Exhibit 10.9
AMENDED AND RESTATED
TRADEMARK/TECHNOLOGY
LICENSE AGREEMENT
AMONG
NESTLE S.A., NESTEC LTD.,
SOCIETE DES PRODUITS NESTLE S.A.,
AND
NESTLE ICE CREAM COMPANY, LLC
THIS AGREEMENT is made and entered into as of September 1, 2002, by and
among Nestle S.A., a corporation organized and existing under the laws of
Switzerland and having its registered office in 1800 Vevey, Canton of Vaud,
Switzerland ("Nestle S.A."), Nestec Ltd., a corporation organized and existing
under the laws of Switzerland and having its registered office in 1800 Vevey,
Canton of Vaud, Switzerland ("Nestec") and Societe des Produits Nestle S.A., a
corporation organized and existing under the laws of Switzerland and having its
registered office in 1800 Vevey, Canton of Vaud, Switzerland, ("SPN" and,
together with Nestle S.A. and Nestec, hereinafter referred to as "Nestle
Group"), and Nestle Ice Cream Company, LLC, a Delaware limited liability
company, formerly known as Ice Cream Partners USA, LLC ("NICC").
WHEREAS, the parties previously entered into the Trademark/Technology
License Agreement dated October 8, 1999, as amended by the First Amendment to
Trademark/Technology License Agreement dated as of December 26, 2001 (the
"Previous Agreement") for the license to NICC of certain intellectual property
in connection with the production, importation, purchase, marketing,
distribution, promotion and sale of Frozen Dessert Products (defined below) in
the Territory (defined below); and
WHEREAS, the parties desire to amend and restate the Previous Agreement in
its entirety as set forth herein.
NOW THEREFORE, in consideration of the premises, and the mutual
representations, warranties, covenants and agreements hereinafter set forth, and
for other good and valuable consideration, the receipt of which is hereby
acknowledged, the parties hereto intending to be legally bound by the terms
hereof applicable to each of them, hereby agree as follows:
I. CERTAIN DEFINITIONS
1.1 "Affiliate" means, with reference to a specified Person, a Person
that, directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common control with, the specified Person, provided,
however, that, for purposes of this Agreement, NICC, New December, Inc., and any
direct or indirect subsidiary of New December, Inc. shall be deemed not to be an
"Affiliate" of Nestle Group or any of its Affiliates.
1.2 "Applicable Law" means, with respect to any Person, any domestic or
foreign,
federal, state or local statute, law (including principles of common law),
ordinance, rule, administrative interpretation, regulation, order, writ,
injunction, legally binding directive, judgment, decree or other requirement of
any Governmental Authority applicable to such Person or any of its Affiliates or
any of their respective properties, assets, officers, directors, employees,
consultants or agents (in connection with such officer's, director's,
employee's, consultant's or agent's activities on behalf of such Person or any
of its Affiliates).
1.3 "Associated Materials" means all materials using or featuring the
Nestle Licensed Trademarks, including without limitation advertisements,
promotions, trade materials, point of sale materials, radio and television
spots, and website contents.
1.4 "Claim" shall have the meaning set forth in Section 13.12 of this
Agreement.
1.5 "Claimant" shall have the meaning set forth in Section 11.1(b) of this
Agreement.
1.6 "Confidential Information" of a Person (a "Covered Person") means all
trade secrets and other confidential information of such Covered Person
including, without limitation, (a) any and all trade secrets concerning the
business and affairs of such Covered Person, records, files, letters, memoranda,
reports, laboratory notebooks, program listings, product specifications, product
formulas, ingredient listings, recipes, data, know-how, improvements,
discoveries, concepts, formulae, compositions, processes, designs, sketches,
photographs, graphs, drawings, samples, inventions and ideas, past, current and
planned research and development, past, current and planned manufacturing and
distribution methods and processes, techniques, customer lists, current and
anticipated customer requirements, price lists, market studies, business plans,
computer software and programs (including object code and source code), computer
software and database technologies, systems, structures and architectures of
which may be licensed to such Covered Person (and other items related thereto);
(b) any and all information concerning the business and affairs of such Covered
Person (which includes historical financial statements, financial projections
and budgets, historical and projected sales, capital spending budgets and plans,
strategic and operating plans, the names and backgrounds of key personnel,
personnel training and techniques and materials), however documented; and (c)
any and all notes, analysis, compilations, studies, summaries, and other
material prepared by or for such Covered Person containing or based, in whole or
in part, on any information included in the foregoing; provided, however, that
with respect to a Person (or any Affiliate thereof) using Confidential
Information ("Using Persons") of a Covered Person, Confidential Information of
such Covered Person shall not include any material of the Covered Person that
the Using Person can establish through documentation (i) is or becomes generally
known to and available for use by the public other than as a result of the fault
of the Using Persons or their respective advisors or Representatives; or (ii) is
or becomes available to the Using Persons or their respective advisors or
Representatives on a non-confidential basis from a source other than the Covered
Person or its Affiliates or their advisors or Representatives prior to, on or
after the date of this Agreement, provided that the source of such information
was not known by the Using Persons, after reasonable investigation, to be bound
by a confidentiality agreement with or other contractual, legal or fiduciary
obligation of confidentiality to the Covered Person or its Affiliates with
respect to such material.
1.7 "Contribution Agreement" means the Contribution Agreement entered into
on
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August 18, 1999 among NICC, Pillsbury and Nestle USA, as amended by Amendment
No. 1 thereto entered into on October 8, 1999 among NICC, Pillsbury, HD JV
Holding Co., and Nestle USA (as may be amended, supplemented or otherwise
modified from time to time).
1.8 "Dipped Form" means the retail sale of Frozen Dessert Products where:
(a) the Frozen Dessert Products are presented to the public in association with
the Haagen-Dazs name; (b) the Frozen Dessert Products are scooped, dipped, or
dispensed from a soft serve machine and sold in cones or dishes; (c) the Frozen
Dessert Products are sold from a non-temporary food service establishment; and
(d) it would be reasonably expected by the retail seller that a significant
portion of the Frozen Dessert Products would be consumed away from the food
service establishment.
1.9 "Fees" shall have the meaning set forth in Section 4.1(c) of this
Agreement.
1.10 "Frozen Dessert Products" means ice cream, sorbet, frozen yogurt,
sherbet, frozen mousse, ice milk, frozen juice bars, ice pops, water ice, ice
cream cakes, frozen fudge bars, soft serve (soft bodied, machine made) ice
cream, frozen novelty dessert products (such as bars, cones, sandwiches,
smoothies and cup products based on or primarily derived from any of the
foregoing), frozen dessert products for pets and other products based on or
primarily derived from any of the foregoing that are marketed and sold under
Nestle Licensed Trademarks, the third party trademarks listed on Exhibit E or
Pillsbury Licensed Trademarks, or that are unbranded.
1.11 "Governmental Authority" means any foreign, domestic, federal,
territorial, state or local governmental authority, quasi-governmental
authority, instrumentality, court government or self-regulatory organization,
commission, tribunal or organization or any regulatory, administrative or other
agency, or any political or other subdivision, department or branch of any of
the foregoing.
1.12 "Haagen-Dazs International Business" means substantially all of the
assets comprising the business of the production, importation, purchase,
marketing, distribution, promotion and sale (including export sale from a
facility not owned by NICC) of Frozen Dessert Products outside of the Territory
and Canada under the Haagen-Dazs brand name or under brand names licensed to
Pillsbury by third parties outside the Territory and Canada, but excludes the
ownership, management and operation of Haagen-Dazs Stores inside and outside the
Territory and Canada which business is currently conducted by Pillsbury.
1.13 "Haagen-Dazs International Co-Pack Agreement" means the Co-Pack
Agreement relating to the Haagen-Dazs International Business dated as of October
8, 1999 between NICC and Pillsbury.
1.14 "Haagen-Dazs Japan Co-Pack Agreement" means the Co-Pack Agreement
relating to the Pillsbury Japan Joint Venture dated as of October 8, 1999 among
NICC, Pillsbury and Nestle USA.
1.15 "Haagen-Dazs Stores" means, collectively, (a) the Haagen-Dazs-branded
retail outlets (whether stand-alone or in conjunction with another retailer)
owned by The Haagen-Dazs Shoppe Company, Inc. ("Shoppes") that serve Frozen
Dessert Products in Dipped Form and (b)
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the Haagen-Dazs-branded retail outlets (whether stand-alone or in conjunction
with another retailer) not owned by Shoppes which are franchised by Shoppes to
and operated by third parties and that serve Frozen Dessert Products in Dipped
Form and Shoppes' franchise rights therein, in each case as of and after
December 26, 2001.
