INTELLECTUAL PROPERTY AGREEMENT
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THIS INTELLECTUAL PROPERTY AGREEMENT dated as of April 1, 2000 is by and between
XXXXXXX PURINA COMPANY, a corporation organized under the laws of the State of
Missouri, having its principal office at Xxxxxxxxxxxx Xxxxxx, Xx. Xxxxx,
Xxxxxxxx 00000 (hereinafter "Xxxxxxx") and ENERGIZER HOLDINGS, INC. a
corporation organized under the laws of the State of Missouri, having its
principal office at 000 Xxxxxxxx Xxxxxx, Xx. Xxxxx, Xxxxxxxx 00000 (hereinafter
"Energizer").
WITNESSETH
WHEREAS, the parties have entered into an Agreement and Plan of Reorganization
of even date herewith; and
WHEREAS, pursuant to said Agreement and Plan of Reorganization, the parties have
agreed to divide certain intellectual property heretofore used in the business
of Xxxxxxx, Energizer, and/or its/their Affiliates;
NOW, THEREFORE, in consideration of the mutual covenants herein contained, and
for other good and valuable consideration, the parties agree as follows:
1. Definitions
(a) Affiliates
Hereunder, an "Affiliate" of, or persons "Affiliated" with, a
specified person, is a person that directly, or indirectly through one or more
intermediaries, controls, is controlled by or is under common control with the
person specified.
(b) Battery Business
Hereunder, "Battery Business" shall mean a business or portion of a
business devoted to batteries and/or lighting products, including components
therefor and collateral goods related thereto.
(c) Closing
Hereunder "Closing" shall have the same meaning as "Distribution Date"
in the Agreement and Plan of Reorganization.
(d) Intellectual Property
Hereunder, "Intellectual Property" shall include, but not be limited
to, trade secrets and confidential information; statutory, common law and
registered trademarks, trade styles, service marks, service names trade names,
trade dress, copyrights, moral rights, rights of privacy and publicity, Internet
or other electronic communication addresses (e.g., "xxxxxxxxx.xxx" and
1-800-982-ENRS), business addresses of a proprietary nature (e.g., "Ever Ready
House"), designs, inventions, know-how, issued and unissued patents, and other
property commonly considered intellectual property, all rights to recover for
past infringements of each of the foregoing, and the goodwill of the business to
the extent associated with any and all of the foregoing.
(e) Newco
Hereunder, except as limited hereinbelow, "Newco" shall mean Energizer
and any and all subsidiaries and Affiliates of Energizer. "Newco" shall not,
however, include Xxxxxxx and any of its Affiliates whose shares will be owned,
whether directly or indirectly, by Xxxxxxx following Closing.
(f) Oldco
Hereunder, "Oldco" shall mean Xxxxxxx and any and all of its
Affiliates whose shares it will directly or indirectly own following Closing.
(g) Trademark
Hereinafter "Trademark" shall mean a word, symbol, or device
registrable as a trademark or service xxxx.
(h) Trade Name
Hereinafter "Trade Name" shall mean corporate name and/or other
business name including, but not limited to, names of corporations,
partnerships, and joint ventures, and domain names.
2. Intellectual Property
(a) Assignments
(i) Except for Trademarks the parties agree to cancel, at or
before Closing, or at such date or dates as Newco may elect, Oldco will assign,
or will have assigned, to Newco, all of Oldco's rights, if any, in Intellectual
Property Oldco owns which is exclusively associated with Oldco's and/or Newco's
Battery Business. Registrations and applications to register Trademarks to be
so assigned or canceled include, but are not necessarily limited to, those
listed on Schedule 2(a)(i) attached hereto and incorporated by reference herein.
(ii) Anything in this Intellectual Property Agreement to the
contrary notwithstanding, Oldco will not assign to Newco any Intellectual
Property consisting of or containing the words, XXXXXXX, PURINA, CHOW,
CHECKERBOARD, or other word meaning "Checkerboard," the 9-Square Checkerboard or
other Checkerboard or Checkerband designs, any Intellectual Property consisting
of or containing any Intellectual Property now owned by any exclusively
non-Battery-Business Affiliate of Xxxxxxx, any Intellectual Property not
exclusively associated with Oldco's and/or Newco's Battery Business, or any
Intellectual Property confusingly similar to any of the Intellectual Property
comprehended by this Subparagraph 2(a)(ii). To the extent any such Intellectual
Property is currently owned by Newco, it will be assigned to Oldco or canceled
on or before Closing or at such date or dates thereafter as Oldco may elect.
