NON-EXCLUSIVE TRADEMARK LICENSE AGREEMENT

Transcription

1 NON-EXCLUSIVE TRADEMARK LICENSE AGREEMENT This Trademark License Agreement (the "Agreement") is entered into as of (the "Effective Date"), BY AND BETWEEN: AND:, a company incorporated and existing under the laws of and having its registered office at ( Licensor ), an individual residing at each singularly referred to as a "Party" and collectively referred to as the "Parties": BACKGROUND FACTS ( Licensee ) A. The Licensor is the sole and exclusive owner of all proprietary and other property rights and interests in and to certain trademarks, trade names, service marks, logotypes, insignias and designs used by the Licensor and the Licensor's licensees ("Marks"). B. The Licensee acknowledges that the Marks are distinctive of the Licensor. C. The Licensee has represented to the Licensor that the Licensee is experienced in. D. The Licensee wishes to be granted a license to use the Licensed Marks as defined below. E. The Licensor intends on various conditions and under various restrictions contained in this Agreement to grant to the Licensee a license to use the Licensed Marks. 1

2 THEREFORE, IN CONSIDERATION OF THE MUTUAL PROMISES CONTAINED IN THIS AGREEMENT, THE RECEIPT AND ADEQUACY OF WHICH IS HEREBY ACKNOWLEDGED BY THE PARTIES, THE PARTIES AGREE AS FOLLOWS: 1. DEFINITIONS AND INTERPRETATION In this Agreement, unless the context otherwise requires, the following expressions shall have the meanings as ascribed to them as follows: (i) Agreement means this Trademark License Agreement, its Exhibits, and any documents referred to in this Agreement; (ii) "Territory means the geographic territory defined by the boundaries of ; (iii) "Licensed Marks means those and only those Marks depicted and listed in s. 1 of Exhibit A as it may be amended from time to time during the course of this Agreement; (iv) Licensed Products means those and only those products listed in Exhibit B as it may be amended from time to time during the course of this Agreement; (d) (e) (f) Words importing the singular number only shall include the plural and vice versa, and words importing the masculine gender shall include the feminine gender and vice versa. The Preamble, each of the Exhibits attached to this Agreement, and the headings for each clause form an integral part of this Agreement. "Termination of the rights granted hereunder, or similar words to that effect as used in this Agreement, shall not be construed as meaning that this Agreement has terminated with respect to the obligations and liabilities of the Licensee hereunder and such obligations and liabilities shall continue to accrue and continue in full force and effect notwithstanding such termination of rights. The word "person includes any individual, firm, licensee, corporation, government, governmental body or agency, instrumentality, unincorporated body of persons or associations. The words in writing or written includes printing, typewriting, or any electronic means of communication by which words are capable of being visibly reproduced at a distant point of reception, including but not limited to fax and LICENSE GRANT LICENSE 2

3 Subject to the terms and conditions set forth in this Agreement, the Licensor grants to the Licensee a non-exclusive, non-transferable, limited license to make, offer, advertise, sell, and otherwise distribute in the Territory Licensed Products bearing the Licensed Marks. LICENSE LIMITED TO LICENSED MARKS The Licensee is hereby only authorized to use the Licensed Marks. The Licensee shall not use and hereby waives any right to use any variations of the Licensed Marks or any Marks not listed in s. 1 of Exhibit A of this Agreement without the prior written approval of the Licensor, which approval may be arbitrarily withheld. LICENSE LIMITED TO LICENSED PRODUCTS The Licensee is hereby authorized to use the Licensed Marks in association with the Licensed Products, but not for any other purpose and not in association with any other products or services. The Licensee shall not use and hereby waives any right to use the Licensed Marks for any purpose or in association with any products or services other than the Licensed Products without the prior written approval of the Licensor, which approval may be arbitrarily withheld. (d) LICENSE LIMITED TO THE TERRITORY The Licensee shall not make, offer, advertise, sell, distribute the Licensed Products or otherwise use the Licensed Marks in any place other than the Territory. (e) LICENSE IS PERSONAL TO THE LICENSEE AND IS NON-TRANSFERABLE The Licensee may not assign, sublicense, or otherwise transfer this license to a third party, unless such person was approved in advance in writing by the Licensor. Subject to provisions of this Agreement relating to quality control, the Licensor hereby authorises the Licensee to use the services of independent contractors to make, advertise, sell, or otherwise distribute the Licensed Products, as long as all use of the Licensed Marks by such contractors is made for the benefit of the Licensee and within the limitations set forth in this Agreement. The Licensee confirms that the Licensee shall at all times be jointly and severally liable for any acts or omissions of such contractors as such acts and omissions may relate to the Marks, the Licensed Marks or any other legitimate interests of the Licensor. (f) LICENSE IS NON-EXCLUSIVE The license granted to the Licensee pursuant to this Agreement is non-exclusive. The Licensor reserves the right to use or to grant to any person or persons other than the Licensee, the right or consent to use any Marks, including the Licensed Marks, in association with any products, including the Licensed Products, anywhere in the world, including in the Territory. (g) RESERVED RIGHTS 3

