EXHIBIT 10.34
EXECUTION COPY
FORM OF TRANSITIONAL TRADEMARK LICENSE AGREEMENT(1)
THIS TRANSITIONAL TRADEMARK LICENSE AGREEMENT (this "Agreement") is
by and between THE ST. XXXX COMPANIES, INC., a Minnesota corporation ("St.
Xxxx"), and PLATINUM UNDERWRITERS HOLDINGS, LTD., a Bermuda corporation
("Platinum").
WHEREAS St. Xxxx, directly or through one or more of its
subsidiaries, exclusively owns all rights, title and interest in and to the St.
Xxxx trademarks and service marks identified on Schedule A attached hereto
(collectively, the "Licensed Marks"), as well as the goodwill associated
therewith and symbolized thereby;
WHEREAS St. Xxxx, Platinum and certain other parties have entered
into that certain Formation and Separation Agreement dated as of October 28,
2002, 2002 (the "Formation and Separation Agreement"), pursuant to Section
3.01(e) of which St. Xxxx and Platinum have agreed to enter into this Agreement;
and
WHEREAS St. Xxxx desires to grant to Platinum and Platinum desires
to receive the right to use the Licensed Marks pursuant to the terms of this
Agreement.
NOW THEREFORE, in furtherance of the transactions contemplated in
the Formation and Separation Agreement and in consideration of the promises and
the mutual covenants and agreements contained therein and herein, and for other
good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows:
ARTICLE I
GRANT OF LICENSE
SECTION 1.1 License. Subject to the terms of this Agreement, St.
Xxxx hereby grants to Platinum a royalty-free, limited, non-sublicensable
(subject to Section 6.2), non-transferable (subject to Section 6.1) license to
use the Licensed Marks throughout the world in connection with the conduct of
Platinum's business as described in Platinum's registration statement filed on
Form S-1 (File No. 333-86906) (the "License"). The License shall be exclusive
except that St. Xxxx xxx use the Licensed Marks for any and all purposes
provided in Schedule 1.1. St. Xxxx hereby reserves all other rights not
expressly granted hereunder.
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(1) This template shall be amended as necessary for each licensor of the St.
Xxxx trademarks and service marks in each jurisdiction as indicated in the
attached Schedule A.
ARTICLE II
OWNERSHIP OF THE LICENSED MARKS
SECTION 2.1 Ownership. Platinum agrees that, as between the parties,
St. Xxxx exclusively owns the Licensed Marks. Platinum also agrees that all of
Platinum's uses of the Licensed Marks, and all goodwill arising therefrom, shall
inure to the exclusive benefit of St. Xxxx. Platinum will not at any time do or
cause to be done any act or thing contesting or in any way impairing all or part
of such right, title and interest of St. Xxxx in and to the Licensed Marks.
Platinum shall not represent that it has any ownership interest in the Licensed
Marks or registrations, or applications for registration, thereof. Platinum
shall not register, file, maintain any registration or application for
registration of, or use except as permitted hereunder, any trademark, service
xxxx, Internet domain name, trade name or other device that incorporates any of
the Licensed Marks, or any marks confusingly similar thereto, in any country,
state, province or other location.
SECTION 2.2 Assignment of Rights in the Licensed Marks. Platinum
hereby irrevocably assigns to St. Xxxx, for no additional consideration, any
rights, equity and goodwill in or relating to the Licensed Marks, which may, by
operation of law or otherwise, vest in Platinum during the term of this
Agreement. Platinum agrees to execute all documents and perform all acts
reasonably requested by St. Xxxx from time to time to effect, confirm and record
St. Paul's ownership of the Licensed Marks.
ARTICLE III
USE OF THE LICENSED MARKS
SECTION 3.1 Compliance Regarding the Licensed Marks. Platinum shall
comply with all applicable laws and regulations relating to the use of the
Licensed Marks and the goods and services in connection with which Platinum uses
the Licensed Marks, including without limitation any laws and regulations which
require Platinum to indicate that (i) Platinum is a licensee of the Licensed
Marks; (ii) St. Xxxx owns the Licensed Marks; and/or (iii) Platinum is the
source of the services provided or offered in connection with the Licensed
Marks. Platinum shall apply statutory notice of trademark registration, where
reasonably practicable.
SECTION 3.2 Reputation. Platinum shall not, by any act or omission,
tarnish, disparage, degrade, dilute or injure the reputation of the Licensed
Marks, or the goodwill associated therewith.
