1
EXHIBIT 10.17
XXXXX & WESSON CORP.
TRADEMARK LICENSE AGREEMENT
This Agreement, effective as of August 1, 1996, by and between XXXXX & WESSON
CORP., a Delaware Corporation with its principal office at 0000 Xxxxxxxxx
Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000, X.X.X. (hereinafter called
Licensor"), and UMAREX Sportwaffen, GmbH, a Corporation having its principal
office at Xxxxxxxxxx 0, 00000, Xxxxxxx (hereinafter called "Licensee"). In
consideration of the mutual promises herein contained and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged by Licensor and Licensee, the parties agree as follows:
1. Definitions: As used in this Agreement, the following terms shall have the
following meanings:
a. "Marks" shall mean those trademarks and also any trade dress
identified in Exhibit A, attached hereto, and all of the Licensor's
rights in such Marks including, without limitation, common law
rights, and registrations and applications for registration of any
such Marks in any state, federal or other jurisdiction.
b. "Licensed Articles" shall mean the articles of merchandise listed in
Exhibit B, attached hereto and marked with one or more of the Marks.
c. "Net Sales Price" shall be the invoiced price at which Licensed
Articles are sold or provided by Licensee, less any sales tax, and
less any credits for returns actually made or allowances in lieu of
returns, provided that such returns and/or allowances relate to
sales which were previously included in royalty calculations under
this Agreement and less trade discounts and/or retailer promotional
programs. The Net Sales Price on account of sales, giveaways, or
other transactions, without charge or at discounted prices, and
sales to any person directly or indirectly related to or affiliated
with Licensee shall be computed based on regular selling prices to
the trade. There shall be no deduction from the Net Sale Price on
which royalties are due hereunder for uncollectible accounts,
advertising expenses or other expenses of any kind except those
specifically identified in this Section.
d. "Territory" is the geographic area identified in Section 2(a) of
this Agreement.
2
e. "Minimum Guaranteed Royalties" shall have the meaning set forth in
Section 3(e) of this Agreement.
f. "Contract Year" and "First Contract Year" shall have the meanings
given those respective terms set forth in Section 2(b) of this
Agreement.
2. Grant of License Term, Licensee's Duties
a. Licensor hereby grants to Licensee an exclusive, indivisible,
worldwide license, without the right to sublicense, to use the Marks
in connection with the retail sale of Licensed Articles. Licensee
shall not use, or permit the use of, the Marks with any other
product, except as specifically provided in this Agreement. Licensee
shall take all steps and timely notify Licensor of all steps as
shall be necessary to protect Licensor's trademark rights in such
Marks, and to assure Licensor's exclusive ownership thereof.
b. Notwithstanding the provisions of sub-paragraph (a) above, at any
time after the expiry of the second Contract Year, the Licensor
shall have the option to terminate this Agreement with regard to any
Licensor-specified Licensed Article(s) in a Licensor specified
country, provided it first gives the Licensee prior written notice
of One Hundred and Eighty (180) days of its intention to do so,
which termination will only become effective should the Licensee not
commence to market the specified Licensed Article(s) in such
specified country, or submit to Licensor an acceptable business plan
to market said specified Licensed Article(s) in such specified
country prior to the expiry of such one hundred and eighty day
period.
c. The term of this Agreement shall be for three (3) years, five (5)
months commencing August 1, 1996 and ending December 31, 1999 at
midnight, unless sooner terminated. Each period from January 1
through December 31 during the term hereof is hereinafter referred
to as a "Contract Year", with the exception of the "First Contract
Year", which shall be for the period from August 1, 1996 through
December 31, 1996. This Agreement shall be automatically extended
for successive Contract Years after termination of the initial term
unless Licensor or Licensee gives the other party written notice of
its intention not to extend this Agreement at least one hundred
eighty (180) days prior to the expiration of a Contract Year or of
any extension. A party's determination not to extend this Agreement
may be effected without cause.