1.16 "Indemnifying Party" shall have the meaning set forth in Section
11.1(b) of this Agreement.
1.17 "Liability" means, with respect to any Person, any liability, expense
or obligation of such Person of any kind, character or description, whether
known or unknown, absolute or contingent, accrued or unaccrued, liquidated or
unliquidated, secured or unsecured, joint or several, due or to become due,
vested or unvested, executory, determined, determinable or otherwise and whether
or not the same is required to be accrued on the financial statements of such
Person.
1.18 "Losses" means any and all costs, losses, taxes, Liabilities,
damages, lawsuits, deficiencies, claims, demands, and expenses (whether or not
arising out of third-party claims), including without limitation interest,
penalties, costs of mitigation, lost profits and other losses resulting from any
shutdown or curtailment of operations, damages to the environment, reasonable
attorneys' fees and all amounts paid in investigation, defense or settlement of
any of the foregoing.
1.19 "Nestle Brand Manual" means the Nestle Brand Manual attached hereto
as Exhibit C and incorporated herein by reference, as the same may be amended
from time to time by Nestle Group.
1.20 "Nestle Group Confidential Information" means Confidential
Information of Nestle Group and Affiliates thereof.
1.21 "Nestle Group Quality Requirements" shall have the meaning set forth
in Section 3.4 of this Agreement.
1.22 "Nestle Improved Products" means the Pillsbury Covered Products to
which improvements have been made using Nestle Licensed Technology.
1.23 "Nestle International Business" means the Frozen Dessert Products
business of Affiliates of Nestle USA conducted outside of the Territory.
1.24 "Nestle International Co-Pack Agreement" means the Co-Pack Agreement
relating to the Nestle International Business dated as of October 8, 1999,
between NICC and Nestle USA, as may be amended, restated or substituted from
time to time.
1.25 "Nestle Licensed Property" means, collectively, the Nestle Licensed
Technology, Other Nestle Group Proprietary Information and Nestle Licensed
Trademarks.
1.26 "Nestle Licensed Technology" means the inventions claimed in the
Patents, all trade secrets, intellectual property and other information
(including, without limitation, product specifications, product formulas,
ingredient listings, recipes, data, techniques, know-how,
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formulae, compositions, processes and past, current and planned research and
development relating to the production and content of Frozen Dessert Products),
owned by Nestle Group and used by NICC as of the date of this Agreement in
connection with the production or content of Frozen Dessert Products.
1.27 "Nestle Licensed Trademarks" means the trademarks, service marks and
trade names listed on Exhibit A.
1.28 "Nestle USA" means Nestle USA - Prepared Foods Division, Inc., a
Pennsylvania corporation and a wholly owned indirect subsidiary of Nestle S.A.
1.29 "Net Sales" shall have the meaning ascribed to that phrase in
accordance with the International Accounting Standards, as issued by the
International Accounting Standards Committee in London.
1.30 "NICC Improvements" shall have the meaning set forth in Section 2.5
of this Agreement.
1.31 "NICC Personnel" shall have the meaning set forth in Section 8.2 of
this Agreement.
1.32 "NICC Personnel Confidentiality Agreement" shall have the meaning set
forth in Section 8.2 of this Agreement.
1.33 "Other Nestle Group Proprietary Information" means any and all trade
secrets and other information (including, without limitation, drawings, samples,
customer lists, current and anticipated customer requirements, market studies
and notes relating to the sale of Frozen Dessert Products in the Territory)
owned by Nestle Group and used by NICC as of the date of this Agreement for the
sale of Frozen Dessert Products in the Territory.
1.34 "Out-Of-Pocket Expenses" means out-of-pocket expenses such as travel,
lodging, food and other third party expenses, but excludes salaries and other
similar types of remuneration, consulting fees payable to Affiliates, benefits,
facilities costs and other similar costs.
1.35 "Patents" means the patents and patent applications listed on Exhibit
B attached hereto, as well as any additional U.S. patents or U.S. patent
applications owned by Nestle Group and used by NICC as of the date of this
Agreement in connection with the manufacture or sale of Frozen Dessert Products,
and any divisions, reissues, continuations, renewals and extensions of any of
said U.S. patents or patent applications.
1.36 "Person" means and includes an individual, a corporation, a
partnership, a limited liability company, a trust, an unincorporated
organization, a government or any department or agency thereof, or any entity
similar to any of the foregoing.
1.37 "Pillsbury" means The Pillsbury Company, a Delaware corporation.
1.38 "Pillsbury Covered Products" means the products to be provided by
NICC
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pursuant to the terms of the Haagen-Dazs International Co-Pack Agreement and the
Haagen-Dazs Japan Co-Pack Agreement.
1.39 "Pillsbury Licensed Trademarks" means the Pillsbury Licensed
Trademarks (as defined in the Pillsbury Trademark/Technology License Agreement).
1.40 "Pillsbury Trademark/Technology License Agreement" means the
Trademark/Technology License Agreement among Pillsbury, HDIP, Inc., Nestec and
SPN, dated as of December 26, 2001, as may be amended, restated or substituted
from time to time.
1.41 "Pillsbury Trademark/Technology Sublicense Agreement" means the
Amended and Restated Sublicense Agreement for Pillsbury Trademarks and
Technology among SPN, Nestec and NICC, dated as of the date hereof, as may be
amended, restated or substituted from time to time.
1.42 "Representative" means any officer, director, principal, attorney,
agent, employee or other representative.
1.43 "Royalties" shall have the meaning set forth in Section 4.1(a) of
this Agreement.
1.44 "Technology Net Sales" means the total Net Sales by NICC of Frozen
Dessert Products not bearing the Nestle Licensed Trademarks but with respect to
which Nestle Licensed Technology was used in connection with the production or
sale of such Frozen Dessert Products.
1.45 "Term" shall have the meaning set forth in Section 12.1 of this
Agreement.
1.46 "Territory" means the fifty (50) States and the District of Columbia
currently forming the United States of America.
1.47 "Trademarked Net Sales" means the total Net Sales by NICC of Frozen
Dessert Products bearing the Nestle Licensed Trademarks.
1.48 "Web Site" shall have the meaning set forth in Section 3.4(i) of this
Agreement.
1.49 "Work Product" shall have the meaning set forth in Section 2.8 of
this Agreement.
II. LICENSE AND OWNERSHIP OF TECHNOLOGY
2.1 Grant of Nestle Licensed Technology.
Subject to the qualifications and restrictions set forth herein, Nestle
Group hereby grants to NICC for the Term of this Agreement the exclusive,
non-transferable right to use the Nestle Licensed Technology to manufacture
Frozen Dessert Products in the Territory for the marketing, distribution,
promotion and sale in the Territory and (a) to the extent requested by Pillsbury
(i) to co-pack Frozen Dessert Products for sale to Pillsbury for delivery to
Pillsbury's joint venture in Japan for resale in Japan pursuant to the terms of
the Haagen-Dazs Japan Co-Pack Agreement if Nestle Group elects to have NICC
manufacture such products and (ii) for
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delivery of Nestle Improved Products to the Haagen-Dazs International Business
pursuant to the terms of the Haagen-Dazs International Co-Pack Agreement (but
only to the extent such Nestle Improved Products may be supplied by NICC to the
Haagen-Dazs International Business pursuant to Section 2.9 hereof) and (b) to
the extent requested by Nestle USA or an Affiliate thereof, to co-pack Frozen
Dessert Products for sale to the Nestle International Business pursuant to the
terms of the Nestle International Co-Pack Agreement; provided, however, that
Nestle Group shall retain the exclusive right to use the Nestle Licensed
Technology to manufacture Frozen Dessert Products inside or outside the
Territory for the marketing, distribution, promotion and sale of Frozen Dessert
Products outside the Territory and to manufacture products other than Frozen
Dessert Products, whether or not for the marketing, distribution, promotion and
sale within the Territory, and all other rights to the Nestle Licensed
Technology not expressly granted to NICC hereunder.
