EXHIBIT 10.6
MARKETING AND DISTRIBUTORSHIP AGREEMENT
This Agreement made on October, 25, 2004 , by and between DIAMED
Medizintechnik GmbH, a corporation organized and existing under the laws of
Germany, with its principal place of business at Xxxxxxxxxxxxxxx 00, 00000 Xxxx,
Xxxxxxx (hereafter referred to as "DIAMED") and OCCULOGIX INC., a corporation
organized and existing under the laws of the State of Delaware, the United
States of America, with its principal place of business at 0000 Xxxxx Xxxxx,
Xxxxx 000, Xxxxxxxxxxx, Xxxxxxx, Xxxxxx, X0X 0X0 (hereinafter referred to as
"OCCULOGIX"):
WITNESSETH
WHEREAS, DIAMED desires to sell and market the PRODUCT (hereinafter defined) and
grant to OCCULOGIX certain distributor rights with respect to the PRODUCT in the
TERRITORY (hereinafter defined); and
WHEREAS OCCULOGIX is desirous of distributing the PRODUCT in the TERRITORY.
WHEREAS OCCULOGIX intends to purchase the PRODUCT from the MANUFACTURER which is
appointed by DIAMED for the production of the PRODUCT.
NOW, THEREFORE, for and in consideration of the mutual covenants and premises
hereinafter set forth, and other good and valuable consideration, the
sufficiency of which is hereby acknowledged, the parties hereto agree as
follows:
ARTICLE 1: DEFINITIONS
As used in this Agreement, the following terms shall have the following meanings
respectively:
A: "PRODUCT" shall mean the products set forth in the attached Exhibit A
hereto.
B. "MANUFACTURER" shall mean the producer nominated in the attached Exhibit A
hereto.
C. "TERRITORY" shall mean United States of America, Canada and Mexico and the
Caribbean Islands.
D. "TREATMENT DISEASE" shall mean hemo-rheological disorders in
microcirculation.
E. "FDA" shall mean the Federal Food and Drug Administration in the U.S..
F: "TRADEMARKS" shall mean those listed in attached Exhibit B hereto.
1
ARTICLE 2: DISTRIBUTORSHIP
2.1 DIAMED hereby appoints OCCULOGIX as its exclusive distributor in the
TERRITORY for the sale of PRODUCT solely to be used for the TREATMENT
DISEASE, provided however, that OCCULOGIX obtains the FDA approval and
other necessary approvals in the TERRITORY according to Article 4 of this
Agreement. OCCULOGIX agrees to act as such exclusive distributor under the
terms and conditions of this Agreement.
In case that additional diseases should become available for treatment by
the PRODUCT in the TERRITORY, OCCULOGIX shall have the right of first
refusal under the provisions that OCCULOGIX obtains all necessary
approvals as stipulated above.
2.2 This Agreement does not construe OCCULOGIX as the agent or legal
representative of DIAMED for any purpose whatsoever. OCCULOGIX is not
granted any right or authority to assume or to create any obligation or
responsibility, expressed or implied, on behalf of or in the name of
DIAMED or to bind DIAMED in any manner or thing whatsoever, or to accept
any legal process to or intended for DIAMED.
2.3 OCCULOGIX shall not, directly or indirectly, seek customers for the
PRODUCT or establish a branch or distribution depot related to the PRODUCT
outside the TERRITORY.
2.4 OCCULOGIX shall not represent, market, nor sell any similar to or
competitive PRODUCTs with PRODUCT during the term of this Agreement.
2.5 OCCULOGIX shall be solely responsible for all expenses and costs incurred
in performing its duties hereunder, including, without limitation, all of
its own operating and sales promotion expenses.
2.6 OCCULOGIX shall use its best efforts to promote the sale and use of, and
to secure orders and develop the market for the PRODUCT in the TERRITORY.
The business conducted by OCCULOGIX in connection with the marketing of
the PRODUCT shall at all times be conducted and maintained so as not to
detract from, interfere with or adversely reflect upon the goodwill and
reputation of DIAMED, its TRADEMARKS and/or trade names and the PRODUCT.
2.7 OCCULOGIX also shall make its best efforts that public and private medical
insurance reimbursement shall be applied for the TREATMENT DISEASE using
the PRODUCT in the U.S.
