Exhibit 10.5
Master Trademark Ownership and License Agreement
by and among
Schlumberger Technologies, Inc.,
Schlumberger Technology Corporation,
Schlumberger BV
and
NPTest, Inc.
_______ __, 2002
TABLE OF CONTENTS
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ARTICLE I DEFINITIONS ............................................... 1
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Section 1.1 Ancillary Agreements ................................. 1
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Section 1.2 Authorized Dealers ................................... 2
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Section 1.3 Collateral Materials ................................. 2
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Section 1.4 Corporate Identity Materials ......................... 2
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Section 1.5 Licensed Marks ....................................... 2
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Section 1.6 Xxxx ................................................. 2
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Section 1.7 Master Separation and Sale Agreement ................. 2
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Section 1.8 NPT Business ......................................... 2
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Section 1.9 NPT Business Marks ................................... 2
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Section 1.10 NPT Business Products ................................ 2
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Section 1.11 NPT Group ............................................ 3
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Section 1.12 Person ............................................... 3
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Section 1.13 Prior Transfers ...................................... 3
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Section 1.14 Quality Standards .................................... 3
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Section 1.15 Sale Date ............................................ 3
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Section 1.16 Schlumberger Business ................................ 3
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Section 1.17 Schlumberger Group ................................... 3
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Section 1.18 Schlumberger Products ................................ 3
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Section 1.19 Sell ................................................. 3
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Section 1.20 Separation Date ...................................... 3
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Section 1.21 Subsidiary ........................................... 3
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Section 1.22 Third Party .......................................... 3
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Section 1.23 Trademark Usage Guidelines ........................... 3
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Section 1.24 VAD .................................................. 4
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Section 1.25 VAR .................................................. 4
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ARTICLE II OWNERSHIP ................................................ 4
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Section 2.1 Ownership of NPT Business Marks ...................... 4
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Section 2.2 Prior Grants ......................................... 4
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Section 2.3 ASSIGNMENT DISCLAIMER ................................ 4
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ARTICLE III LICENSE ................................................. 5
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Section 3.1 License Grant ........................................ 5
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Section 3.2 License Restrictions ................................. 5
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Section 3.3 Licensee Undertakings ................................ 5
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Section 3.4 Non-Trademark Use .................................... 6
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Section 3.5 Reservation of Rights ................................ 6
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Section 3.6 Third Party Licenses ................................. 6
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ARTICLE IV PERMITTED SUBLICENSES .................................... 7
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Section 4.1 Sublicenses .......................................... 7
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Section 4.2 Authorized Dealers' Use of Marks ..................... 7
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Section 4.3 Enforcement of Agreements ............................ 7
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ARTICLE V TRADEMARK USAGE GUIDELINES ................................ 8
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Section 5.1 Trademark Usage Guidelines ........................... 8
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Section 5.2 Trademark Reviews .................................... 8
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ARTICLE VI TRADEMARK USAGE GUIDELINE ENFORCEMENT .................... 8
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Section 6.1 Initial Cure Period .................................. 8
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Section 6.2 Second Cure Period ................................... 8
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Section 6.3 Final Cure Period .................................... 9
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ARTICLE VII QUALITY STANDARDS ....................................... 9
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Section 7.1 General .............................................. 9
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Section 7.2 Quality Standards .................................... 9
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Section 7.3 Quality Control Reviews .............................. 9
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Section 7.4 Product Discontinuation .............................. 9
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ARTICLE VIII QUALITY STANDARD ENFORCEMENT ........................... 10
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Section 8.1 Initial Cure Period .................................. 10
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Section 8.2 Second Cure Period ................................... 10
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Section 8.3 Final Cure Period .................................... 10
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ARTICLE IX PROTECTION OF LICENSED MARKS ............................. 10
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Section 9.1 Ownership and Rights ................................. 10
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Section 9.2 Protection of Marks .................................. 11
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Section 9.3 Similar Marks ........................................ 11
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Section 9.4 Infringement Proceedings ............................. 11
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ARTICLE X TERMINATION ............................................... 12
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Section 10.1 Term ................................................... 12
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Section 10.2 Voluntary Termination .................................. 12
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Section 10.3 Survival ............................................... 12
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Section 10.4 Other Termination ...................................... 12
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ARTICLE XI DISPUTE RESOLUTION ......................................... 12
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ARTICLE XII LIMITATION OF LIABILITY ................................... 13
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ARTICLE XIII MISCELLANEOUS PROVISIONS ................................. 13
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Section 13.1 Disclaimer ............................................. 13
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Section 13.2 No Implied Licenses .................................... 13
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Section 13.3 Infringement Suits ..................................... 14
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Section 13.4 No Other Obligations ................................... 14
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Section 13.5 Entire Agreement ....................................... 14
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Section 13.6 Governing Law .......................................... 14
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Section 13.7 Descriptive Headings ................................... 14
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Section 13.8 Notices ................................................ 14
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Section 13.9 Binding Effect; Assignment ............................. 16
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Section 13.10 Severability ........................................... 16
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Section 13.11 Failure or Indulgence Not Waiver; Remedies Cumulative .. 16
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Section 13.12 Amendment .............................................. 16
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Section 13.13 Counterparts ........................................... 16
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Section 13.14 Authority .............................................. 16
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement")
is entered into as of _______ __, 2002 (the "Effective Date"), by and among
Schlumberger Technologies, Inc., a Delaware corporation ("STI"), Schlumberger
Technology Corporation, a Texas corporation ("STC"), Schlumberger BV, a company
organized and existing under the laws of the Netherlands ("SBV" and, together
with STI and STC, "Schlumberger"), and NPTest, Inc., a Delaware corporation
("NPT").
