Exhibit 10.5
ASSIGNMENT OF BALL POWDER TRADEMARK TO PRIMEX AND LIMITED LICENSE TO XXXX
THIS AGREEMENT is made and entered into as of December 30, 1996 by and
between:
XXXX CORPORATION, having a place of business at 000 Xxxxx Xxxxxxxx Xxxxxx,
Xxxx Xxxxx, Xxxxxxxx 00000, (hereinafter referred to as "OLIN")
AND
PRIMEX TECHNOLOGIES, INC., having a place of business at 00000 Xxxxx Xxxxxx
Xxxxx, Xx. Xxxxxxxxxx, Xxxxxxx 00000-0000 (hereinafter referred to as
"PRIMEX") (hereinafter collectively the "PARTIES" and each individually a
"PARTY").
W I T N E S S E T H:
WHEREAS, OLIN and PRIMEX have entered into that certain Distribution
Agreement dated as of December 30, 1996 concerning the spin-off of PRIMEX
from OLIN (the "Distribution Agreement");
WHEREAS, pursuant to the Distribution Agreement, the operations of OLIN's
Ordnance Division relating to the manufacture and distribution of Ball
Powder[R] ellant will be transferred to PRIMEX;
WHEREAS, OLIN has prior to the EFFECTIVE DATE entered into the XXXXXXXX
AGREEMENT which provides Xxxxxxxx X.X. with certain exclusive rights and
licenses to use the Ball Powder[R] trademark in a certain territory as
defined in that agreement;
WHEREAS, to allow each of OLIN and PRIMEX (and their respective
shareholders) to obtain the full value of its respective rights under the
Distribution Agreement, PRIMEX and OLIN desire to enter into and execute
this AGREEMENT concerning the assignment of the Ball Powder[R] trademark to
PRIMEX along with the good will of the business relating thereto and the
licensing of OLIN thereunder so as to enable OLIN to fulfill its
obligations to Xxxxxxxx X.X. under the XXXXXXXX AGREEMENT;
NOW, THEREFORE, in consideration of the above, and the mutual promises set
forth below, OLIN and PRIMEX agree as follows:
1. DEFINITIONS
Whenever used in this agreement, the following terms shall have the
following meanings, on the understanding that words in the singular include
the plural and vice-versa. Headings and subheadings are used for
convenience only and are not intended as limitations in the AGREEMENT or
for use in interpreting the AGREEMENT.
1.1 AFFILIATE
"AFFILIATE" shall have the meaning ascribed thereto in the XXXXXXXX
AGREEMENT.
1.2 AGREEMENT
"AGREEMENT" shall mean this agreement as amended and/or supplemented from
time to time, including all the EXHIBITS attached hereto.
1.3 XXXXXXXX AGREEMENT
"XXXXXXXX AGREEMENT" shall mean the Winchester License Agreement For
Shotshell & Hunting And Shooting Accessories For Europe between XXXXXXXX
X.X. and OLIN, dated December 30, 1991 as set forth in EXHIBIT A as well as
any amendments thereto.
1.4 XXXXXXXX X.X.
"XXXXXXXX X.X." shall mean Xxxxxxxx X.X., a company organized under the
laws of the Kingdom of Belgium and having a principal office at Parc
Industriel des Hauts-Sarts, 3rd, Avenue, X-0000 Xxxxxxx, Xxxxxxx, or its
successors.
1.5 EFFECTIVE DATE
"EFFECTIVE DATE" shall mean the Effective Time specified in the
Distribution Agreement.
1.6 HUNTING AND SHOOTING ACCESSORY PRODUCTS
"HUNTING AND SHOOTING ACCESSORY PRODUCTS" shall have the meaning ascribed
thereto in the XXXXXXXX AGREEMENT.
1.7 SHOTSHELL PRODUCTS
"SHOTSHELL PRODUCTS" shall have the meaning ascribed thereto in the
XXXXXXXX AGREEMENT.