ARTICLE 3: MINIMUM PURCHASE REQUIREMENT
2
3.1 From the date of concluding this Agreement until 5 (five)years after the
date of FDA approval of the PRODUCT, OCCULOGIX will purchase no less than 1000
(one-thousand) units of PRODUCT.
3.2 The minimum purchase quantities from the sixth year on shall annually be
mutually agreed by both parties acting reasonably and assessing market
potential.
3.3 For the purpose of this Article, the PRODUCT shall be considered purchased
when the PRODUCT has actually been delivered to OCCULOGIX.
ARTICLE 4: REGULATORY APPROVAL
4.1 OCCULOGIX shall be responsible, at its own costs and expenses, for
obtaining and maintaining the FDA and all other applicable approvals and
validations for the marketing, sales and use of PRODUCT for the TREATMENT
DISEASE in each country of the TERRITORY under the name of DIAMED. The
necessary FDA approvals must be obtained by the end of 2006. If the FDA
approvals can not be obtained by such day and year, OCCULOGIX shall
consult with DIAMED and attempt to reach a mutual acceptable resolution.
Despite consultation, if both parties cannot find a mutual acceptable
resolution, DIAMED may terminate this Agreement upon six (6) months prior
written notice to OCCULOGIX.
4.2 OCCULOGIX shall inform DIAMED of the documentation which is necessary for
the FDA approval related to PRODUCT. Upon OCCULOGIX's request, DIAMED
shall make its best efforts to provide technical data of PRODUCT within
DIAMED's capacity.
4.3 OCCULOGIX shall not be entitled to any compensation from DIAMED even when
OCCULOGIX may not obtain the FDA approval, or any other approval, of
PRODUCT.
4.4 OCCULOGIX shall endeavor to obtain, at its own expenses, the FDA approval
and other necessary approvals in the TERRITORY of the accessories of the
PRODUCT, such as Filters or Tubing Sets, which may be required for the
TREATMENT DISEASE.
4.5 Without limiting any other provision in the Agreement, OCCULOGIX shall
fully comply with the FDA's Medical Device Reporting (hereinafter referred
to as M.D.R.") regulation and with the S.O.P.
ARTICLE 5: FIRST REFUSAL RIGHT
5.1 In the event, that DIAMED develops improved PRODUCTs which may replace the
existing PRODUCT, OCCULOGIX -will have the first refusal right to obtain
the distribution rights of such improved PRODUCT of PRODUCT solely used
for the TREATMENT DISEASE in the TERRITORY under the terms and conditions
by mutual consent; provided, however, that OCCULOGIX shall, at its own
costs and expenses, obtain all applicable approvals in the name of DIAMED
of such
3
PRODUCTs for the TREATMENT DISEASE in the TERRITORY within a reasonable
period.
ARTICLE 6: TRADEMARK AND OTHER RIGHTS
6.1 OCCULOGIX shall be the exclusive licensee of the TRADEMARKS owned by
DIAMED in the TERRITORY for use in association with the PRODUCT and shall
use the TRADEMARKS without limitation, as instructed by DIAMED in
distributing the PRODUCT purchased hereunder and shall not use any other
TRADEMARKS in connection with such distribution without prior written
consent of DIAMED. OCCULOGIX acknowledges that, as between DIAMED and
OCCULOGIX, DIAMED is the owner of all rights, title and interest in and to
the TRADEMARKS in the TERRITORY in any form or embodiment thereof and is
the owner of the goodwill attached or which shall become attached to the
TRADEMARKS in connection with the business and goods in relation to which
the same has been, is or shall be used. Sales by OCCULOGIX shall be deemed
to have been made by DIAMED for purposes of trademark registration and all
uses of the TRADEMARKS by OCCULOGIX shall inure to the benefit of DIAMED.