2.2 Grant of Other Nestle Group Proprietary Information.
Subject to the qualifications and restrictions set forth herein,
Nestle Group hereby grants to NICC for the Term of this Agreement the exclusive,
non-transferable right to use the Other Nestle Group Proprietary Information in
the sale of Frozen Dessert Products in the Territory and, to the extent
requested by Pillsbury, to co-pack Frozen Dessert Products for sale to Pillsbury
for delivery to Pillsbury's joint venture in Japan for resale in Japan pursuant
to the terms of the Haagen-Dazs Japan Co-Pack Agreement, if Nestle Group elects
to have NICC manufacture such products, and for delivery of Nestle Improved
Products to the Haagen-Dazs International Business pursuant to the terms of the
Haagen-Dazs International Co-Pack Agreement (but only to the extent such Nestle
Improved Products may be supplied by NICC to the Haagen-Dazs International
Business pursuant to Section 2.9 hereof) and, to the extent requested by Nestle
USA or an Affiliate thereof, to co-pack Frozen Dessert Products for sale to the
Nestle International Business pursuant to the terms of the Nestle International
Co-Pack Agreement; provided, however, that Nestle Group shall retain the
exclusive right to use the Other Nestle Group Proprietary Information for the
sale of Frozen Dessert Products outside the Territory and for the sale of
products other than Frozen Dessert Products, whether or not for the sale within
the Territory, and all other rights to the Other Nestle Group Proprietary
Information not expressly granted to NICC hereunder.
2.3 Co-Packing.
Except as specifically set forth in Section 2.1 and Section 2.2,
NICC shall not co-pack, nor engage a third party to co-pack on NICC's behalf,
Frozen Dessert Products using the Nestle Licensed Technology or Other Nestle
Group Proprietary Information without Nestle Group's prior written consent. In
the event NICC engages a third party to co-pack on NICC's behalf, Nestle Group
may require NICC to seek customary protections for the Nestle Licensed
Technology and the Other Nestle Group Proprietary Information from such
co-packer as a condition to providing such consent. If NICC, after receiving
Nestle Group's prior written consent, engages a third party to co-pack Frozen
Dessert Products on NICC's behalf that will be labeled using any of the Nestle
Licensed Trademarks, NICC agrees to take all necessary action to ensure that
such third party complies with the Nestle Group Quality Requirements set forth
in Section 3.4 of this Agreement with respect to such Frozen Dessert Products.
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2.4 Ownership of Nestle Licensed Technology and Other Nestle Group
Proprietary Information.
NICC acknowledges that NICC's use of the Nestle Licensed Technology
and Other Nestle Group Proprietary Information shall not create in NICC any
right, title or interest in or to the Nestle Licensed Technology or Other Nestle
Group Proprietary Information, except for the rights granted to NICC by the
express terms of this Agreement, and covenants not to in any manner represent
that NICC has ownership of the Nestle Licensed Technology or the Other Nestle
Group Proprietary Information. NICC also agrees that it will not use or permit
the use of any element of the Nestle Licensed Technology or Other Nestle Group
Proprietary Information in a manner which infringes upon the rights of third
parties.
2.5 NICC Improvements.
Improvements to the Nestle Licensed Technology invented, developed,
acquired or discovered by NICC or its Representatives (the "NICC Improvements")
during the Term of this Agreement, whether or not patentable, shall be the
exclusive property of Nestle Group. NICC shall assign, and hereby does assign,
to Nestle Group any and all such NICC Improvements, the ownership of which may
arise in NICC by operation of law.
2.6 Patent Prosecution.
Nestle Group shall have the exclusive right, at its sole expense, to
make all decisions and take all actions relating to the filing and prosecution
of patent applications (including all continuations, continuations-in-part and
divisions of patents), and all renewals and extensions thereof, relating to the
Nestle Licensed Technology and NICC Improvements. NICC shall cooperate with and
provide assistance to Nestle Group in connection therewith.
2.7 [Intentionally left blank]
2.8 Ownership and License of Work Product.
(a) All works using or referencing Nestle Licensed Trademarks
(collectively, "Work Product") shall be considered works made for hire and shall
belong to Nestle Group immediately upon creation. In the event that any Work
Product does not qualify as a work made for hire, NICC shall and hereby does
irrevocably assign and transfer to Nestle Group its entire, right, title and
interest in and to such Work Product, including but not limited to the
copyrights therein, and copyright registrations and renewals of any
registrations thereof.
(b) If third parties in the Territory or elsewhere who are not
employees of NICC, including but not limited to consultants or agents, make any
contribution to the creation of Work Product so that they might be deemed to be
"authors" of the same as that term is used in present or future United States or
other copyright statutes or at common law, NICC agrees to obtain from such
parties a comparable full written assignment of rights so that the foregoing
assignment by NICC shall vest in the Nestle Group full rights in such Work
Product, free of any claims, interest or rights of third parties.
(c) NICC agrees not to permit any of its Representatives to obtain
or reserve
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by oral or written employment or other agreements any rights as "authors" of
Work Product.
(d) At the request of Nestle Group, NICC agrees to furnish the
Nestle Group with full information concerning the creation of Work Product and
with copies of assignments of rights obtained from employees and third parties.
(e) Nestle Group shall have the exclusive right, at its sole
expense, to apply for copyright and/or trademark registration, and to extend and
renew existing registrations, of the Work Product. NICC shall cooperate with and
provide assistance to Nestle Group in connection therewith. NICC shall not in
any manner represent that NICC has ownership of the Work Product.
2.9 Nestle Improved Products.
With respect to Nestle Improved Products, Nestle Group shall have
the right to prevent Nestle Improved Products from being supplied to Pillsbury
pursuant to the terms of the Haagen-Dazs International Co-Pack Agreement and/or
the Haagen-Dazs Japan Co-Pack Agreement if Nestle Group notifies NICC and
Pillsbury in writing of the fact that the Nestle Improved Product uses Nestle
Licensed Technology. Until NICC and Pillsbury are notified of such fact, NICC
shall continue to provide Nestle Improved Products to Pillsbury at no additional
cost to Pillsbury pursuant to the terms of the Haagen-Dazs International Co-Pack
Agreement and/or the Haagen-Dazs Japan Co-Pack Agreement. Upon receiving such
notice, NICC shall cease supplying the Nestle Improved Products specified in
such notice; provided that NICC may be obligated to supply such Nestle Improved
Product under the terms of the Haagen-Dazs Japan Co-Pack Agreement (if Nestle
Group elects to cause NICC to supply the Nestle Improved Product) so long as the
applicable royalty is paid pursuant to the terms thereof.
III. LICENSE, USE AND OWNERSHIP OF TRADEMARKS AND OTHER MATTERS
3.1 Trademark License.
Subject to the qualifications and restrictions set forth herein,
Nestle Group hereby grants to NICC for the Term of this Agreement the exclusive,
non-transferable right to use the Nestle Licensed Trademarks, solely in
connection with the production, marketing, distribution, promotion and sale of
Frozen Dessert Products in the Territory (or importation or exportation of
Frozen Dessert Products from or to Affiliates of Nestle Group outside the
Territory); provided, however, that FROSTY PAWS shall be the only Nestle
Licensed Trademark which may be used on Frozen Dessert Products for pets.
3.2 Ownership of Nestle Licensed Trademarks.
(a) Nestle Group shall have the exclusive right, at its sole
expense, to apply for registration, and to extend and renew existing
registrations, of the Nestle Licensed Trademarks for use in connection with
Frozen Dessert Products in the Territory or otherwise. NICC shall cooperate with
and provide assistance to Nestle Group in connection therewith. NICC shall not
in any manner represent that NICC has ownership in or to the Nestle Licensed
Trademarks and NICC will not register, or cause or permit to be registered in
the name of any
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entity other than Nestle Group, the Nestle Licensed Trademarks or any trademark,
trade name or service xxxx similar thereto, with any Governmental Authority or
any jurisdiction, whether within or outside the Territory. NICC agrees that
every use of the Nestle Licensed Trademarks shall inure to the ultimate benefit
of Nestle Group. Nestle Group shall have the exclusive right, but not the
obligation, to take all necessary or desirable actions to maintain and preserve
all of its rights to the Nestle Licensed Trademarks.
(b) NICC will not use or associate the Nestle Licensed Trademarks
with any other trademark, trade name or service xxxx in any advertising or
publicity utilized by NICC in connection with Frozen Dessert Products or
otherwise, without the prior written consent of Nestle Group. NICC further
agrees not to create a composite trademark, trade name, service xxxx, tagline,
slogan or name of a new ice cream flavor, in each case, which incorporates the
Nestle Licensed Trademarks without, in each instance, the prior written approval
of Nestle Group.