1.8 TERRITORY
"TERRITORY" shall have the meaning ascribed thereto in the XXXXXXXX
AGREEMENT.
1.9 TERM
"TERM" shall have the meaning ascribed thereto in the XXXXXXXX AGREEMENT.
1.10 TRADEMARKS
"TRADEMARKS" shall have the meaning ascribed thereto in the XXXXXXXX
AGREEMENT but only as it relates to the Ball Powder[R] trademark.
2. ASSIGNMENT OF THE TRADEMARKS
2.1 ASSIGNMENT
OLIN agrees to assign and transfer to PRIMEX upon the EFFECTIVE DATE all of
its right, title and interest in and to the BALL POWDER trademarks set
forth in EXHIBIT B together with the good will of the business relating
thereto, pursuant to an assignment document in the form as set forth in
EXHIBIT C.
2.2 ACCEPTANCE OF ASSIGNMENT
PRIMEX agrees to accept the assignment pursuant to Section 2.1.
2.3 DISCLAIMER
XXXX CORPORATION MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED,
WITH RESPECT TO THE TRADEMARKS ASSIGNED HEREBY, INCLUDING WITHOUT
LIMITATION AS TO VALIDITY, ENFORCEABILITY OR FITNESS FOR ANY PARTICULAR USE
OR PURPOSE.
3. LICENSES
3.1 LICENSE TO OLIN
Subject to the assignment of the BALL POWDER[R] trademarks to PRIMEX
pursuant to Section 2.1, PRIMEX grants to OLIN all such rights and licenses
as may be necessary to fulfill its obligations under the XXXXXXXX
AGREEMENT, including without limitation, the right to xxxxx XXXXXXXX S.A.
the following licenses:
a) the exclusive right and license to use the TRADEMARKS in connection with
the manufacture, distribution, sale, and advertising of SHOTSHELL PRODUCTS in
the TERRITORY; and
b) the exclusive right and license to use the TRADEMARKS for HUNTING AND
SHOOTING ACCESSORY PRODUCTS in the TERRITORY.
3.2 OLIN OBLIGATION
Upon the license of Section 3.1 becoming effective, OLIN shall for the
benefit of PRIMEX abide by the terms of the XXXXXXXX AGREEMENT as they
relate to the TRADEMARKS.
3.3 PRIMEX COOPERATION
Upon the license of Section 3.1 becoming effective, PRIMEX shall cooperate
with OLIN and provide such assistance to OLIN as shall be reasonably
necessary to enable OLIN to effectuate the terms of the XXXXXXXX AGREEMENT.
4. TERM OF AGREEMENT
This AGREEMENT shall become effective on the EFFECTIVE DATE, and shall
continue in full force and effect until the expiration of the XXXXXXXX
AGREEMENT.
5. GUARANTEES, LIABILITIES AND INDEMNITIES
5.1 DISCLAIMER
Neither PARTY shall be liable to the other for indirect, special or
consequential damages arising out of this AGREEMENT.
6. NOTICES
Notices or requests to be given or made hereunder shall be delivered in
person or sent by registered mail or telefax or telex acknowledged by the
operator of the addressee at the following addresses or other addresses
that each PARTY may from time to time designate
(a) for PRIMEX:
PRIMEX TECHNOLOGIES, INC.
00000 Xxxxx Xxxxxx Xxxxx
Xx. Xxxxxxxxxx, Xxxxxxx 00000-0000
ATTENTION: Corporate Secretary
Tel: (000)000-0000
Fax: (000)000-0000
(b) for OLIN:
XXXX CORPORATION
000 Xxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxxxxx 00000-0000
Attention: Corporate Secretary
Tel: (000) 000-0000
Fax: (000) 000-0000
7. ASSIGNMENT
The AGREEMENT shall not be assigned by either PARTY except as permitted by
the XXXXXXXX AGREEMENT.