OCCULOGIX shall not, at any time, do or suffer to be done any act or thing
which may in any way adversely affect any rights of DIAMED in and to the
TRADEMARKS or any registrations thereof or which, directly or indirectly,
may reduce the value of the TRADEMARKS or detract from its reputation. At
DIAMED's request, OCCULOGIX shall execute any documents, including
registered user agreements, reasonably required by DIAMED to confirm
DIAMED's ownership of all rights in and to the TRADEMARKS in the TERRITORY
and to confirm the respective rights of DIAMED and OCCULOGIX under this
Agreement. OCCULOGIX shall not alter, obliterate, deface or remove any
xxxx, marking, serial number or other symbol carried on the PRODUCT or on
the packaging in which the PRODUCT are enclosed without the consent of
DIAMED. In the event that DIAMED desires to change any such xxxx, marking,
serial number or other symbol, OCCULOGIX will cooperate with DIAMED in
such manner as may be agreed upon by the parties. OCCULOGIX never shall
challenge DIAMED's ownership of or the validity of the TRADEMARKS or any
application for registrations thereof, or any trademark registrations
thereof, or any rights of DIAMED therein.
6.2 Should OCCULOGIX have already registered any of the TRADEMARKS prior to
this agreement in its name or its predecessor's name, OCCULOGIX will take
immediate action to change the ownership to DIAMED and inform DIAMED on
such action without delay.
6.3 During the term of the Agreement and thereafter, OCCULOGIX shall not apply
for or acquire the registration of the TRADEMARKS, nor shall OCCULOGIX
contest DIAMED's right in or disturb DIAMED's use of the TRADEMARKS or
goodwill therein. Should OCCULOGIX have the TRADEMARKS registered in its
name of any other person, DIAMED shall have the right to have the
registration cancelled or transferred to DIAMED.
6.4 In the event that OCCULOGIX learns of any infringement or imitation of the
TRADEMARKS or of any use by any person of any trademark similar to the
TRADEMARKS, it promptly shall notify DIAMED thereof. DIAMED thereupon
shall
4
take such action as it deems advisable for the protection of its rights in
and to the TRADEMARKS and, if requested to do so by DIAMED. OCCULOGIX
shall cooperate with DIAMED in all respects at DIAMED's sole expense. In
no event, however, shall DIAMED be required to take any action if it deems
it inadvisable to do so and OCCULQGIX shall have no right to take any
action with respect to the TRADEMARKS without DIAMED's prior written
approval.
6.5 Upon the termination of this Agreement for any reason whatsoever,
OCCULOGIX shall, except as DIAMED may specifically authorize in writing,
immediately cease and desist from carrying on any and all use of the
TRADEMARKS, and shall immediately cease and desist from making any
statements indicating, explicitly or implicitly, that it is an authorized
DIAMED distributor or dealer of DIAMED's PRODUCTs or other DIAMED goods
and services.
6.6 Any patent, design, copyright and other intellectual property rights
embodied in the PRODUCT shall be the sole property of DIAMED or the third
party designated by DIAMED; and OCCULOGIX shall not, either directly or
indirectly, contest nor assist others in contesting the validity of such
intellectual property rights. DIAMED shall be entitled to terminate this
Agreement forthwith on notice to OCCULOGIX if OCCULOGIX should violate
said obligation. OCCULOGIX shall not acquire any right in the PRODUCT by
execution of this Agreement or performance hereunder or otherwise and
shall not use any of them after termination of this Agreement resulting
from expiration of its term or any other cause whatsoever.
6.7 Nothing in this Agreement shall be construed as a warranty or
representation that the PRODUCT or the use thereof will be free from
infringement of any patent or other intellectual property rights of any
third party. DIAMED shall not be under any obligation to defend, or to
participate in the defense of, OCCULOGIX against any claim or suit
alleging such infringement; provided, however, that DIAMED shall, at
OCCULOGIX's costs, cooperate and assist OCCULOGIX in the defense of any
such claim or suit.
6.8 In the event that OCCULOGIX obtains any intellectual property right
relating to the TREATMENT DISEASE using PRODUCT, DIAMED shall have the
first refusal right to obtain a non-exclusive right and license from
OCCULOGIX to use such intellectual property right for manufacture, sales
and use of PRODUCT outside the TERRITORY for such territories where the
PRODUCT is actively distributed during the term of this Agreement.
ARTICLE 7: PROMOTION AND ADVERTISEMENT
OCCULOGIX shall exert its best efforts in marketing, promoting and advertising
the PRODUCT at its own costs.
ARTICLE 8: INVENTORY
OCCULOGIX shall maintain sufficient stock of the PRODUCT for the purpose of
distribution at its own cost, and shall deliver the PRODUCT to its customers by
a "first in, first out" method.
