Exhibit 10.13
TRADEMARK LICENSE AGREEMENT
RELATING TO BOSS GOLF AND OTHER MARKS
THIS LICENSE AGREEMENT is entered into and is effective as of the 5th
day of November, 1997, by and between I.C. Xxxxxx & Company L.P. ("Licensor")
and Ambra Inc. ("Licensee") (each a "Party" and collectively the "Parties").
R E C I T A L S
WHEREAS, Licensor is the successor in interest of Brookhurst, Inc. to
certain trademark rights in the United States of America, including the
trademarks listed on Exhibit A hereto (each individually a "Licensed
Trademark" and collectively the "Licensed Trademarks"); and
WHEREAS, Licensee desires to obtain a license to manufacture, cause to
be manufactured, market, distribute and sell products bearing the Licensed
Trademarks throughout the world (the "Territory");
NOW, THEREFORE, in consideration of the mutual promises and covenants
herein, the receipt and sufficiency of which are hereby acknowledged, the
Parties agree as follows:
1. RIGHTS GRANTED
1.1 Licensor hereby grants to Licensee, and Licensee accepts, upon the
terms and conditions hereinafter set forth, a royalty-free exclusive license
to use, and to cause and permit sublicensees to use (but without any
obligation to use), the Licensed Trademarks in connection with the
manufacture, marketing, distribution and sale of products identified in the
trademark applications for the Licensed Trademarks in connection with each
respective Licensed Trademark (the "Licensed Products") and on labels,
displays and other materials used in connection with the Licensed Products.
1.2 Licensee shall have the exclusive right (but not the obligation) in
the name of Licensor, but at Licensee's sole expense, to direct the
protection and enforcement of the Licensed Marks, including, without
limitation, the prosecution with the United States Patent and Trademark
Office ("USPTO") of those applications for registration which are identified
in Exhibit A. Licensee shall do so solely at its own discretion, with
complete freedom to abandon or withdraw any such application as it deems fit,
and not subject to any dispute by Licensor or review in any arbitration or
litigation. Licensor shall cooperate with and assist Licensee in protecting
and defending the Licensed Marks and in all proceedings with the USPTO,
including, without limitation, by providing any documentation or specimens
required to prosecute such applications and executing any documents required
to fulfill the terms of this paragraph 1.2, including execution of Powers of
Attorney to counsel of Licensee's choice. Without limiting the generality of
the foregoing, within 30 days of the date hereof, Licensor agrees that it will
divide Application No. 74/323,654 to create two new applications therefrom,
one each for Class 12 and Class 16 and the goods listed in those Classes
respectively, including without limitation by filing a Request to Divide with
the PTO. Licensee shall provide Licensor with copies of all documents
executed or filed by Licensee on Licensor's behalf prior to effecting any
filing or otherwise using the document, and, in the event there is an urgent
need to make a filing on behalf of Licensor for which there is reasonably no
time to provide an advance copy to Licensor, then Licensee shall effect the
filing and immediately provide a copy to Licensor. Licensor shall promptly
notify Licensee in writing of any infringements, claims, or actions by others
in derogation of the Licensed Marks of which Licensor becomes aware; provided
that Licensor shall have the right to determine whether any action should be
taken on account of such infringements, claims or actions. Licensor shall not
take any action on account of any such infringement, claim or action without
the prior written consent of Licensee. In the event Licensee initiates or
defends any legal proceedings on account of any infringements, claims or
actions by others in derogation of the Licensed Marks, Licensor agrees to
cooperate with and assist Licensee to the extent reasonably necessary to
protect the Licensed Marks, including, but not limited to, being joined as a
necessary or desirable party to such proceedings. All actions required by
Licensee of Licensor pursuant to this paragraph shall be at Licensee's cost,
and Licensee shall bear all risks and liabilities associated with the efforts
it has taken or failed to take with respect to the protection or maintenance
of the Licensed Marks, including with respect to the abandonment of any
application for a Licensed Xxxx. Licensor will have no claim for damages or
other relief nor shall seek damages or any other relief against Licensee for
any actions (or inaction) undertaken in accordance with this paragraph.
1.3 As and when each application for a Licensed Trademark matures to
registration, Licensor agrees to assign to Licensee any and all right, title
and interest of Licensor in and to said Licensed Trademark, together with the
goodwill associated therewith. Licensor shall execute and deliver to
Licensee an executed trademark assignment in the form attached hereto as
Exhibit B within thirty (30) days after Licensee has provided Licensor with a
copy of the registration certificate for said Licensed Trademark.
1.4 The Parties acknowledge and agree that, in any event, to the extent
any Licensed Trademark is not assigned to Licensee pursuant to Section 1.3
above, such Licensed Trademarks remain the subject of an Option Agreement by
and between Licensor and Licensee of even date herewith.