4 This Agreement is not an assignment or grant to Licensee of any right, title, or interest in or to the Marks or the Licensed Marks, or any of the Licensor s other trademarks, other than the grant of rights to use the Licensed Marks subject to the terms and conditions of this Agreement. Rights not herein specifically granted to the Licensee are reserved by the Licensor and may be used or exercised by the Licensor without limitation. The Licensor expressly does not grant to the Licensee the right to use any variation of the Licensed Marks that now exist or hereafter are developed by the Licensor, the Licensee, or any other person. (h) PROHIBITED ACTS The Licensee shall not, directly or indirectly: (i) claim ownership of the Licensed Marks, the Marks, or any other intellectual property rights of the Licensor; (ii) permit the use of the Licensed Marks or the Marks in such a way as to give the impression that they are the property of the Licensee; (iii) use or allow any affiliate or related party to use, the Licensed Marks or the Marks or any confusingly similar trademark or confusingly similar intellectual or industrial property in any manner not expressly authorized by the Licensor; (iv) engage in any activity that may contest, dispute, dilute, or otherwise impair the right, title, interest or goodwill of the Licensee in the Licensed Marks or the Marks, including, without limitation, any action to prevent or cancel any registration of the Licensed Marks or the Marks; (v) use any website or any online property that contains a designation identical or similar to the Licensed Marks in the name or address of such website or online property to sell, distribute, advertise or otherwise offer any products other than the Licensed Products bearing the Licensed Marks, unless the Licensor has specifically approved each such use, which approval may be conditioned upon payment of royalties from all such sales; (vi) use any trademarks other than the Licensed Marks or the Marks in connection with the manufacture, promotion and distribution of the Licensed Products or associate the Licensed Marks or the Marks with any other name, trademark, service mark, character or personality; (vii) produce or sell, or allow any affiliate, distributor or agent to produce or sell, directly or indirectly, look-alikes or knock-offs of any Licensed Product; nor shall the Licensee or any affiliate thereof make any statements, in any oral or written format, comparing any products to the Licensed Products; (viii) use the Licensed Marks or the Marks as part of the Licensee's corporate or commercial name unless expressly permitted by the Licensor in writing; or 4

5 (ix) contest the fact that the Licensee's rights under this Agreement are solely those of a licensee and that such rights, subject to the provisions of s. 10(e)(ii) of this Agreement, cease upon termination or expiration of this Agreement. 3. QUALITY CONTROL AND INTEGRITY QUALITY NOT INFERIOR TO PRODUCTS PROVIDED BY LICENSOR The Licensee acknowledges that it is of fundamental importance to the Licensor that the integrity of the Licensed Marks be maintained to the level deemed appropriate by the Licensor. The Licensee undertakes that at all times the quality of the Licensed Products made, offered, advertised, sold, or otherwise distributed by the Licensee under the Licensed Marks shall not be inferior to that of the Licensed Products provided by the Licensor. QUALITY STANDARDS The Licensee acknowledges that the Licensor has a vested interest in maintaining and protecting its goodwill and its rights in the Licensed Marks, and may impose requirements as to the quality and character of the Licensed Products made, offered, advertised, sold, or otherwise distributed by the Licensee under the Licensed Marks. Therefore, the Licensee, in addition to all other terms, requirements and obligations contained in this Agreement, agrees to be bound by and to scrupulously follow the standards, specifications and policies adopted by and acceptable to the Licensor in relation to making, offering, advertising, selling, or otherwise distributing the Licensed Products as the Licensor may make such standards, specifications and policies known to the Licensee, orally or in writing, during the term of this Agreement. ADVERTISING AND PROMOTION Any packaging, advertising, advertising copy, website, landing page, newsletter, publicity, publication or display or promotion material relating to the Licensed Products incorporating the Licensed Marks ("Advertising Materials") shall comply with the standards, specifications and policies adopted by and acceptable to the Licensor in relation to making, offering, advertising, selling, or otherwise distributing the Licensed Products as the Licensor may make such standards, specifications and policies known to the Licensee, orally or in writing, during the term of this Agreement. (d) SUBMISSION OF ADVERTISING MATERIALS The Licensee shall not adopt any Advertising Materials which incorporate the Licensed Marks unless and until such materials have been approved by the Licensor. The Licensee shall submit to the Licensor a copy of all such proposed Advertising Materials detailing the Licensee's proposed advertising plan not later than 10 business days prior to the proposed first use of the Advertising Materials. The Licensor shall then have 7 business days to either: 5