RECITALS
WHEREAS, STI and SBV collectively own all of the currently issued and
outstanding common stock of NPT;
WHEREAS, NPT is engaged in certain aspects of the automated test
equipment business and related businesses as defined in the Master Separation
and Sale Agreement (collectively, the "NPT Business");
WHEREAS, the Board of Directors of each of STI, SBV and NPT has
determined that it would be appropriate and desirable for the Schlumberger Group
(as defined below) to contribute and transfer to NPT, and for NPT to receive and
assume, directly or indirectly, certain assets and liabilities currently held by
the Schlumberger Group and associated with the NPT Business;
WHEREAS, certain Prior Transfers, as defined in the Master Separation
and Sale Agreement, have already occurred; and
WHEREAS, as part of the foregoing, the parties wish to allocate
ownership of the NPT Business Marks (as defined below) to NPT (and to confirm
the allocation of ownership of NPT Business Marks to NPT which was accomplished
in the Prior Transfers) and to set forth the terms of a license for the Licensed
Marks (as defined below) to NPT.
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article I and shall have the meaning specified herein:
Section 1.1 Ancillary Agreements. "Ancillary Agreements" has the
meaning set forth in the Master Separation and Sale Agreement.
Section 1.2 Authorized Dealers. "Authorized Dealers" means any
distributor, dealer, OEM customer, VAR customer, VAD customer, systems
integrator or other agent that on or after the Separation Date is authorized to
market, advertise, sell, lease, rent, service or otherwise offer NPT Business
Products. NPT will provide Schlumberger a list of the then current Authorized
Dealers within a reasonable period after Schlumberger's request.
Section 1.3 Collateral Materials. "Collateral Materials" means all
packaging, tags, labels, advertising, promotions, display fixtures,
instructions, warranties and other materials of any and all types associated
with the NPT Business Products that are marked with at least one of the Licensed
Marks.
Section 1.4 Corporate Identity Materials. "Corporate Identity
Materials" means materials that are not products or product-related and that NPT
may now or hereafter use to communicate its identity, including, by way of
example and without limitation, business cards, letterhead, stationery, paper
stock and other supplies, and signage on real property and buildings.
Section 1.5 Licensed Marks. "Licensed Marks" means the Marks set forth
in Exhibit A hereto.
Section 1.6 Xxxx. "Xxxx" means any trademark, service xxxx, trade
name, domain name, and the like, or other word, name, symbol or device, or any
combination thereof, used or intended to be used by a Person to identify and
distinguish the products or services of that Person from the products or
services of others and to indicate the source of such goods or services,
including without limitation all registrations and applications therefor
throughout the world and all common law and other rights therein throughout the
world.
Section 1.7 Master Separation and Sale Agreement. "Master Separation
and Sale Agreement" means that certain Master Separation and Sale Agreement by
and among STI, STC, SBV and NPT.
Section 1.8 NPT Business. "NPT Business" has the meaning set forth in
the Recitals.
Section 1.9 NPT Business Marks. "NPT Business Marks" means the
schedule of Marks set forth in Exhibit B hereto, as it may be updated by the
parties upon mutual agreement.
Section 1.10 NPT Business Products. "NPT Business Products and
Services" means any and all products of the NPT Business commercially released
prior to the Separation Date and any and all services of the NPT Business
offered prior to the Separation Date.
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Section 1.11 NPT Group. "NPT Group" has the meaning set forth in the
Master Separation and Sale Agreement.
Section 1.12 Person. "Person" has the meaning set forth in the Master
Separation and Sale Agreement.
Section 1.13 Prior Transfers. "Prior Transfers" has the meaning set
forth in the Master Separation and Sale Agreement.
Section 1.14 Quality Standards. "Quality Standards" means standards of
quality applicable to the NPT Business Products, as in use immediately prior to
the Separation Date, unless otherwise communicated in writing by Schlumberger
from time to time.
Section 1.15 Sale Date. "Sale Date" has the meaning set forth in the
Master Separation and Sale Agreement.
Section 1.16 Schlumberger Business. "Schlumberger Business" means the
businesses of the Schlumberger Group as of the Separation Date, but specifically
excluding the NPT Business.
Section 1.17 Schlumberger Group. "Schlumberger Group" has the meaning
set forth in the Master Separation and Sale Agreement.
Section 1.18 Schlumberger Products. "Schlumberger Products" means any
and all products and services of the businesses in which any member of the
Schlumberger Group is now or hereafter engaged (including the business of making
(but not having made) Third Party products for Third Parties when such member of
the Schlumberger Group is acting as a contract manufacturer or foundry for such
Third Parties).