2
3
d. Licensee shall use its best efforts to promote the sale of Licensed
Articles in the Territory and shall maintain resources and a sales
force sufficient and adequate to accomplish Licensee's obligations
hereunder.
e. Licensee shall make available to Licensor or its designated agent(s)
any Licensed Article on the most favorable terms and conditions
offered by Licensee for that Licensed Article.
3. Royalties and Payment Minimum Guaranteed Royalties, Reporting
a. Licensee shall pay Licensor a royalty equal to seven (7%) percent of
the Net Sales Price of all Licensed Articles as set out in Exhibit B
sold, distributed or otherwise provided by Licensee during or after
the term of this Agreement.
b. On or before the fifteenth day of the first month of each calendar
quarter, Licensee shall furnish to Licensor full and accurate
statements, certified by the Chief Financial Officer of Licensee,
showing the number, description, total Net Sales Prices and gross
revenue of the Licensed Articles sold, distributed or otherwise
provided by the Licensee during the preceding calendar quarter.
Licensee shall, simultaneously with such statements, pay to Licensor
the royalties due thereon. Licensee may credit against any such
payment any Minimum Guaranteed Royalty payment made by Licensee
contemporaneously with such quarterly statement. Any Minimum
Guaranteed Royalty paid for any Contract Year shall not be refunded
to Licensee, and may not be credited to royalties due in any
subsequent Contract Year, regardless of the sales of Licensed
Articles. On or before the first day of the fourth month following
the end of each Contract Year, Licensee shall furnish to Licensor a
statement certified by the Chief Financial Officer of Licensee
showing total sales of Licensed Articles, gross revenues therefrom
as well as royalties and royalties paid for the preceding Contract
Year. If such statement discloses that the amount of royalties paid
during any period to which such statement relates were less than the
amount required to be paid, Licensee shall pay such deficiency
concurrently with the delivery of the statement. The quarterly and
yearly statements shall each show in detail all calculations used in
the computation of royalties.
c. For purposes of this Agreement, a Licensed Article shall be
considered sold or provided when such Article has been shipped,
distributed, paid for, billed or invoiced, whichever first occurs.
d. Notwithstanding anything to the contrary set forth herein, Licensee
shall pay to Licensor minimum royalties ("Minimum Guaranteed
Royalties"),
3
4
as follows for each Contract Year, or portion thereof, included in
the term of this Agreement, until changed by mutual written
agreement of the parties:
First Contract year $10,000
Second Contract year $28,000
Third Contract year $28,000
Fourth Contract year $28,000
e. For the First Contract Year, the Minimum Guaranteed Royalty shall be
payable as follows: Five Thousand Dollars ($5,000.00) on August 1,
1996, Five Thousand Dollars ($5,000) on November 1, 1996.
Thereafter, for each Contract Year during which this Agreement is in
effect, the Minimum Guaranteed Royalty shall be paid in four equal
installments on the dates on which each royalty payment is due,
pursuant to Section 3(c) of this Agreement.
f. Any delinquent amounts under this Agreement shall bear simple
interest at the rate of 1.5 percent per month, or if lower, the
highest rate permitted by Massachusetts law, from the due date
thereof until paid.
g. The parties agree to renegotiate the amount of the Minimum
Guaranteed Royalties should the German government enact legislation
which significantly restricts the marketing of the Licensed
Articles. Any change in the amount of the Minimum Guaranteed
Royalties will become effective in next Contract Year.
4. Protection of Marks
a. Licensee acknowledges Licensor's exclusive right, title and interest
in and to the Marks, both at common law and under applicable laws in
the United States and all other jurisdictions, and will not, either
directly or indirectly, at any time, do anything to discredit,
encumber or diminish any part of such right, title or interest or
challenge the validity of this License. Licensee agrees that its use
of the Marks will inure entirely to the benefit of Licensor.
Licensee shall assist Licensor, to the extent necessary or
appropriate, upon request by Licensor, in the procurement of any
protection of Licensor's rights in the Marks. Upon Licensor's
request from time to time, Licensee shall provide Licensor with six
specimens of any Xxxx used on Licensed Articles and whatever other
documentation or information may be requested by Licensor for the
registration of any Xxxx in any category into which the Licensed
Articles fall.
