Exhibit 10.20
INTERNATIONAL
EXCLUSIVE LICENSE AGREEMENT BHPC.12I
---------------------------
THIS AGREEMENT is made and entered into this 15th day of August, 1996 by
and between BHPC Marketing, Inc., a corporation duly organized and existing
under the laws of California, having its principal place of business at 000
Xxxx 000xx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"LICENSOR"), and Zacari 2000, S.L., a Spanish Limited Corporation, having its
principal place of business at x/XXXXX 00, X0, 00000, Xxxxxxxxx, Xxxxx
(hereinafter referred to as "LICENSEE").
WHEREAS, LICENSOR is the owner with the right to grant licenses of the
Trademarks illustrated in Exhibit "A" attached hereto (the "Trademarks"); and
WHEREAS, LICENSEE is desirous of obtaining the exclusive right to use
the aforesaid Trademarks in connection with the import or manufacture and
sale of certain licensed products defined herein.
NOW, THEREFORE, it is agreed by the parties as follows:
1. DEFINITIONS
-----------
The following terms shall have meanings as set forth below:
a. "Trademarks" shall mean the Trademarks set forth in Exhibit "A".
b. "Territory" shall mean that geographical area defined in item 1 of the
attached License Agreement Detail Schedule.
c. "Licensed Product" shall be defined as set forth in item 2 of the
attached License Agreement Detail Schedule.
d. *
2. RIGHTS GRANTED
--------------
LICENSOR hereby grants to LICENSEE, upon the terms and conditions set
forth herein, an exclusive, personal, non-transferable, non-assignable
license, without the right to grant sublicenses, to use the Trademarks
solely on or in conjunction with the design, manufacture, import,
distribution, advertising, promotion, shipment, and sale of the Licensed
Product in the Territory. This license is extended to and includes wholesale
sales only and does not include retail sales. LICENSEE is hereby authorized
to enter
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
BHPC.12I
into distributorship agreements, with prior written approval of LICENSOR,
said approval not to be unreasonably withheld.
3. *
4. GOOD WILL AND PROMOTIONAL VALUE
-------------------------------
a. LICENSEE recognizes the value of the good will associated with the
Trademarks and acknowledges that the Trademarks, and all rights therein and
the good will pertaining thereto, belong exclusively to LICENSOR.
LICENSEE further recognizes and acknowledges that the Trademarks have
acquired secondary meaning in the mind of the public.
b. LICENSEE agrees that its use of the Trademarks shall inure to the benefit
of LICENSOR and that LICENSEE shall not, at any time, acquire any rights in
the Trademarks by virtue of any use it may make of the Trademarks.
c. LICENSEE acknowledges that LICENSOR is entering into this Agreement not
only in consideration of the royalties paid hereunder but also for the good
will and promotional value to be secured by LICENSOR for the Trademarks as a
result of the manufacture, offering for sale, sale, advertising, promotion,
shipment and distribution of the Licensed Product by LICENSEE.
5. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
d. LICENSEE agrees that the Licensed Product and all Promotional and
Packaging Material shall contain only those legends, markings and/or
notices as required from time to time by LICENSOR to give appropriate
notice to the consuming public of LICENSOR's right, title and interest
thereto.
e. LICENSOR may, periodically and from time to time during the term of this
Agreement, require that LICENSEE submit to LICENSOR, at no cost to
LICENSOR, or LICENSOR or its designees may randomly select and retain
during the inspection referred to in Xxxxxxxxxxxx 0x, xxxxx, one (1)
additional set of Production Samples of the Licensed Product and/or the
Promotional and Packaging Material relating to the Licensed Product for
subsequent review and written approval of the quality of, trademark usage
and notice on same, and for any other purpose that LICENSOR deems
appropriate.
f. To assure that the provisions of this Paragraph 5 are being observed,
LICENSEE agrees that it will allow LICENSOR or its designees,
periodically and from time to time during the term of this Agreement, to
enter LICENSEE's premises and/or the premises where the Licensed Product
is being manufactured or inventoried during regular business hours and
upon reasonable notice, for the purposes of inspecting and approving the
Licensed Product and the Promotional and Packaging Material relating to
the Licensed Product.
g. *
6. ADVERTISING/USE OF THE TRADEMARK
--------------------------------
a. LICENSEE will adopt and carry out its own marketing and advertising
program with respect to the Licensed Product. LICENSEE agrees that
LICENSEE's advertising, public relations and sales promotion activities
will be subject to prior consultation with, and written approval by,
LICENSOR as to the general form and content only with respect to the use
of the Trademarks and other notices.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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b. *
c. LICENSEE agrees that upon request of LICENSOR, it shall loan a reasonable
number of products to LICENSOR and its other licensees for advertising
and promotional purposes.
d. *
e. Advertising directed to the public may not feature the name of LICENSEE.