Section 1.19 Sell. To "Sell" a product means to sell, transfer, lease
or otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
Section 1.20 Separation Date. "Separation Date" has the meaning set
forth in the Master Separation and Sale Agreement.
Section 1.21 Subsidiary. "Subsidiary" of any Person has the meaning set
forth in the Master Separation and Sale Agreement.
Section 1.22 Third Party. "Third Party" means a Person other than any
member of the NPT Group or the Schlumberger Group.
Section 1.23 Trademark Usage Guidelines. "Trademark Usage Guidelines"
means the guidelines for proper usage of the Licensed Marks, as in use
immediately prior to the Separation Date and attached hereto as Exhibit __, as
such guidelines may be revised and updated in writing by Schlumberger from time
to time.
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Section 1.24 VAD. "VAD" means value-added dealer.
Section 1.25 VAR. "VAR" means value-added reseller or value-added
retailer.
ARTICLE II
OWNERSHIP
Section 2.1 Ownership of NPT Business Marks. Subject to Sections 2.2
and 2.3 below, to the extent that any NPT Business Marks are registered in the
name of the Schlumberger Group anywhere in the world, or to the extent that the
Schlumberger Group otherwise has any ownership rights in and to the NPT Business
Marks or any goodwill therein, Schlumberger hereby grants, conveys and assigns
(and agrees to cause other members of the Schlumberger Group to grant, convey
and assign) to NPT, by execution hereof (or, where appropriate or required, by
execution of separate instruments of assignment), all its (and their) right,
title and interest in and to the NPT Business Marks, including all goodwill of
the NPT Business appurtenant thereto, to be held and enjoyed by NPT, its
successors and assigns. Schlumberger further grants, conveys and assigns (and
agrees to cause other members of the Schlumberger Group to grant, convey and
assign) to NPT all its (and their) right, title and interest in and to any and
all causes of action and rights of recovery for past infringement of the NPT
Business Marks. Schlumberger hereby confirms the grant, conveyance and
assignment which was made in the Prior Transfers of NPT Business Marks and
causes of action and rights of recovery for past infringement of NPT Business
Marks. Where necessary, Schlumberger will, without demanding any further
consideration therefor, at the request and expense of NPT (except for the value
of the time of the Schlumberger Group employees), provide (and to cause other
members of the Schlumberger Group to provide) reasonable assistance in
evidencing, maintaining, recording and perfecting NPT's rights to such NPT
Business Marks consistent with its general business practice as of the
Separation Date, including but not limited to execution and acknowledgement of
(and causing other members of the Schlumberger Group to execute and acknowledge)
assignments and other instruments in a form reasonably required by NPT or the
relevant governmental or other authorities for each NPT Business Xxxx in all
jurisdictions in which the Schlumberger Group owns rights thereto.
Section 2.2 Prior Grants. NPT acknowledges and agrees that the
foregoing assignment is subject to any and all licenses or other rights that may
have been granted by the Schlumberger Group with respect to the NPT Business
Marks prior to the Separation Date. Schlumberger shall respond to reasonable
inquiries from NPT regarding any such prior grants.
Section 2.3 ASSIGNMENT DISCLAIMER. NPT ACKNOWLEDGES AND AGREES THAT
THE FOREGOING ASSIGNMENTS HAVE BEEN AND ARE MADE ON AN "AS-IS", "WHERE IS",
QUITCLAIM BASIS AND THAT NEITHER SCHLUMBERGER NOR OTHER MEMBERS OF THE
SCHLUMBERGER GROUP
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HAVE MADE OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY,
INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY
OR NON-INFRINGEMENT.
ARTICLE III
LICENSE
Section 3.1 License Grant. Schlumberger grants (and agrees to cause
other members of the Schlumberger Group to grant) to NPT a personal,
irrevocable, nonexclusive, worldwide, fully-paid, royalty-free and
non-transferable (except as set forth in Section 13.9) license to use the
Licensed Marks on the NPT Business Products and in connection with the Sale and
offer for Sale of NPT Business Products (or, in the case of NPT Business
Products in the form of software, in connection with licensing of NPT Business
Products) and to use the Licensed Marks in the advertisement and promotion of
such NPT Business Products.
Section 3.2 License Restrictions. NPT may not make any use whatsoever,
in whole or in part, of the Licensed Marks, or any other Xxxx owned by the
Schlumberger Group, in connection with NPT's corporate, doing business as, or
fictitious name, or on Corporate Identity Materials without the prior written
consent of the Schlumberger Group, except as expressly set forth in this Section
3.2(a) or in Section 3.4 below. Notwithstanding the foregoing, NPT may use any
Corporate Identity Materials for up to six (6) months after the Separation Date
in connection with the conduct of the NPT Business, to the extent that, as of
the Separation Date, they are in use, in inventory or on order.
(b) NPT may not use any Licensed Xxxx in direct association
with another Xxxx such that the two Marks appear to be a single Xxxx or in any
other composite manner with any Marks of NPT or any Third Party (other than the
NPT Business Marks as permitted herein).