5
ARTICLE 9: MANUFACTURER
a) The sole purpose of this agreement concerns the marketing and
distribution rights for the PRODUCT.
b) DIAMED agrees for OCCULOGIX to enter into a manufacturing and supply
agreement for the PRODUCT only with MANUFACTURER nominated by DIAMED
provided that such MANUFACTURER meets the reasonable supply and
quality demands of OCCULOGIX and which will incorporate all rights
and obligations among OCCULOGIX and MANUFACTURER. In advance of
this, DIAMED will conclude an agreement with MANUFACTURER to allow
such manufacturing and supply agreement. DIAMED has the right to
terminate such agreement and provide an alternative MANUFACTURER for
OCCULOGIX to conclude a new agreement.
c) Occulogix has the right to request PRODUCT changes by MANUFACTURER
at OCCULOGIX's expense. Any PRODUCT change however, must be approved
by DIAMED in writing and in advance.
d) For the duration of this agreement, the rights on such PRODUCT
changes are passed over to OCCULOGIX with validity for its TERRITORY
only. Upon termination of the agreement, all such rights are to be
transferred to DIAMED without compensation. The rights for all other
territories pass over to DIAMED immediately when developed and
without compensation.
ARTICLE 10: TECHNOLOGY DEVELOPMENT FEE:
OCCULOGIX agrees that a development fee shall be paid by the Manufacturer
to DIAMED.
ARTICLE 11: deleted
ARTICLE 12: CONFIDENTIALITY
During the term of this Agreement including any renewal under Article 15 and for
a period of five (5) years thereafter, or ten (15) years after the effective
data of this Agreement, whichever is longer, neither party hereto shall disclose
or otherwise divulge to any third party any confidential information which may
be acquired from the other in connection with the PRODUCT, this Agreement, or
its performance, except for any information which:
a) is known to the public or to the receiving party prior to
disclosure;
b) is disclosed to the receiving party by a third party under no
obligation of secrecy to the other party after disclosure, or
c) becomes known to the public through no fault of the receiving party
after disclosures, or
d) is ordered to be disclosed by a court of law.
6
ARTICLE 13, FORCE MAJEURE
13.1 Neither party hereto shall be liable to the other in any manner for
failure or delay in fulfilment of all or part of this Agreement, or any
individual contract, which is directly or indirectly owing to any causes
or circumstances beyond that party's control, including, but not limited
to, acts of God, governmental orders or restriction, war, war-like
conditions hostilities, sanctions, mobilization, blockade, embargo,
detention, revolution, riot, looting, strike, lockout, plague or other
epidemics, fire, earthquake, explosion, flood, and shortage of raw
materials.
13.2 Notwithstanding the foregoing, no occurrence of an event of Force Majeure
shall relieve OCCULOGIX of its obligation to make any payment hereunder.
ARTICLE 14, ASSIGNMENT
OCCULOGIX shall not assign, transfer or otherwise dispose of this Agreement,
voluntarily or by operation of law, in whole or in part, to any individual, firm
or corporation without the prior written consent of DIAMED.
ARTICLE 15, TERM
15.1 This agreement shall be effective from October 25, 2004 until ten (10)
years after the date of FDA approval of PRODUCT for the TREATMENT DISEASE,
unless terminated prior to such expiration date by either party, as
provided herein, and shall automatically be extended for one (1) year term
unless DIAMED or OCCULOGIX gives the other written notice of its intention
to terminate this Agreement at least six (6) months prior to the
expiration date of the term then in effect.
15.2 Notwithstanding the foregoing paragraph, the following paragraphs shall
survive any expiration or termination of this Agreement: Article 6 and 12,
Paragraph 16.2 and Article 20.