If approved, advertising directed to the trade may feature the following:
BHPC Marketing, Inc. under Trademark License to (Name of LICENSEE).
f. LICENSEE agrees that the Trademark will appear on each Licensed Product
and its packaging, if any. LICENSEE shall use only those tags, labels and
packaging materials which have been previously approved in writing. All
tags, labels and packaging materials bearing the Trademark must be
submitted on the "Advertising Approval Form" (Exhibit "B-3").
g. LICENSEE shall affix such legends, markings and notices on all License
Product as are required by LICENSOR and the law.
h. LICENSEE must submit for approval to LICENSOR a printer's proof of each
item before final printing.
7. DURATION OF THE AGREEMENT
-------------------------
a. This Agreement shall continue for three (3) consecutive Contract Years
in respective durations as set forth in item 3 of the attached License
Agreement Detail Schedule (hereinafter collectively the "Initial Term")
and shall then expire unless sooner terminated in accordance with the
terms and conditions set forth herein.
b. If LICENSEE fully performs according to all of the terms and conditions
hereof including, without limitation, the terms and conditions
specifically enumerated below, LICENSEE shall have three (3) consecutive
options to renew this Agreement for three (3) consecutive contract
periods, i.e., Contract Years, of one (1) year each (hereinafter
collectively the "Renewal Term"). In order to exercise each individual
option, LICENSEE must provide LICENSOR with written notice of its
intention to exercise each respective option and such written notice
must be received by LICENSOR no later than *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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prior to the expiration of the Initial Term or immediately preceding
Contract Year of the Renewal Term. * Except as specifically set forth
herein to the contrary, LICENSEE's performance in the Renewal Term shall
be pursuant to the same terms and conditions recited herein for the
Initial Term.
8. ROYALTIES
---------
a. "Royalty", as used in this Agreement, shall consist of:
(i) LICENSEE paying to LICENSOR, during the term of this Agreement, a
Royalty in an amount equal to six percent (6%) of the Net Shipments by
LICENSEE for Licensed Product sold under the Trademarks directly to
Authorized BHPC Distributors. Any sales of Licensed Product to
Distributors will be under approved Distributorship Agreements by
LICENSOR.
(ii) LICENSEE paying to LICENSOR, during the term of this Agreement, a
Royalty in an amount equal to six percent (6%) of the Net Shipments by
LICENSEE for Licensed Product sold under the Trademarks directly to
Retail Stores.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
9. PAYMENT
-------
*
c. LICENSEE's statements shall be submitted to:
BHPC Marketing, Inc.
000 Xxxx 000xx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Royalty Receivables Department
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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All amounts payable to LICENSOR by LICENSEE shall be wire transferred to:
Bank Name: First Interstate Bank
Bank ABA#: 000000000
Bank Address: 000 Xxxxxxxx Xxxx.
Xxx Xxxxxxx, XX 00000
Account Name: BHPC Marketing, Inc.
Account Number: 000-0-00000
*
10. GUARANTEES
----------
a. Guaranteed Annual Royalty Payments - LICENSEE shall pay, for each
Contract Year during the term of this Agreement, beginning with the First
Contract Year, the respective Guaranteed Annual Royalty Payments set
forth in item 7 of the attached License Agreement Detail Schedule.
b. Guaranteed Target Net Shipments - If, in any Contract Year, LICENSEE does
not achieve the Guaranteed Target Net Shipment Volume figure set forth in
item 7 of the attached License Agreement Detail Schedule LICENSOR may, at
its option, immediately thereafter terminate this Agreement in writing.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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c. Guaranteed Net Shipments - If, in any Contract Year, LICENSEE does not
achieve the Guaranteed Net Shipments figure for a particular country set
forth in item 7 of the attached Licensed Agreement Detail Schedule
LICENSOR may, at its option, immediately thereafter terminate this
Agreement in writing for that particular country only.
d. *
e. *
11. EXPLOITATION BY LICENSEE
------------------------
a. LICENSEE agrees to commence, and diligently continue thereafter, the
distribution, shipment and sale of the Licensed Product in commercially
reasonable quantities in the Territory on or before the respective
distribution date set forth next to the Licensed Product described in
item 2 of the attached License Agreement Detail Schedule.