(c) In all respects, NPT's usage of the Licensed Marks
pursuant to the license granted hereunder shall be in a manner consistent with
the high standards, quality, reputation and prestige represented by the Licensed
Marks, and any usage by NPT that is inconsistent with the foregoing shall be
deemed to be outside the scope of the license granted hereunder. As a condition
to the license granted hereunder, NPT shall at all times present, position and
promote the NPT Business Products marked (or marketed) with one or more of the
Licensed Marks in a manner consistent with the high standards, quality and
prestige represented by the Licensed Marks.
Section 3.3 Licensee Undertakings. As a condition to the licenses
granted hereunder, NPT undertakes to the Schlumberger Group that:
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(a) NPT shall not use the Licensed Marks (or any other Xxxx of the
Schlumberger Group) in any manner which is deceptive or misleading, which
ridicules or is derogatory to the Licensed Marks, or which compromises or
reflects unfavorably upon the goodwill, good name, reputation or image of the
Schlumberger Group or the Licensed Marks, or which might jeopardize or limit the
Schlumberger Group's proprietary interest therein.
(b) NPT shall not use the Licensed Marks in connection with any
products or services other than the NPT Business Products.
(c) NPT shall not (i) misrepresent to any Person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to the Schlumberger Group, or (iii) take any actions that
would impose upon the Schlumberger Group any obligation or liability to a Third
Party other than obligations under this Agreement, or other obligations which
the Schlumberger Group expressly approves in writing for NPT to incur on its
behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be consistent with
the high standards and prestige represented by the Licensed Marks.
Section 3.4 Non-Trademark Use. Each party may make appropriate and
truthful references to the other party and the other party's products and
technology.
Section 3.5 Reservation of Rights. Except as otherwise expressly provided
in this Agreement, the Schlumberger Group shall retain all rights in and to the
Licensed Marks, including without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use the Licensed Marks, either alone or in
combination with other Marks, in connection with the marketing, offer or
provision of any product or service, including any product or service which
competes with NPT Business Products; and
(c) The right to license Third Parties to use the Licensed Marks.
Section 3.6 Third Party Licenses. Schlumberger agrees that they and other
members of the Schlumberger Group will not license or transfer the Licensed
Marks to Third Parties (other than to and among members of the Schlumberger
Group or Joint Ventures (as defined below) of the Schlumberger Group) for use in
connection with products or services which compete with NPT Business Products
that are listed on a mutually agreed NPT corporate price list as of the
Distribution Date until two (2) years after the Separation Date. Such
restriction shall be binding on any successors and assigns of the Licensed
Marks. As used in this Section 3.6, "Joint Venture" means a corporation or other
organization whether incorporated or unincorporated of which at least fifty
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percent (50%) of the securities or interests having by the terms thereof
ordinary voting power to elect at least a majority of the board of directors or
others performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by the Schlumberger
Group.
ARTICLE IV
PERMITTED SUBLICENSES
Section 4.1 Sublicenses. Subject to the terms and conditions of this
Agreement, including all applicable Quality Standards and Trademark Usage
Guidelines and other restrictions in this Agreement, NPT may grant sublicenses
to its Subsidiaries to use the Licensed Marks in accordance with the license
grant in Section 3.1 above; provided, that (i) NPT enters into a written
sublicense agreement with each such Subsidiary sublicensee, and (ii) such
agreement does not include the right to grant further sublicenses other than, in
the case of a sublicensed Subsidiary of NPT, to another Subsidiary of NPT. NPT
shall provide copies of such written sublicense agreements to the Schlumberger
Group upon request. If NPT grants any sublicense rights pursuant to this Section
4.1(a) and any such sublicensed Subsidiary ceases to be a Subsidiary, then the
sublicense granted to such Subsidiary pursuant to this Section 4.1(a) shall
terminate 180 days from the date of such cessation.
Section 4.2 Authorized Dealers' Use of Marks. Subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, NPT (and
those Subsidiaries sublicensed to use the Licensed Marks pursuant to Section
4.1) may allow Authorized Dealers to, and may allow such Authorized Dealers to
allow other Authorized Dealers to, use the Licensed Marks in the advertisement
and promotion of NPT Business Products Sold by such Authorized Dealers.
Section 4.3 Enforcement of Agreements. NPT shall take all appropriate
measures at NPT's expense promptly and diligently to enforce the terms of any
sublicense agreement or other agreement with any Subsidiary or Authorized
Dealer, or of any existing agreement with any Authorized Dealer, and shall
restrain any such Subsidiary or Authorized Dealer from violating such terms,
including without limitation (i) monitoring the Subsidiaries' and Authorized
Dealers' compliance with the relevant Trademark Usage Guidelines and Quality
Standards and causing any noncomplying Subsidiary or Authorized Dealer promptly
to remedy any failure, (ii) terminating such agreement and/or (iii) commencing
legal action, in each case, using a standard of care consistent with the
Schlumberger Group's practices as of the Separation Date. In the event that the
Schlumberger Group determines that NPT has failed promptly and diligently to
enforce the terms of any such agreement using such standard of care, the
Schlumberger Group reserves the right to enforce such terms, and NPT shall
reimburse the Schlumberger Group for its fully allocated direct costs and
expenses incurred in enforcing such
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agreement (including legal fees), plus all out-of-pocket costs and expenses,
plus five percent (5%).