4
5
b. Licensee shall use the Marks only in the form and manner and with
appropriate legends as prescribed from time to time by Licensor, and
shall not use any other trademark or service xxxx in combination
with any Xxxx without prior written approval of Licensor. In any
written materials, such as the packaging, advertising materials,
catalogs, brochures and the like associated with the Licensed
Articles, in addition to the "(R)" symbol displayed adjacent to the
Xxxx, as appropriate, Licensee shall use the following notice at
least once in each such document: "Licensed Trademark of Xxxxx &
Wesson Corp."
c. Licensee recognizes that the XXXXX & WESSON name, all trade dress
and associated marks are world famous and that, even if not
registered in any country, the unauthorized use thereof would
seriously dilute the distinctiveness of such name, trade dress and
the associated marks and would irreparably harm the Licensor.
d. Licensee shall immediately notify Licensor in writing of any
infringements or third party imitations of any Xxxx or other act of
a third party which may concern the Xxxx(s), of which Licensee
becomes aware. Licensor shall have the sole right to determine
whether or not any action shall be taken on account of such
infringements or imitations. Licensee shall not institute any suit
or take any action on account of any such infringements or
imitations without first obtaining the written consent of Licensor
to do so.
e. Licensor shall undertake to apply for and obtain registration, in
its name and at its own expense, of any of the Marks in association
with the Licensed Articles in any country in which Licensee may
request and as deemed by Licensor to be necessary or appropriate to
protect the Marks and the goodwill associated therewith.
5. Assignment of Marks
If Licensee shall acquire by act or operation of law by deed or operation
of law any rights in the marks in any country, Licensee shall notify
Licensor and immediately assign such rights to Licensor, together with any
goodwill that may have inured to the benefit of the Licensee. Licensee
shall not permit any other person to use any of the Marks without
Licensor's prior written consent, and shall cause any manufacturer or
other person involved in the production, promotion, sale or provision of
Licensed Articles to agree to assign to Licensor any rights in any Xxxx
acquired by such manufacturer or other person.
6. Indemnification
5
6
a. Licensee shall at all times, and to the fullest extent permitted by
law, indemnify and hold harmless Licensor and its successors,
assigns, franchisees, subsidiaries, affiliates, licensing agents and
distributors, and the directors, officers, agents and employees of
each of the foregoing entities, from and against any and all
damages, demands, claims, suits, actions, investigations, charges,
costs and expenses including, without limitation, attorneys fees and
court costs, settlement amounts, judgments, compensation for damages
to Licensor's reputation and any losses of any nature which arise
out of or are based upon any of the following:
(1) Any actual or alleged design defect, manufacturing defect,
failure to warn or instruct, breach of warranty, negligence,
strict liability in tort, or any other product liability legal
theory associated with Licensed Articles;
(2) The infringement, alleged infringement or any other violation
or alleged violation of any patent, trademark or copyright
rights or other proprietary rights owned or controlled by
third parties by reason of the manufacture, use, advertising,
sale, distribution or provision of the Licensed Articles;
(3) The violation, or alleged violation, of any federal, state or
local law, regulation, ruling, standard or directive or of any
industry standard with respect to the Licensed Articles;
(4) Licensee's breach of any warranty, representation, agreement
or obligation hereunder; or
(5) Any other acts or omissions of Licenses, or its agents,
servants or contractors with respect to the manufacture,
promotion, provision or sale of Licensed Articles.
b. Licensee shall promptly give Licensor notice of any action, suit,
proceeding, claim, demand, inquiry or investigation relating to the
Marks or Licensed Articles. Licensor may, at its sole option, elect
to undertake the defense of any such action, suit, proceeding,
claim, demand, inquiry or investigation, provided that such an
undertaking by Licensor shall not diminish Licensee's obligation
hereunder to indemnify Licensor and to hold it harmless. All losses
and expenses incurred under this Section shall be chargeable to
Licensee pursuant to its obligations to indemnify under this
Section, regardless of any actions, activity or defense undertaken
by Licensor or the subsequent success or failure of such actions,
activity or defense.
