknowledged, and intending to be legally bound hereby, Assignor
assigns to Assignee all right, title and interest in and to the Trademarks,
together with the goodwill symbolized by the Trademarks, and the registrations
thereof, and all rights to damages and profits, due or accrued, arising out of
infringements of said trademarks, and the right to xxx for and recover the same.
Leverkusen,
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BAYER AKTIENGESELLSCHAFT
By:
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Title:
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Name:
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By:
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Title:
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Name:
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Roswell,
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FIRST HORIZON PHARMACEUTICAL CORPORATION
By:
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Title:
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Name:
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SCHEDULE A
DESCRIPTION OF TRADEMARKS
U.S. REGISTERED TRADEMARKS
Trademark Registration Number Registration Date
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SULAR 1 939 088 December 5th, 1995
SULAR (word/picture) 2 175 325 July 21st, 1998
Schedule A
