EXHIBIT 10.8
AGREEMENT
This AGREEMENT made this 4th date of May, 1993 between XXXXXX XXXXX, a
U.S. citizen residing at 000 Xxxxxx Xxxx, Xxxxxxx, Xxxxxxxxxxxx 00000, X.X.X.
(hereinafter XXXXX) and XXXXXXX XXXXXX a/k/a XXXXXXX XXXX XXXXXX-XXXXXX, a
British citizen of 0 Xxx Xxxxxx Xxxx, Xxxxxxx, Xxxxx XX0 XXX, Xxxxxxx
(hereinafter XXXXXX):
WHEREAS, XXXXXX is the sole record owner of the trademark ASHTON in the
United Kingdom and U.K. Registration B1387769 in International Class 34, dated
December 19, 1988 for the trademark ASHTON; and
WHEREAS, XXXXX and XXXXXX are record co-owners of the ASHTON trademark
in the U.S. and U.S. Trademark Registration 1,376,628 in Class 34 dated
December 24, 1985; and
WHEREAS, XXXXX and XXXXXX are co-owners and co-applicants for the
registration of the trademark ASHTON in the following countries:
France, Serial No. 92/438 138 filed October 5, 1992;
Japan, Serial No. 299070/92 filed October 9, 1992;
Benelux, Serial No. 786591 filed October 1, 1992; and
WHEREAS, XXXXX wishes to obtain sole and complete title to the
above-mentioned ASHTON trademark, trademark registrations and applications; and
WHEREAS, XXXXXX is desirous of transferring XXXXXX'X rights in and to
the above registrations and applications to XXXXX as well as any other rights
which XXXXXX may have in the ASHTON trademark anywhere in the world which XXXXXX
may presently own but not listed above;
NOW THEREFORE in consideration a one time payment of U.S. ninety
thousand dollars to be paid to XXXXXX for transfer of said rights to XXXXX;
NOW THEREFORE XXXXXX hereby transfers, assigns and sells XXXXXX'x
rights to the trademark ASHTON to XXXXX of the trademark registrations and
applications signed above, and any and all other worldwide trademark rights of
any kind whatsoever which XXXXXX may have in any country of the world for the
trademark ASHTON, subject to the provisions hereinafter set forth.
In furtherance thereof XXXXXX agrees to execute any formal papers
necessary in any particular country to transfer any record title from XXXXXX to
XXXXX within 90 (Ninety) days from the date of the AGREEMENT.
XXXXXX shall be paid the full consideration stated above within 90
(Ninety) days from the date of this AGREEMENT.
If after the signing of this AGREEMENT XXXXX shall desire that the
particular Assignment Agreements for each country should be transferred to a
corporation designated by XXXXX instead of to XXXXX, XXXXX shall so notify
XXXXXX in writing and XXXXXX shall assign said rights to said corporation
designated by XXXXX in place of XXXXX.
XXXXX shall pay XXXXXX a royalty of one percent (1%) on all purchases
of cigars bearing the ASHTON trademark sold by XXXXX during XXXXXX'x lifetime
(or upon XXXXXX'x demise to XXXXXX'x estate) but in no event after January 1,
2000.
XXXXX hereby grants an exclusive worldwide personal license to XXXXXX
under the trademark ASHTON with regard to "pipes". XXXXX and/or XXXXXX shall
execute any papers necessary to record XXXXXX as licensee or registered user
under the laws of a particular country where required.
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Such said personal license with regard to "pipes" shall be considered a
lifetime paid up royalty-free license proposal to XXXXXX; provided however, that
XXXXXX shall have the right to transfer XXXXXX'x paid license with regard to
"pipes" to a third party during XXXXXX'x lifetime, upon written notification to
XXXXX. If however such transfer by XXXXXX shall be prior to January 1, 2000, all
payment of royalties by XXXXX to XXXXXX shall be intentionally terminated as of
the date of said transfer.
XXXXX shall have the right to control the quality of pipes made under
the license to XXXXXX and for purposes of this AGREEMENT the standards of
quality presently existing with regard to the manufacturing of XXXXXX xxxxx by
XXXXXX are deemed of satisfactory quality. Should such quality in the opinion of
XXXXX materially vary from the standard of quality of pipes now manufactured by
XXXXXX, XXXXX has the right to terminate this exclusive license by 60 (Sixty)
days notice to XXXXXX.
In this AGREEMENT should XXXXX designate a corporation to which the
trademark rights are to be assigned said name of said corporation will
effectively take the place of XXXXX in the wording of this AGREEMENT.
Upon the demise of XXXXXX, XXXXX or his assigns owning the ASHTON
trademark, shall pay XXXXXX'x estate a sum equal to five percent (5%) of all
pipe sales under the ASHTON trademark commencing with the date of XXXXXX'x
demise.
XXXXX ans XXXXXX mutually agree that the provisions and terms of this
AGREEMENT shall be held in confidence by both parties.
XXXXX and XXXXXX agree that this AGREEMENT shall be governed by the
laws of the State of Pennsylvania, U.S.A.
In this Agreement should XXXXX designate a corporation to which the
trademark rights are to be assigned XXXXX shall procure that the said
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corporation enters into a direct agreement with XXXXXX to observe and perform
the terms and conditions undertaken by XXXXX in this Agreement; further, XXXXX
agrees to compensate XXXXXX for any loss incurred as a result of the said
corporation failing to comply with its obligations to XXXXXX. If the said
corporation is or becomes insolvent it is agreed that XXXXX shall remain fully
liable to observe and perform the terms and obligations on his part expressed
herein.
There shall be deemed as incorporated in this Agreement the terms of
any and all endorsements attached hereto and signed by both parties.
Notice to the parties shall be as per the following:
XXXXXX XXXXX
000 Xxxxxx Xxxx
Xxxxxxx, Xxxxxxxxxxxx 00000
Xxxxxx Xxxxxx of America
XXXXXXX XXXXXX
0 Xxx Xxxxxx Xxxx
Xxxxxxx, Xxxxx XX0 XXX
Xxxxxxx
EXECUTED AT 0 Xxx Xxxxxx Xxxx, Xxxxxxx this 4th date of May, 1993.
/s/ Xxxxxx Xxxxx
--------------------------------
XXXXXX XXXXX
/s/ Xxxxxxx Xxxxxx
--------------------------------
XXXXXXX XXXXXX a/k/a
/s/ Xxxxxxx Xxxx Xxxxxx-Xxxxxx
--------------------------------
XXXXXXX XXXX XXXXXX-XXXXXX
-4-
17th APRIL, 1993
AMENDMENTS TO AGEEMENT
----------------------
1) 1% OF ALL PURCHASES OF ASHTON CIGARS TO BE MADE TO XXXX OR HIS ESTATE UNTIL
THE YEAR 2000.
2) XXXX HAS THE RIGHT WITH THE CONTROLLER OF THE ASHTON TRADE XXXX TO TRANSFER
THE LICENSE FOR XXXXXX XXXXX ONLY. IF THIS HAPPENS BEFORE THE YEAR 2000 ALL
PAYMENT OF ROYALTIES WILL CEASE.
3) UPON XXXXXXX XXXXXX'X DEMISE THE CONTROLLING COMPANY OF THE ASHTON TRADE
XXXX WILL PROVIDE XXXXXX'X ESTATE WITH 5% OF ALL FUTURE PIPE SALES.
SIGNED: XXXXXXX XXXX XXXXXX-XXXXXX
/s/ Xxxxxxx Xxxx Xxxxxx-Xxxxxx
XXXXXX XXXXX
/s/ Xxxxxx Xxxxx
