Sub-Licence. 5.1 Without prejudice to the Licensor’s rights under Clause 4.3, the Licensee shall enter into a Sub- licence of the relevant scope of its Licensed Rights for the relevant Permitted Purpose with the relevant Subsidiary, as permitted by the Licensor from time to time, and provide a copy of such Sub-licence to the Licensor within fourteen (14) days of the relevant written consent granted by the Licensor; or where such Subsidiary is to be newly incorporated, within fourteen (14) days from its date of incorporation. 5.2 All Sub-licences granted pursuant to Clause 4.2 and Clause 4.3 shall be in writing and granted on terms and conditions substantially the same as those of this Agreement, provided that: 5.2.1 the Licensee must not, and undertakes that it shall not, impose any provisions in any Sub-licenses that are inconsistent or conflict with, or that otherwise operate to negate, dilute, prevail over or otherwise inconsistent with any of the Licensor’s rights hereunder or any of the provisions of this Agreement; 5.2.2 Sub-licensees shall not have the right to sub-license their respective rights; 5.2.3 In respect of the Sub-licensee(s) carrying on international freight forwarding and/or cross border land transportation businesses, the rights to be granted to each Sub-licensee regarding the use of the relevant Permitted Names and/or the relevant Trade Mark in the relevant Territory (as specified in the Fourth Schedule) shall cover the Sub-licensee’s use of the relevant Permitted Names and/or Trade Mark in relation to its transportation and delivery of goods and parcels from the Sub-licensee’s relevant licensed Territory up to the first port of arrival (but not inland or on land) in the relevant destination countries or territories concerned (unless the particular destination country or territory concerned also falls within the scope of the Sub-licensee’s relevant licensed Territory of the relevant Trade Mark). Save as aforesaid, each such Sub-licensee shall have no further right to use the Permitted Names and/or Trade Mark in any or all of those destinations or other countries or territories outside the Sub-licensee’s relevant licensed Territory; 5.2.4 the Licensee shall procure and ensure that its Sub-licensees, and its Subsidiaries and all third-party shareholders, franchisees or joint-venture partners of the relevant Sub- licensees, undertake not to use, apply for or register in any country or territory any company name, trade name, social media handle, internet domain name of any level, trade or service mark, logo and/or sign for any goods and/or services, visually, conceptually or phonetically identical, or (for which the Licensor at its sole and absolute discretion considers as) similar to, or containing, the Trade Mark and/or the Name (in any languages or dialects, or any translations or transliterations thereof, and whether standalone or together with other elements) during or after the term of the relevant Sub- licence. Without prejudice to any other rights or remedies that the Licensor may have against the Licensee under this Agreement or under any applicable laws, the Licensor shall have the right, at its sole and absolute discretion, to demand the Licensee, at the Licensee’s own expense, to procure and ensure that the relevant Sub-licensees (and/or any of its Subsidiaries and/or the aforesaid third parties of the relevant Sub-licensees) fully and irrevocably assign to the Licensor any and all rights, title and interests in and to any or all such applications made and/or registrations obtained by those Sub-licensees (and/or any of its Subsidiaries and/or the aforesaid third parties of the relevant Sub- licensees) in breach of the above undertaking; 5.2.5 all Sub-licences shall contain an express acknowledgement from the Sub-licensee of the Licensor’s title to the Trade Mark; 5.2.6 the Licensee shall procure and ensure that Sub-licensees comply with the restrictions on the Licensee’s permitted and prohibited use of the Trade Marks and/or Use of Permitted Names, and the undertakings, covenants and obligations stipulated herein, and to provide the representations and warranties given by the Licensee herein as if such Sub- licensees were a party to this Agreement; 5.2.7 all Sub-licences shall terminate automatically and forthwith in the event this Agreement expires or is terminated for any reason whatsoever; 5.2.8 in the event a Sub-licensee ceases to be a Subsidiary of the Licensee or in the event that the Licensee’s equity interest in a Sub-licensee which is not a Subsidiary drops below the level prevailing at the time of the grant of Sub-licence, the relevant Sub-licence shall terminate forthwith; 5.2.9 the Licensee shall have the right to terminate any Sub-licence at any time for whatever reason by giving written notice of not less than 30 days; and 5.2.10 the Licensor shall have the right to enforce the terms of the Sub-licence subject to and in accordance with the Contracts (Rights of Third Parties) Ordinance (Chapter 623 of the Laws of Hong Kong) or any other applicable laws on third party rights in contracts in any applicable jurisdictions (as the case may be). To the extent permitted by applicable law, the Licensee must include the relevant express provisions into each and all of its Sub- licences to fully confer and maintain such third party rights to and in favour of the Licensor, and shall ensure that there are no express provisions in any such Sub-licences which in any way are contrary to, or otherwise negate, restrict or limit, the Licensor’s rights thereunder. Nothing in this Clause 5.2.9 will operate to, or be deemed or construed as to, relieve (whether in whole or in part) the Licensee of any obligations and/or liabilities under this Agreement, and will be without prejudice to any rights and remedies that the Licensor may have against the Licensee under this Agreement. 