ARTICLE V
TRADEMARK USAGE GUIDELINES
Section 5.1 Trademark Usage Guidelines. NPT and its Subsidiaries and
Authorized Dealers shall use the Licensed Marks only in a manner that is
consistent with the Trademark Usage Guidelines.
Section 5.2 Trademark Reviews. At the Schlumberger Group's request, NPT
agrees to furnish or make available for inspection to the Schlumberger Group
samples of all NPT Business Products and Collateral Materials of NPT, its
Subsidiaries and Authorized Dealers that are marked with one or more of the
Licensed Marks (to the extent that NPT has the right to obtain such samples). If
NPT is notified or determines that it or any of its Subsidiaries or Authorized
Dealers is not complying with any Trademark Usage Guidelines, it shall notify
the Schlumberger Group and the provisions of Article VI and Section 4.3 shall
apply to such noncompliance.
ARTICLE VI
TRADEMARK USAGE GUIDELINE ENFORCEMENT
Section 6.1 Initial Cure Period. If the Schlumberger Group becomes aware
that NPT or any Subsidiary or Authorized Dealer is not complying with any
Trademark Usage Guidelines, the Schlumberger Group shall notify NPT in writing,
setting forth in reasonable detail a written description of the noncompliance
and any requested action for curing such noncompliance. NPT shall then have
sixty (60) days with regard to noncompliance by Authorized Dealers and thirty
(30) days with regard to noncompliance by NPT or any Subsidiary after receipt of
such notice ("Guideline Initial Cure Period") to correct such noncompliance or
submit to the Schlumberger Group a written plan to correct such noncompliance
which written plan is reasonably acceptable to the Schlumberger Group.
Section 6.2 Second Cure Period. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, NPT and the
Schlumberger Group shall each promptly appoint a representative to negotiate in
good faith actions that may be necessary to correct such noncompliance. The
parties shall have thirty (30) days following the expiration of the Guideline
Initial Cure Period to agree on corrective actions, and NPT shall have thirty
(30) days from the date of an agreement of corrective actions to implement such
corrective actions and cure or cause the cure of such noncompliance ("Second
Guideline Cure Period").
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Section 6.3 Final Cure Period. If the noncompliance with the Trademark
Usage Guidelines remains uncured after the expiration of the Second Guideline
Cure Period, then at the Schlumberger Group's election, NPT, or the noncomplying
Subsidiary or Authorized Dealer, whichever is applicable, promptly shall cease
using the noncomplying Collateral Materials until the Schlumberger Group
determines that NPT, or the noncomplying Subsidiary or Authorized Dealer,
whichever is applicable, has demonstrated its ability and commitment to comply
with the Trademark Usage Guidelines. Nothing in this Article VI shall be deemed
to limit NPT's obligations under Section 4.3 above or to preclude the
Schlumberger Group from exercising any rights or remedies under Section 4.3
above.
ARTICLE VII
QUALITY STANDARDS
Section 7.1 General. NPT acknowledges that the NPT Business Products
permitted by this Agreement to be marked (or marketed) with one or more of the
Licensed Marks must continue to be of sufficiently high quality as to provide
protection of the Licensed Marks and the goodwill they symbolize, and NPT
further acknowledges that the maintenance of the high quality standards
associated with such products is of the essence of this Agreement.
Section 7.2 Quality Standards. NPT and its Authorized Dealers and
Subsidiaries shall use the Licensed Marks only on and in connection with NPT
Business Products that meet or exceed in all respects the Quality Standards.
Section 7.3 Quality Control Reviews. At the Schlumberger Group's request,
NPT agrees to furnish or make available to the Schlumberger Group for inspection
sample NPT Business Products marked with one or more of the Licensed Marks. The
Schlumberger Group may also independently conduct customer satisfaction surveys
to determine if NPT and its Subsidiaries and Authorized Dealers are meeting the
Quality Standards. NPT shall cooperate with the Schlumberger Group fully in the
distribution of such surveys. In the event of a challenge by the Schlumberger
Group, the Schlumberger Group shall, at the request of NPT, provide NPT with
copies of customer surveys used by the Schlumberger Group to determine if NPT is
meeting the Quality Standards. If NPT is notified or determines that it or any
of its Subsidiaries or Authorized Dealers is not complying with any Quality
Standards, it shall notify the Schlumberger Group and the provisions of Article
VIII and Section 4.3 shall apply to such noncompliance.
Section 7.4 Product Discontinuation. If, at any time during or after the
term of this Agreement, NPT discontinues the sale of a NPT Business Product that
has been marked with one or more of the Licensed Marks, NPT shall substantially
comply with the discontinuation procedure used by the Schlumberger Group for
such or similar products immediately prior to Separation Date.