6 (i) (ii) (iii) expressly approve the Advertising Materials and the advertising plan as proposed by the Licensee; prohibit the use of the Advertising Materials as proposed by the Licensee; list deficiencies in the Advertising Materials and recommendations how these deficiencies can be fixed. If the Licensor fails or neglects to respond to the Licensee's request for approval during the period set out above, the Advertising Materials will be deemed to have been approved by the Licensor. If the Licensor chooses to provide recommendations under s. 3(d)(iii) above, the Licensee must submit the revised Advertising Materials addressing the deficiencies listed by the Licensor in the same manner as outlined in this s. 3(d) of this Agreement. (e) DOMAIN NAMES AND SOCIAL MEDIA PROFILES The Licensee shall not register or adopt domain names, user names or use social media profiles that incorporate or are confusingly similar with the Marks or the Licensed Marks other than with the Licensor s prior written consent. The Licensee agrees that the Licensee would hold any such domain names, user names, or social media profiles in trust for the benefit of the Licensor and that at the Licensor s request, the Licensee shall transfer such domain names, user names and social media profiles, at no charge, to the Licensor. (f) INSPECTION The Licensee further agrees that the Licensor shall have the right at any time during normal business hours to attend at the premises of the Licensee to inspect the quality of the Licensed Products and the integrity of the Advertising Materials used by the Licensee to ensure the standards, specifications and policies are being maintained. (g) LICENSEE SHALL BE DILIGENT The Licensee hereby covenants and undertakes to diligently and continuously promote the Licensed Products within the Territory with a view to gaining maximum volume of distribution and sales, and further covenants to make and distribute the Licensed Products so as to satisfactorily meet demand. (h) COMPLIANCE WITH ALL LAWS The Licensee shall render and advertise the Licensed Products in compliance with all applicable governmental rules, laws and regulations. The Licensee shall cause all products sold by the Licensee as part of the Licensed Products to bear all information relating to care, maintenance and use of such products as is mandatory according to the applicable customer protection laws in the Territory. The Licensee hereby warrants and represents that any and all products sold by the Licensee as part of the Licensed Products will be, in 6

7 all respects, safe, non-injurious and fit for use by the person or entity for whom the products are intended. 4. PROTECTION OF TRADEMARKS ACKNOWLEDGEMENT OF OWNERSHIP The Licensee acknowledges and agrees that it has no rights, title or interest in or to the Marks, Licensed Marks or other intellectual property right of the Licensor, nor any part thereof, except the use of the Licensed Marks as set out in this Agreement and that nothing in this Agreement shall be construed as an assignment or grant to the Licensee of any right, title or interest in or to the Marks and the Licensed Marks and of the Licensor s right, title or interest in or to any of the aforesaid, either during the currency of this Agreement or thereafter. The Licensee shall not, whether directly or indirectly, at any time assert the invalidity of the Marks or the Licensed Marks or any other intellectual property right of the Licensor or any part thereof, contest the Licensor s ownership of or rights in or to the Marks or the Licensed Marks. NOTICES AND OWNERSHIP The Licensee shall mark any and all Licensed Products and Advertising Materials bearing the Licensed Marks with an appropriate notice indicating the Licensor's ownership of copyright, trademark and other intellectual property rights as stipulated by the Licensor from time to time. IDENTIFICATION OF LICENSEE The Licensee shall identify itself in all of its business dealings and to the general public as a "licensee" of the Licensor, not as a subsidiary, division, partner, joint venturer, agent, franchisee or employee of the Licensor. (d) USE OF OTHER MARKS The Licensee shall not use any words (whether in English or any other language), graphics or other copy or design placed upon or around or used in direct or indirect association with the Licensed Marks or the Licensed Products without having first obtained the prior written approval of the Licensor. (e) USE IN ACCORDANCE WITH AGREEMENT (f) The Licensee further agrees that it shall use the Licensed Marks solely in accordance with the provisions of this Agreement and in such manner as to protect and preserve all the Licensor s rights. During the currency of this Agreement or thereafter, the Licensee shall not adopt or use in the Territory or elsewhere any trademark, symbol, name, word or other mark which includes or is confusingly similar to any of the Marks or the Licensed Marks or any part thereof. GOODWILL 7

8 The Licensee and its employees, servants and agents will, in the process of rendering the Licensed Products, maintain the highest standard of conduct and good taste so as to preserve and enhance the goodwill, good name and reputation of the Licensor. (g) USE OF MARKS IN LICENSEE TRADE-NAME The Licensee shall not use any of the Marks, Licensed Marks or any part thereof, as part of a trade, business or corporate name or style without the prior written permission of the Licensor. If the Licensor does grant permission in this regard, the Licensee agrees that in the event of expiration or termination of this Agreement for any reason whatsoever the Licensor may request the Licensee to forthwith cancel or amend its name to delete the Licensed Marks. In the event that the Licensee fails to comply with the request within seven (7) days of receiving the notice, the provisions of s. 4(j) of this Agreement will apply. (h) RECORDAL OF LICENSE At the request of the Licensor, the Licensee shall join with the Licensor in making application to the requisite government authority in the Territory with the intent that the Licensee shall be a registered user or other appropriate designation of any or all of the Licensed Marks which are capable of being protected in the Territory as may be determined by the Licensor from time to time. (i) CANCELLATION OF RECORDAL Upon the termination of rights granted hereunder, at the request of the Licensor, the Licensee shall join with the Licensor in any application which may be necessary to cancel the registration or status of the Licensee as a registered user or other appropriate designation in respect of any of the Licensed Marks and execute and deliver all such documents and do all such further acts and deeds as the Licensor may require from time to time in this regard. (j) POWER OF ATTORNEY The Licensee hereby irrevocably nominates, constitutes and appoints the President of the Licensor as its true and lawful attorney to prepare, alter, sign, seal and deliver any and all documents of whatsoever nature and kind in the name and stead of the Licensee in order to achieve the intent of ss. 4(g), 4(h) and 4(i) of this Agreement. The Licensee hereby grants full power to the President of the Licensor to substitute and appoint one or more attorney or attorneys with the same powers as granted to the President of the Licensor hereby. The Licensee further agrees to indemnify and save harmless the Licensor, its President and its attorneys against all expenses, costs, charges, damages and liabilities whatsoever, arising directly or indirectly in connection with the exercise of the powers granted under this section. This indemnity is in addition to and shall not affect any other indemnity contained in this Agreement. (k) LICENSEE COOPERATION 8