1.5 Notwithstanding any other provision of this Agreement, Licensee,
and Licensor agree and acknowledge that nothing in this Agreement is
intended to prejudice, limit, curtail, or modify in any way any rights
granted to Licensor and Licensee, respectively, under the Foreign Boss Rights
Acquisition Agreement between the parties dated September 30, 1997 or the
Concurrent Use Agreement, the Secured Limited Recourse Promissory Note and
Option Agreement between the parties (or related parties) of even date
herewith. All use by Licensee, a related party or any party taking under
Licensee of any Licensed Trademark shall be subject to the restrictions
imposed on Licensee and/or any related party under the Concurrent Use
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Agreement, and the Licensed Trademarks shall be considered "Hugo Boss Marks"
under the Concurrent Use Agreement.
2. OBLIGATIONS OF THE PARTIES
2.1 Licensee agrees that all Licensed Products manufactured hereunder
shall be at least equivalent in terms of quality to products previously
manufactured by or for Licensee. Licensee shall permit reasonable inspection
by Licensor of the Licensed Products manufactured, marketed, distributed
and/or sold by Licensee.
2.2 Licensee agrees that it shall comply with all applicable labeling
and other laws affecting the manufacture, storage, shipment, labeling and
sale of the Licensed Products pursuant to the terms of this Agreement, and at
all times to conduct its activities under this Agreement in a lawful manner.
3. REPRESENTATIONS AND WARRANTIES
3.1 Licensor represents and warrants that it has full corporate right,
power and authority to enter into this Agreement and to perform all of its
obligations hereunder. Licensor further represents and warrants that it has
granted no other existing license for the use of the Licensed Trademarks on
Licensed Products in the Territory and that it shall grant no such other
license.
3.2 Licensee represents and warrants that it has full right, power and
authority to enter into this Agreement and to perform all of its obligations
hereunder.
3.3 Nothing herein contained shall be construed to constitute the
Parties as partners or as joint venturers or either as agent of the other,
and Licensee shall have no power to obligate or bind Licensor (except as set
forth in Section 1.2), and Licensor shall have no power to obligate or bind
Licensee.
4. TERM AND TERMINATION
4.1 This Agreement shall continue in effect unless terminated earlier
pursuant to Paragraph 4.2 below.
4.2 In the event of a material breach of this Agreement, the
non-breaching party may terminate this Agreement upon ninety (90) days
written notice to the breaching party, specifying the material breach, with
the breaching party having that period in which to cure its breach. The
rights and obligations under this Agreement (except for the indemnification
obligations hereunder which shall survive for three (3) years after
termination) shall automatically terminate upon the earlier to occur of (i)
the assignment to Licensee pursuant to Section 1.3 above and/or the
withdrawal or abandonment of applications for all of the Licensed Trademarks
or (ii) the
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termination of the Foreign Manufacturing Rights Agreement or the Concurrent
Use Agreement referred to above.
5. INDEMNIFICATION
5.1 Licensee hereby agrees to indemnify, defend and hold harmless
Licensor and any of its affiliates from and against any and all out-of-pocket
expenses and costs (including reasonable attorney's fees, disbursement and
other charges but excluding lost profits) (collectively referred to as
"Expenses") actually incurred by Licensor and any of its affiliates arising
out of (i) any claims brought by any third party relating to any products
manufactured, sold or distributed by Licensee, its affiliates or any
licensee thereof ("Licensee Party"), and (ii) any breach of the terms of this
Agreement by any License Party.
5.2 Notwithstanding any other provision of this Agreement, Licensor
makes no representations or warranties of any kind, and shall have no
responsibility, liability or obligations whatsoever to Licensee or any
Licensee Party as a result of this Agreement (including, without limitation,
for any claims of indemnity), with respect to any matter relating to the
Trademark Assets purchased by Licensor under the Worldwide Rights Acquisition
Agreement (as such term is therein defined) relating to the quality of title,
condition our use of the Licensed Trademarks, or the conduct of the business
thereunder prior to the time Licensor acquired the Licensed Trademarks.
5.3 Licensee agrees that either it or a related party shall procure and
maintain in full force and effect during the term of this Agreement at its
sole cost and expense a policy of insurance insuring against those risks
customarily insured under comprehensive general liability policies,
including, without limitation, "product liability" and "completed
operations", with such limits of coverage as shall be reasonable in light of
the activities of Licensee hereunder.