b. LICENSEE agrees that the Licensed Product will only be sold to retailers,
jobbers, wholesalers and BHPC Authorized Distributors for sale, shipment
and distribution to retail stores and merchants commonly considered and
referred to in the industry as fine department stores and better
specialty stores and/or to fine department stores and better specialty
stores for sale, shipment and distribution direct to the public. The
manner and scope of the distribution of the Licensed Product,
availability, variety, fabrication, colors and sizes are critical to the
promotion, enhancement and protection of the Trademarks and their
associated
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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goodwill. LICENSEE acknowledges that it has no right to and shall not
sell or distribute the Licensed Product to any diverter or to anyone
outside of the Territory or to any Distributor who is not a BHPC
Authorized Distributor.
c. *
12. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
*
13. USE, DISPLAY, AND SALE INVOLVING THE TRADEMARKS AND COPYRIGHT
-------------------------------------------------------------
a. In order to protect the Trademarks and LICENSOR's reputation, LICENSEE
will manufacture, distribute and sell the Licensed Product in compliance
with all applicable laws. *
b. LICENSEE shall exercise all reasonable efforts, within the limits allowed
by the laws and governmental regulations in effect in the Territory, to
ensure that its merchandising and sales of the Licensed Product shall
conform to policies and methods suitable for goods of high quality sold
under a prestigious label of worldwide repute.
14. OWNERSHIP OF THE TRADEMARKS
---------------------------
a. LICENSEE agrees that nothing in this Agreement shall give LICENSEE any
right, title, or interest in the Trademarks, other than the license to
use the Trademarks on the Licensed Product; that such marks are the sole
property of Licensor; that all such uses by LICENSEE of such marks shall
inure only to the benefit of LICENSOR; and it being understood that all
right, title and interest relating thereto are expressly reserved by the
LICENSOR except for the rights being licensed hereunder.
b. LICENSEE agrees and acknowledges that if it has obtained or obtains in
the future, in any country, any right, title, or interest in any marks
which are confusingly similar to the Trademark, (including the filing of
any application for trademarks or service xxxx registration or the
obtaining of any issued registration), that LICENSEE has acted or will
act as an agent and for the benefit of LICENSOR. LICENSEE further agrees
to execute any and all instruments deemed by LICENSOR, its attorneys or
representatives, to be necessary
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
to transfer such right, title, or interest to LICENSOR to protect
LICENSOR's right, title and interest in such marks.
c. *
15. COMPLIANCE WITH LIMITATIONS ON USE OF TRADEMARKS
------------------------------------------------
LICENSEE agrees that the Licensed Product, and all labels, hang tags,
packaging and other trade dress, used in connection with such Licensed
Products, shall not violate any restrictions on use or display of the
marks as provided in that Settlement Agreement and Consent Judgement with
Polo Fashions, Inc., a copy of which is attached hereto as Exhibit "D".
Nothing contained in this Agreement makes Polo Fashions, Inc., or any
related company, a third party beneficiary of this Agreement.
16. THIRD PARTY INFRINGEMENT
------------------------
LICENSEE agrees to notify LICENSOR in writing of any infringements or
imitations by third parties of the Trademarks, the Licensed Product
and/or the Promotional and Packaging Material which may come to
LICENSEE's attention. *
17. ASSIGNABILITY AND MANUFACTURING
-------------------------------
a. The license granted hereunder is, and shall remain, personal to LICENSEE
and shall not be granted, assigned, or otherwise conveyed by any act of
LICENSEE or by operation of law. For the purposes of this Paragraph 17,
any sale or transfer of any ownership interest in LICENSEE shall
constitute a prohibited assignment of the license granted hereunder.
LICENSEE shall have not right to grant any sublicenses without LICENSOR's
prior express written approval. Any attempt on the part of LICENSEE to
arrange to sublicense or assign to third parties its rights under this
Agreement, shall constitute a material breach of this
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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Agreement.
b. LICENSOR shall have the right to assign its rights and obligations under
this Agreement without the approval of LICENSEE.
18. NO AGENCY, JOINT VENTURE, PARTNERSHIP
The parties hereby agree that no agency, joint venture, or partnership is
created by this Agreement, and that neither party shall incur any obligation
in the name of the other without the other's prior written consent.