9 The Licensee further agrees to cooperate fully and in good faith with the Licensor for the purpose of securing or protecting the Licensor s legal rights in any of the Licensed Marks, or any other intellectual property, and, in the event that there has been no previous registration of any of the Licensed Marks or other intellectual property rights, or any part thereof, the Licensee shall, if the Licensor requests and only if the Licensor requests, register such a copyright, trademark or industrial design or property right, in the appropriate governmental office, whether domestic or foreign at the Licensor s expense, and any and all copyright, trademarks, service marks, industrial designs or other rights in and to any of the Licensed Marks or other intellectual property right or any part thereof are reserved to the Licensor and all such registration by the Licensee shall be in the name of the Licensor. Nothing contained in this Agreement shall be construed as an assignment or grant to the Licensee of any right, title, or interest in or to any copyright, trademark, industrial design or other intellectual property right or to any part thereof other than the specific grants given in this Agreement. (l) REASSIGNMENT OF RIGHTS TO LICENSOR The Licensee agrees that, should any rights, title or interest in or to the Licensed Marks or any part thereof or any copyright, trademark or any other intellectual property of the Licensor become vested in the Licensee (by operation of law or otherwise), the Licensee shall hold the same in trust for the Licensor and shall, at the request of the Licensor forthwith unconditionally assign any such rights, title or interest to the Licensor without recompense. Should the Licensee create and make use of any of the Licensed Marks or any part thereof in a configuration other than that set out in Exhibit A hereto, as amended from time to time by the Licensor in its sole discretion, then the Licensee agrees that all rights in and to any new version, translation or arrangement of the Licensed Marks, or other change in the Licensed Marks created by the Licensee, shall be and shall remain the exclusive property of the Licensor, and the provisions of this Agreement shall apply to such new versions, translations, arrangements and changes as they apply to the Licensed Marks. The Licensor shall be the sole judge as to whether there has been any new version, translation, arrangement or change of the Licensed Marks within the meaning of this section. 5. FINANCIAL TERMS CONSIDERATION As consideration for the Licensor entering into this Agreement, the Licensee shall pay to the Licensor: (i) (ii) a one-time setup fee as agreed in s. 5 below; ongoing monthly royalties as agreed in s. 5 below. SETUP FEES 9

10 As a condition precedent to this Agreement coming into effect, within days of the Effective Date, the Licensee shall pay to the Licensor a one-time non-refundable nonrecoupable setup fee in the amount of. The setup fee shall be deemed fully earned upon the execution of this Agreement. MONTHLY ROYALTIES In consideration of the license granted to the Licensee hereunder, the Licensee shall pay the Licensor percent of all revenues received by or owing to the Licensee from the sales or distribution of the Licensed Products. The monthly payments hereunder shall be made on the th day of each month for revenue that was received by or that became owing to the Licensee during the previous calendar month. (d) METHOD OF PAYMENT All payments to the Licensor hereunder shall be by wire transfer with all banking charges borne by the Licensee. Unless directed otherwise by the Licensor, the payments should be wired to the following account of the Licensor: (e) CURRENCY All references to currency are to U.S. Dollars, unless otherwise provided for in this Agreement or the Exhibits hereto, and all payments shall be made in U.S. Dollars. The Licensee shall bear all expenses relating to currency exchange rates. (f) TAXES All amounts referred to in this Agreement are exclusive of applicable taxes, and to the extent that applicable laws impose a tax on such payments, an amount of such taxes will be added to the amounts payable under this Agreement. (g) INTEREST Without restricting any other rights or remedies of the Licensor hereunder, interest shall be charged at the rate of twenty-four (24%) per cent per annum, calculated and payable monthly on the last day of each calendar month, from the date of which payment was due, on any amounts due under this Agreement which remain unpaid. (h) RECORDS AND VISITATION The Licensee agrees to keep accurate books and records covering all matters relating to the Agreement and the Licensed Products and the Licensor shall have the right, at all 10