ARTICLE IV
QUALITY CONTROL
SECTION 4.1 Standard of Quality. Platinum acknowledges that the
Licensed Marks have established valuable goodwill and are well recognized in the
minds of the relevant classes of customers and trade. Platinum agrees that the
nature and quality of all services
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provided or offered by Platinum in connection with the Licensed Marks as
permitted hereunder shall materially equal or exceed the standard of quality
maintained by St. Xxxx immediately prior to the Closing Date (as defined in
Section 5.1). Platinum shall permit St. Xxxx reasonable, and reasonably prompt,
access to Platinum's facilities and personnel on prior written notice as
reasonably requested by St. Xxxx or necessary for St. Xxxx to verify that
Platinum is in compliance with the immediately foregoing sentence. Platinum also
shall from time to time upon St. Paul's written request and at Platinum's cost
make available to St. Xxxx for inspection specimens demonstrating Platinum's use
of the Licensed Marks and other materials used in connection with the Licensed
Marks.
ARTICLE V
TERM AND TERMINATION
SECTION 5.1 Term. This Agreement shall commence as specified in
Section 10.8 (the "Closing Date") and shall terminate 1 year after the Closing
Date, unless terminated earlier in accordance with the provisions of this
Agreement.
SECTION 5.2 Early Termination. Platinum may terminate this Agreement
at any time on 30 days' written notice to St. Xxxx. St. Xxxx xxx terminate this
Agreement on 30 days' written notice to Platinum if Platinum does not cure its
material breach of this Agreement within 30 days of St. Xxxx providing to
Platinum a written notice of such breach specifying its nature in reasonable
detail.
SECTION 5.3 Effect of Termination. Upon termination of this
Agreement, Platinum shall immediately cease using the Licensed Marks (including
without limitation corporate names, telephone listings and other public or
commercial appearances of the Licensed Marks). The following provisions of this
Agreement shall survive termination thereof: Articles II, IX and X and Sections
3.2, 5.3 and 6.2(iii). Termination of this Agreement for any reason shall not
affect those obligations which have accrued as of the date of termination.
ARTICLE VI
ASSIGNMENT AND SUBLICENSING
SECTION 6.1 Assignment. This Agreement and the rights and
obligations hereunder may be assigned or otherwise transferred by St. Xxxx in
its sole discretion in connection with the corresponding assignment of the
Licensed Marks. This Agreement and the rights and obligations hereunder shall
not be assigned or otherwise transferred (by operation of law or otherwise) by
Platinum without St. Paul's prior written consent, which consent shall not be
unreasonably withheld or delayed. Any purported transfer of this Agreement in
violation of this Agreement shall be void. This Agreement shall be binding on
St. Xxxx, Platinum, and their respective permitted successors.
SECTION 6.2 Sublicensing. Notwithstanding the non-sublicensable
nature of this License as provided in Section 1.1 hereof, Platinum shall be free
to sublicense to any of its
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Post-Closing Subsidiaries (as defined in the Formation and Separation Agreement)
any of its rights in the Licensed Marks (but only for such time as they are
Post-Closing Subsidiaries), provided that: (i) Platinum shall impose on such
sublicensee agreements with respect to the Licensed Marks that are no less
stringent or complete than those required of Platinum hereunder, (ii) St. Xxxx
shall be expressly named as a third party beneficiary of the sublicensee's
agreements thereunder with direct rights of enforcement of such agreements; and
(iii) upon any termination of this Agreement, any sublicense granted by Platinum
shall terminate immediately and automatically and all uses of the Licensed Marks
by the sublicensee shall cease as described in Section 5.3 hereof.
ARTICLE VII
THIRD PARTY VIOLATION OF THE LICENSED MARKS
SECTION 7.1 Third Party Violation. Platinum shall promptly notify
St. Xxxx in writing of any violation by a third party of the Licensed Marks
which may come to Platinum's attention. St. Xxxx shall determine in its sole
discretion whether or not any action shall be taken with respect to such alleged
violation, and the nature of the action to be taken, unless the parties
otherwise agree. Platinum agrees to cooperate with St. Xxxx in this regard as
reasonably requested, all at St. Paul's expense. Any recovery obtained by St.
Xxxx as a result of any such action brought under this Section 7.1 shall belong
entirely to St. Xxxx.
SECTION 7.2 Third Party Action Regarding the Licensed Marks. In the
event that a third party commences an action against Platinum as a result of its
use of the Licensed Marks, Platinum shall promptly notify St. Xxxx in writing of
such action. St. Xxxx shall defend against any such action at St. Paul's
expense, and Platinum shall cooperate in such defense as reasonably requested by
St. Xxxx, all at St. Paul's expense.