19. *
20. TERMINATION
a. In addition to the termination rights provided elsewhere in this
Agreement, LICENSOR will have the right to terminate this Agreement in the
event that: *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
21. EFFECT OF EXPIRATION OR TERMINATION
a. Upon expiration or termination of this Agreement, all rights and
licenses granted to LICENSEE hereunder shall immediately expire, shall
forthwith revert to LICENSOR, and LICENSEE shall immediately cease and
desist from using the Trademarks and any technical information supplied by
LICENSOR to LICENSEE hereunder. To this end, LICENSEE will be deemed to
have automatically assigned to LICENSOR, upon such expiration or
termination, the Trademarks, equities, good will, titles, and other rights
in or to the Licensed Product and all adaptions, compilations,
modifications, translations and versions thereof, and all other trademarks
used in connection therewith which have been or may be obtained by LICENSEE
or which may vest in LICENSEE and which have not already been assigned to
LICENSOR. LICENSOR may thereafter, in its sole discretion enter into such
arrangements as it deems desirable, with any other party, for the
manufacture, promotion and sale of the Licensed Product in the Territory.
LICENSEE shall, within thirty (30) days after expiration or termination of
this Agreement as the case may be, furnish LICENSOR with a full and detailed
written statement of the Licensed Product in its inventory or the Licensed
Product in progress. LICENSOR shall have the option of conducting a physical
inventory at the time of expiration or termination and/or at a later date in
order to ascertain or verify such statement. In the event that the LICENSEE
refuses to permit LICENSOR to conduct such physical inventory, LICENSEE
shall forfeit its rights hereunder to dispose of such inventory. In addition
to such forfeiture, LICENSOR shall have recourse to all other remedies
available to it.
b. Upon the termination of this Agreement, *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
*
22. MODIFICATION; WAIVER
--------------------
No modification of any of the terms or provisions of this Agreement shall
be valid unless contained in a writing signed by the parties. No waiver
by either party of a breach or a default hereunder shall be deemed a
waiver by such party of a subsequent breach or default of a like or
similar nature. Resort by LICENSOR to any remedies referred to in this
Agreement or arising by reason of a breach of this Agreement by LICENSEE
shall not be construed as a waiver by LICENSOR of its right to resort to
any and all other legal and equitable remedies available to LICENSOR.
23. FORCE MAJEURE
-------------
Neither LICENSOR nor LICENSEE shall be liable to each other or be deemed
in breach or default of any obligations contained in this Agreement, for
any delay or failure to perform due to causes beyond its reasonable
control, including but not limited to delay due to the elements, acts of
the United States Government, acts of a foreign government, acts of God,
fires, floods, epidemics, embargoes, riots, strikes, any of the foregoing
events being referred to as a "Force Majeure" condition. In such event,
dates for performance shall be extended for the period of delay resulting
from the Force Majeure condition. The party affected by a Force Majeure
condition shall, as soon as practicable, notify the other party of the
nature and extent of such condition.
24. NOTICE
------
All notices, approvals, consents, requests, demands, or other
communications to be given to either party in
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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writing may be effected by personal delivery or by depositing the same in
the mail, certified and return receipt requested, postage prepaid. Such
communication shall be addressed to LICENSEE and LICENSOR at their
respective addresses as set forth in the preamble above.
25. CONSTRUCTION; VENUE
-------------------
This Agreement shall be construed in accordance with the laws of the
State of California, U.S.A., and the parties agree that it is executed
and delivered in that state, and any claims arising hereunder shall, at
LICENSOR's election, be prosecuted in the appropriate Court of the State
of California in Los Angeles County or any Federal District Court
therein.
26. ENTIRE AGREEMENT
----------------
This Agreement, contains the entire understanding of the parties and
there are no representations, warranties, promises, or undertakings
other than those contained herein. This Agreement supersedes and cancels
all previous agreements between the parties hereto.
27. *
28. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
29. *
30. BINDING EFFECT
--------------
This Agreement shall be finding on the parties, and their successors and
assigns.
31. *
32. SEVERABILITY
------------
In the event that any term or provision of this Agreement shall for any
reason be held to be invalid, illegal or unenforceable in any respect,
such invalidity or unenforceability shall not affect any other term or
provision and this Agreement shall be interpreted and construed as if
such term or provision, to the extent the same shall have been held to be
invalid, illegal or unenforceable, had never been contained herein.
33. CAPTIONS
--------
The captions used in connection with the paragraphs and subparagraphs of
this Agreement are inserted only for purpose of reference. Such captions
shall not be deemed to govern, limit, modify or in any other manner
affect the scope, meaning or intent of the provisions of this Agreement
or any part thereof nor shall such captions otherwise be given any legal
effect.