(c) NICC agrees that it will use and permit the use of the Nestle
Licensed Trademarks only on Frozen Dessert Products and will not use any element
of the Nestle Licensed Trademarks in a manner which infringes upon the rights of
third parties. Without the prior written consent of Nestle Group, NICC shall not
remove or obscure or alter in any manner the Nestle Licensed Trademarks or any
notice or legend thereof which may be displayed on Frozen Dessert Products
manufactured by or on behalf of the Nestle Group. NICC agrees to label all
Frozen Dessert Products which are labeled using the Nestle Licensed Trademarks
with the statement "Trademarks Reproduced Under License," or such other
statement as may be specified by Nestle Group from time to time.
3.3 [Intentionally left blank]
3.4 Quality Controls and Assurance.
(a) NICC agrees that the Frozen Dessert Products and Associated
Materials on which any element of the Nestle Licensed Trademarks is used shall
be of high standard and of such style, appearance and quality (including without
limitation the taste) as to be adequate and suited to their exploitation to the
best advantage and to the protection and enhancement of the Nestle Licensed
Trademarks and the goodwill pertaining thereto, that such Frozen Dessert
Products will be produced, marketed, distributed, promoted and sold in
accordance with all Applicable Laws and that the policy of NICC shall be of high
standard and to the best advantage and that the same shall in no manner reflect
adversely upon the good name of the Nestle Licensed Trademarks or Nestle Group
or any of its activities. NICC shall maintain a quality assurance program and
shall undertake to ensure that all Frozen Dessert Products produced, marketed,
distributed, promoted and sold by it hereunder shall at all times be of good
marketable quality and in strict accordance with the standards of quality
prescribed or approved by Nestle Group, which standards shall be comparable to
(and in any event no less stringent than) those standards of quality applied by
Nestle Group and its Affiliates to their own products and business ("Nestle
Group Quality Requirements").
(b) The management of NICC shall exercise daily oversight over the
marketing and advertising of Frozen Dessert Products of NICC that use the Nestle
Licensed
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Property or the Work Product. All use of the Nestle Licensed Trademarks and
Associated Materials shall be subject to the Nestle Brand Manual. Actions by
NICC that are not in conformity with Nestle Brand Manual shall require the
approval of Nestle Group.
(c) In the event that Nestle Group notifies NICC in writing that the
use of the Nestle Licensed Trademarks on any of the Frozen Dessert Products or
Associated Materials on which any of the Nestle Licensed Trademarks appear are
not in conformity with the Nestle Brand Manual, or that such Frozen Dessert
Products fail to comply with the Nestle Group Quality Requirements, NICC shall
proceed as promptly as commercially practicable (which in no case shall be later
than five (5) days) to correct such defects.
(d) NICC shall not change the product formulation, ingredients,
recipes or product specifications, as specified in the product, quality and
production manuals and any other documents related thereto (copies of which have
been delivered or made available to NICC), of Frozen Dessert Products marketed
and sold under the Nestle Licensed Trademarks, currently applicable to each of
NICC's products which were manufactured by NICC for sale in the Territory prior
to the date hereof without the prior written consent of Nestle Group. Changes in
manufacturing processes or transferring the manufacture of a product from one
plant to another that meet the Nestle Group Quality Requirements and are in
conformity with the Nestle Brand Manual will not require the prior written
consent of Nestle Group.
(e) In addition, in order to comply with the Nestle Group Quality
Requirements, NICC shall accord Nestle Group the right to inspect as often as it
desires during normal business hours (to the extent such inspectors do not
interfere with the day-to-day operation of NICC), without prior advance notice,
its facilities where Frozen Dessert Products are produced, packaged or stored in
order to confirm that NICC's use of the Nestle Licensed Trademarks is in
compliance with the Nestle Brand Manual and such production, packaging and
storage are in compliance with the Nestle Group Quality Requirements.
(f) NICC shall provide to Nestle Group, upon Nestle Group's request,
samples of the Frozen Dessert Products sold or to be sold under or by reference
to the Nestle Licensed Trademarks in order that Nestle Group may confirm that
the Frozen Dessert Products which use or refer to the Nestle Licensed Trademarks
fulfill the requirements of this Section 3.4. Prior to the sale of Frozen
Dessert Products not existing as of the date hereof to be sold under or by
reference to the Nestle Licensed Trademarks, NICC shall notify Nestle Group a
reasonable time in advance of the commencement of the sale of such product to
enable Nestle Group to sample such products, to confirm it fulfills the
requirements of this Section 3.4. NICC shall also provide to Nestle Group copies
of all labels used on products by NICC incorporating the Nestle Licensed
Trademarks.
(g) The use of the Nestle Licensed Trademarks on labels and
packaging materials shall be in a manner which ensures their protection as
trademarks under the U.S. Xxxxxx Act, 15 U.S.C. 1051 et seq.
(h) NICC shall faithfully reproduce the Nestle Licensed Trademarks
as the same may be modified from time to time by Nestle Group. Nestle Group
agrees to give NICC not less than thirty (30) days' written notice of any such
modification to a Nestle Licensed
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Trademark. Within ninety (90) days of the date of such notice, NICC agrees to
stop manufacturing Frozen Dessert Products and producing Associated Materials
using labels which incorporate such Nestle Licensed Trademark but do not contain
the modification specified by Nestle Group, unless Nestle Group consents to a
longer transition period. In addition, NICC agrees that it will discontinue the
sale of any Frozen Dessert Products and use of any Associated Materials which
incorporate such Nestle Licensed Trademark but do not contain the modification
specified by Nestle Group within one hundred eighty (180) days of the date of
such notice and that all Frozen Dessert Products and Associated Materials
incorporating such Nestle Licensed Trademark sold by NICC after such
discontinuance shall contain the modification specified by Nestle Group.
(i) Nestle Group and NICC agree to cooperate in good faith with
regard to the development of any online service or website ("Web Site")
assembled, developed or marketed by NICC, or on NICC's behalf. NICC further
agrees to obtain the written consent of Nestle Group prior to NICC's use of the
Nestle Licensed Trademarks or Work Product on any Web Site assembled, developed
or marketed by NICC, or on NICC's behalf.
IV. PAYMENT OF FEES AND ROYALTIES
4.1 Fees and Royalties.
(a) In consideration of the rights and licenses granted to NICC
pursuant to this Agreement, NICC shall pay to Nestle Group royalties as provided
in paragraph (b) below (the "Royalties").
(b) Royalties shall be payable monthly, within thirty (30) days
following the end of each month, in the amount of (i) 4.0% of the total
Trademarked Net Sales plus (ii) 1.0% of the total Technology Net Sales; provided
that no Royalties shall be payable under clause (ii) of this sentence with
respect to sales of Frozen Dessert Products for which Royalties are payable
pursuant to clause (i) of this sentence or clause (i) of Section 9.1 of the
Pillsbury Trademark/Technology Sublicense Agreement (so long as such agreement
remains in effect); and provided further that no Royalties shall be due on: (1)
any of the Frozen Dessert Products imported by NICC in retail or other packs
from any Affiliate of NICC, in relation to which a Royalty has already been paid
to Nestle Group by such Affiliate of NICC, (2) any of the Frozen Dessert
Products sold within the Territory or outside of the Territory to Affiliates of
NICC in relation to which a Royalty will become payable to Nestle Group on the
sales thereof by such Affiliates of NICC or (3) any semi-manufactured or
semi-processed goods sold within the Territory in relation to which upon further
manufacture, processing, packaging or other transformation into finished
products a Royalty will become payable to Nestle Group on the sales of such
finished products.
(c) The Royalties, fees and all other amounts payable pursuant to
this Agreement, including without limitation the Out-Of-Pocket Expenses and fees
described in Article 5 below (collectively, "Fees") are exclusive of any and all
present and future federal, national, state, local, municipal and other excise,
sales, use, property, value-added or similar taxes and fees, all of which shall
be paid by NICC. Nestle Group shall obtain and provide to NICC any certificate
of exemption or similar document required to exempt any transaction under
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this Agreement from any such tax or fee. The Fees shall be payable in United
States Dollars.
(d) Each payment of Royalties shall be accompanied by a written
report certified by the Chief Financial Officer of NICC, in detail reasonably
satisfactory to Nestle Group, specifying the method of calculation of the
Royalties for the applicable month. Any Fees or Royalties that are not paid when
due shall bear interest from the due date until paid at the lesser of (i) the
rate of 10.75% per year or (ii) the maximum rate allowed by Applicable Law.
(e) NICC agrees to keep, and to cause any sales organization
controlled by it to keep, complete and accurate records of production and sales
of all Frozen Dessert Products necessary to determine the amount of the
Royalties and to retain such records for at least ten (10) years following the
date of their preparation. NICC agrees to permit Nestle Group or its authorized
Representatives to have access to such books or records as may be necessary to
determine the Royalties with respect to any accounting period covered by this
Agreement and obtain any information as to the amount payable in case of failure
to report.