ARTICLE VIII
WARRANTY AND WARRANTY DISCLAIMER
SECTION 8.1 Limited Warranty. St. Xxxx represents and warrants that
it owns the Licensed Marks which are the subject of issued registrations
identified on Schedule A attached hereto. Except as otherwise expressly stated
herein, St. Xxxx disclaims all representations and warranties concerning the
Licensed Marks, including without limitation warranties of title,
merchantability, non-infringement and fitness for a particular purpose.
ARTICLE IX
INDEMNIFICATION
SECTION 9.1 Indemnification of St. Xxxx. Platinum shall defend,
indemnify and hold harmless St. Xxxx, its Post-closing Subsidiaries (as defined
in the Formation and Separation Agreement) and their respective officers,
directors and agents from and against any third party losses, liabilities,
claims, damages, obligations, payments, costs and expenses, including, but not
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limited to, any amounts paid in settlement thereof and reasonable attorney fees
(collectively, "Claims") arising out of or based upon Platinum's material breach
of this Agreement except to the extent that such Claims were caused directly or
indirectly by acts or omissions of St. Xxxx, its Post-closing Subsidiaries or
any person acting on behalf of St. Xxxx or any of its Post-closing Subsidiaries.
SECTION 9.2 Indemnification of Platinum. St. Xxxx shall defend,
indemnify and hold harmless Platinum, its Post-closing Subsidiaries (as defined
in the Formation and Separation Agreement) and their respective officers,
directors and agents from and against any third party Claims arising out of or
based upon St. Paul's material breach of this Agreement except to the extent
that such Claims were caused directly or indirectly by acts or omissions of
Platinum, its Post-closing Subsidiaries or any person acting on behalf of
Platinum or any of its Post-closing Subsidiaries.
SECTION 9.3 Indemnification Procedure. Each party shall (i) give the
other prompt notice of any Claim for which indemnification is sought; (ii)
provide the indemnifying party with complete control over the defense and
settlement of such Claim; and (iii) provide all reasonable assistance in
connection with the defense of such Claim. The amount which either party to this
Agreement is or may be required to pay to the other party pursuant to Sections
9.1 and 9.2 shall be reduced by any insurance proceeds or any other amounts
actually recovered by or on behalf of such indemnified party, in reduction of
the related Claim. Neither party shall be entitled to indemnification for Claims
to the extent attributable to such party's gross negligence, bad faith or
willful misconduct.
SECTION 9.4 Sole Remedy. The indemnification provisions set forth in
this Article IX are the sole and exclusive remedy of the parties hereto for any
and all claims for indemnification under this Agreement.
ARTICLE X
MISCELLANEOUS
SECTION 10.1 Entire Agreement. This Agreement and the Formation and
Separation Agreement constitute the entire agreement and understanding between
the parties hereto, whether oral or written, with regard to the subject matter
hereof, and no party shall be liable or bound to any other party in any manner
by any representations, warranties, covenants and agreements except as
specifically set forth herein. In the event of a conflict between this Agreement
and the other Ancillary Agreements (as defined in the Formation and Separation
Agreement) concerning the subject matter thereof, the terms of this Agreement
shall govern.
SECTION 10.2 Amendment or Modification; Waiver. This Agreement may
be amended or modified only by written instrument signed by the parties hereto.
Any term or condition of this Agreement may be waived at any time by the party
that is entitled to the benefit thereof, provided that such waiver is in writing
and executed by a duly authorized officer of such party. A waiver on one
occasion will not be deemed to be a waiver of the same or any other breach or
nonfulfillment on a future occasion unless the waiver explicitly provides for
such
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effect. All remedies, either under this Agreement, or by law or otherwise
afforded, will be cumulative and not alternative.
SECTION 10.3 Severability. In case any one or more of the provisions
contained herein shall, for any reason, be held to be invalid, illegal or
unenforceable in any respect, such provision or provisions shall be ineffective
only to the extent of such invalidity, illegality or unenforceability, without
invalidating the remainder of such provision or provisions or the remaining
provisions of this Agreement, and this Agreement shall be construed as if such
invalid, illegal or unenforceable provision or provisions had never been
contained herein, unless such a construction would be unreasonable.
SECTION 10.4 Governing Law; Dispute Resolution.
(a) Governing Law. This Agreement shall be governed by and construed
and enforced in accordance with the laws of the State of New York applicable to
agreements made and performed entirely therein,
(b) Mandatory Arbitration. The parties hereto shall promptly submit
any dispute, claim, or controversy arising out of or relating to this Agreement
and/or the provision of services hereunder, including, effect, validity, breach,
interpretation, performance, or enforcement (collectively, a "Dispute") to
binding arbitration in New York, New York at the offices of Judicial Arbitration
and Mediation Services, Inc. before a panel of three arbitrators (the
"Arbitrators") in accordance with the Streamlined Arbitration Rules and
Procedures of Judicial Arbitration and Mediation Services, Inc. The parties
agree that, except as otherwise provided herein respecting temporary or
preliminary injunctive relief, binding arbitration shall be the sole means of
resolving any Dispute.