34. INCORPORATION OF EXHIBITS
-------------------------
LICENSOR and LICENSEE acknowledge and agree that the provisions of
Exhibits "A" through "E" attached hereto (the Exhibits") are integral to
this Agreement and that the provisions of the Exhibits are all hereby
incorporated herein and made a part hereof as if set out in full in this
Agreement.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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35. ENGLISH LANGUAGE
----------------
This Agreement is entered into the English language only. Any
translation thereof into any other language shall be for purposes of
convenience only and shall not be considered in connection with the
interpretation of the provisions hereof.
36. REQUIRED FILING OF AGREEMENT
----------------------------
LICENSEE shall cause this Agreement to be filed with, and approved by,
all necessary governmental authorities, including the appropriate
exchange control authorities, whenever such filing and approval may be
required for the purpose of authorizing the payments herein provided.
LICENSEE shall be solely responsible for the filing of this document
with the appropriate authorities and shall bear the cost thereof, if
any. In the event of LICENSEE failing to obtain the approvals or
completing the filing set forth above within four (4) months from the
date of this Agreement, LICENSOR may terminate this Agreement forthwith.
37. REGISTRATION IN TERRITORY
-------------------------
LICENSOR will exert its best efforts to obtain trademark registration of
the Trademarks for the Licensed Product in the Territory. However,
LICENSOR has made no representation or warranty that the Trademarks will
be registered or are registerable in the Territory, and the failure to
obtain or maintain registrations thereon shall not be deemed a breach
hereunder by LICENSOR. A listing of the registrations in class 25 in the
Territory is shown in Exhibit "E", attached hereto.
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IN WITNESS WHEREOF, the parties hereto agree that this Agreement shall
take effect as of the date and year first above written.
LICENSOR: LICENSEE:
BHPC MARKETING, INC., XXXXXX, X.X.
a California Corporation a Spanish Limited Corporation
BY: /s/ Xxx Xxxxxxxx BY: /s/ Xxxxxx Xxxxx
Xxx Xxxxxxxx Xxxxxx Xxxxx
Licensing Director Chairman/Managing Director
Date: 8/19/96 Date: 8/15/96
------- -------
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[Statement of Royalties Form]
SETTLEMENT AGREEMENT
This Settlement Agreement is made, in multiple originals, by and among *
will hereinafter be collectively referred to as the "Xxxxxxx Hills Polo Club
Parties."
WITNESSETH:
WHEREAS, there are presently pending before the United States District
Court for the Central District of California two civil actions entitled *
EXHIBIT D
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
WHEREAS, the parties hereto have vigorously contested the BHPC Action and
the * Action (collectively the "Civil Actions"), and have expended
considerable time and effort, and have incurred considerable expense, in doing
so; and
WHEREAS, in order to avoid the additional expense which would be
necessary for the continued prosecution of the Civil Actions, the parties are
willing to resolve the controversy among them and to settle the Civil Actions
under the terms and conditions set forth herein;
NOW, THEREFORE, in mutual consideration of the covenants and premises
contained herein, the parties agree as follows:
1. Except as provided in paragraph 3 hereunder, as of February 15, 1985,
the Xxxxxxx Hills Polo Club Parties, their affiliates, officers, agents and
employees and any person or entity under their direction or control, or in
active concert or participation with them, shall cease and desist from
anywhere in the world:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
*
*
(c) Using as a design or decoration on or in connection with the
Subject Products and Services, including but not limited to related
packaging, labels, tags and other trade dress, or as a trademark or
service xxxx, the design of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
which is shown in Exhibit A (the *), or any design which is a colorable
imitation or simulation thereof;
(d) Using as a design or decoration on or in connection with the
Subject Products and Services, including but not limited to related
packaging, labels, tags and other trade dress, or as a trademark, service
xxxx or trade name the design of * which is shown in Exhibit B (the
"BHPC Symbol"), or any design which is a colorable imitation or simulation
thereof or is substantially similar thereto, in an overall size smaller
than five and a half inches by five and a half inches (5 1/2" x 5 1/2")
(measured from mallet head to hoof and from nose to tail), except as may
be permitted by paragraph 2 hereof;
(e) Using either of the typefaces shown in Exhibit C (identified
hereinafter as the "Subject Typefaces") for the name "Xxxxxxx Hills Polo
Club";
(f) Placing or causing to be placed any advertisements or using any
materials of any type making reference, either directly or indirectly to
* or to * or their licensees and affiliates;
and
(g) Using dark blue as the background color of any packaging, label,
tag or trade dress containing the words "Xxxxxxx Hills Polo Club", and/or
the BHPC Symbol.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
4
2. Notwithstanding the size limitations imposed by
paragraph 1(d) hereof, the Xxxxxxx Hills Polo Club Parties may use the BHPC
Symbol in an overall size smaller than the five and a half inches by five and
a half inches ( 5 1/2" x 5 1/2" ) set forth in paragraph 1(d) hereof but only
if
(a) the same is used in combination with and in
close proximity to the words "Xxxxxxx Hills Polo Club" in the configuration
shown in Exhibit D annexed hereto (the "Composite BHPC Logo") or the label
shown in Exhibit E annexed hereto (the "BHPC Label"); or
(b) the BHPC Symbol is used in a repetitive
pattern covering substantially all of the front or back of any of the Subject
products, provided that the initials "BHPC" shall appear in close proximity
to the BHPC Symbol, and that somewhere on each of the Subject Products the
words "Xxxxxxx Hills Polo Club" shall be prominently displayed.