V. ACCESS; ASSISTANCE; TRAINING
5.1 Access, Assistance and Training.
Nestle Group agrees to make the Nestle Licensed Technology available
to NICC for use by NICC, to provide employees of NICC, on a need to know basis,
with access to the Nestle Licensed Technology which is available from personnel
based at Nestle Group's research and development facilities and to provide
reasonable technical and non-technical assistance of an advisory nature, in each
case in a manner consistent with the levels of access and advisory services that
Nestle Group provides to its Affiliates (in each case subject to the rules and
procedures established by Nestle Group, as such rules and procedures may be
modified from time to time by Nestle Group in its sole discretion). Nestle Group
may elect, in its sole discretion, to provide training services to certain
personnel of NICC selected by Nestle Group.
5.2 Expenses.
All Out-Of-Pocket Expenses for technical and non-technical
assistance, advisory services and training services provided by Nestle Group to
NICC under this Agreement (including without limitation under Section 5.1 above)
shall be borne by NICC. Without limiting the foregoing, NICC shall be
responsible for all reasonable Out-Of-Pocket Expenses and materials used by any
Representative of Nestle Group or any other person who may be delegated by
Nestle Group to provide technical and non-technical assistance, advisory
services or training services.
VI. LIMITATION OF NESTLE LICENSED PROPERTY
6.1 Reservation of Rights.
Nestle Group reserves all rights in the Nestle Licensed Property and
the Work Product not specifically granted to NICC pursuant to this Agreement.
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6.2 Limited Distribution.
Except as expressly provided for in Section 2.1 and Section 3.1,
NICC agrees not to sell or distribute Frozen Dessert Products that incorporate
the Nestle Licensed Technology and/or the Nestle Licensed Trademarks outside the
Territory and agrees to use its commercially reasonable best efforts to prevent
such sale or distribution.
VII. [Intentionally left blank].
VIII. CONFIDENTIALITY
8.1 NICC acknowledges and agrees that all Nestle Group Confidential
Information known or obtained by NICC, whether before or after the date hereof,
is the exclusive property of Nestle Group and that NICC shall have no interest
or rights with respect thereto except to the extent expressly provided in this
Agreement. Therefore, NICC agrees that the Nestle Group Confidential Information
shall not at any time be disclosed by NICC to any Persons other than NICC
Personnel (as defined below), in accordance with Section 8.2, whether NICC has
such information in memory, embodied in writing or other physical form, or
embodied in electronic form, without the prior written consent of Nestle Group
which may be withheld in Nestle Group's sole discretion.
8.2 NICC agrees not to use, except in connection with the utilization of
the rights granted under this Agreement, or disclose Nestle Licensed Technology,
Other Nestle Group Proprietary Information or Nestle Group Confidential
Information to any Person other than those Representatives of NICC specifically
requiring the relevant knowledge in connection with their duties to NICC as they
relate to the utilization of the rights granted in this Agreement (the "NICC
Personnel"). As a condition to obtaining access to any such Nestle Licensed
Technology, Other Nestle Group Proprietary Information or Nestle Group
Confidential Information, NICC shall require all NICC Personnel to execute a
confidentiality agreement in the form attached hereto as Exhibit D (naming
Nestle Group as third party beneficiaries thereto) (the "NICC Personnel
Confidentiality Agreement"). If NICC becomes aware of any violation by any NICC
Personnel of any of the terms of any NICC Personnel Confidentiality Agreement
relating to the Nestle Licensed Technology, Other Nestle Group Proprietary
Information or Nestle Group Confidential Information, it shall immediately
notify Nestle Group in writing and take all reasonable steps required to prevent
further disclosure. At Nestle Group's request, NICC shall take such actions as
Nestle Group may consider necessary to protect the confidentiality of and to
prevent any unauthorized use or disclosure of the Nestle Group Confidential
Information, the Nestle Licensed Technology and Other Nestle Group Proprietary
Information. NICC shall be jointly and severally liable with any breaching NICC
Personnel or other individual for any breach by such NICC Personnel or other
individual of, or failure by such NICC Personnel or other individual to comply
with, any covenant, agreement or obligation contained in, any NICC Personnel
Confidentiality Agreement, and any such a breach or failure to comply by any
such NICC Personnel or other individual shall be deemed a breach of this
Agreement by NICC.
8.3 If NICC or any of its Representatives or Affiliates is requested or
required (by oral questions, interrogatories, requests for information or
documents in legal proceedings, subpoena, civil investigative demand or other
similar process) or is required by operation of law
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to disclose Nestle Group Confidential Information, Nestle Licensed Technology or
Other Nestle Group Proprietary Information, NICC shall, to the extent legally
permitted, provide Nestle Group with prompt written notice of such request or
requirement, which notice shall, if practicable, be at least seventy-two (72)
hours prior to making such disclosure, so that Nestle Group may seek a
protective order or other appropriate remedy and/or waive compliance with the
provisions of this Agreement. If, in the absence of a protective order or other
remedy or the receipt of such a waiver, NICC or any of its Representatives is
nonetheless, in the opinion of legal counsel, legally compelled to disclose any
of the Nestle Group Confidential Information, Nestle Licensed Technology or
Other Nestle Group Proprietary Information, then NICC may disclose solely that
portion of the Nestle Group Confidential Information, Nestle Licensed Technology
or Other Nestle Group Proprietary Information which such counsel advises is
legally required to be disclosed (in which case, prior to such disclosure, NICC
will, if legally permitted, advise and, if requested by Nestle Group, consult
with Nestle Group and its counsel as to such disclosure and the nature of such
disclosure), provided that NICC shall use its reasonable efforts to preserve the
confidentiality of the Nestle Group Confidential Information, Nestle Licensed
Technology or Other Nestle Group Proprietary Information, whereupon such
disclosure shall not constitute a breach of this Agreement.
IX. GOODWILL; ENFORCEMENT AND MAINTENANCE OF RIGHTS
9.1 Goodwill Ownership.
NICC agrees that all right, title and interest in and to the Nestle
Licensed Property and the Work Product, together with the goodwill associated
therewith, is and will remain Nestle Group's exclusive property. NICC agrees
that nothing herein, nor use hereunder, shall give to NICC, or any employee of
or other Person associated with NICC, any right, title or interest in the Nestle
Licensed Property or the Work Product, except for the right to use the Nestle
Licensed Property and the Work Product in accordance with the terms of this
Agreement. NICC shall not, and shall not permit any employee of or other Person
associated with NICC to, at any time do or suffer to be done any act which would
impair Nestle Group's rights in or to the Nestle Licensed Property or the Work
Product. NICC shall not, and shall not permit any employee or Person associated
with NICC, at any time dispute, challenge or contest, directly or indirectly,
Nestle Group's exclusive right, title and interest in and to the Nestle Licensed
Property or the Work Product, or the validity thereof. NICC agrees that it shall
not, and shall not permit any employee of or other Person associated with NICC
to, without the express prior written consent of Nestle Group, apply for
registration or seek to obtain ownership of any of the Nestle Licensed Property
or the Work Product in any state or nation. NICC agrees to cooperate fully and
in good faith with Nestle Group for the purpose of securing, preserving and
protecting Nestle Group's rights in and to the Nestle Licensed Property and the
Work Product. All use of the Nestle Licensed Property and the Work Product, and
the goodwill associated therewith, by NICC or any employee of or other Person
associated with NICC shall at all times inure to the benefit of Nestle Group.
9.2 Maintenance of Rights.
NICC agrees to cooperate fully and in good faith with Nestle Group
for the purpose of securing, preserving and protecting Nestle Group's rights in
and to the Nestle
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Licensed Property and the Work Product. If any license agreement needs to be
recorded to protect the Nestle Licensed Property or the Work Product in the
Territory, the parties agree, if it is appropriate, to enter into a short form
license consistent with the terms of this Agreement for that purpose. NICC
agrees to use any and all notices, legends and/or symbols designated by Nestle
Group for the protection of the Nestle Licensed Property and the Work Product.
