Exhibit 10.17
DATED DEC 01 2003
BETWEEN
THE ROARING WATER BAY (RESEARCH AND
DEVELOPMENT) COMPANY LIMITED
AND
GSRWB, INC.
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LICENCE AGREEMENT
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THIS LICENCE AGREEMENT BETWEEN THE ROARING WATER BAY (RESEARCH AND DEVELOPMENT)
COMPANY LIMITED, an Irish company of Roaring Xxxxx Xxx Xxxxx, 0 Xxxxxxx Xxxxx,
Xxxxxx 0, Xxxxxxx (hereinafter called "RWBRDCL") of the One Part; and
GSRWB, Inc., a Delaware corporation whose principal place of business is 85 - 00
Xxxxx Xxxxxx, Xxxxx X, Xxxx Xxxx, Xxx Xxxx, 00000 (hereinafter called "GSRW") of
the Other Part.
WHEREAS RWBRDCL is in possession of an invention for which certain Patents (as
defined below) have been obtained.
WHEREAS RWBRDCL has agreed to grant GSRW an exclusive license to use the said
invention for which the said Patents have been obtained.
IT IS HEREBY AGREED AS FOLLOWS:-
1 DEFINITIONS
In this Licence Agreement the following words and expressions shall have the
following meanings:-
"APPLICATION(S)" means any Application for Letters Patent filed in
respect of the Invention, including any renewals,
extensions or improvement. "Applications" shall be
construed accordingly.
"ARBITRATOR" has the meaning set out in Clause 21 hereof.
"CALL OPTION" means the option granted by RWBRDCL to GSRW in clause 3 hereof.
"CALL OPTION PERIOD" means the duration of this Licence Agreement
"CONFIDENTIAL INFORMATION" has the meaning set out in Clause 8 hereof.
"INVENTION(S)" means the claimed subject matter of any of the
Patents listed in Schedule One, including without
limit all improvements thereon. "Inventions" shall
be construed accordingly.
"NET INVOICE PRICE" means the sales price at the time of the subject
sale of the Product, excluding all taxes.
"NOTICE" has the meaning set out in Clause 3.2 hereof.
"OPERATIVE DATE" means the 1st day of December 2003.
"PARTIES" means the parties to this Licence Agreement.
"PATENT(S)" Patents shall be construed accordingly.
"Patents" means the Patents referred to in Schedule
One.
"PRODUCT(S)" means goods manufactured incorporating and/or using
the Invention. "Products" shall be construed
accordingly.
"TERRITORY" means the territory as defined in Schedule Two
hereto.
"YEAR OF THIS LICENCE means the period of twelve (12) months first
AGREEMENT" commencing on the Operative Date or any anniversary
of the Operative Date.
2 GRANT OF LICENCE
2.1 RWBRDCL agrees subject to the terms and conditions of this Licence
Agreement to grant to GSRW an exclusive licence to manufacture and sell, as
well as the right to sub-licence pursuant to Section 4 hereof, the
Invention in the Territory under each and every Patent as may be granted
for the term of this Licence Agreement.
BY THIS LICENCE The Roaring Water Bay (Research and Development) Company
Limited, an Irish company of Roaring Xxxxx Xxx Xxxxx, 0 Xxxxxxx Xxxxx,
Xxxxxx 0, Xxxxxxx HEREBY GRANTS to GSRWB, Inc., a Delaware corporation
having a principal place of business at 85 - 00 Xxxxx Xxxxxx, Xxxxx X, Xxxx
Xxxx, Xxx Xxxx 00000 of the following Letters Patent of which it is the
proprietor that is to say, Nos. IE990967, 990969 and GB2344095 (hereinafter
called the "Patent") full and exclusive Licence and authority to make use
of the Invention claimed in the specification of the Patent to the intent
that such Licence shall endure from the date hereof SUCH LICENCE being
SUBJECT TO and with the benefit of this Licence Agreement.