6
7
c. Licensor assumes no liability whatsoever for the acts and omissions
of Licensee, or any of those with whom Licensee may contract for the
promotion, manufacture, distribution, sale or provision of Licensed
Articles notwithstanding any prior consent by Licensor to such
contract.
7. Insurance
Licensee shall maintain, throughout the term, of this Agreement at its own
expense, liability insurance from an insurance company, with such
liability coverages and limits as are acceptable to Licensor with an
amount of ($1,000,000) one million dollars per occurrence, including a
contracted liability endorsement, for the U.S. market and ($3,500,000)
three and one-half million dollars per occurrence, including a contracted
liability endorsement, for the remaining world market. The policy for the
United States market shall name Licensor as an additional insured and
shall provide that Licensor shall receive at least 30 days prior written
notice of intent to cancel, alter or amend such policy. Licensee shall
provide Licensor within thirty (30) days of the execution of this
Agreement and upon Licensor's request from time to time thereafter, with
certificates or other evidence of insurance required by this Section.
Licensee shall keep all insurance coverages required by this Agreement in
full force and effect for a period of three years after the termination of
this Agreement.
8. Quality of Licensed Articles
a. Licensee agrees, represents and warrants to Licensor, that all
Licensed Articles shall be state-of-the-art, of high safety and
structural standards, of such style, appearance, quality and
consistency as shall be suitable for distribution and satisfactory
for consumer usage, and otherwise merchant-able and fit for the
purposes for which they are intended to be used. At least 30 days
before manufacturing or promoting, and again before distributing,
selling or providing any Licensed Article, and upon Licensor's
request from time to time, Licensee shall submit to Licensor, for
its written approval, not to be unreasonably withheld, samples of
the Xxxx usage, or description of each Licensed Article together
with any labeling, packaging, or promotion material and literature
in respect of which such Licensed Article is to be marketed, sold or
provided. The number of samples to be furnished by Licensee shall be
such reasonable number as Licensor may from time to time request.
All samples shall be provided without charge to Licensor. No
Licensed Article shall be distributed, sold or provided pursuant to
this Agreement until Licensee has obtained Licensor's written
approval of the samples submitted. It is understood, however that
failure of the Licensor to provide Licensee with written approval or
rejection of the samples submitted within twenty (20) business days
of the Licensor's receipt of
7
8
such samples shall be deemed to constitute approval on the part of
the Licensor of such samples.
b. All Licensed Articles shall be of the same quality and workmanship
as the approved sample, and in the manufacture and provision
thereof, Licensee shall cause to be used state-of-the-art
manufacturing processes, techniques and quality control procedures
in order to ensure that the Licensed Articles will consistently
comply with the highest product quality standards. Under no
circumstances shall Licensee sell, distribute, give away or
otherwise deal or cause to have sold, distributed, given away or
otherwise dealt Licensed Articles that are seconds or sub-standard,
that bear a distortion of the Marks or that otherwise do not comply
with this Agreement.
c. Licensee shall consistently distinguish the Licensed Articles from
other products and services manufactured, sold and provided by
Licensee and shall avoid any confusing similarity between such other
products and services and the Licensed Articles. Licensee shall take
such actions as are necessary to maintain the Licensed Articles as
separate and distinct lines of styling, design and merchandising
from any other product and service manufactured, sold or provided by
Licensee.
d. Licensee shall, no later than 90 days before the expiration of any
Contract Year, furnish Licensor a statement showing the number and
description of Licensed Articles in inventory and in process.
9. Compliance with Government, Regulations, Industry Standards and Product
Testing
a. Licensee agrees that the manufacture, distribution and sale of the
Licensed Articles will conform at all times to all applicable
federal, state and local laws, regulations, industry standards,
ordinances and other enactments, including, without limitation,
those relating to product and service safety.
b. The Licensed Articles shall comply with all relevant government
regulations and meet all industry standards applicable thereto.