9.3 Infringement of Rights.
NICC shall promptly advise Nestle Group, in writing, upon becoming
aware of any infringement, potential infringement or threatened infringement of
any of the Nestle Licensed Property or the Work Product in the Territory or any
claim that the Nestle Licensed Property or the Work Product infringes the
intellectual property rights of another Person in the Territory. Nestle Group
shall have the initial right to determine the appropriate action, if any, to be
taken with respect to any such infringement. If Nestle Group or an Affiliate
initiates an enforcement suit or proceeding or intervenes to defend any claim of
infringement of the rights of another, it shall have the right to exclusive
control of any such suit or proceeding (provided, however, that NICC shall
remain a party to such suit to the extent so required). NICC shall cooperate
with Nestle Group with respect to any such proceedings, including, without
limitation, joining as a party to any litigation, if required. If, on request by
NICC, Nestle Group refuses to pursue infringers within a reasonable time, NICC
shall be entitled to take reasonable appropriate actions to challenge such
infringement at its own expense. If NICC or an Affiliate institutes suit
pursuant to this Section 9.3, Nestle Group shall (a) provide reasonable
assistance to NICC and (b) have the right to participate and represent its
interests through other counsel of its own choosing and at its own cost. In
addition, in no event shall NICC have the right, without the prior written
consent of Nestle Group, to acknowledge the validity of a claim that the Nestle
Licensed Property or the Work Product infringes the intellectual property rights
of another Person, to obtain or seek a license from such Person or to take any
other action which might impair the ability of Nestle Group to contest the claim
of such Person if Nestle Group so elects. NICC agrees at the request of Nestle
Group to make and have made reasonable modifications requested by Nestle Group
in NICC's use of the elements of the Nestle Licensed Property or the Work
Product in question or so long as such modifications would not have a material
adverse effect on NICC if Nestle Group, in its sole discretion, reasonably
exercised, determines that such action is necessary to resolve or settle the
claim or suit or eliminate or reduce the threat of a claim or suit by such
Person.
9.4 Certain Trademarks.
(a) WONKA Trademark.
NICC acknowledges that it has been advised that the WONKA trademark
is not registered, that Nestle Group is involved in certain threatened
litigation relating thereto, that Nestle Group makes no representation or
warranty of any kind to NICC with respect to the WONKA trademark or NICC's use
thereof pursuant to this Agreement and that NICC's use of the WONKA trademark
shall be at NICC's own risk. NICC agrees that, at the request of Nestle Group,
NICC shall discontinue or modify the use of the WONKA trademark if Nestle Group,
in its sole discretion, determines that such discontinuance or modification is
necessary to resolve or settle any claim or suit (or threat thereof) relating to
the WONKA trademark.
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(b) ICESCREAMERS Trademark.
NICC acknowledges that it has been advised that Nestle Group has
received a claim that the ICESCREAMERS trademark has infringed on another
party's rights to use a xxxx based on the claim that the ICESCREAMERS xxxx is
confusingly similar to such third party's xxxx. This dispute is now the subject
of litigation. As such, Nestle Group makes no representation or warranty of any
kind to NICC with respect to the ICESCREAMERS trademark or NICC's use thereof
pursuant to this Agreement, and NICC's use of the ICESCREAMERS trademark shall
be at NICC's own risk. NICC agrees that, at the request of Nestle Group, NICC
shall discontinue or modify the use of the ICESCREAMERS trademark if Nestle
Group, in its sole discretion, determines that such discontinuance or
modification is necessary to resolve or settle any claim or suit (or threat
thereof) relating to the ICESCREAMERS trademark.
X. INSURANCE
NICC shall, at its cost, procure and maintain throughout the term
hereof: (a) Worker's Compensation Insurance, including occupational disease
coverage, all as required by state statutes, and Employer's Liability Insurance
with limits of not less than Two Million Dollars ($2,000,000), (b) Commercial
General Liability Insurance including Contractual Liability, Fire, Legal and
Products Liability Coverages, including bodily injury and property damage,
personal and advertising injury (with a Broad Form Vendor's Endorsement naming
Nestle Group as additional insureds), with limits of not less than Five Million
Dollars ($5,000,000) per occurrence, (c) Excess Liability Insurance on the
occurrence form with limits of not less than Five Million Dollars ($5,000,000)
per occurrence (with a Broad Form Vendor's Endorsement to such insurance naming
Nestle Group as additional insureds), and (d) Motor Vehicle Liability Insurance
for Owned, Non-Owned and Leased Vehicles, with limits of not less than Five
Million Dollars ($5,000,000) per accident for Bodily Injury and Property Damage.
All coverages required hereunder shall be carried with insurer(s) reasonably
acceptable to Nestle Group. NICC shall submit policies and/or certificates of
insurance evidencing the above coverages (which shall include an agreement by
the insurer not to cancel or materially alter its coverage except upon thirty
(30) days' prior written notice to Nestle Group) to Nestle Group for its
approval before entering into performance of this Agreement. The coverages
provided by NICC hereunder shall be primary and non-contributing with any
similar insurance which may be maintained or provided by Nestle Group, and any
certificate furnished by NICC shall be endorsed to so state. All insurance
(other than Worker's Compensation insurance) required to be carried under this
Article shall show Nestle Group as an additional insured. Nestle Group does not
in any way represent that the coverage of insurance specified in this Article is
sufficient or adequate to protect NICC's interest.
XI. INDEMNIFICATION
11.1 Indemnification.
(a) NICC shall indemnify Nestle Group and each of its
Representatives and Affiliates and hold each of them harmless from and against
any and all Losses incurred by any of them in connection with, arising out of,
or resulting from (i) any breach of any representation or warranty made by NICC
in this Agreement; (ii) any failure by NICC to perform in a timely
17
manner any agreement, covenant or obligation of NICC pursuant to this Agreement;
(iii) the production, distribution, marketing, advertisement, packaging,
distribution and/or sale of Frozen Dessert Products bearing the Nestle Licensed
Trademarks or manufactured utilizing the Nestle Licensed Technology; (iv) the
use or operation of, or any content contained in, any Web Site; or (v) NICC's
failure to comply with any Applicable Law.
(b) The procedure for indemnification shall be as follows:
(i) The party claiming indemnification (the "Claimant")
shall promptly give written notice to the party from whom indemnification is
claimed (the "Indemnifying Party") of any claim, whether between the parties or
brought by a third party, specifying (a) in reasonable detail, the factual basis
for such claim and (b) in good faith, the estimated amount of such claim. If the
claim relates to an action, suit or proceeding filed by a third party against
the Claimant, such notice shall be given by Claimant within fifteen (15)
business days after written notice of such action, suit or proceeding was
received by Claimant. The failure of the Claimant to provide such written notice
within the time period specified shall not relieve the Indemnifying Party of its
indemnification liability under Section 11.1(a), unless and except to the extent
that such failure materially prejudices the rights of the Indemnifying Party in
defending against the claim or action.
(ii) Following receipt of notice from the Claimant of a
claim, the Indemnifying Party shall have thirty (30) days to make such
investigation of the claim as the Indemnifying Party deems necessary or
desirable. For the purposes of such investigation, the Claimant agrees to make
available to the Indemnifying Party and/or its authorized Representative(s) the
information relied upon by the Claimant to substantiate the claim. If the
Claimant and the Indemnifying Party agree at or prior to the expiration of said
thirty (30) day period (or any mutually agreed upon extension thereof) to the
validity and amount of such claim, the Indemnifying Party shall immediately pay
to the Claimant the full amount of the claim. If the Claimant and the
Indemnifying Party do not agree within said period (or any mutually agreed upon
extension thereof), subject to clause (b)(iii) below with respect to third party
claims, the Claimant may seek appropriate legal remedy.
(iii) With respect to any claim by a third party as to which
the Claimant is entitled to indemnification hereunder, the Indemnifying Party
shall have the right, at its own expense, to participate in or assume control of
the defense of such claim, and the Claimant shall cooperate reasonably with the
Indemnifying Party, subject to reimbursement for actual Out-Of-Pocket Expenses
incurred by the Claimant as the result of a request by the Indemnifying Party.
Claimant shall have the right to approve legal counsel selected by Indemnifying
Party, which approval shall not be unreasonably withheld. If the Indemnifying
Party elects to assume control of the defense of any third-party claim, the
Claimant shall have the right to participate in the defense of such claim with
legal counsel of its own selection; provided, however, that the Claimant shall
pay the fees and expenses of such counsel unless the named parties to any such
claim include both the Claimant and the Indemnifying Party and the Claimant has
been advised by counsel that there may be one or more legal defenses available
to it which are different from or additional to those available to the
Indemnifying Party (in which case, if the Claimant informs the Indemnifying
Party in writing that it elects to employ separate counsel at the expense of the
18
Indemnifying Party, the Indemnifying Party shall not have the right to assume
the defense of such claim on behalf of the Claimant), it being understood that
the Indemnifying Party shall not, in connection with any one claim, be liable
for the fees and expenses of more than one separate firm of attorneys at any
time for the Claimant. If the Indemnifying Party does not elect to assume
control or otherwise participate in the defense of any third party claim, it
shall be bound by the results obtained by the Claimant with respect to such
claim; provided, however, that no settlement or compromise of any claim which
may result in any indemnification liability may be made by the Claimant without
the prior written consent of the Indemnifying Party which consent shall not be
unreasonably withheld. No settlement or compromise of any claim may be made by
the Indemnifying Party without the prior written consent of the Claimant which
consent shall not be unreasonably withheld. In the event of any conflict between
the provisions of this Section 11.1(b) and Section 9.3, the provisions of
Section 9.3 shall prevail.