11 reasonable hours of the day and upon giving to the Licensee forty-eight (48) hours prior written notice, to an examination of such books and records and of all other documents and material in the possession or under the control of the Licensee with respect to the matters relating to this Agreement and the Licensed Products, and shall have free and full access thereto for the said purposes with the right to make extracts and take copies therefrom. The records referred to above shall be kept at the address indicated in s. 13 for the Licensee. 6. INSURANCE THE POLICY The Licensee at its own expense shall carry and maintain in full force and effect for the full term of this Agreement and for any post-termination period the Agreement remains in effect in whole or in part, liability insurance for the Licensed Products, with the Licensee and the Licensor being named as co-beneficiaries or insureds, in a form and amount satisfactory to the Licensor such amount not to be less than, per incident or occurrence, unless the Licensor otherwise specifically agrees in writing to a lesser amount. The Licensee shall forthwith upon the request of the Licensor provide the Licensor with evidence satisfactory to the Licensor that the Insurance is then in existence. The insurance policy shall contain a provision that it shall not, without thirty (30) days prior written notice to the Licensor, be varied or cancelled. In the event that the insurance is cancelled, suspended, terminated or expires, then the rights granted under this Agreement may be terminated in the sole discretion of the Licensor. UNDERTAKING FROM INSURERS Notwithstanding the Licensee s obligation under this section, the Licensee further covenants and agrees to obtain an undertaking from its insurers to the effect that the insurance shall not be permitted to lapse by reason of the failure to pay premiums without the Licensor having been first given a minimum of thirty (30) days written notice of such failure to pay. The Licensor reserves the right to pay such premiums in full and, in the event of so doing, shall forthwith be reimbursed by the Licensee and interest shall accrue on these premium amounts in accordance with s. 5(g) of this Agreement if the Licensee fails to reimburse the Licensor for these amounts within forty-eight (48) hours of Notice to the Licensee of the Licensor s payment under this section. 7. INDEMNIFICATION THREAT OF LEGAL ACTION BY THIRD PARTY In the event of a threat by a third party of legal action relating to the use of the Licensed Marks by the Licensee, the Licensee shall immediately notify the Licensor of the threat whether it be in writing or oral. The Licensee shall not respond to the threat of legal action by a third party except as set out above or as requested by the Licensor in writing. 11

12 The Licensor shall have the sole right to deal with any such threat. The Licensor may defend such threat or settle the threat in any way it deems, in is sole discretion, appropriate. The Licensee agrees to assist the Licensor in the settlement or defence of the third party threat. CUSTOMER COMPLAINTS The Licensee shall promptly inform the Licensor of any and all claims and complaints arising from the dissatisfaction of any customer with the quality of the Licensed Products rendered by the Licensee. Unless the Licensor chooses to address such claims and complaints directly, the Licensee shall be solely responsible for and shall promptly respond to and handle any and all such claims and complaints. INDEMNIFICATION FOR LEGAL ACTION The Licensee shall, at no cost and expense to the Licensor, indemnify and hold the Licensor harmless against any loss, damage or expense whatsoever (including, without limitation, loss of anticipated profits, special, incidental or consequential damages, legal fees or attorney s fees and expenses of investigation) resuting from any claims, suits, proceedings and allegations arising out of or relating to: (i) (ii) (iii) (iv) (v) (vi) infringement of any copyright, trademark, trade-name, patent or any other intellectual property right; libel; invasion of the right of privacy or publicity; infringement of other property rights; defects or failure to perform, alleged or otherwise, in or relating to the Licensed Products; infringement or breach of any other personal or property right of any person by the Licensee, its officers, employees, agents or anyone directly or indirectly acting by, through, on behalf of or pursuant to contractual or any other relationship with the Licensee in connection with the provision or advertising of the Licensed Products, in relation thereto or otherwise in connection with this Agreement. The aforesaid indemnification applies whether or not such loss, damage or expense is reasonably contemplated by the parties, naturally arises or is usual, exceptional, probable or remote. This indemnity is in addition to and shall not affect any other indemnity contained in this Agreement. The Licensor shall have the right to defend any action or proceeding relating to the aforesaid with attorneys of its own selection. 12

13 The Licensee shall not settle, compromise or attempt to settle any legal action or proceeding involving the Licensed Marks or other intellectual property right of the Licensor without the Licensor s prior written consent. (d) INDEMNIFICATION FOR FAILURE TO PERFORM The Licensee shall indemnify and hold the Licensor harmless against any loss, damage or expense whatsoever (including, without limitation, loss of anticipated profits, special incidental or consequential damages, legal fees on a solicitor and client basis and expenses of investigation with respect to any claim, action or proceeding against the Licensor) arising from or incidental to any failure on the Licensee s part to perform and discharge its obligations and liabilities under this Agreement or any misrepresentation of the Licensee under this Agreement or any act by the Licensee not expressly authorized by this Agreement, whether or not such loss, damage or expense is reasonably contemplated by the parties, naturally arises from such failure or is usual, exceptional, probable or remote. This indemnity is in addition to and shall not affect any other indemnity contained in this Agreement. 8. THIRD-PARTY INFRINGEMENTS ADVISE LICENSOR OF INFRINGEMENT The Licensee shall immediately notify the Licensor if it receives knowledge of any person other than the Licensee manufacturing, selling, providing, advertising or intending to manufacture, sell, provide or advertise products or services identical or confusingly similar in the minds of the public with the Licensed Products in association with any of the Marks, Licensed Marks or any part thereof or any names, symbols, emblems, designs or colours which would be confusingly similar in the minds of the public to any of the Marks, Licensed Marks or any part thereof. Furthermore, the Licensee shall immediately notify the Licensor if the Licensee becomes aware of the breach of any other intellectual property right of the Licensor by a third party. LEGAL ACTION FOR INFRINGEMENT Should a third party infringe upon any of the Marks, the Licensed Marks, or any part thereof, the Licensor shall have the right to commence, prosecute, defend, settle or otherwise dispose of legal proceedings arising out of any such infringement, and the Licensee shall cooperate and assist in the commencing, prosecuting, defending, settling or other disposition of any such legal proceeding. If requested by the Licensor, the Licensee shall join in or cooperate in the commencing, prosecuting, defending, settling or other disposition of such legal proceeding as may be instituted by the Licensor. All such commencement, prosecution, defence, settlement or other disposition, sole or joint, of any such action by the Licensor with or without the Licensee as a party shall be at the Licensor s expense, including reasonable legal fees incurred by the Licensee. SETTLEMENT THAT AFFECTS THE RIGHTS OF THE LICENSEE UNDER THIS AGREEMENT 13