10. Promotional Material
Licensee shall not use the Marks or any reproduction thereof in any
advertising, promotional or display material without Licensor's prior
written approval. Under no circumstances will promotional materials or
programs be used by Licensee that reflect unfavorably on the Marks or
8
9
disparage marks of third parties. All advertising, display or promotional
copy utilizing or in any way connected with the Marks, shall carry a
notice that the Marks are the property of Licensor, and at least six
copies of such advertising, display or promotional copy shall be submitted
to Licensor for prior written approval, not to be unreasonably withheld,
at least 30 days in advance of production and upon Licensor's request from
time to time thereafter. Any approval granted by Licensor under this
Section will extend only to Licensee's use of the Marks. It is understood,
however, that failure of the Licensor to provide Licensee with written
approval or rejection of the copies submitted within twenty (20) business
days of the Licensor's receipt of such copies shall be deemed to
constitute approval on the part of the Licensor of such copies. Licensor
shall not be liable for content or accuracy of such advertising,
promotional or display material nor for infringement of patents,
copyrights, trademarks, or any other proprietary rights owned, used, or
controlled by third parties, by reason of Licensee's promotional
activities.
11. Records
a. Licensee shall keep accurate books of account and records covering
all transactions relating to the license herein granted. Licensor
and its duly authorized independent accountants or other
representatives shall, from time to time, have the right at
reasonable times upon Licensor's prior written request of at least
five (5) business days to examine such books of account and records
and other documents and material in Licensee's possession or under
its control with respect to Licensee's activities in connection with
this Agreement, and such persons shall have free and full access for
such purposes and may make copies thereof or extracts therefrom.
Licensee shall keep all such records available to Licensor for at
least three years after expiration or termination of this Agreement.
Licensee will designate a symbol or number which will be used
exclusively in connection with the Licensed Articles and with no
other articles or services which Licensee may manufacture, sell or
distribute, and that duplicates of all xxxxxxxx by Licensee to its
customers with respect to Licensed Articles shall be kept by
Licensee for inspection as is herein provided.
b. If any audit by Licensor shall reveal a shortfall of royalties paid
by Licensee against royalties actually due in accordance with this
Agreement, Licensee shall within fifteen (15) days make payment to
Licensor of such shortfall, plus simple interest at the rate of 1.5
percent per month or if lower, the highest rate permitted by
Massachusetts law, for the period of such shortfall. In addition, if
such audit shall reveal a shortfall of more than five percent of
royalties due, Licensee shall
9
10
reimburse Licensor for the services of its accountant and for any
other expenses of Licensor incident thereto including, without
limitation, any attorneys' fees and costs of collection.
12. Licensor's Obligations
a. Within thirty (30) days of the execution of this Agreement, Licensor
will provide Licensee with its current customer list and will
provide Licensee with updates thereon at the commencement of each
Contract Year. Licensee acknowledges that the customer list is a
valuable asset of the Licensor and remains Licensor's exclusive
property. Licensee will not divulge any contents of the list nor
make any use of the list not contemplated by this Agreement.
13. Termination
In addition to any other rights which Licensor may otherwise have,
Licensor may terminate this Agreement at any time, immediately upon
written notice:
a. If within six (6) months from the date of this Agreement,
Licensee shall not have begun the bona fide design,
specification and/or concluded contracts for production,
distribution, sale and provision of the Licensed Articles; or
b. If Licensee shall, after said written notice, fail for a
period in excess of three consecutive months to continue the
bona fide design, specification, distribution, sale or
provision of the Licensed Articles; or
c. If Licensee shall fail to make any payment due hereunder or to
deliver any of the statements required hereunder, and if such
default shall continue for a period of 15 days after notice of
such default by Licensor to Licensee or if such a failure
shall occur twice in any consecutive 12-month period even if
both failures are corrected as provided hereunder; or
d. If Licensee or its property:
1) Becomes subject to a receiver or trustee; or
2) Becomes insolvent; or
3) Becomes subject to an involuntary or voluntary petition
under National Bankruptcy Laws, or
10
11
4) Makes an assignment for the benefit of its creditors; or
e. If there is any deliberate deficiency in the Licensee's
reporting which affects royalties or gross revenue share
payable or any other aspect of this Agreement; or
f. If any warranty, representation or covenant made by Licensee
hereunder, or any information as to product quality or safety
provided by Licensee hereunder, is false or misleading; or
g. If Licensee fails to comply with any term or condition of this
Agreement, other than those specifically set forth in clauses
a. through f. above, and such non-compliance continues beyond
a period of 15 days after notice thereof is given by the
Licensor.