5.3 The Licensee hereby unconditionally and irrevocably guarantees to the Licensor the compliance and performance by each of the Sub-licensees of all of their obligations and liabilities under the respective Sub-licences, including without limitation, upon the expiry, termination or revocation of the relevant Sub-licence, the relevant Sub-licensee to promptly and fully comply with all post- termination provision consistent with and analogous to those in Clause 15 hereof to give effect to such cessation of all rights granted to such Sub-licensee. Any breach by any of the Sub- licensees of the Sub-licences shall be deemed a breach of this Agreement by the Licensee. The Licensee shall be liable for all acts and omissions of any Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.4) and shall fully indemnify and hold the Licensor harmless from and against all costs, expenses, claims, loss or damage of any kind, nature or character whatsoever and howsoever incurred or suffered or sustained by the Licensor, or for which the Licensor may become or otherwise held liable, (whether direct, indirect, consequential or otherwise, and including but not limited to any economic loss or other loss of profits, business or goodwill) directly or indirectly arising out of any act or omission of any Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.4), including but not limited to any general or public liability claim relating to the services supplied by the Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.4). 5.4 The Licensee undertakes and agrees: 5.4.1 to procure and ensure all the Sub-licensees to perform and comply with the covenants in this Agreement as if they were a licensee hereunder; 5.4.2 to promptly inform the Licensor in the event a Sub-licensee ceases to be a Subsidiary of the Licensee, or in the event that the Licensee’s equity interest in a Sub-licensee which is not a Subsidiary drops below the level prevailing at the time of the grant of Sub-licence; 5.4.3 to promptly inform the Licensor if any of the Sub-licensees ceases to provide Services under the Trade Mark and/or Permitted Names; 5.4.4 to promptly inform the Licensor if it becomes aware of any event which may become or constitutes a termination event under this Agreement; 5.4.5 to give the Licensor prior written notice, where practicable, under any of the following circumstances regarding the shareholding or control in the Licensee and/or any of the Sub-licensees: (a) any change of shareholding in the Licensee and/or any of the Sub-licensees of 5% or more; (b) any change in shareholding in the Licensee and/or any of the Sub-licensees which involves a new third party shareholder acquiring a stake which would result in them being a shareholder of 10% of the company concerned; (c) any change in the way in which any Sub-licensee is accounted for in the audited consolidated accounts of the Licensee prepared in accordance with HK GAAP, regardless of whether this change in treatment results from a change in shareholding or other elements of actual, board or de facto control; (d) any change in control in any of the Sub-licensees (including change in board seats or amendments to joint venture arrangements) which would result in the nature of the control exerted by the Licensee over the Sub-licensee changing; and/or (e) any change in shareholding in the Licensee and/or any of the Sub-licensees which would give rise to a reporting requirement under the relevant laws and regulations of The Stock Exchange of Hong Kong Limited and the Securities and Futures Commission of Hong Kong. In any event, such shareholding change notification shall be given to the Licensor no later than fourteen (14) days after the Licensee becomes aware of the change; and 5.4.6 to provide information regarding ownership, shareholding and management control or any such other information relating to the Licensee and/or the Sub-licensees (or any or all of them) which the Licensor may reasonably request from time to time.
Appears in 1 contract
Sources: Licensing Agreement
Sub-Licence. 5.1 Without prejudice to the Licensor’s rights under Clause 4.34.5, the Licensee shall enter into a Sub- licence of the relevant scope of its Licensed Rights for the relevant Permitted Purpose with the relevant Subsidiary, as permitted by the Licensor from time to time, and provide a copy of such Sub-licence to the Licensor within fourteen (14) days of the relevant written consent granted by the Licensor; , or where such Subsidiary is to be newly incorporated, within fourteen (14) days from its date of incorporation.