(iii) All assignments contemplated by this Intellectual Property
Agreement will be on a quitclaim basis. The assignee will assume all
limitations, undertakings and liabilities related to such assigned Intellectual
Property, including, but not limited to, limitations in contracts relating to
such Intellectual Property entered into by the assignor and binding upon its
successors and/or assigns, and liability for any charge that any such
Intellectual Property infringes rights of any third party, without regard to
whether any such charge arises before or after Closing.
(iv) With respect to Intellectual Property to be assigned pursuant
to this Intellectual Property Agreement in cases where such property exists in
the name of a single owner in more than one jurisdiction, the assignor will
deliver to the assignee at or before Closing a beneficial, multi-jurisdiction
assignment of such Intellectual Property. The assignor shall thereafter
promptly execute and return to the assignee one or more jurisdiction-specific
assignments of such Intellectual Property prepared by the assignee and delivered
to the assignor for such purpose.
(v) With respect to Intellectual Property to be assigned pursuant
to this Intellectual Property Agreement in cases where all such property owned
by a single Affiliate exists in a single jurisdiction, the assignor will
promptly deliver to the assignee at or before Closing, or thereafter as
necessary, a jurisdiction-specific assignment of such property in recordable
form.
(vi) Intellectual Property which is to be assigned pursuant to
Subparagraph 2(a)(v) hereinabove, but which is not assigned at Closing, will be
maintained by its putative assignor for a reasonable period of time for the
benefit of the person to whom it is to be assigned; however, the putative
assignee shall reimburse the putative assignor for all out-of-pocket expenses
incurred for such maintenance.
(vii) Battery-Business-related Intellectual Property, whether or
not assigned hereunder, remains the responsibility of Newco; and Newco retains
such Intellectual Property subject to all limitations, undertakings and
liabilities related to such Intellectual Property, including, but not limited
to, undertakings in contracts relating to such Intellectual Property and
liability for any charge that any such Intellectual Property infringes rights of
any third party, without regard to whether such charge arises before or after
the Closing.
(viii) Non-Battery-Business-related Intellectual Property whether
or not assigned hereunder remains the responsibility of Oldco; and Oldco
retains such Intellectual Property subject to all limitations, undertakings
and liabilities related to such Intellectual Property, including, but not
limited to, undertakings in contracts relating to such Intellectual Property
and liability for any charge that any such Intellectual Property infringes the
rights of any third party, without regard to whether such charge arises
before the Closing.
(ix) At Closing, the parties will execute general Intellectual
Property Assignments in the form shown on Schedule 2(a)(ix)(A) and 2(a)(ix)(B)
Attached hereto and incorporated by reference herein.
(b) Costs of Assignment and Recordation
Oldco shall pay the costs (including attorneys' and accountants` fees,
costs and expenses) of preparing and recording jurisdiction-specific assignments
contemplated by Subparagraph 2(a)(v) above. Oldco shall pay the costs of
preparing and recording jurisdiction-specific assignments contemplated by
Subparagraph 2(a)(iv) above to the extent such costs relate to Trademarks for
which the Oldco assignor is record owner or for which an application to record
such Oldco assignor as record owner was pending more than one month prior to
Closing. Otherwise, such costs shall be borne by Newco.