3 CALL OPTION
3.1 Grant of Call Option and all rights, title and interest in the Invention
In consideration of the payment by GSRW of EUR 1 (receipt of which RWBRDCL
hereby acknowledges) RWBRDCL hereby grants to GSRW an option to require
RWBRDCL to sell during, the Call Option Period, to GSRW all of the
outstanding Applications and Patent(s) and the right, title and interest
thereon for the aggregate sum of EUR90,000.
3.2 Exercise of Call Option
The Call Option may be exercised at any time during the Call Option Period
by notice in writing (the "Notice") served by GSRW on RWBRDCL. RWBRDCL
shall sell or
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procure the sale of the Applications and Patent(s) and all rights, title
and interest in the Invention to GSRW within a period of 30 days from the
receipt of the Notice by GSRW.
4 SUB-CONTRACTING
Nothing in this Licence Agreement shall restrict the right of GSRW to enter
into any sub contract which permits any sub-contractor to manufacture and
sell the Invention provided that if any Confidential Information as defined
in Clause 8 hereof is disclosed GSRW shall take all reasonable steps to
safeguard the confidential nature of such Confidential Information.
5 ROYALTY
In the period from the _____________ day of __________ to the date of
termination of this Licence Agreement, The Roaring Water Bay Spirits
Company Limited ("RWBSCL"), as GSRW's subsidiary, shall pay to RWBRDCL as a
royalty a sum equal to EIGHT PER CENT (8%) of the Net Invoice Price of all
Products sold, or otherwise disposed of by RWBSCL subject to a maximum in
each year of EUR30,000 in accordance with the terms of Section 7 hereof.
6 ACCOUNTS
To enable the determination of the sum due as royalties, GSRW shall during
the life of this Licence Agreement cause RWBSCL to keep at its principal
place of business, true, clear particular and separate accounts and records
and permit and in every way facilitate inspection and copies to be taken of
them by a representative or representatives of RWBRDCL at reasonable times
on giving reasonable notice. Payments shall be transferred and credited to
an account of RWBRDCL, at such bank as RWBRDCL may from time to time
nominate for the purpose, of the amount due or paid in any manner as may be
determined by RWBRDCL from time to time.
7 DUE DATES FOR PAYMENTS
GSRW shall cause RWBSCL on the _____________ day of _____________ and every
three (3) months thereafter or such other dates as agreed by the parties
from time to time while this Licence Agreement is in force, to render to
RWBRDCL a statement showing details of the sum due as royalties and GSRW
shall cause RWBSCL to pay the sum due, within thirty (30) days of the date
on which each and every such statement is due to be rendered.
8 CONFIDENTIAL TREATMENT OF INFORMATION
Save as provided at Clause 4 hereof GSRW agrees to keep strictly secret and
confidential during the term of any Patent and for two (2) years
thereafter, all and any information, acquired from RWBRDCL pursuant to this
Licence Agreement (herein referred to as "Confidential Information"),
except where disclosure or use of such information is expressly permitted
by RWBRDCL, or where such Confidential Information has come into the public
domain other than due to an unauthorised act of GSRW.
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9 ASSIGNMENT
GSRW shall not grant, assign, sub-licence, mortgage or otherwise charge or
convey, voluntarily or involuntarily any rights accruing to GSRW under this
Licence Agreement except to its affiliates, without the prior written
consent of RWBRDCL. Such consent may be withheld without reason being
given.
10 REPRESENTATIONS AND WARRANTIES
10.1 RWBRDCL represents that, the rights licensed hereunder do not infringe the
rights of any third party.
10.2 RWBRDCL warrants that it owns, and throughout the term of this Agreement
will own, all right, title and interest to the Invention and the Patents,
free and clear of any lien or encumbrance and the use of the Invention by
RWBSCL will not infringe any rights of third parties in any country of the
Territory.
11 IMPROVEMENTS
11.1 Where either party makes any improvement on the Invention, that Party shall
own all legal and beneficial rights and interests in any said improvements
on the Invention.