8. MISCELLANEOUS
8.1 ENTIRE AGREEMENT
The AGREEMENT embodies the entire understanding of the PARTIES. No
amendment or modification of the AGREEMENT shall be valid or binding upon
the PARTIES unless it is in writing and signed by the respective duly
authorized officers of the PARTIES.
8.2 PARTIES ARE INDEPENDENT
The AGREEMENT does not and shall not be deemed to make either PARTY the
agent, legal representative or partner of the other PARTY for any purpose
whatsoever, and neither PARTY shall have the right or authority to assume
or create any obligation or responsibility whatsoever, expressed or
implied, on behalf of or in the name of the other PARTY or to bind the
other PARTY in any respect whatsoever.
8.3 WAIVER
The failure of either PARTY at any time to require performance by the other
PARTY of any provision hereof shall in no way affect the full right to
require such performance within a reasonable time or thereafter the
performance of that and all other provisions, nor shall the waiver of any
succeeding breach of such provision or any other provision operate as a
waiver of the provision itself.
8.4 SEVERABILITY
The invalidity or unenforceability of any one or more of the provisions of
the AGREEMENT shall not affect the validity or enforceability of the
remaining provisions.
8.5 GOVERNING LAW
This Agreement shall be construed and governed, in all respects, by
the law of the State of Illinois applicable to contracts made and to be
performed in that state without reference to any provisions relating to
conflicts of law.
8.6 JURISDICTION
Each PARTY hereby irrevocably and unconditionally submits, for itself and
its property, to the nonexclusive jurisdiction of any Illinois State court
or Federal court of the United States of America sitting anywhere within a
radius of 50 miles from East Alton, Illinois, and any appellate court from
any thereof, in any action or proceeding arising out of or relating to this
Agreement, or for recognition or enforcement of any judgment, and each of
the PARTIES hereby irrevocably and unconditionally agrees that all claims
in respect of any such action or proceeding may be heard and determined in
such [Illinois] State or, to the extent permitted by law, in such Federal
court. Each of the PARTIES hereto agrees that a final judgment in any such
action or proceeding shall be conclusive and may be enforced in other
jurisdictions by suit on the judgment or in any other manner provided by
law.
8.7 VENUE
Each PARTY hereby irrevocably and unconditionally waives, to the fullest
extent it may legally and effectively do so, any objection that it may now
or hereafter have to the laying of venue of any suit, action or proceeding
arising out of or relating to this Agreement in any [Illinois] State court
or such Federal court located in the State of [Illinois]. Each of the
PARTIES hereto hereby irrevocably waives, to the fullest extent permitted
by law, the defense of an inconvenient forum to the maintenance of such
action or proceeding in any such court.
8.8 SERVICE OF PROCESS
Each Party to this Agreement irrevocably consents to service of process in
the manner provided for notices in ARTICLE 7 hereof. Nothing in this
Agreement will affect the right of any party to this Agreement to serve
process in any other manner permitted by law.
9. SETTLEMENT OF DISPUTES
In the event of any disputes arising out of or in connection with the
execution, interpretation, performance or nonperformance of this AGREEMENT,
except for disputes relating to infringement, validity or enforceability of
INTELLECTUAL PROPERTY, PRIMEX and OLIN shall use the following procedure
prior to either PARTY pursuing other available legal remedies:
9.1 ALTERNATIVE DISPUTE RESOLUTION
Upon signing of this Agreement each PARTY will designate one representative
("Representative") for the purpose of resolving disputes which may arise
from time to time. Upon a dispute arising, either or both Representatives
may request in writing a conference with the other. If so requested, the
conference shall occur within ten (10) days of the initial written request
and shall be held via telephone or at East Alton, Illinois, or elsewhere,
at the option of the Representatives. The purpose and scope of the
conference shall be limited to issues related to resolving the dispute. At
the conference, each Representative, or his or her designee, shall use best
efforts to attempt to resolve the dispute. If the dispute has not been
settled within thirty (30) days of the first meeting of the
Representatives, the parties shall establish a Management Appeal Board
("MAB") within ten (10) days of receipt of a request by either PARTY to set
up an MAB. The MAB shall consist of two (2) members of each respective
PARTY's management. The President of OLIN shall appoint two members to
represent OLIN and the President of PRIMEX shall appoint two members to
represent PRIMEX. The sole purpose of MAB shall be to resolve any dispute
over which the Representatives failed to resolve. The MAB members shall be
persons other than the Representatives. The MAB shall meet at East Alton,
Illinois or otherwise confer to resolve the dispute by good faith
negotiations, which may include presentations by the Representatives or
others.