(iv) If a claim, whether between the parties or by a third
party, requires immediate action, the parties will make every effort to reach a
decision with respect thereto as expeditiously as possible.
(v) Upon satisfaction of any third party claim pursuant to
this Article XI, the Indemnifying Party shall be subrogated to all rights and
remedies of the Claimant against any third party with respect to such claim;
provided that such right of subrogation shall be limited in amount to the amount
actually received by the Claimant from the Indemnifying Party with respect to
such claim; and provided, further, that any claim by an Indemnifying Party
against any such third party resulting from such right of subrogation shall be
subordinated to any claim of the Claimant against such third party for amounts
in excess of the amount actually received by the Claimant from the Indemnifying
Party pursuant to this Article XI.
(vi) The indemnification rights provided in Sections 11.1(a)
shall extend to the shareholders, equityholders, Affiliates, members and
Representatives of the Claimant, although for the purpose of the procedures set
forth in this Section 11.1(b), any indemnification claims by such parties shall
be made by and through the Claimant.
11.2 Equitable Relief.
Notwithstanding any other provision of this Agreement to the
contrary, due to the fact that the unauthorized use, transfer or dissemination
of the Nestle Group Confidential Information, the Nestle Licensed Property or
the Work Product, or the improper use thereof in violation of Nestle Group's
instructions and/or Applicable Law, would diminish substantially the value
thereof and cause irreparable harm to Nestle Group which could not be adequately
addressed by monetary damages, if NICC breaches any of the provisions of
Articles II, III, VIII or IV or of Sections 12.3 or 13.3 of this Agreement,
Nestle Group shall be entitled, without limiting its other rights or remedies,
to obtain equitable relief to prevent or restrain such breach (including without
limitation injunctive relief), without the need for posting a bond or for any
other undertaking, including without limitation proving the inadequacy of
monetary damages.
XII. TERM AND TERMINATION
12.1 Term.
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The term of this Agreement ("Term") shall commence as of the date of
this Agreement and shall continue until December 31, 2009, unless sooner
terminated as set forth herein.
12.2 Termination.
Notwithstanding anything contained herein, either party shall be
entitled, at any time by notice given in writing to the other, to terminate this
Agreement forthwith in any of the following events:
(a) if the other party shall go into liquidation other than a
voluntary liquidation for the purpose of reorganisation, reconstruction or
amalgamation;
(b) if the other party shall cease to carry on business otherwise
than due to circumstances as foreseen in clause (a) above;
(c) if the other party shall commit any material breach of any of
the provisions of this Agreement and shall fail within thirty (30) days of being
notified thereof to remedy such breach, and, for the purpose of this subsection,
the failure by NICC to pay when due any amounts payable to Nestle Group pursuant
to this Agreement shall be deemed to be a material breach of this Agreement; or
(d) if the other party or a significant part or all of its/their
business and/or assets or the control, management, ownership, benefit or
utilisation thereof, or if the control, ownership or right of disposition of
its/their shareholders or equityholders in respect of their shares or equity
interests in that other party are confiscated, requisitioned, nationalised
and/or adjudicated or lost or in any other manner acquired without the consent
or against the will of that other party or its shareholders or equityholders, as
the case may be, by or on behalf of or under any law or at the instance of any
Governmental Authority de jure or de facto.
In addition, Nestle Group shall have the right to terminate this Agreement
immediately upon notice to NICC if (i) Nestle S.A. ceases to own, directly or
indirectly, a sixty-six percent (66%) equity interest in NICC, or (ii) NICC
commits any breach of any provisions of Articles II, III, VI, VIII, IX, X or XI
or of Section 13.3, unless said breach is cured to the reasonable satisfaction
of Nestle Group within five (5) days after receipt by NICC of notice and a
description of the breach; provided, however, that if such cure is immediately
undertaken but cannot be effected within five (5) days, NICC shall have such
additional period (not exceed an additional ten (10) days) as may be reasonably
necessary to complete such cure, subject to the requirement that NICC shall
diligently complete the cure process.
12.3 Effects of Termination.
Upon expiration or earlier termination of this Agreement for any
reason, all rights and obligations of the parties under this Agreement shall
cease, except that NICC shall be obligated to pay to Nestle Group all
outstanding Fees that are payable with respect to the period prior to the
effective date of such expiration or earlier termination. Except as otherwise
agreed by the parties in writing, upon such expiration or earlier termination:
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(a) NICC shall immediately and forever cease all use of the Nestle
Licensed Property and the Work Product, and NICC shall deliver without delay to
Nestle Group all drawings, models, plans, manufacturing instructions, laboratory
instructions and any other documentation or materials in NICC's possession or
under its control (without making or retaining copies thereof) including without
limitation any and all documentation or materials concerning or relating to
Nestle Group Confidential Information; and
(b) Unless Nestle Group shall agree in writing to a limited
transition period, NICC shall immediately remove all signs and other markings
from each of its facilities and articles which indicate any connection to Nestle
Group, or its Affiliates or the Nestle Licensed Trademarks.
12.4 No Rights to Compensation Upon Expiration or Termination.
In the event of a termination pursuant to any of the provisions of
this Agreement or upon expiration of this Agreement, Nestle Group shall not have
any obligation to NICC, or to any equityholder or Representative of NICC, for
compensation or for damages on account of the loss by NICC or such equityholder
or Representative of present or prospective sales, investments, compensation or
goodwill. NICC, for itself and on behalf of each of its equityholders and
Representatives, hereby waives any rights which may be granted to it or them
under the laws and regulations of the Territory or otherwise which are not
expressly granted to it or them by this Agreement.
12.5 Survival.
Notwithstanding anything to the contrary contained herein, the
provisions of Sections 2.4, 2.5, 2.6, 2.8, 3.2, 4.1, 12.2, 12.3, 12.4, 13.4,
13.5, 13.6, 13.8, 13.10 and 13.12 and Articles VIII, IX, X, and XI of this
Agreement shall survive any expiration or earlier termination of this Agreement
according to their respective terms.
XIII. MISCELLANEOUS
13.1 Entire Agreement.
This Agreement (including each of the exhibits attached hereto)
amends and restates the Previous Agreement in its entirety, and constitutes the
entire agreement among the parties with regard to the subject matter hereof, and
supersedes all prior oral and written, and all contemporaneous oral agreements
and understandings relating thereto; provided, however, that any obligation
arising under the Previous Agreement prior to the date of this Agreement shall
survive the amendment and restatement of the Previous Agreement. There are no
agreements, understandings, restrictions, warranties or representations relating
to such subject matter among the parties other than those set forth herein. To
the extent that any other document or the Nestle Brand Manual may contradict or
make unclear the terms of this Agreement, the terms of this Agreement shall
prevail. This Agreement may only be amended by the prior written mutual
agreement of the parties.
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13.2 Further Assurances.
Each of the parties hereto does hereby covenant and agree on behalf
of itself, its successors, and its assigns, without further consideration, to
prepare, execute, acknowledge, file, record, publish, and deliver such other
instruments, documents and statements, and to take such other action as may be
required by law or necessary or reasonably requested to effectively carry out
the purposes of this Agreement.
13.3 No Assignment.
This Agreement and all rights and duties hereunder are personal to
NICC and shall not, without the prior written consent of Nestle Group in its
sole discretion, be transferred assigned, mortgaged, sublicensed or otherwise
encumbered by NICC or by operation of law.
Nestle Group may assign this Agreement to any Affiliate without the
consent of NICC and shall furnish written notice of such assignment to NICC.
