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EXHIBIT 10.4
TRADEMARK TRANSFER AGREEMENT
THIS TRADEMARK TRANSFER AGREEMENT (the "Agreement") dated as
of __________, 1999 by and between Global TeleSystems Group, Inc., a Delaware
corporation ("GTS"), and Golden Telecom, Inc., a Delaware corporation (the
"Company").
RECITALS
WHEREAS, GTS is the owner of the trademarks, service marks,
trademark registrations, and trademark applications set forth in Schedule IA
hereto (the "Trademarks"); and
WHEREAS, GTS wishes to transfer to the Company all the rights,
title and interest in the Trademarks.
NOW, THEREFORE, in consideration of the premises and the
mutual agreements and covenants set forth herein, and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
1. Definitions.
As used in this Agreement, the following terms shall have the
meanings set forth below:
"Affiliates" shall mean, with respect to any Person, any other
Person or entity which directly or indirectly controls, is controlled by, or is
under common control with, such Person. A Person shall be regarded as in control
of another Person if its owns, or directly or indirectly controls, at least 50%
of the voting stock or other ownership interest of the other Person, or if it
directly or indirectly possesses the power to direct or cause the direction of
the management and policies of the other Person by any means whatsoever.
"Change of Control" shall mean any of the following
occurrences: (i) a majority of the seats on the Company's board of directors
shall be occupied by Persons who are neither nominated by GTS or by its board of
directors, nor appointed by the Company's directors nominated by GTS; and (ii)
any Person or group other than GTS or the companies controlled by GTS shall
directly or indirectly have the power to exercise control over 50% of the voting
securities of the Company.
"Person" shall mean an individual, corporation, partnership,
limited liability company, trust, business trust, association, joint stock
company, joint venture, pool, syndicate, sole proprietorship, incorporated
organization, governmental authority or any other form of entity.
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"Related Trademark" or "Related Trademarks" means the
trademarks, service marks, trademark registrations and trademark applications
set forth in Schedule IB hereto (the "Related Trademarks").
"Trademark" or "Trademarks" has the meaning set forth in the
recitals of this Agreement.
2. Transfer, Governmental Filings and License.
(a) Transfer. GTS hereby transfers and conveys all its right,
title and interest in the Trademarks to the Company for good and valuable
consideration, the receipt of which is hereby acknowledged.
(b) Governmental Filings. At the Company's expense, GTS shall
furnish the Company with such necessary information and reasonable assistance,
including execution of such other required documents, as the Company may
reasonably request in connection with recording its ownership interest in the
Trademarks with any governmental authority.
(c) License. For so long as GTS is the owner of the Related
Trademarks and subject to the provisions set forth in Section 4 hereof, GTS may
require the Company to use, and GTS grants the Company a license to use the
Related Trademarks in the ordinary course of business.
Such license is granted free of charge.
3. Representations and Warranties.
(a) GTS Representations and Warranties. GTS represents and
warrants that it has the right and authority to assign, transfer and convey the
rights granted hereunder to the Company and is authorized to enter into and
perform under this Agreement. GTS makes no representations, warranties or
guaranties of any kind that (i) the Trademarks are duly registered, valid or in
full force and effect; (ii) the use of the Trademarks covered by this Agreement
do not, or will not, infringe any intellectual property right of a third party;
(iii) the Trademarks are not being infringed upon, or have not been infringed
upon, by any third party; (iv) the use of the Trademarks do not, or will not,
require any licenses or consents from, or the making of royalty or similar
payments to, any third party.
(b) Company Representations and Warranties. The Company
represents and warrants that it has the authority to enter into this Agreement,
and that the performance of this Agreement shall not cause a breach of any other
obligation of the Company.
4. Change of Control. Upon a Change of Control, GTS may require, upon
60 days' written notice to the Company, that the Company (i) permanently cease
and desist from all use of
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the Related Trademarks and (ii) take all other actions which may be appropriate
to release, surrender or return the Trademarks to GTS.
5. Indemnification.
(a) Company Breaches. The Company agrees to defend, indemnify,
and hold GTS and its Affiliates and their respective directors, officers,
employees, and agents harmless from and against any and all claims, demands,
suits, causes of action, losses, damages, judgements, costs and expenses arising
out of or resulting from the breach by the Company of any of its
representations, warranties and agreements contained in this Agreement, or
arising out of the Company's use of any Trademark or Related Trademark, the
carrying on of the Company's business, or the design, manufacture, distribution,
sale, shipment, advertising, marketing, or other exploitation of any Trademarks,
other than those claims, demands, suits, or causes of action which would
constitute a breach of GTS's representations and warranties set forth herein.