14 If the settlement with a third party referred to in s. 8 above involves terminating this Agreement and the license granted to the Licensee hereunder, the Licensor shall not finalize the settlement until the terms of such settlement have been approved by the Licensee. (d) PROCEEDS OF LITIGATION The proceeds, if any, of any such legal proceedings, in the form of damages, profits or other recovery, shall belong to the Licensor. (e) LEGAL ACTION BY LICENSEE Unless requested by the Licensor, the Licensee shall not commence, prosecute, defend, settle or dispose of any legal proceedings involving any infringement of any of the Licensed Marks or any part thereof or any other intellectual property right of the Licensor. 9. CONFIDENTIALITY AND NON-DISCLOSURE The Licensee acknowledges that during the term of and in connection with this Agreement, the Licensee may obtain, be granted access to, or contribute to the development of valuable proprietary, trade secret and confidential information of the Licensor or of any other party whose information the Licensor has an obligation to maintain in confidence ("Confidential Information"). This Confidential Information includes, but is not limited to, financial, sales and marketing information, product formulae, written or oral contracts, research and development plans or projects (whether pursued or not), budgets, unpublished financial statements, pricing, pricing strategies, cost data, information regarding the skills and compensation of employees, market data, business opportunities, trade secrets, know-how, business methods, business policies, business plans and strategies, memoranda, reports, records, source and object code of software, computer retained information, notes, company policies, names and contact information of customers, potential customers, suppliers, officers and employees, and all other company information not disclosed to the public in the normal course of business. The Licensee acknowledges that Confidential Information is a valuable and unique asset of the Licensor and agrees to hold Confidential Information in strictest of confidence and not to divulge or make Confidential Information available in any form to any third party or to use Confidential Information for any purpose other than in performing the Licensee's obligations under this Agreement for the benefit of the Licensor. the Licensee shall protect Confidential Information against disclosure, misuse, espionage, loss or theft. Confidential Information shall remain the sole and exclusive property of the Licensor. (d) The Licensee acknowledges and recognizes that in the event of any breach or threatened breach of the provisions of this Section 9, the Licensor would suffer irreparable harm and that the Licensor, therefore, may seek an injunction or other relief to halt or prevent such disclosure. 14

15 (e) (f) The Licensee agrees that documents, copies, records and other property or materials made or received by the Licensee that pertain to the business and affairs of the Licensor or its affiliates, including all Confidential Information which is in the Licensee's possession or under the Licensee's control are the property of the Licensor and that the Licensee will return same and any copies of same to the Licensor immediately upon termination of this Agreement or at any time upon the request of the Licensor. Notwithstanding termination or expiration of this Agreement for any reason whatsoever, the Licensee's obligations under this Section 9 shall survive such termination or expiration and continue in effect for as long as the Licensor treats the Confidential Information as confidential or for the entire duration of this Agreement plus 2 (Two) years following its termination or expiration, whichever period ends last. 10. TERM, RENEWALS AND TERMINATION EXPIRY This Agreement, subject to s. 5, shall commence on the Effective Date and shall be in effect for the term of, unless: (i) renewed pursuant to s. 10 of this Agreement; or (ii) terminated early pursuant to s. 10 of this Agreement. RENEWALS The term of this Agreement will automatically renew, each time for a new term of, for an unlimited number of times, provided that all of the conditions below are met: (i) the Licensee gives the Licensor not less than and not more than notice of its intention to renew prior to the end of the initial term or any renewal terms; (ii) the Licensor does not notify the Licensee of its refusal to renew this Agreement for an additional term; (iii) the Licensee is not in breach of this Agreement; and (iv) the Licensee is prepared to execute and abide by the then current form of the Trademark License Agreement of the Licensor, which agreement may have more restrictive conditions of use of the Licensed Marks or have a higher rate of the monthly payments from the one that is agreed in this Agreement. If any of the conditions listed in ss. 10(i), 10(iii), or 10(iv) are not fulfilled in a timely fashion, such failure shall be deemed an election by the Licensee not to renew this Agreement. 15