11.2 The Parties shall jointly and severally own all legal and beneficial rights
and interests in any improvements on the Invention made jointly by the
Parties.
11.3 Where either Party makes any improvement on the Invention, that Party shall
on reasonable terms offer to disclose said improvement on the Invention to,
and permit the use of said improvement on the Invention by the other Party.
12 TERMINATION
If the royalties due hereunder have not been paid within the time allowed
by this Licence Agreement or if either party shall breach of any of the
representations, warranties, covenants, promises or undertakings herein
contained and on its part to be performed or observed and shall not have
remedied such breach within thirty (30) days after notice is given to the
breaching party by the non-breaching party requiring such remedy or if
either party shall have an Examiner appointed over the whole or any part of
its assets or an order is made or a resolution passed for winding up of
such party unless such order is part of a scheme for reconstruction or
amalgamation of such party then the other party may forthwith terminate
this Licence Agreement without being required to give any or any further
notice in advance of such termination but such termination shall be without
prejudice to the remedy of such party to xxx for and recover any royalties
then due and to pursue any remedy in respect of any previous breach of any
of the covenants or agreements contained in this Licence Agreement.
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13 DURATION
13.1 Subject to the provisions for termination hereinbefore contained, this
Licence Agreement shall operate from the Operative Date and shall continue
in force for a period of five (5) years.
13.2 On expiration of this Licence Agreement RWBRDCL may on request enter into a
further licence agreement on terms and for a period to be agreed, provided
that no such further Licence Agreement shall continue for any period which
shall expire later than [one (1) day] prior to the date on which any Patent
shall expire.
13.3 RWBRDCL shall notify GSRW in writing of any expiry of this Licence
Agreement no later than thirty (30) day prior to any expiry. If RWBRDCL
fails to so notify GSRW, the Parties shall at the election of GSRW be
deemed to have entered into a further licence agreement for a period of one
(1) year commencing next after any such expiry. The terms of this Licence
Agreement including the provisions of this sub-clause shall apply mutatis
mutandis to any such further licence agreement, provided that no such
further licence agreement shall expire later than one day (1) prior to the
date on which any Patent shall expire. The provisions of this sub-clause
shall not apply where this Licence Agreement or any such further licence
agreement is terminated under Clause 12 hereof or any corresponding term
deemed to be in any such further licence agreement.
13.4 This Licence Agreement shall not be modified, amended or supplemented in
any way unless such modification, amendment or supplement is agreed to in
writing by each of the Parties hereto.
14 PATENTS AND APPLICATIONS
RWBRDCL shall during the life of this Licence Agreement pay all costs and
fees payable in respect of the Applications and do all such acts and things
as may be necessary to maintain and keep on foot the Patents including any
additional Applications and improvements requested by GSRW and RWBRDCL
shall apply for or continue to prosecute any application for any extension
of the term of any Patent if so requested by GSRW.
15 INFRINGEMENT
If any infringement action, proceedings or claim of any kind is threatened
or instituted against GSRW resulting from the exercise of any rights
granted under the Licence Agreement RWBRDCL shall take timely steps to
defend such action, proceeding or claims and shall promptly notify GSRW.
GSRW shall not be obliged to defend RWBRDCL against any such action
proceeding or claim. RWBRDCL shall defend such actions at its own expense.
At the request of RWBRDCL GSRW shall permit RWBRDCL to intervene or appear
in connection with any action proceeding or claim at the sole expense of
RWBRDCL. The rights of RWBRDCL under this Licence Agreement shall in no way
be affected by any adverse decision in or with respect to any such action,
proceeding or claim.
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16 COUNTRIES IN WHICH PATENT APPLICATIONS ARE FILED
RWBRDCL and GSRW shall decide in which countries, if any, any further
Applications are to be filed. Each and every further Application for a
Patent for the Invention so filed shall be notified to GSRW by RWBRDCL and
each such further Application for a Patent for the Invention shall be
deemed to be included in Schedule One on the date on which it is filed.