5.2 All Sub-licences granted pursuant to Clause 4.2 4.4 and Clause 4.3 4.5 shall be in writing and granted on terms and conditions substantially the same as those of this Agreement, provided that:
5.2.1 the Licensee must not, and undertakes that it shall not, impose any provisions in any Sub-licenses licences that are inconsistent or conflict with, or that otherwise operate to negate, dilute, prevail over or otherwise inconsistent with any of the Licensor’s rights hereunder or any of the provisions of this Agreement;
5.2.2 Sub-licensees shall not have the right to sub-license their respective rights;
5.2.3 In respect of the Sub-licensee(s) carrying on international freight forwarding and/or cross border land transportation businesses, the rights to be granted to each Sub-licensee regarding the use of the relevant Permitted Names and/or the relevant Trade Mark in the relevant Territory (as specified in the Fourth Schedule) shall cover the Sub-licensee’s use of the relevant Permitted Names and/or Trade Mark in relation to its transportation and delivery of goods and parcels from the Sub-licensee’s relevant licensed Territory up to the first port of arrival (but not inland or on land) in the relevant destination countries or territories concerned (unless the particular destination country or territory concerned also falls within the scope of the Sub-licensee’s relevant licensed Territory of the relevant Trade Mark). Save as aforesaid, each such Sub-licensee shall have no further right to use the Permitted Names and/or Trade Mark in any or all of those destinations or other countries or territories outside the Sub-licensee’s relevant licensed Territory;
5.2.4 the Licensee shall procure and ensure that its Sub-licensees, and its Subsidiaries and all third-party shareholders, franchisees or joint-venture partners of the relevant Sub- licensees, undertake not to use, apply for or register in any country or territory any company name, trade name, social media handle, internet domain name of any level, trade or service mark▇▇▇▇, logo and/or sign for any goods and/or services, visually, conceptually or phonetically identical, or (for which the Licensor at its sole and absolute discretion considers as) similar to, or containing, the Trade Mark ▇▇▇▇ and/or the Name (in any languages or dialects, or any translations or transliterations thereof, and whether standalone or together with other elements) during or after the term of the relevant Sub- licence. Without prejudice to any other rights or remedies that the Licensor may have against the Licensee under this Agreement or under any applicable laws, the Licensor shall have the right, at its sole and absolute discretion, to demand the Licensee, at the Licensee’s own expense, to procure and ensure that the relevant Sub-licensees (and/or any of its Subsidiaries and/or the aforesaid third parties of the relevant Sub-licensees) fully and irrevocably assign to the Licensor any and all rights, title and interests in and to any or all such applications made and/or registrations obtained by those Sub-licensees (and/or any of its Subsidiaries and/or the aforesaid third parties of the relevant Sub- licensees) in breach of the above undertaking;
5.2.5 5.2.4 all Sub-licences shall contain an express acknowledgement from the Sub-licensee of the Licensor’s title to the Trade Mark▇▇▇▇;
5.2.6 5.2.5 the Licensee shall procure and ensure that Sub-licensees comply with the restrictions on the Licensee’s permitted and prohibited use of the Trade Marks ▇▇▇▇ and/or Use of Permitted Names, and the undertakings, covenants and obligations stipulated herein, and to provide the representations and warranties given by the Licensee herein as if such Sub- licensees were a party to this Agreement;
5.2.7 5.2.6 all Sub-licences shall terminate automatically and forthwith in the event this Agreement expires or is terminated for any reason whatsoever;
5.2.8 5.2.7 in the event a Sub-licensee ceases to be a Subsidiary of the Licensee or in the event that the Licensee’s equity interest in a Sub-licensee which is not a Subsidiary drops below the level prevailing at the time of the grant of Sub-licence, the relevant Sub-Sub- licence shall terminate forthwith;
5.2.9 5.2.8 the Licensee shall have the right to terminate any Sub-licence at any time for whatever reason by giving written notice of not less than 30 days; and
5.2.10 5.2.9 the Licensor shall have the right to enforce the terms of the Sub-licence subject to and in accordance with the Contracts (Rights of Third Parties) Ordinance (Chapter 623 of the Laws of Hong Kong) or any other applicable laws on third party rights in contracts in any applicable jurisdictions (as the case may be). To the extent permitted by applicable law, the Licensee must include the relevant express provisions into each and all of its Sub- licences to fully confer and maintain such third party rights to and in favour of the Licensor, and shall ensure that there are no express provisions in any such Sub-licences which in any way are contrary to, or otherwise negate, restrict or limit, the Licensor’s rights thereunder. Nothing in this Clause 5.2.9 will operate to, or be deemed or construed as to, relieve (whether in whole or in part) the Licensee of any obligations and/or liabilities under this Agreement, and will be without prejudice to any rights and remedies that the Licensor may have against the Licensee under this Agreement.