16 TERMINATION At the sole option of the Licensor this Agreement may terminate: (i) on the date immediately prior to the date on which: (A) (B) the bankruptcy, insolvency, receivership or winding-up of the Licensee occurs; a custodian liquidator, sequestrator, receiver and manager or any other person with similar powers is appointed for the Licensee or of its property or any substantial part thereof; (ii) upon the dissolution of the Licensee; (iii) upon the disposition, by conveyance, transfer, lease, assignment or otherwise of all, or substantially all, of the assets of the Licensee; (iv) upon a change of control in fact in any manner whatsoever of the Licensee, as a result of which those persons who presently control in fact the Licensee cease to do so, in any manner whatsoever; (v) on the day prior to the date on which the seizure or attachment of the property, assets or undertaking of the Licensee, as a result of any action taken against it by any other person; (vi) upon the breach of any condition, covenant, provision, warranty, representation or other term herein contained by the Licensee, including, without limitation, the timely payment of any monies due hereunder; (vii) upon failure by the Licensee to make, offer, advertise, sell, or otherwise distribute the Licensed Products pursuant to this Agreement for any period after which it is not unreasonable under the facts and circumstances for the Licensor to conclude that the Licensee does not intend to continue to make, offer, advertise, sell, or otherwise distribute the Licensed Products, unless such failure is due to fire, flood, earthquake or other similar causes beyond the Licensee's control and the Licensee immediately commences and diligently continues to restore its ability to make, offer, advertise, sell, or otherwise distribute the Licensed Products; (viii) upon failure by the Licensee to sell enough Licensed Products to generate an aggregate amount of at least in royalties paid to the Licensor under s. 5 of this Agreement for any three consecutive months; (ix) upon failure by the Licensee to pay for more than thirty (30) days under any judgement or order in the amount of more than One Thousand Dollars ($1,000) which came into and remains in force; 16

17 (x) upon failure by the Licensee to satisfy any debt to the Licensor or any third party, including the Licensee's suppliers, for an amount in excess of One Thousand Dollars ($1,000) for more than thirty (30) days after repayment of such debt became due; (xi) upon failure by the Licensee to make the Licensed Products pursuant to the quality standards of the Licensor, as set out in s. 3 of this Agreement; (xii) upon the breach by the Licensee of any other provision of this Agreement which results in the termination of the rights granted hereunder or of this Agreement. Unless otherwise stated, the termination of this Agreement pursuant to the subparagraphs above will not require prior notice to the Licensee. (d) IRREPARABLE HARM The Licensee acknowledges that any failure by it to cease to use the Licensed Marks or any part thereof immediately upon the termination or expiry of the rights granted hereunder, shall result in immediate, irreparable and irremediable damage to the Licensor. The Licensee agrees that in the event of such failure and in addition to any other remedies it may have hereunder, the Licensor shall be entitled to relief in the way of temporary, interlocutory and permanent injunctions and such other further relief as any Court with jurisdiction may deem just and proper. (e) EFFECT OF TERMINATION Upon the termination of the rights granted hereunder: (i) the Licensee shall forthwith cease from and discontinue making the Licensed Products; (ii) the Licensee shall forthwith provide the Licensor with a written account of all Licensed Products and Advertising Materials bearing or associated with the Marks, Licensed Marks or any part thereof in the possession or control of the Licensee, as the case may be, at the date of termination. The Licensor or its agent shall have the right at any time and without prior notice to the Licensee, to conduct a physical inventory of the Licensee in order to verify such account and in this regard the Licensee shall provide access to all places under its control to the Licensor. The Licensee will have 90 days to sell off the remaining inventory of Licensed Products in its possession (subject to the payment of royalties as per s. 5 of this Agreement), after which the Licensee shall: (A) (B) modify all remaining Licensed Products and Advertising Materials in its possession to remove all indication of or association with the Licensed Marks or any part thereof; sell all remaining Licensed Products and Advertising Materials in its possession to the Licensor at a price to be agreed upon by the 17

18 Licensee and the Licensor, it being understood that the Licensor is in no way obliged to purchase the Licensed Products or the Advertising Materials; or (C) deliver, at the Licensee s expense, all remaining Licensed Products and Advertising Materials in its possession to the Licensor for destruction and without any compensation whatsoever to the Licensee. Having complied with the requirements above, the Licensor shall certify in writing that no other Licensed Products or Advertising Materials bearing or associated with the Marks, Licensed Marks or any part thereof remain in the possession or control of the Licensee; (iii) Subject to the 90-day grace period referred to in s. 10(e)(ii) of this Agreement, the Licensee shall forthwith cease from and discontinue any use of all Licensed Marks, the Marks, Advertising Materials and other material that would make it appear to the public that the Licensee is still in any way associated with the Licensor or has the rights granted hereunder; (iv) the Licensee shall within two (2) business days return all documentation or copies thereof, in any form whatsoever of any materials of any kind, provided to the Licensee by the Licensor during the term of the Agreement; (v) the Licensee agrees to permit the Licensor and its respective auditors, accountants or agents, to inspect all of the records and books of the Licensee and to investigate generally all transactions of business carried on by the Licensee pursuant to the rights granted hereunder; (vi) all amounts representing royalties or other monies to which the Licensor is entitled pursuant to the provisions of this Agreement shall become immediately due and payable to Licensor. (f) TERMINATION WITHOUT PREJUDICE The expiration or termination of this Agreement shall be without prejudice to the rights of the Licensor against the Licensee and such expiration or termination shall not relieve the Licensee of any of its obligations to the Licensor existing at the time of expiration or termination or terminate those obligations of the Licensee which, by their nature, survive the expiration or termination of this Agreement. It is expressly understood and agreed that the promises and agreements of the Licensee contained in this Agreement, are also for the benefit of the Licensor's subsidiaries, affiliates and designees, and any of them may, in their own names, exercise all rights and remedies necessary or desirable to protect or enforce their respective interest, including, without limitation, obtaining injunctive relief to enforce the obligations of Licensee set forth in this Agreement. (g) SALES BY RECEIVOR, ETC. 18