6. GENERAL
Sections 9.1, 9.2, 9.3, 9.5, 9.6, 9.7, 9.8, 9.9, 9.10, 9.11 and 9.12 of
the Foreign Boss Rights Acquisition referred to above are hereby incorporated
herein by this reference. Section 9.4 of such agreement is also incorporated
herein by reference, except that the references to "paragraphs 1.1, 3.2, 3.3,
6.1 and 6.2" shall be deemed replaced by Sections 1.2 and 1.3 hereof. To the
extent that there is any express or direct conflict or inconsistency between
the Foreign Boss Rights Acquisition Agreement and this Agreement, this
Agreement controls.
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IN WITNESS WHEREOF, the Parties have executed this Agreement.
I.C. XXXXXX & COMPANY L.P.,
a Delaware limited partnership
By: I.G. DESIGN, INC., a Delaware
corporation, its general partner
By: /s/ Xxxxxx X. Xxxxx
--------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By: /s/ Xxxxxx X. Xxxx
--------------------------------
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
AMBRA INC.
By: /s/ Jorg-Xxxxx Xxxxxx
--------------------------------
Name: Jorg-Xxxxx Xxxxxx
Title: Chairman
By: /s/ Xxxx-Xxxxxx Xxxxxx
--------------------------------
Name: Xxxx-Xxxxxx Xxxxxx
Title: Vice President
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EXHIBIT A
ISAAC'S U.S. TRADEMARK APPLICATIONS
Trademark Serial Number
----------- ---------------
BABY BOSS 74/346,231
BABY BOSS 74/801,565
BOSS 75/013,293
BOSS 74/323,654
(international classes
12 and 16 only)
BOSS 74/801,552
BOSS 74/263,623
BOSS 74/269,769
BOSS AMERICA 74/346,232
BOSS AMERICA 74/801,551
BOSS BUSINESS 74/355,226
BOSS BUSINESS 74/801,657
BOSS GOLF 74/346,233
BOSS GOLF 74/801,554
LADY BOSS 74/346,230
LADY BOSS 74/801,550
LITTLE BOSS 74/346,234
LITTLE BOSS 74/801,545
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EXHIBIT B
TRADEMARK ASSIGNMENT
This Assignment is effective as of the ___ day of _____________, 199__,
by and between I.C. Xxxxxx & Company L.P., a Delaware Limited Partnership
with its principal place of business at 0000 Xxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx
00000 ("Assignor") and Ambra Inc., a Delaware corporation with its
principal place of business at _____________________ ("Assignee").
W I T N E S S E T H:
WHEREAS, Assignor is the owner of the United States registered trademark
__________ , subject of U.S. Reg. No. _________ , and the common law rights
in said registered trademark, together with the goodwill of the business
associated therewith (the "Trademark");
WHEREAS, Assignee desires to acquire all right, title and interest of
Assignor in and to the Trademark;
NOW, THEREFORE, to All Whom It May Concern, be it known that for good
and valuable consideration, the receipt and adequacy of which are hereby
acknowledged, Assignor does hereby sell, assign, transfer and set over to
Assignee, its successors and assigns forever, its entire right, title and
interest in and to the Trademark, and all rights of action at law and in
equity, including the right to xxx and collect damages, for the past, present
or future infringement thereof, the same to be held and enjoyed by Assignee
for its own use and enjoyment, and for the use and enjoyment of its
successors, assigns or other legal representatives forever, as fully and
entirely as the same would have been held and enjoyed by Assignor had the
assignment and sale set forth herein not been made.
Assignor, for itself, its successors and assigns, hereby covenants and
agrees that at any time and from time to time upon the request of Assignee,
Assignor will execute, acknowledge and deliver, or cause to be executed,
acknowledged and delivered, all such other and further instruments, transfers
and assurances as may be reasonably requested by Assignee in order for
Assignee, its successors and assigns to enjoy the benefits of this Assignment.
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IN TESTIMONY WHEREOF, Assignor has caused these presents to be signed by
its officer thereunto duly authorized, and its corporate seal to be hereto
affixed.
I.C. XXXXXX & COMPANY L.P.,
a Delaware limited partnership
By: I.G. DESIGN, INC., a Delaware
corporation, its general partner
By: _____________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By: _____________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
COUNTY OF NEW YORK :
: ss:
STATE OF NEW YORK :
On this ____ day of November, 1997, before me personally appeared Xxxxxx
X. Xxxxx and Xxxxxx X. Xxxx, to me personally known, who, being duly sworn,
did say that they are the Chairman and Co-Chief Executive Officer and
President and Co-Chief Executive Officer, respectively, of I.G. Design, Inc.,
a Delaware corporation and the general partner of I.C. Xxxxxx & Company L.P.,
a Delaware limited partnership, and that the foregoing instrument was signed
and sealed on behalf of the corporation by authority of its Board of
Directors and on behalf of the limited partnership by authority of its
general partner, and that they acknowledge such instrument to be the free
deed and act of said limited partnership for the purposes therein set forth
and intending that this instrument be recorded.
________________________________
Notary Public
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