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ARTICLE VIII
QUALITY STANDARD ENFORCEMENT
Section 8.1 Initial Cure Period. If the Schlumberger Group becomes
aware that NPT or any Subsidiary or Authorized Dealer sublicensee is not
complying with any Quality Standards, the Schlumberger Group shall notify NPT in
writing, setting forth in reasonable detail a written description of the
noncompliance and any requested action for curing such noncompliance. NPT shall
then have thirty (30) days after receipt of such notice ("Initial Cure Period")
to correct such noncompliance or submit to the Schlumberger Group a written plan
to correct such noncompliance which written plan is reasonably acceptable to the
Schlumberger Group.
Section 8.2 Second Cure Period. If noncompliance with the Quality
Standards continues beyond the Initial Cure Period, NPT and the Schlumberger
Group shall each promptly appoint a representative to negotiate in good faith
actions that may be necessary to correct such noncompliance. The parties shall
have thirty (30) days following the expiration of the Initial Cure Period to
agree on corrective actions, and NPT shall have thirty (30) days from the date
of an agreement of corrective actions to implement such corrective actions and
cure or cause the cure of such noncompliance ("Second Cure Period").
Section 8.3 Final Cure Period. If the noncompliance with the Quality
Standards remains uncured after the expiration of the Second Cure Period, then
at the Schlumberger Group's election, NPT, or the noncomplying Subsidiary or
Authorized Dealer, whichever is applicable, promptly shall cease offering the
noncomplying NPT Business Products under the Licensed Marks until the
Schlumberger Group determines that NPT, or the noncomplying Subsidiary or
Authorized Dealer, whichever is applicable, has demonstrated its ability and
commitment to comply with the Quality Standards. Nothing in this Article VIII
shall be deemed to limit NPT's obligations under Section 4.3 above or to
preclude the Schlumberger Group from exercising any rights or remedies under
Section 4.3 above.
ARTICLE IX
PROTECTION OF LICENSED MARKS
Section 9.1 Ownership and Rights. NPT agrees not to challenge the
ownership or validity of the Licensed Marks. NPT shall not disparage, dilute or
take any action to adversely affect the validity of the Licensed Marks. NPT's
use of the Licensed Marks shall inure exclusively to the benefit of the
Schlumberger Group, and NPT shall not acquire or assert any rights therein. NPT
recognizes the value of the goodwill associated with the Licensed Marks, and
that the Licensed Marks may have acquired secondary meaning in the minds of the
public.
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Section 9.2 Protection of Marks. NPT shall assist the Schlumberger
Group, at the Schlumberger Group's request and expense, in the procurement and
maintenance of the Schlumberger Group's intellectual property rights in the
Licensed Marks. NPT will not grant or attempt to grant a security interest in
the Licensed Marks, or to record any such security interest in the United States
Patent and Trademark Office or elsewhere, against any trademark application or
registration belonging to the Schlumberger Group. NPT agrees to, and to cause
its Subsidiaries to, execute all documents reasonably requested by the
Schlumberger Group to effect further registration of, maintenance and renewal of
the Licensed Marks, recordation of the license relationship between the
Schlumberger Group and NPT, and recordation of NPT as a registered user. The
Schlumberger Group makes no warranty or representation that trademark
registrations have been or will be applied for, secured or maintained in the
Licensed Marks throughout, or anywhere within, the world. NPT shall cause to
appear on all NPT Business Products, and all Collateral Materials, such legends,
markings and notices as may be required by applicable law or reasonably
requested by the Schlumberger Group.
Section 9.3 Similar Marks. Other than the xxxx ASAP (whose usage is the
subject of a separate, prior agreement between the parties), NPT agrees not to
use or register in any country any Xxxx that infringes the Schlumberger Group's
rights in the Licensed Marks, or any element thereof. If any application for
registration is, or has been, filed in any country by NPT which relates to any
Xxxx that infringes the Schlumberger Group's rights in the Licensed Marks, NPT
shall immediately abandon any such application or registration or assign it to
the Schlumberger Group. To the extent not contrary to applicable law, NPT shall
not challenge the Schlumberger Group's ownership of or the validity of the
Licensed Marks or any application for registration thereof throughout the world.
NPT shall not use or register in any country any copyright, domain name,
telephone number or any other intellectual property right, whether recognized
currently or in the future, or other designation which would affect the
ownership or rights of the Schlumberger Group in and to the Licensed Marks, or
otherwise to take any action which would adversely affect any of such ownership
rights, or assist anyone else in doing so. NPT shall cause its Subsidiaries and
Authorized Dealers to comply with the provisions of this Section 9.3.