Any termination by Licensor shall be without prejudice to any of Licensor's
other rights or remedies.
14. Effect of Termination
a. After expiration or other termination of this Agreement, Licensee
shall have no further right to manufacture, distribute, sell,
exploit, provide, render or otherwise deal in any Licensed Articles
which utilize the Marks, except that Licensee may dispose of
Licensed Articles which are on hand or in process or to be provided
at the time of expiration or termination so long as (1) Licensee
reports in writing to Licensor, no later than 30 days after
termination of this Agreement, the total number of Licensed Articles
which will be disposed of, (2) the sale or provision thereof is
completed within six months, (3) all payments when due are made to
Licensor, (4) such disposal or provision of Licensed Articles shall
be in accordance with the terms of this Agreement; and (5)
statements and royalty and gross revenue share payments with respect
to that period are made by Licensee in accordance with Section 3.
Notwithstanding the foregoing, in the event this Agreement is
terminated pursuant to Sections 13(c), 13(d), 13(e), 13(f), or
13(g), Licensee shall not dispose of or provide any Licensed
Articles which are on hand, in process, in force or to be provided
at the time of termination in association with the Marks. A final
statement and payment shall be made by Licensee within 15 days after
the end of such six-month period.
Upon expiration of such six-month period herein, all molds, plates,
prints and other materials used to reproduce the Marks for the
manufacture or provision of the Licensed Articles and related
11
12
advertising shall be destroyed and evidence of such destruction
shall be given to the Licensor.
b. In the event this Agreement expires or is otherwise terminated for
any reason, Licensee shall, and hereby does agree to assign to
Licensor any and all rights of Licensee in the Marks, including
associated goodwill, and the designs, trade dress and styles of the
Licensed Articles to the extent such design or styles contain or
employ any of the Marks, and shall not thereafter market,
manufacture or sell any such designs or styles or use the Marks in
any manner in connection with any provided services.
c. Except as provided in subsection (a) of this paragraph, upon the
expiration or termination of this Agreement, Licensee shall
immediately cease all further use of the Marks and any names,
trademarks, trade dress, characters, symbols, designs, likenesses or
visual representations as might be likely to cause confusion or
deceive purchasers or prospective purchasers or dilute any trade
name, trademark, trade dress or service xxxx of Licensor including,
without limitation, Licensor's corporate and private names, other
trademarks, trade dress symbols, designations, indices, slogans and
other means of identifying products or services of Licensor, whether
or not identified herein as a Xxxx.
d. Licensee agrees that the Marks are distinctive and possess special,
unique and extraordinary characteristics which make difficult the
assessment of the monetary damages that Licensor would sustain by
unauthorized use. Licensee recognizes that irreparable injury would
be caused to Licensor by any unauthorized use of the Marks and
agrees that preliminary and/or permanent injunctive and other
equitable relief would be appropriate in the event of a breach of
this Agreement by Licensee provided, however, that such remedy shall
not be exclusive of other legal remedies otherwise available.
e. Licensee's obligations and agreements set forth in Sections 3
through 11, 14, 15, 18, 20 and 21 shall survive any termination or
expiration of this Agreement.
15. Notices:
All notices and statements to be given hereunder shall be in writing, any
such notice or statement shall be deemed duly given if mailed by certified
mail, return receipt requested, if to Licensor, at:
Xxxxx & Wesson Corp.