5.3 The Licensee hereby unconditionally and irrevocably guarantees to the Licensor the compliance and performance by each of the Sub-licensees of all of their obligations and liabilities under the respective Sub-licences, including without limitation, upon the expiry, termination or revocation of the relevant Sub-licence, the relevant Sub-licensee to promptly and fully comply with all post- termination provision consistent with and analogous to those in Clause 15 hereof to give effect to such cessation of all rights granted to such Sub-licensee. Any breach by any of the Sub- licensees of the Sub-licences shall be deemed a breach of this Agreement by the Licensee. The Licensee shall be liable for all acts and omissions of any Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.45.2.3) and shall fully indemnify and hold the Licensor harmless from and against all costs, expenses, claims, loss or damage of any kind, nature or character whatsoever and howsoever incurred or suffered or sustained by the Licensor, or for which the Licensor may become or otherwise held liable, (whether direct, indirect, consequential or otherwise, and including but not limited to any economic loss or other loss of profits, business or goodwill) directly or indirectly arising out of any act or omission of any Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.45.2.3), including but not limited to any general or public liability claim relating to the services supplied by the Sub-licensee (and/or any of its Subsidiaries and/or such third parties who have provided the undertaking under Clause 5.2.45.2.3).
5.4 The Licensee undertakes and agrees:
5.4.1 to procure and ensure all the Sub-licensees to perform and comply with the covenants in this Agreement as if they were a licensee hereunder;
5.4.2 to promptly inform the Licensor in the event a Sub-licensee ceases to be a Subsidiary of the Licensee, or in the event that the Licensee’s equity interest in a Sub-licensee which is not a Subsidiary drops below the level prevailing at the time of the grant of Sub-licence;
5.4.3 to promptly inform the Licensor if any of the Sub-licensees ceases to provide Services under the Trade Mark ▇▇▇▇ and/or Permitted Names;
5.4.4 to promptly inform the Licensor if it becomes aware of any event which may become or constitutes a termination event under this Agreement;
5.4.5 to give the Licensor prior written notice, where practicable, under any of the following circumstances regarding the shareholding or control in the Licensee and/or any of the Sub-licensees:
(a) any change of shareholding in the Licensee and/or any of the Sub-licensees of 5% or more;
(b) any change in shareholding in the Licensee and/or any of the Sub-licensees which involves a new third party shareholder acquiring a stake which would result in them being a shareholder of 10% of the company concerned;
(c) any change in the way in which any Sub-licensee is accounted for in the audited consolidated accounts of the Licensee prepared in accordance with HK Thai GAAP, regardless of whether this change in treatment results from a change in shareholding or other elements of actual, board or de facto control;
(d) any change in control in any of the Sub-licensees (including change in board seats or amendments to joint venture arrangements) which would result in the nature of the control exerted by the Licensee over the Sub-licensee changing; and/or
(e) any change in shareholding in the Licensee and/or any of the Sub-licensees which would give rise to a reporting requirement under the relevant laws and regulations of The Stock Exchange of Hong Kong Limited Thailand, and the Securities such relevant Thai regulatory and Futures Commission of Hong Konggovernmental bodies. In any event, such shareholding change notification shall be given to the Licensor no later than fourteen (14) days after the Licensee becomes aware of the change; and
5.4.6 to provide information regarding ownership, shareholding and management control or any such other information relating to the Licensee and/or the Sub-licensees (or any or all of them) which the Licensor may reasonably request from time to time.
Appears in 1 contract
Sources: Licensing Agreement