Section 9.4 Infringement Proceedings. In the event that the NPT General
Counsel learns of any infringement or threatened infringement of the Licensed
Marks, or any unfair competition, passing-off or dilution with respect to the
Licensed Marks, NPT shall notify the Schlumberger Group or its authorized
representative giving particulars thereof, and NPT shall provide necessary
information and assistance to the Schlumberger Group or its authorized
representatives at the Schlumberger Group's expense in the event that the
Schlumberger Group decides that proceedings should be commenced. Notwithstanding
the foregoing, NPT is not obligated to monitor or police use of the Licensed
Marks by Third Parties other than as specifically set forth in Section 4.3. The
Schlumberger Group shall have exclusive control of any litigation, opposition,
cancellation or related legal proceedings, relating to the use of the licensed
trademarks by third parties. The decision whether to bring, maintain or settle
any such proceedings shall
11
be at the exclusive option and expense of the Schlumberger Group, and all
recoveries shall belong exclusively to the Schlumberger Group. NPT shall not and
shall have no right to initiate any such litigation, opposition, cancellation or
related legal proceedings in its own name, but, at the Schlumberger Group's
request, agrees to be joined as a party in any action taken by the Schlumberger
Group to enforce its rights in the Licensed Marks. The Schlumberger Group shall
incur no liability to NPT or any other Person under any legal theory by reason
of the Schlumberger Group's failure or refusal to prosecute or by the
Schlumberger Group's refusal to permit NPT to prosecute, any alleged
infringement by Third Parties, nor by reason of any settlement to which the
Schlumberger Group may agree.
ARTICLE X
TERMINATION
Section 10.1 Term. The licenses and rights granted to NPT in Article
III by Schlumberger (or other members of the Schlumberger Group) shall remain in
effect for a period of two (2) years from the Effective Date unless earlier
terminated as provided below.
Section 10.2 Voluntary Termination. By written notice to Schlumberger,
NPT may voluntarily terminate all or a specified portion of the licenses and
rights granted to it hereunder by Schlumberger (or other members of the
Schlumberger Group). Such notice shall specify the effective date of such
termination and shall clearly specify any affected Licensed Marks, NPT Business
Products or services.
Section 10.3 Survival. Any termination of licenses and rights of NPT
under Section 10.2 shall not affect NPT's licenses and rights with respect to
any NPT Business Products made or sold prior to such termination.
Section 10.4 Other Termination. Schlumberger acknowledges and agrees
that its rights to terminate the licenses granted to NPT hereunder are solely as
set forth in Section 4.3 and Articles VI and VIII.
ARTICLE XI
DISPUTE RESOLUTION
Excepting disputes arising under Articles VI or VIII, which shall be
governed by the provisions set forth therein, the terms of the provisions
entitled "Dispute Resolution" in the Master Separation and Sale Agreement shall
apply to any claims or controversies or disputes arising hereunder among the
parties to this Agreement.
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ARTICLE XII
LIMITATION OF LIABILITY
The terms of the provisions entitled "Limitation of Liability" in the
Master Separation and Sales Agreement shall apply to any liabilities or damages
incurred by the parties by reason of any breach of this Agreement or the
activities of the parties hereunder.
ARTICLE XIII
MISCELLANEOUS PROVISIONS
Section 13.1 Disclaimer. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
LICENSED MARKS AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED
HEREUNDER OR IN CONNECTION WITH THE PRIOR TRANSFERS ARE LICENSED OR PROVIDED ON
AN "AS IS" BASIS AND THAT NEITHER PARTY (NOR ANY OTHER MEMBER OF THE
SCHLUMBERGER GROUP AND THE NPT GROUP) MAKE ANY REPRESENTATIONS OR EXTENDS ANY
WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO
INCLUDING WITHOUT LIMITATION ANY WARRANTIES CONCERNING THE QUALITY OR
ENFORCEABILITY OF ANY RIGHTS TO THE LICENSED MARKS OR OTHER INFORMATION OR
MATERIALS LICENSED OR PROVIDED HEREUNDER, AND ANY IMPLIED WARRANTIES OF TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. NPT ACKNOWLEDGES THAT IT IS SOLELY
RESPONSIBLE FOR ANY RESULTS OBTAINED FROM THE USE OF THE LICENSED MARKS OR
INFORMATION AND NPT HEREBY IRREVOCABLY WAIVES ANY CLAIMS IT MAY HAVE OR LATER
MAY HAVE AGAINST THE SCHLUMBERGER GROUP IN CONNECTION WITH SUCH USE.
Without limiting the generality of the foregoing, Schlumberger (and
Schlumberger Group) makes no warranty or representation as to the validity of
any Xxxx licensed by it to NPT or any warranty or representation that any use of
any Xxxx with respect to any product or service will be free from infringement
of any rights of any Third Party.
Section 13.2 No Implied Licenses. Nothing contained in this Agreement
shall be construed as conferring any rights by implication, estoppel or
otherwise, under any intellectual property right, other than the rights
expressly granted in this Agreement with respect to the Licensed Marks. Neither
party is required hereunder to furnish or disclose to the other any information
(including copies of registrations of the Marks), except as specifically
provided herein.
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Section 13.3 Infringement Suits. Except as set forth in Section 4.3,
(i) neither party shall have any obligation hereunder to institute any action or
suit against Third Parties for infringement of any of the Licensed Marks or to
defend any action or suit brought by a Third Party which challenges or concerns
the validity of any of the Licensed Marks and (ii) NPT shall not have any right
to institute any action or suit against Third Parties for infringement of any of
the Licensed Marks.