0000 Xxxxxxxxx Xxxxxx
12
13
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000, X.X.X.
Attention: Director of Licensing
and if to Licensee, at:
UMAREX Sport waffen GmbH & Co. XX
Xxxxxxxxxx 0
00000 Xxxxxxx, Xxxxxxx
Attention: Xxxx-X. Xxxxxxxx
16. No Joint Venture
Nothing in this Agreement shall be construed to place the parties in the
relationship of partners or joint ventures, and Licensee shall have no
power to bind Licensor in any manner whatsoever.
17. Cancellation
Licensee acknowledges that Licensor and its subsidiaries, affiliates and
franchisees use the Marks to advance and promote Licensor's business, and
that Licensor has a paramount obligation to preserve its ability to so use
such Marks. Should the use by Licensee of any Xxxx on Licensed Articles be
deemed by Licensor in its discretion to be in violation of any federal,
state or local law or to adversely affect the reputation of Licensor or
affect the validity, enforceability or distinctiveness of the Xxxx as a
designation of origin for Licensor's own products, then Licensor may
terminate this Agreement on one hundred and eighty (180) days notice to
Licensee.
18. Assignments Transfers and Sublicenses
Without the prior written consent of Licensor, which may be withheld in
Licensor's sole and reasonable discretion, a) Licensee shall not
voluntarily or by operation of law, assign or transfer this Agreement or
any of Licensee's rights or duties hereunder or any interest of Licensee
herein, except to a third party which is controlled by Licensee, nor shall
Licensee enter into any sublicense for use of the Marks by other persons
otherwise than as contemplated by this Agreement; b) Licensee shall not
sell or otherwise transmit or transfer to any party engaged in the design
or manufacture of items similar to any of the Licensed Articles, any
design, style, know-how, technology or other item or knowledge of a
technical or competitive nature, furnished to Licensee by or through
Licensor. Any transfer or attempt to transfer of this license to any
entity in which the present directors of Licensee do not have voting
control shall be deemed an assignment prohibited hereunder. The consent of
Licensor to one assignment, transfer or sublicense
13
14
shall not be deemed to be consent to any subsequent assignment, transfer
or sublicense. Nothing provided herein shall limit Licensor's right to
transfer and/or assign any of its rights hereunder.
19. Scope and Modification
This Agreement sets forth the entire agreement between the parties, and
supersedes all prior agreements and understandings between the parties,
relating to the subject matter hereof. None of the terms of this Agreement
may be waived or modified except as expressly agreed in writing by both
parties.
20. Severability
Should any provision of this Agreement be declared void or unenforceable,
the validity of the remaining provisions shall not be affected thereby.
21. Governing Laws
This Agreement shall be made in the Commonwealth of Massachusetts and its
terms shall be interpreted in accordance with and governed by the laws
thereof.
22. Miscellaneous
In accordance with the terms of the German Doppelbesteuerungsabkommen,
Licensor shall execute an application for tax exemption for license fees
paid by Licensee to Licensor hereunder, as such application has been
prepared by Licensee, and submit the application for approval by the
appropriate U.S. tax authority.
Licensor:
Witnessed By: XXXXX & WESSON CORP.
By: /s/ [signature not legible]
-----------------------------------
(Title) President and CEO
Date: 10 July 1996
Licensee:
By: /s/ [signature not legible]
-----------------------------------
(Title) President and CEO
Date: 10 July 1996
14
15
EXHIBIT "A" -Licensed Marks
XXXXX & WESSON - Germany Registration Xx. 000.000
X & X XXXXXXXX - Xxxxxxx Registration Xx. 0.000.000
X & X - Xxxxxxx Registration No. 215.639
Agent
Chiefs Special
5904
Trade dress for Xxxxx & Wesson's models "Agent", "Chief's Special" and "Model
5904", each of which are pictured below
[depictions of Agent, Chief's Special and Model 5904 pistols]
16
EXHIBIT B - Licensed Articles
Tear gas weapons
Starter pistols