3. The Xxxxxxx Hills Polo Club Parties may sell or
otherwise dispose of any and all articles of clothing and accessories which
are represented by them to be in their possession or under their control as
of February 15, 1985, as set forth in Exhibit F, to be added hereto not later
than March 1, 1985, which would otherwise come within the prohibitions of
paragraph 1 of this Agreement, and may fill orders accepted on or before such
date for any clothing or accessories coming within such prohibitions so long
as such orders are filled within ninety (90) days of such date.
Notwithstanding the foregoing,
5
BHPC may have until June 15, 1985 to dispose of garments in the process of
manufacture in the Orient as of February 15, 1985. * or its attorneys or
such attorneys' agents, on reasonable notice, which notice shall not be
required to exceed ten (10) days, may review purchase orders, bills of
lading, or inventory records at the place of business of any Xxxxxxx Hills
Polo Club Parties sufficient to verify compliance with this paragraph. Such
information is to be used solely to verify and enforce compliance, and shall
be held in confidence by * attorneys or their agents.
4. Simultaneously with its execution of this settlement
agreement, *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
6
5. Neither * nor any person or entity under its
direction or control, may oppose the registration by the Xxxxxxx Hills Polo
Club Parties of any trademark which the Xxxxxxx Hills Polo Club Parties are
entitled to register under this Agreement, nor shall they petition to cancel,
either directly or through court action the registration of any such
trademark unless said xxxx or registration is the basis for legal action
by BHPC, Lang or any affiliated entity against * or its licensees. If *
learns that any of its licensees objects to the registration by any of the
Xxxxxxx Hills Polo Club Parties of the words "Xxxxxxx Hills Polo Club,"
and/or the Composite BHPC Logo and/or the BHPC Label, then * will inform
such objecting licensee in writing of the terms of this Agreement, and
provide written confirmation thereof to BHPC.
6. The parties agree to entry in the Civil Actions of
Final Judgement Upon Consent in the form annexed hereto as Exhibit H, or in
such other form as the Court may require consistent with the terms and
conditions of this settlement Agreement.
7. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7
*
8. The parties will not initiate any publicity concerning
the terms and conditions of this Agreement and such terms and conditions shall
be held in confidence except as otherwise provided herein. The Xxxxxxx Hills
Polo Club Parties may provide a copy of this Settlement Agreement or portions
or summaries thereof to any person or entity licensed or otherwise permitted
to use the name "Xxxxxxx Hills Polo Club," the BHPC Symbol or the composite
BHPC Logo, to potential licensees, to sales representatives or, upon inquiry
being made, to customers. Either party may refer to the terms and conditions
of this Agreement in conjunction with its registration, or judicial or
administrative protection or enforcement of its trademarks, trade names and
service marks.
9. This Settlement Agreement represents no concession by
any party as to the validity or merit of any of the claims raised in the
Civil Actions by any other party, except as may be set forth in the Final
Judgement of Exhibit H.
10. * and its officers, agents, employees and sales
representatives shall not make, directly or indirectly, any claim that the
purchase of products complying with the terms of this Agreement from BHPC or
Lang or their distributors or sub-licensees constitutes trademark
infringement, unfair competition or trademark dilution, nor threaten sanctions
with respect thereto. This undertaking does not in any way admit or imply
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
8
that *, or any acting on its behalf, has in the past made any such claims
or threatened any such sanctions.
11. *
12. *
13. This Settlement Agreement represents the entire understanding
between the parties with respect to the subject matter hereof; shall not be
varied or amended except by a
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
9
writing signed by all parties; shall be binding upon the parties, their
successors and assigns; and shall, as respects contractual construction, be
governed by and construed in accordance with the laws of * . Neither party
hereby waives any claim as to the propriety of venue or as to the existence
of personal jurisdiction, in any lawsuit or other proceeding that may arise
concerning the subject matter of this Settlement Agreement.