ARTICLE 16, TERMINATION
16.1 DIAMED may forthwith terminate this Agreement without any compensation to
OCCULOGIX by giving a written notice of termination to OCCULOGIX if:
A. OCCULOGIX becomes insolvent or a petition in bankruptcy or for corporate
reorganization or for any similar relief is filed by or against OCCULOGIX
or a receiver is appointed with respect to any of the assets of OCCULOGIX,
or liquidation proceeding is commenced by or against OCCULOGIX, or
B. the whole or an important part of the business of OCCULOGIX is transferred
to a third party by agreement, order of court or otherwise, and such
transfer adversely affects the sale of the PRODUCT in the TERRITORY
pursuant to this Agreement, or
C. OCCULOGIX defaults in payment for any PRODUCT or any debt owing to DIAMED
or otherwise defaults in relation to any of the provisions of this
Agreement hereunder except for those in Paragraphs 2.3 and 2.4 and does
not
7
make the payment or remedy the default within thirty (30) days after a
prior written notice is given requesting the payment or remedy of the
default, or
D. any essential changes in the management personnel or ownership of the
shares of OCCULOGIX would adversely affect the sale of the PRODUCT in the
TERRITORY pursuant to this Agreement, or
E. OCCULOGIX violates the prohibition provided for in Paragraphs 2.3 and 2.4
herefor and does not take reasonable steps to remedy the violation within
thirty (30) days after a written notice is given evidencing such
violation.
F. if the production agreement between OCCULOGIX and MANUFACTURER is
terminated.
16.2 Termination of this Agreement pursuant to the preceding Paragraph shall be
without prejudice and shall be additional to any right of DIAMED under
this Agreement, law, statute or otherwise. Upon termination of this
Agreement and/or such individual contracts for the PRODUCT, all payments
to be made under this Agreement and/or such individual contracts in
connection with the sale of the PRODUCT hereunder up to the date of
termination shall become due.
16.3 If OCCULOGIX fails to fulfil the provisions and/or payments stipulated in
the Paragraphs 3.1 and 3.2. DIAMED may, at its option, modify the
exclusive right granted to OCCULOGIX hereunder to a non-exclusive right.
ARTICLE 17: GOVERNING LAW
This Agreement shall be governed by the laws of Germany, seat of court is Koln
(Cologne).
ARTICLE 18: NON-WAIVER
The waiver, express or implied, by either of the parties hereto of any right
hereunder or of any failure to perform or breach hereof by the other party
hereto shall not constitute or be deemed as a waiver of any other right
hereunder or of any other failure to perform or breach hereof by the other
party, whether of a similar or dissimilar nature.
ARTICLE 19: ENTIRETY
This Agreement and its Exhibit contain the entire agreement of the parties with
respect to the subject matter herein contained and supersedes any prior
Agreements or understandings between the parties except the S.O.P.
ARTICLE 20 ARBITRATION
All disputes, controversies or differences which may arise between the parties,
out of or in relation to or in connection with this Agreement, or for the breach
thereof, shall be settled by mutual consultation between the parties hereto in
good faith as promptly as possible, but failing an amicable settlement, shall be
finally settled by arbitration to be held in Koln (Cologne), Germany under the
Rules of Conciliation and
8
Arbitration of the International Chamber of Commerce, by which each party hereto
agree to be bound.
ARTICLE 21: NOTICE
21.1 Unless otherwise provided in this Agreement, all notices to be given
hereunder shall be in writing and sent by registered airmail to the
respective addresses of the parties stated above or to such other
addresses as may be indicated in writing by the parties hereto by notice
pursuant to this Paragraph. If either party has changed its address, a
written notice thereof shall be given to the other party pursuant to this
Paragraph.
21.2 All notices shall, be deemed to have been given on the day when such
notice is mailed by registered airmail.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their respective duly authorized representatives as of the day and year first
above written.
/s/ XXXXX XXXXXXXX /s/ Xxxx X. Stock
------------------------------ -------------------------------------
OCCULOGIX CORPORATION DIAMED Medizintechnik GmbH
Date: October 25, 2004 Xxxx X. Stock
President
Date: October 25, 2004
9
Exhibit A
PRODUCT:
Product means a blood plasma treatment device including accessories and software
for use in the treatment of Treatment Diseases.
MANUFACTURER shall mean:
Mesys GmbH Medizinische Systeme
Xxxxxxxxxxxx 00
00000 Xxxxxxxx
Xxxxxxx
Fon: x00-000 00 00 00-0
Fax: x00-000 00 00 00-00
e-mail: xxxxx@xxx.xxx
10
11
Exhibit B
TRADEMARKS shall mean the following DIAMED trademarks:
Octo Nova
Octo Therm
Cellsorbtion
AutoPrep
Octo
Angiopheresis
Immunapheresis
LipidNet
Diamed
12