17 FORCE MAJEURE
In the event that either Party is delayed or hindered in the performance of
its obligations hereunder by force majeure this Licence Agreement shall
remain in suspense until the cause thereof has ceased to delay or hinder.
For the purpose of this Licence Agreement, but not by way of limitation,
force majeure shall mean any cause beyond the reasonable control of the
Party liable to perform unless conclusive evidence to the contrary is
provided and shall include strikes, riots and sabotage, acts of war or
terrorism, acts of piracy, destruction of essential equipment by fire,
explosion, storm, flood, earthquake or other natural disaster, compliance
with economic, trade or political sanctions, failure of power supplies or
transport facilities.
18 SEVERABILITY
In the event any provision of this Licence Agreement is declared invalid or
unenforceable or becomes unlawful in its operation or any part thereof,
such provision shall not affect the rights and duties of the Parties with
regard to the remaining provisions of this Licence Agreement which shall
continue as binding.
19 OUTSTANDING ROYALTY ON TERMINATION
On the expiration or sooner termination of this Licence Agreement, GSRW
shall pay to RWBRDCL within thirty days (30) following the date of such
expiration or sooner termination all royalties outstanding on the date of
such expiration or sooner termination.
20 COSTS OF LICENCE AGREEMENT
RWBRDCL agrees to be responsible for the costs incurred in respect of the
preparation and recording of this Licence Agreement.
21 ARBITRATION
If any dispute or difference of any kind whatsoever arises or occurs
between the Parties in relation to any thing or matter arising under or out
of or in connection with this Licence Agreement the Parties shall appoint
an arbitrator (the "Arbitrator") and submit such dispute or difference to
such arbitrator whose award shall be binding. If the Parties fail to agree
on the appointment of an arbitrator within one (1) calendar month of the
date on which such dispute or difference arises or occurs either Party may,
on giving one (1) calendar months notice to the other Party, refer such
dispute or difference to arbitration under the Arbitration Rules of the
Chartered Institute of Arbitrators - Irish Branch.
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22 GOVERNING LAW
This Licence Agreement shall be governed by and construed in accordance
with Irish law. The Parties hereby agree that the Courts of Law in Ireland
shall have exclusive jurisdiction in any action in respect hereof, and that
in the event of such proceeding being commenced service of documents at
such address as is the address for the time being of the addressee by
prepaid registered post, shall be deemed good service.
23 The Parties hereto agree that (i) this Licence Agreement supersedes, in all
respects, the terms and provisions of that certain Licence Agreement, dated
November 19, 1999 (the "Original Licence Agreement") by and between RWBRDCL
(formerly Roaring Water Bay Vodka Company Limited) and RWBSCL, and (ii) the
Original Licence Agreement shall no longer have any force or effect as of
the date hereof.
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IN WITNESS WHEREOF the Parties hereto have caused this Agreement to be executed,
intending that it shall be legally binding upon them their executors,
xxxxxxxxxxxxxx, xxxxx, xxxxxxx, successors and assigns.
PRESENT WHEN THE COMMON SEAL of
THE ROARING WATER BAY (RESEARCH AND
DEVELOPMENT) COMPANY LIMITED
was affixed hereto.
/s/ Xxxxx Xxxxxx
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Director
/s/ Xxxxxxx Xxxxxx
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Director/Secretary
EXECUTED AS A DEED BY:
FOR AND ON BEHALF OF GSRWB, INC.
/s/ Xxxx Xxxxxxx
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SCHEDULE ONE
PATENT PUBLICATIONS
Irish Patent No: IE990967
Date Filed: July 12, 2000
Entitled: "Packaging for a bottle assembly"
Irish Patent No: 990969
Date Filed: July 12, 2000
Entitled: "Packaging for a bottle assembly"
UK Patent NO: GB2344095
Date Filed: May 31, 2000
Entitled: "Stackable bottles":
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SCHEDULE TWO
For the purposes of this Licence Agreement the Territory is each and every
country in the World.
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