13.4 Notices.
Any notice, consent, payment, demand, or communication required or
permitted to be given by any provision of this Agreement shall be in writing and
shall be (a) delivered personally to the person or to an officer of the person
to whom the same is directed, or (b) sent by facsimile (with confirmation of
transmission) or registered or certified mail, return receipt requested, postage
prepaid, addressed as follows: if to Nestle Group, to Nestle S.A., 1800 Vevey,
Canton of Vaud, Switzerland, Attention: General Counsel, Telecopy No. 011 4121
924 4568 with a copy to Nestle USA, Inc., 000 Xxxxx Xxxxx Xxxxxxxxx, Xxxxxxxx,
Xxxxxxxxxx 00000, Attention: General Counsel, Telecopy No. (000) 000-0000, or to
such other address as Nestle Group may from time to time specify by notice to
NICC, or if to NICC, to Nestle Ice Cream Company, LLC, 00000 Xxxxxxx Xxxx.,
Xxxxx 000, Xxx Xxxxx, Xxxxxxxxxx 00000, Attention: Xxxxx X. Xxxxxxxx, Chief
Executive Officer, Telecopy No. (000) 000-0000, with a copy to Nestle USA, Inc.,
000 Xxxxx Xxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000, Attention: General
Counsel, Telecopy No. (000) 000-0000, or to such other address as NICC may from
time to time specify by notice to Nestle Group. Any such notice shall be deemed
to be delivered, given and received for all purposes as of: (i) the date so
delivered, if delivered personally, (ii) upon receipt of a confirmation of
successful transmission, if sent by facsimile, or (iii) on the date of receipt
or refusal indicated on the return receipt, if sent by registered or certified
mail, return receipt requested, postage and charges prepaid and properly
addressed.
13.5 Governing Law.
This Agreement, including its existence, validity, construction, and
operating effect, and the rights of each of the parties hereto, shall be
governed by and construed in accordance with the laws of the State of New York
without regard to otherwise governing principles of conflicts of law.
13.6 Construction.
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This Agreement shall be construed as if all parties prepared this
Agreement.
13.7 Captions - Pronouns.
Any titles or captions contained in this Agreement are for
convenience only and shall not be deemed part of the text of this Agreement. All
pronouns and any variations thereof shall be deemed to refer to the masculine,
feminine, neuter, singular or plural as appropriate.
13.8 Successors and Assigns.
The covenants, terms and provisions set forth herein shall inure to
the benefit of and be enforceable by the parties, their assigns and successors
in interest, including without limitation, any entity into which either of the
parties may be merged or by which it may be acquired, provided that, except as
otherwise expressly provided herein, rights, duties and obligations hereunder
may not be assigned by any party hereto without the prior written consent of the
other parties and any attempt to assign this Agreement without such consent
shall be considered null and void.
13.9 Severability.
In the event that any provision of this Agreement or any word,
phrase, clause, sentence or other portion thereof (including, without
limitation, the geographical and temporal restrictions contained herein) should
be held to be unenforceable or invalid for any reason, such provision or portion
thereof shall be modified or deleted in such a manner so as to make this
Agreement as modified legal and enforceable to the fullest extent permitted
under Applicable Laws. In the event that any restrictive covenant of this
Agreement, or any word, phrase, clause, sentence or other portion thereof, is
held unenforceable because of the duration or geographic scope of such
provision, it is the intention of the parties that the arbitrator (or court, if
applicable) shall have the power to modify such provision to the extent
necessary to render the provision enforceable and such provision as so modified
shall be enforced.
13.10 Relationship Among Parties.
The parties acknowledge that NICC is an independent contractor and
is not an agent, partner, employee, or joint venturer of Nestle Group. NICC
shall not attempt to bind or obligate Nestle Group in any way nor shall NICC
represent that NICC has any right to do so. Neither party has any right or
authority to assume or to create any obligation or responsibility on behalf of
the other party except as may from time to time be provided by written
instrument signed by both parties.
13.11 Counterparts.
This Agreement may be executed in any number of multiple
counterparts, each of which shall be deemed to be an original copy and all of
which, when taken together, shall constitute one agreement, binding on all
parties hereto.
13.12 Dispute Resolution.
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The parties hereby agree that claims, disputes or controversies of
whatever nature, arising out of, in connection with, or in relation to the
interpretation, performance or breach of this Agreement (or any other agreement
contemplated by or related to this Agreement), including without limitation any
claim based on contract, tort or statute, any claim for equitable relief, or the
arbitrability of any claim hereunder (collectively, a "Claim") shall be
submitted for resolution to the Chief Executive Officer of Nestle S.A. If no
resolution is obtained through good faith negotiations in this manner within
fifteen (15) days after such matter is so submitted, any party hereto may elect
to submit the Claim to mediation under the Commercial Mediation Rules of the
American Arbitration Association. All parties shall participate in such
mediation. The mediator shall not have the authority to impose a settlement on
the parties, but shall attempt to help them reach a satisfactory resolution of
the Claim. The mediator shall end the mediation whenever, in his or her
judgment, further efforts at mediation would not contribute to a resolution of
the submitted item but in no event later than fifteen (15) days after the matter
has been referred to the mediator. In the event mediation is not successful, the
Claim shall be settled promptly and expeditiously, at the request of any party
of this Agreement, exclusively by final and binding arbitration conducted in New
York. Each of Nestle S.A. and NICC shall appoint an arbitrator within five (5)
business days after the end of the mediation and the arbitrators selected by
Nestle S.A. and NICC shall jointly select another arbitrator within two (2)
business days of the appointment of the last arbitrator. The final decision
regarding the Claim shall be determined by a majority vote of the arbitrators
and in accordance with the Commercial Arbitration Rules then in effect of the
American Arbitration Association. The parties expressly agree that the
arbitrators shall determine the discovery methods that shall be available to the
parties under this Section 13.12 as appropriate under the circumstances. Each
party acknowledges the importance to resolve any disputes in an expeditious
manner and shall act in good faith and cooperate to resolve the dispute in the
most expeditious manner reasonably practicable. Each party hereto expressly
consents to, and waives any future objection to, such forum and arbitration
rules. Judgment upon any award may be entered by any state or federal court
having jurisdiction thereof. Except as required by Applicable Law, no party nor
the arbitrators shall disclose the existence, content, or results of any
arbitration hereunder without the prior written consent of all parties. Except
as provided herein, the Federal Arbitration Act shall govern the interpretation,
enforcement and all proceedings pursuant to this Section 13.12. The arbitrators'
fees and any filing or other fees required by the Commercial Arbitration Rules
shall, to the extent required, initially be paid by the party requesting
arbitration, but shall be assessed against the party which does not prevail in
the arbitration.
Adherence to this dispute resolution process shall not limit the
right of the parties hereto to obtain any provisional remedy, including without
limitation, injunctive or similar relief, from any court of competent
jurisdiction as may be necessary to protect their respective rights and
interests pending arbitration. Notwithstanding the foregoing sentence, this
dispute resolution procedure is intended to be the exclusive method of resolving
any Claims arising out of or relating to this Agreement.
13.13 Supply of Other Products.
Notwithstanding the license grants in Sections 2.1 and 3.1 hereof,
the parties acknowledge and agree that Nestle Group shall retain the right to
use (and to license the use of) the Nestle Licensed Trademarks and Nestle
Licensed Technology in connection with (a) the sale
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or supply of products (that are not Frozen Dessert Products) to restaurants or
other third parties in the Territory for use in the preparation by such
restaurants and other third parties in the Territory of Frozen Dessert Products
that incorporate such products supplied or sold by Nestle Group or its
Affiliates and (b) the promotion, marketing, sale and/or distribution by such
restaurants and other third parties of such Frozen Dessert Products. By way of
example, Affiliates of Nestle Group would be permitted to sell pieces of
BUTTERFINGER candybars and DRUMSTICK cones to McDonald's restaurants, which
pieces may be used by McDonald's restaurants to prepare and sell McFlurries
(which may be identified by the BUTTERFINGER and DRUMSTICK trademarks) to
consumers.
(Signature Page Follows)
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement
under seal as of the date first set forth above.
Nestle S.A.
By: /s/ Xxxx-Xxxxx Xxxxx
-------------------------------
Name: Xxxx-Xxxxx Xxxxx
Title: Senior Vice President
Nestec Ltd.
By: /s/ Xxxxxxxxx X. Xxxxxxx
-------------------------------
Name: Xxxxxxxxx X. Xxxxxxx
Title: Assistant Vice President
Societe des Produits Nestle S.A.
By: /s/ Xxxx-Xxxxxx Xxxxxx
---------------------------
Name: Xxxx-Xxxxxx Xxxxxx
Title: Assistant Vice President
Nestle Ice Cream Company, LLC
By: /s/ Xxxxx X. Xxxxxxxx
-------------------------------
Name: Xxxxx X. Xxxxxxxx
Title: Chief Executive Officer