An application to record shall be deemed pending if instructions to
record the same were sent to such Oldco assignor's attorneys or agents more than
one month prior to Closing. The parties agree that such instructions were sent
to record Energizer UK Company as record owner of Trademarks heretofore owned by
Ever Ready Limited in the jurisdictions listed in Schedule 2(b) hereto; however,
applications to record Energizer UK Company as record owner have not yet been
filed in such jurisdictions. Newco agrees that to the extent Newco does not
confirm its instructions to its outside attorneys or agents to record Energizer
UK Company's ownership of the Trademarks previously owned by Ever Ready Limited
(and, where required, that of Ever Ready Limited's predecessor(s)) in the
jurisdictions listed in Schedule 2(b) within three months following Closing,
then to the extent such failure to confirm such prior instructions results in
the need to record Energizer UK Company's name-change as a necessary step to
record assignments from Energizer UK Company to Energizer Limited, the costs to
record such name-change shall be borne by Newco.
3. Name Changes
(a) Newco Name Changes
Without limitation as to duration or territory, Newco agrees not to
use, register or maintain any Trademark, Trade Name, or other Intellectual
Property consisting of or containing the word XXXXXXX, PURINA, "Checkerboard,"
"Checkerboard Square," or any word, phrase, symbol or device confusingly similar
thereto, in connection with any product, service or activity. To the extent a
Newco Trademark or Trade Name consists of or contains the word "Xxxxxxx" or
other word, phrase, symbol, or device proscribed by this Subparagraph 3(a),
Newco will cancel or change such Trademark or Trade Name within six months
following Closing to eliminate such proscribed word, phrase symbol, or device.
(b) Oldco Name Changes
Without limitation as to duration or territory, Oldco agrees not to
use, register or maintain any Trademark, Trade Name or other Intellectual
Property consisting containing the word ENERGIZER, EVEREADY, EVER READY,
Energizer Bunny, or any word, symbol, or device confusingly similar thereto, in
connection with any product, service, or activity. To the extent an Oldco
Trademark or Trade Name consists of or contains the word ENERGIZER or other
word, phrase, symbol or device proscribed by this Subparagraph 3(b), Oldco will
cancel or change such Trademark or Trade Name within six months following
Closing to eliminate such proscribed word, phrase, symbol, or device.
(c) Costs of Name Changes
Oldco agrees to pay the costs (including attorneys` and accountants`
fees, costs and expenses) of name changes and cancellations required by
Paragraphs 3(a) and 3(b) above, including the cost, where necessary, of
recording the name change against Trademarks and recorded Trademark-related
agreements for which the company whose name is changed is record owner.
4. Costs, General
Except as otherwise provided in this Intellectual Property Agreement, Oldco
shall pay the costs (including attorneys` and accountants` fees, costs and
expenses) necessarily incurred to transfer, divide or cancel Intellectual
Property to the extent required by this Intellectual Property Agreement. Among
costs deemed necessarily incurred hereunder are (a) costs reasonably incurred to
the extent required by this Intellectual Property Agreement to cancel or replace
cancelled intellectual-property-related agreements between an Oldco company and
a Newco company with an equivalent agreement between two Newco companies, (b)
costs reasonably incurred to replace, modify or change
intellectual-property-related agreements between Newco Affiliates to the extent
required as a result of name changes required by this Intellectual Property
Agreement, (c) costs to record, where required by law, such new or modified
intellectual-property-related agreements and (d) costs to cancel Intellectual
Property in lieu of assignments otherwise required by this Intellectual Property
Agreement. Not included among costs deemed necessarily incurred hereunder are
(e) costs incurred in completing and/or recording assignments of Intellectual
Property from Ever Ready Limited to Energizer UK Company, and (f) any costs
resulting from Newco company name changes not required by this Intellectual
Property Agreement.
5. Third-Party Agreements
(a) To the extent assignable without third-party consent, and, if not,
to the extent such consent is obtained, at Closing, license agreements and other
contracts between Oldco and unaffiliated third parties, to the extent related to
the rights in Intellectual Property to be owned by Newco at Closing, will be
assigned from Oldco to Newco. Newco agrees to assume Oldco's obligations under
such agreements and to indemnify Oldco with respect to any of Newco's breaches
or failures to perform thereunder.
(b) To the extent assignable without third-party consent, and, if not,
to the extent such consent is obtained, at Closing, license agreements and other
contracts between Newco and unaffiliated third parties, to the extent related to
rights in Intellectual Property to be owned by Oldco at Closing, will be
assigned from Newco to Oldco. Oldco agrees to assume Newco's obligations under
such agreements and to indemnify Newco with respect to any of Oldco's breaches
or failures to perform thereunder.