14. * warrants and represents that it has full right and power to
enter into this Settlement Agreement.
15. Lang warrants and represents that it has full right and power to
enter into this Settlement Agreement.
16. BHPC warrants and represents that it has full right and power to
enter into this Settlement Agreement.
17. Xxxxxxx warrants and represents as follows:
(a) He is the president and sole shareholder of BHPC and Lang; and
(b) He has the full right, power and authority to enter into this
Settlement Agreement.
18. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10
"polo clubs") or items of wearing apparel which have come to be described by
the word polo (e.g. "polo shirts" or "polo coats"), provided, however, that
any such use will not violate any of the terms and conditions of this
Agreement.
19. The Xxxxxxx Hills Polo Club Parties shall take all steps reasonably
necessary to ensure that any person or entity which is licensed or otherwise
permitted to use the term "Xxxxxxx Hills Polo Club", the BHPC Symbol or the
Composite BHPC Logo, complies fully with the restrictions set forth in
paragraph 1 hereof.
20. * acknowledges that the rights of any person or entity which it
licenses or otherwise permits to use the * Marks are subject to the terms
and conditions of this Agreement and that such rights cannot be used in
contravention of the provisions of paragraphs 5 and 10 hereof. * agrees to
inform any of its licensees whom it learns object to the use by the Xxxxxxx
Hills Polo Club Parties of any of the names or marks which they are permitted
to use hereunder of the foregoing acknowledgements.
21. In the event that a dispute arises between the parties as to the
subject matter of this Agreement, then the parties shall attempt to amicably
resolve the same prior to seeking judicial intervention. If the parties are
unable to resolve such dispute within thirty (30) days after it arises,
11
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
then either party may take such action as it deems appropriate to protect its
rights.
IN WITNESS WHEREOF, the parties have executed this Settlement on the
days indicated adjacent to their respective signatures below.
*
Dated: 2/15/85 By: /s/ *
*
XXXXXXX HILLS POLO CLUB, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
Xxxxxxx Xxxxxxx, President
XXXXXXX XXXXXXX
Dated: 2/20/85 /s/ Xxxxxxx Xxxxxxx
XXXXXXX XXXX, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
Xxxxxxx Xxxxxxx, President
12
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
[LOGO]
EXHIBIT A
[LOGO]
EXHIBIT B
[LOGO]
EXHIBIT C
[LOGO]
EXHIBIT D
[LOGO]
Note: Typeface to be changed per Paragraph 1(e).
EXHIBIT E
LICENSE AGREEMENT DETAIL SCHEDULE
1. Definition of Territory: Wholesale sales in Europe and Eastern Europe as
follows:
Portugal Andorra Italy France Belgium
Holland Greece Switzerland Austria Germany
Luxembourg Liechtenstein Latvia Norway Denmark
Sweden Poland Hungary Czech Republic Slovakia
Estonia Ukraine Belarus San Marino Cypress
Chechnia Moldavia Russia N. Ireland Ireland
Lithuania Romania Bulgaria Monaco Iceland
Finland Spain United Kingdom
2. Definition of Licensed Product (by category): DISTRIBUTION DATE:
A. Men's apparel (excluding suits, ties, underwear, January 1, 1997
shoes and full-length rainwear)
B. Women's apparel (excluding hosiery, intimate
apparel, business suits, underwear, accessories,
shoes and full length raincoats)
3. Initial Term: FROM TO
First Contract Year: July 1, 1996 December 31, 1997
Second Contract Year: January 1, 1998 December 31, 1998
Third Contract Year: January 1, 1999 December 31, 1999
4. Renewal Term:
Fourth Contract Year (if any): January 1, 2000 December 31, 2000
Fifth Contract Year (if any): January 1, 2001 December 31, 2001
Sixth Contract Year (if any): January 1, 2002 December 31, 2002
5. *
6. Royalty Rate:
Six percent (6%) of Net Shipments
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7. Guarantees:
(A) (B) (C) (D)
Guaranteed Guaranteed Guaranteed
Target Guaranteed Annual Monthly
Net Net Royalty Royalty
Shipments Shipments Payments Payments
(in United States Dollars)
---------------------------------
First Contract Year * $00 $00 *
Second Contract Year * $2,000,000 $120,000 *
Third Contract Year * $4,000,000 $240,000 *
INITIALS
LICENSOR: /s/DG
-----
LICENSEE: /s/ RJA
-------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
SECTION (I)
NET SHIPMENT STATEMENT
The written statement of Net Shipments of Licensed Product (a copy of which