19 In the event that the rights granted hereunder terminate due to circumstances as set forth in ss. 10(i), 10(ii), 10(iii), 10(iv) or 10(v) of this Agreement, the Licensee, its receivers, representatives, trustees, agents, administrators, successors, and assigns shall have no right to sell, exploit or in any way deal with any of the products or services identical or similar to the Licensed Products or the Advertising Materials under or in association with the Marks, the Licensed Marks or any part thereof, except with and at all times subject to such prior written consent and prior instructions of the Licensor. (h) RIGHT TO ADVISE THIRD PARTIES The Licensee further agrees that the Licensor has the right to notify any persons it deems necessary or appropriate as to the termination or expiry of the rights granted hereunder. 11. REMEDIES OF LICENSOR Without restricting any of the other rights or remedies of the Licensor hereunder, upon termination or expiry of the rights granted hereunder and regardless of the reason, all rights whatsoever granted or accruing to the Licensee pursuant to this Agreement shall automatically revert to the Licensor. In the event the Licensor shall be required by reason of any default hereunder by the Licensee to resort to litigation or other action to enforce any of its rights under this Agreement, then the Licensee shall pay all costs and expenses, including legal and attorney fees, incurred by the Licensor in or in connection with such litigation, or other action. Any remedies of the Licensor provided for in this Agreement shall be cumulative to and not exclusive of any other remedies available to the Licensor under this Agreement or by law. 12. NO JOINT VENTURE, PARTNERSHIP, FRANCHISE OR AGENCY RELATIONSHIP LICENSEE NOT AGENT This Agreement shall not be construed as appointing the Licensee as the Licensor s agent or an associate of the Licensor, nor as giving to the Licensee an interest in the business or property of the Licensor, or vice versa nor as giving to the Licensee the right to act as the representative of the Licensor. LICENSEE NOT FRANCHISEE This Agreement shall not be construed as appointing the Licensee as the Licensor s franchisee. The Licensee enters into this Agreement based on perceived strengths of the Licensed Marks, and not based on financial metrics of the Licensor or its other licensees. NO PARTNERSHIP OR JOINT VENTURE 19

20 Nothing contained in this Agreement shall be construed to place the parties in a relationship of partners or joint venturers, and the Licensee shall have no power to obligate or bind the Licensor in any manner whatsoever unless the Licensor agrees in writing to be bound. 13. NOTICES Any notice, consent or demand which may or is required to be given pursuant to this Agreement shall be in writing and shall be sufficiently given or made if served personally or mailed by registered mail to the following address: TO LICENSOR: Authorized representative: TO LICENSEE: Authorized representative: Fax: Fax: (d) (e) In case of personal service, the date of receipt of such notice or demand shall be deemed to be the date of delivery of such notice to respectively Licensor's authorized representative named above or Licensee's authorized representative named above. In case of service by registered mail, the date of receipt of such notice or demand shall be deemed to be 3 business days following the date of the mailing. For convenience and expediency, both Parties will also send a copy of each notice by fax or . However, such correspondence shall not be deemed sufficient unless specifically recognized as such by the other Party or ostensibly acted upon by the other Party. Both Parties may from time to time change their notification address or the authorized representative by giving notice in the manner provided in this section. 14. WAIVER Any waiver of any breach or default under this Agreement shall only be effective if in writing signed by the Party against whom the waiver is sought to be enforced, and no 20

21 waiver shall be implied by any other act or conduct or by any indulgence, delay or omission. Any waiver shall only apply to the specific matter waived and only in the specific instance in which it is waived. 15. ATTORNMENT GOVERNING LAW This Agreement, unless otherwise specified herein, and any other documents and instruments delivered pursuant hereto shall be governed by and construed in accordance with the laws of, excluding their respective conflict or choice of law provisions. JURISDICTION The Parties agree that depending on the subject-matter jurisdiction, the courts of shall, subject to ss. 15 and 15(d) of this Agreement, have exclusive jurisdiction to hear any suit, action or proceeding arising out of or in connection with this Agreement (including its validity, construction, subject-matter, or performance). The Parties consent, submit and attorn to the exclusive jurisdiction of any such court in any such suit, action or proceeding. The Parties hereby waive, and agree not to assert, by way of motion, as a defence, or otherwise, in any such suit, action or proceeding to the extent permitted by the applicable law, that the suit, action or proceeding is brought in an inconvenient forum, that the venue of the suit, action or proceeding is improper, or that this Agreement or any of the transactions contemplated hereby may not be enforced in or by such courts. JURISDICTION - INTELLECTUAL PROPERTY MATTERS Notwithstanding the provisions of s. 15 above, the Licensor may, but is not required to, bring an action arising from or relating to the ownership or use of any intellectual property created, licensed, transferred, or used pursuant to this Agreement in the courts of the Territory, and the Licensee hereby consents, submits and attorns to the jurisdiction of such courts to hear such matters. (d) INJUNCTIONS Notwithstanding the provisions of s. 15 above, the Licensor may at all times apply to the courts of the Territory for an injunction against the Licensee for breach or threatened breach of any of the Licensee's covenants, undertakings, obligations or guarantees under this Agreement or to prevent unauthorized use of the Marks, Licensed Marks, trade secrets or any other intellectual property of the Licensor. The Licensee hereby consents, submits and attorns to the jurisdiction of such courts to hear such matters. 21