(b) GTS Breaches. GTS agrees to defend, indemnify, and hold
the Company and its Affiliates and their respective directors, officers,
employees, and agents harmless from and against any and all claims, demands,
suits, causes of action, losses, damages, judgements, costs and expenses arising
out of or resulting from the breach by GTS of any of its representations,
warranties and agreements contained within this Agreement; provided, however,
that the Company shall provide prompt written notice of such claims to the GTS,
and the GTS shall have the right to control the defense and settlement of such
claims. The Company shall cooperate with and provide reasonable assistance to
the GTS in connection therewith.
6. Assignment. Neither party shall assign or transfer any of its rights
under this Agreement without the prior written consent of the other party.
7. Notices. All notices, requests, demands and other communications
provided for by this Agreement shall be in writing (including telecopier or
similar writing) and shall be deemed to have been given at the time when mailed
in any general or branch office of the United States Postal Service, enclosed in
a registered or certified postpaid envelope, or sent by Federal Express or other
similar overnight courier service, addressed to the address of the parties
stated below or to such changed address as such party may have fixed by notice
or, if given by telecopier, when such telecopy is transmitted and the
appropriate answerback is received.
If to GTS:
Global TeleSystems Group, Inc.
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, 00xx Xxxxx
XxXxxx, XX 00000
Attn: Chief Financial Officer
Copy to: General Counsel
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If to the Company:
Golden Telecom, Inc.
00 Xxxxxxxxxxxxxxxxxx Xxx., 0xx Xxxxx
00000 Xxxxxx, Xxxxxx
Attn: Chief Financial Officer
Copy to General Counsel
8. Further Assurances. GTS and the Company shall execute, acknowledge
and deliver or cause to be executed, acknowledged and delivered such instruments
and take such other action as may be necessary or advisable to carry out their
obligations under this Agreement and under any exhibit, document or other
instruments delivered pursuant hereto.
9. Governing Law. This Agreement shall be governed by the laws of the
State of New York.
10. Entire Agreement. This Agreement, together with any other
agreements between the parties, constitutes the entire understanding between the
parties and supersedes all proposals, commitments, writings, negotiations and
understandings, oral and written, and all other communications between the
parties relating to the subject matter of this Agreement. This Agreement may not
be amended or otherwise modified except in writing duly executed by all of the
parties. A waiver by any party of any breach or violation of this Agreement
shall not be deemed or construed as a waiver of any subsequent breach or
violation thereof.
11. Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same document.
12. Severability. Should any part, term or condition hereof be declared
illegal or unenforceable or in conflict with any other law, the validity of the
remaining portions or provisions of this Agreement shall not be affected
thereby, and the illegal or unenforceable portions of this Agreement shall be
and hereby are redrafted to conform with applicable law, while leaving the
remaining portions of this Agreement intact.
13. Force Majeure. No party shall be deemed to have breached this
Agreement or be held liable for any failure or delay in the performance of all
or any portion of its obligations under this Agreement if prevented from doing
so by a cause or causes beyond its control. Without limiting the generality of
the foregoing, such causes include acts of God or the public enemy, fires,
floods, storms, earthquakes, riots, strikes, lock-outs, wars and war-operations,
restraints of government power or communication line failure or other
circumstances beyond such party's
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control, or by reason of the judgment, ruling or order of any court or agency of
competent jurisdiction or change of law or regulation subsequent to the
execution of this Agreement.
14. Successors and Assigns. Subject to the provisions of Section 5,
this Agreement is solely for the benefit of the parties and their respective
successors and assigns. Nothing herein shall be construed to provide any rights
to any other entity or individual.
15. Headings. Section headings are for convenience only and do not
control or affect the meaning or interpretation of any terms or provisions of
this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be duly executed and delivered by persons duly authorized as of the
date first set forth above.
GLOBAL TELESYSTEMS GROUP, INC.
By:
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Name:
Title:
GOLDEN TELECOM, INC.
By:
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Name:
Title:
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SCHEDULE IA
GlasNet
Golden Telecom (Ukraine)
PrimTelefone
Russia-On-Line
Sovam Teleport
Sovintel
TCM
TeleRoss
Unicel Cellular Network
SCHEDULE IB
The GTS logo
The GTS name