Section 13.4 No Other Obligations. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND
OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN
AGREEMENT BETWEEN THE PARTIES. Without limiting the generality of the foregoing,
neither party (nor any other member of the Schlumberger Group and the NPT Group)
is obligated to (i) file any application for registration of any Xxxx, or to
secure any rights in any Marks, (ii) to maintain any Xxxx registration, or (iii)
provide any assistance, except for the obligations expressly assumed in this
Agreement.
Section 13.5 Entire Agreement. This Agreement, the Ancillary Agreements
and the Exhibits and Schedules referenced or attached hereto and thereto, and
the agreements and documents executed and delivered in connection with the Prior
Transfers, constitute the entire agreement between the parties with respect to
the subject matter hereof and thereof and shall supersede all prior written and
oral and all contemporaneous oral agreements and understandings with respect to
the subject matter hereof and thereof.
Section 13.6 Governing Law. This Agreement shall be construed in
accordance with and all Disputes hereunder shall be governed by the laws of the
State of Delaware, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods.
Section 13.7 Descriptive Headings. The headings contained in this
Agreement, in any Exhibit or Schedule hereto and in the table of contents to
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement. Any capitalized term used in
any Exhibit or Schedule but not otherwise defined therein, shall have the
meaning assigned to such term in this Agreement. When a reference is made in
this Agreement to an Article or a Section, Exhibit or Schedule, such reference
shall be to an Article or Section of, or an Exhibit or Schedule to, this
Agreement unless otherwise indicated.
Section 13.8 Notices. Notices, offers, requests or other communications
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be given in writing to the respective parties to the following
addresses:
if to STI:
Schlumberger Technologies, Inc.
14
[To Come]
Attention: [__________]
Telephone: [__________]
Facsimile: [__________]
if to SBV:
Schlumberger BV
[To Come]
Attention: [__________]
Telephone: [__________]
Facsimile: [__________]
if to STC:
Schlumberger Technology Corp.
[To Come]
Attention: [__________]
Telephone: [__________]
Facsimile: [__________]
if to NPT:
NPTest, Inc.
[To Come]
Attention: General Counsel
Telephone: [__________]
Facsimile: [__________]
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three days from the
date of postmark.
15
Section 13.9 Binding Effect; Assignment. No party may, directly or
indirectly, in whole or in part, whether by operation of law or otherwise,
assign or transfer this Agreement, without the other parties' prior written
consent, and any attempted assignment, transfer or delegation without such prior
written consent shall be voidable at the sole option of such other parties.
Notwithstanding the foregoing, each party (or its permitted successive assignees
or transferees hereunder) may assign or transfer this Agreement as a whole
without consent to an entity that succeeds to all or substantially all of the
business or assets of such party. Without limiting the foregoing, this Agreement
will be binding upon and inure to the benefit of the parties and their permitted
successors and assigns.
Section 13.10 Severability. If any term or other provision of this
Agreement or the Exhibits or Schedules attached hereto is determined by a court,
administrative agency or arbitrator to be invalid, illegal or incapable of being
enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement shall nevertheless remain in full force and effect
so long as the economic or legal substance of the transactions contemplated
hereby is not affected in any manner materially adverse to either party. Upon
such determination that any term or other provision is invalid, illegal or
incapable of being enforced, the parties hereto shall negotiate in good faith to
modify this Agreement so as to effect the original intent of the parties as
closely as possible in an acceptable manner to the end that transactions
contemplated hereby are fulfilled to the fullest extent possible.
Section 13.11 Failure or Indulgence Not Waiver; Remedies Cumulative. No
failure or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement or the Exhibits or Schedules attached hereto are cumulative
to, and not exclusive of, any rights or remedies otherwise available.
Section 13.12 Amendment. No change or amendment will be made to this
Agreement or the Exhibits or Schedules attached hereto except by an instrument
in writing signed on behalf of each of the parties to such agreement.
Section 13.13 Counterparts. This Agreement, including the Ancillary
Agreement and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts, each
of which shall be deemed to be an original but all of which shall constitute one
and the same agreement.
Section 13.14 Authority. Each of the parties hereto represents to the
other that (a) it has the corporate or other requisite power and authority to
execute, deliver and perform this Agreement, (b) the execution, delivery and
performance of this Agreement by it have been duly authorized by all necessary
corporate or other actions, (c) it has duly
16
and validly executed and delivered this Agreement, and (d) this Agreement is a
legal, valid and binding obligation, enforceable against it in accordance with
its terms subject to applicable bankruptcy, insolvency, reorganization,
moratorium or other similar laws affecting creditors' rights generally and
general equity principles.
17
IN WITNESS WHEREOF, each of the parties has caused this Master
Trademark Ownership and License Agreement to be executed on its behalf by its
officers thereunto duly authorized on the day and year first above written.
Schlumberger Technologies, Inc. NPTest, Inc.
By: _____________________________________ By: ____________________________
Name: Name:
Title: Title:
Schlumberger BV
By: _____________________________________
Name:
Title:
Schlumberger Technology Corporation
By: _____________________________________
Name:
Title:
_____________________________________
_____________________________________
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EXHIBIT A
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
LICENSED MARKS
Schlumberger
Schlumberger Logo
EXHIBIT B
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
[Schedule of NPT Business Marks]