is attached hereto as Exhibit "B-4") referred to in Paragraph 9a must be
certified as accurate by LICENSEE and will include, but will not be limited
to, information as to: *
SECTION (II)
*
EXHIBIT "C"
Page 1 of 2
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
SECTION (III)
*
EXHIBIT "C"
Page 2 of 2
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
XXXXXXX HILLS POLO CLUB REGISTRATIONS
IN CLASS 25 IN TERRITORY
*
EXHIBIT "E"
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Inc. Cls 25
Prior U.S. Cls 39
Reg. No. 1,429,311
United States Patent and Trademark Office Registered Feb. 17, 1987
------------------------------------------------------------------------------
TRADEMARK
PRINCIPAL REGISTER
XXXXXXX HILLS
POLO CLUB
[LOGO]
EXHIBIT A
Page of
------- -------
DATE
----------------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SAMPLE APPROVAL FORM
(FOR STYLE ONLY! SEE SWATCH APPROVAL FORM FOR FABRIC)
NAME OF LICENSEE
---------------------------------------------------------
LICENSED PRODUCT
---------------------------------------------------------
LICENSEE'S ADDRESS
-------------------------------------------------------
PLEASE PICTURE BELOW
SEASON
---------------------
STYLE #
--------------------
FABRICATION
----------------
WHOLESALE PRICE
------------
COLORS
---------------------
SIZES
----------------------
START TAKING ORDERS
------------------
END TAKING ORDERS
--------------------
START SHIP
---------------------------
END SHIP
-----------------------------
--------------------------------- -----------------------------
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
APROVED DISAPPROVED
----------- --------
COMMENTS
------------------------------------------------------------------
--------------------------------------------------------------------------
DATE RETURNED TO LICENSEE
---------------------------
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-1"
PAGE OF
--- ---
DATE
-------------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SWATCH AND/OR COLOR APPROVAL FORM
(FABRIC AND COLOR ONLY! SEE SAMPLE APPROVAL FORM FOR STYLE)
NAME OF LICENSEE
-----------------------------------------------------
LICENSED PRODUCT
-----------------------------------------------------
LICENSEE'S ADDRESS
---------------------------------------------------
SEASON
---------------------------------------------------------------
LIST STYLE NUMBERS OF GARMENTS TO BE MANUFACTURED IN THIS FABRIC
-----
---------------------------------------------------------------------
FABRIC # AND NAME OF SUPPLIER
----------------------------------------
---------------------------------------------------------------------
FABRIC CONTENT AND WEIGHT
--------------------------------------------
PLEASE ATTACH 1 SET OF SWATCHES BELOW
APPROVED DISAPPROVED
----------- -----------
COMMENTS
-------------------------------------------------------------
---------------------------------------------------------------------
------------------------------- ----------------------------
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
DATE RETURNED TO LICENSEE
-------------
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-2"
Page of
------ ------
Date
-------------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
ADVERTISING APPROVAL FORM
NAME OF LICENSEE
-------------------------------
LICENSED PRODUCT
--------------------------------
LICENSEE'S ADDRESS
--------------------------------
CIRCLE THE FORM OF ADVERTISING WHICH IS BEING SUBMITTED: LABEL, HANG TAG,
BUSINESS CARDS, BUSINESS FORMS, RADIO SPOT, TV, FULL PAGE AD, 1/2 PAGE AD,
PACKAGING, DISPLAY, OTHER.
PLACE ADVERTISING TO BE SUBMITTED HERE, OR AFFIX TO THIS PAGE
USE PERIOD From to
---------------- ------------------
IF SUBMISSION IS LABELS OR HANG TAGS, PLEASE GIVE NAME & ADDRESS OF SUPPLIER
----------------------------------------------------------------------------
IF AD IS TO RUN IN A PUBLICATION, NAME OF PUBLICATION
------------------------
APPROVED DISAPPROVED
---------------------- ---------------------------
COMMENTS
------------------------------------------------------------------
------------------------------------------------------------------------------
--------------------------- ------------------------------
Signature of Licensee Signature of Licensor
DATE RETURNED TO LICENSEE
----------------------
BHPC Marketing, Inc. - 000 X. 000xx Xxxxxx - Xxxxxxx, XX 00000
(000) 000-0000 - FAX (000) 000-0000
[Statement of Royalties (Foreign) Form]