(c) Costs. The costs of the arbitration proceeding and any
proceeding in court to confirm or to vacate any arbitration award or to obtain
temporary or preliminary injunctive relief as provided in paragraph (d) below,
as applicable (including, without limitation, actual attorneys' fees and costs),
shall be borne by the unsuccessful party and shall be awarded as part of the
Arbitrators' decision, unless the Arbitrators shall otherwise allocate such
costs in such decision.
(d) Injunctive Relief. This Section 10.4 shall not prevent the
parties hereto from seeking or obtaining, and St. Xxxx shall be entitled to,
temporary or preliminary injunctive relief in a court for any breach or
threatened breach of any provision hereof, [or for any violation of St. Paul's
trademark rights by Platinum,] pending the hearing before and determination of
the Arbitrators. The parties hereby agree that they shall continue to perform
under this Agreement pending the hearing before and determination of the
Arbitrators, it being agreed and understood that the failure to so perform will
cause irreparable harm to the parties and that the putative breaching party has
assumed all of the commercial risks associated with such breach or threatened
breach of any provision hereof by such party.
SECTION 10.5 Descriptive Headings; Construction. The descriptive
headings herein are inserted for convenience of reference only and are not part
of, and do not affect the
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meaning, construction or interpretation of, this Agreement. Unless otherwise
expressly provided, the word "including" does not limit the preceding words or
terms.
SECTION 10.6 Counterparts. For the convenience of the parties
hereto, this Agreement may be executed in any number of counterparts, each such
counterpart being deemed to be an original instrument, and all such counterparts
shall together constitute the same agreement.
SECTION 10.7 No Partnership. This Agreement and the relationship
between the parties established under this Agreement do not constitute a
partnership, joint venture or any form of fiduciary relationship or contract of
employment between the parties. Each of the parties hereto is an independent
contractor and not an agent of the other party.
SECTION 10.8 Effectiveness. This Agreement shall become effective
contingent upon the consummation of the Public Offering (as defined in the
Formation and Separation Agreement), without any further action by either of the
parties hereto.
SECTION 10.9 Definitions; Formation and Separation Agreement.
Capitalized terms used but not defined in this Agreement have the meanings
specified in the Formation and Separation Agreement.
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IN WITNESS WHEREOF, each of the parties has caused a duly authorized
representative to execute this Agreement on its behalf.
THE ST. XXXX COMPANIES, INC.
By: /s/ Xxxxx X. Xxxxxxxx
----------------------------------------------------
Name: Xxxxx X. Xxxxxxxx
Title: Senior Vice President and Corporate Secretary
PLATINUM UNDERWRITERS HOLDINGS, LTD.
By:
----------------------------------------------------
Name:
Title:
IN WITNESS WHEREOF, each of the parties has caused a duly authorized
representative to execute this Agreement on its behalf.
THE ST. XXXX COMPANIES, INC.
By:
----------------------------------------------------
Name:
Title:
PLATINUM UNDERWRITERS HOLDINGS, LTD.
By: /s/ Xxxxxx X. Xxxxxx
----------------------------------------------------
Name: Xxxxxx X. Xxxxxx
Title: President and CEO
SCHEDULE A
OWNER: ST. XXXX RE, INC.
XXXX COUNTRY REGISTRATION NUMBER
---- ------- -------------------
St. Xxxx Re Benelux 000000
Xx. Xxxx Xx XXX 0000000
St. Xxxx Re Germany 39833754
St. Xxxx Re Hong Kong X0000/0000
Xx Xxxx Xx/Xxxxx Xxxx Xx Xxxxxx Xxxxxxx 2156029C
(series of two)
OWNER: THE ST. XXXX COMPANIES, INC.
XXXX COUNTRY REGISTRATION NUMBER
---- ------- -------------------
St. Xxxx Re Australia 764791
St. Xxxx Re Mexico 660898
St. Xxxx Re Singapore X00/00000X
Xx. Xxxx Xx XX 0000000
ARTICLE XI OWNER: ST. XXXX FIRE AND MARINE INSURANCE COMPANY
XXXX COUNTRY REGISTRATION NUMBER
---- ------- -------------------
St. Xxxx Re Canada 453,628