9.2 ARBITRATION
In the event the parties are unable to resolve their disputes after
availing themselves of the processes set forth in Section 13.1 above for a
period of ninety (90) days, such disputes, shall be solely and finally
settled by three arbitrators in accordance with the Commercial Arbitration
Rules of the AAA (the "Arbitration Rules"). The PARTY electing arbitration
shall so notify the other PARTY in writing in accordance with the
Arbitration Rules, and such notice shall be accompanied by the name of the
arbitrator selected by the PARTY serving the notice. The second arbitrator
shall be chosen by the other PARTY, and a neutral arbitrator shall be
chosen by the two arbitrators so selected. If a PARTY fails to select an
arbitrator or to advise the other PARTY of its selection within thirty (30)
days after receipt by such a PARTY of the notice of the intent to
arbitrate, the second arbitrator shall be selected by the AAA. If the
third arbitrator shall not have been selected within thirty (30) days after
the selection of the second arbitrator, the appointment shall be made by
the AAA. All such proceedings shall be conducted in New York, New York.
The arbitrator shall make detailed findings of fact and law in writing in
support of the decision of the arbitrator panel, and is empowered to award
reimbursement of attorneys' fees and other costs of arbitration to the
prevailing PARTY, in such manner as the arbitrator panel shall deem
appropriate. The provisions of this Section 13.2 shall not be deemed to
preclude any PARTY hereto from seeking preliminary injunctive relief to
protect or enforce its rights hereunder, or to prohibit any court from
making preliminary findings of fact in connection with granting or denying
such preliminary injunctive relief, or to preclude any PARTY hereto from
seeking permanent injunctive or other equitable relief after and in
accordance with the decision of the arbitrator panel. Whether any claim or
controversy is arbitrable or litigable shall be determined solely by the
arbitrator panel pursuant to the provisions of this Section 13.2. Any
monetary award of the arbitrators panel shall include interest from the
date of any breach or any violation of this Agreement. The arbitrators
shall fix an appropriate rate of interest from the date of the breach or
other violation to the date when the award is paid in full. The parties
agree that judgment on the arbitration award may be entered in any court
having jurisdiction over the parties or their assets.
9.3 CONTINUING OBLIGATIONS
It is expressly agreed that the failure of the parties to resolve a dispute
on any issue to be resolved hereunder shall not relieve either PARTY from
any obligation set forth in this Agreement. In addition, notwithstanding
the pendency of any such dispute, neither PARTY will be excused of its
obligations hereunder to cooperate with the other to effectuate the
purposes of this Agreement.
9.4 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of
which shall be deemed an original, but all of this shall constitute one and
the same instrument
IN WITNESS WHEREOF the PARTIES hereto have caused this AGREEMENT to be
executed in duplicate as of the date first written above.
XXXX CORPORATION PRIMEX TECHNOLOGIES, INC.
By: /s/Xxxxxxx X. Xxxxxxx, Xx. By: /s/Xxxxxx X. Pain
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Xxxxxxx X. Xxxxxxx, Xx. Xxxxxx X. Pain
Vice President, General Counsel Vice President
and Secretary