6. Phase-Out of Intellectual Property Assigned to or Retained by Others
Newco agrees to remove all Oldco Intellectual Property not assigned to
Newco as well as Intellectual Property assigned from Newco to Oldco, from
Newco's labels, packaging, advertising, signs, letterhead, business cards, and
other materials within six (6) months following Closing. Oldco agrees to remove
all Intellectual Property assigned to Newco from Oldco's labels, packaging,
advertising, signs, letterhead, business cards, and other materials within the
same six (6) month period.
7. Heritage
Oldco, Newco and their successors and assigns, will each be allowed to
refer to its or their pre-spin-off heritage in good faith in truthful articles,
histories and the like to the extent such references do not express or imply a
continuing relationship between Oldco and Newco.
8. Good Faith
The parties agree not to do indirectly, through subsidiaries, Affiliates or
otherwise, what they could not do directly under this Intellectual Property
Agreement.
9. Scope and Modification
This Intellectual Property Agreement, including its schedules, sets forth
the entire agreement between the parties relating to the subject matter hereof
and it supersedes all prior agreements and understandings relating to such
subject matter. None of the terms of this Intellectual Property Agreement may
be waived or modified except as expressly agreed to, in writing, by both
parties.
10. Successors and Assigns
This Intellectual Property Agreement shall be binding upon and inure to the
benefit of the parties and each of their successors and assigns.
11. Interpretation
The section headings in this Intellectual Property Agreement are solely for
the purpose of reference, are not part of the agreement of the parties hereto,
and shall not in any way affect the meaning or interpretation of this
Intellectual Property Agreement.
12. Counterparts
This Intellectual Property Agreement may be executed in two or more
counterparts, each of which may be deemed an original, but all of which together
shall constitute one and the same instrument.
13. Governing Law
This Intellectual Property Agreement is made and entered into, and shall be
governed by and construed and interpreted in accordance with the laws of the
State of Missouri, United States of America, without regard to its conflicts of
laws principles, as to all matters, including those relating to validity,
construction, performance, effect and remedies under this Intellectual Property
Agreement. All matters relating to this Intellectual Property Agreement shall
be adjudicated exclusively in the courts of the State of Missouri located in St.
Louis, Missouri, or in the United States District Court for the Eastern District
of Missouri; and each party hereto consents to the exclusive jurisdiction and
venue of such courts for all such matters.
14. Amendment and Modification; Non-Waiver
This Intellectual Property Agreement may be amended, modified or
supplemented, or rights, powers or options thereunder waived or impaired,
only by a written agreement signed by an officer of Xxxxxxx and Energizer.
Neither party shall be deemed to have waived or impaired any right, power or
Option created or reserved by this Intellectual Property Agreement
(including without limitation, each party's right to demand compliance with
every term herein, or to declare any breach a default and exercise its rights in
accordance with the terms hereof) by virtue of: (i) any custom or practice of
the parties at variance with the terms hereof; (ii) any failure, refusal or
neglect to exercise any right hereunder, or to insist upon compliance with any
term; (iii) any waiver, forbearance, delay, failure or omission to exercise
any right or option, whether of the same, similar, or different natures, under
this Intellectual Property Agreement or in any other circumstances; or (iv)
the acceptance by either party of any payment or other consideration from the
other following any breach of this Intellectual Property Agreement. The
rights and remedies set forth in this Intellectual Property Agreement are
in addition to any other rights or remedies which may be granted by law.
15. Additional Documents
The parties agree to execute such additional documents as may be reasonably
required to give effect to their undertakings in this Intellectual Property
Agreement.
IN WITNESS WHEREOF, the parties have executed this Intellectual Property
Agreement as of the date first above written.
XXXXXXX PURINA COMPANY ENERGIZER HOLDINGS, INC.
By:/s/ Xxxxx X. Xxxxxxxx By:/s/ Xxxxx Xxxxxxxx
Title: Vice President Chief Financial Title: Vice President & General
Officer and Treasurer Counsel
