Common use of Trademark Clause in Contracts

Trademark. (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject to the prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 2 contracts

Sources: Commercialization Agreement (uniQure B.V.), Commercialization Agreement (uniQure B.V.)

Trademark. (ia) The Product will be Commercialized by Chiesi Lexicon filed an application for registration of the name “Xermelo” with the Office for Harmonization in the Field Internal Market and such registration was approved by the EMA on 25 April 2014. (b) Lexicon shall be responsible for securing and for maintaining at ▇▇▇▇▇’▇ expense the Licensed Trademark in the Licensed Territory exclusively under the trademark “Glybera” (as defined and shall use Diligent Efforts in Schedule 2.2(a)) or, subject to the prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”)that regard. In the event that Chiesi provides sufficient written evidence Lexicon is unable to uniQure that obtain or maintain the use Licensed Trademark in some country(ies) in the Licensed Territory, the Parties shall negotiate in good faith concerning the selection of an alternative trademark is required under Applicable Laws to lawfully Commercialize such other trademarks (i.e., back-up names) as may be available for marketing the Licensed Product in those countries. (c) All rights granted hereunder to Ipsen with respect to the Licensed Trademark shall be exercised, and all Licensed Products bearing the Licensed Trademark shall be manufactured, in accordance with quality standards established by the JCC, which quality standards shall be approved by Lexicon for consistency with the quality standards applied by Lexicon to its own products and the Parties shall reasonably cooperate to enable Lexicon to monitor ▇▇▇▇▇’▇ compliance with such quality standards. (d) Confusion with LX1033. To avoid any country confusion or jurisdiction of association with its other small molecule inhibitor TPH LX1033, if Lexicon continues to directly or indirectly, or through any Third Party, develop, commercialize, distribute or otherwise exploit LX1033, Lexicon agrees that: (i) it will not seek Marketing Authorization for LX1033 in the Licensed Territory and if Chiesi identifies any trademark under: (A) the Licensed Trademark, or (B) a tradename that is identical, similar to or is confusingly similar to the Licensed Trademark. (ii) Following the Effective Date, Lexicon will use reasonable efforts to have the EMA approve the invented name “Xermelo” to apply to the Licensed Product designated under the INN “telotristat etiprate”. (iii) Lexicon agrees to request an INN for LX1033 other than “Glyberatelotristatwith the World Health Organization (“WHO”) and a new United States Adopted Name (“USAN”) for this purposeLX1033 with the United States Adopted Name Council (“USAN Council”). (e) The Parties shall cooperate with each other and use Diligent Efforts to protect the Licensed Trademark from infringement by Third Parties in the Licensed Territory. Without limiting the foregoing, each Party shall promptly notify the other Party of any known, threatened or suspected infringement, imitation or unauthorized use of or unfair competition relating to the Licensed Trademark in the Licensed Territory. Lexicon shall have the first right to determine in its discretion whether to and to what extent to institute, prosecute and/or defend any action or proceedings involving or affecting any rights relating to the Licensed Trademark. Upon Lexicon’s reasonable request, Ipsen shall cooperate with and assist Lexicon in any of Lexicon’s enforcement efforts with respect to the Licensed Trademark. Lexicon shall promptly inform Ipsen if Lexicon elects not to take action against any actual or suspected infringement of the Licensed Trademark in the Licensed Territory, in which case, Ipsen shall then Chiesi shall have the right, but not the obligation, to bring or assume control of any such action against the allegedly infringing Third Party as Ipsen determines may be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event necessary, provided however, that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and Ipsen shall not be entitled enter into any settlement or compromise of any claim relating to Commercialize the Product under an alternative Licensed Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own costLexicon. In the event that at Ipsen brings or assumes control of any time during such term uniQure intends not action, then Lexicon agrees to continue prosecution reasonably assist Ipsen in connection therewith. In either case, the Party that initiated and prosecuted, or maintenance maintained the defense of such Trademark anywhere inside the Territory, it action shall inform Chiesi at least [**] days prior to doing so and shall, upon request bear all of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s the costs and Chiesi expenses (including reasonable attorneys’ fees) incurred in connection with the action and shall reimburse uniQure for be entitled to recoup those amounts in the event of recovery, by settlement or otherwise. The amount of any reasonable external costs incurred recovery remaining as to any such infringement in the Licensed Territory shall be shared equally by uniQure for such transferthe Parties. (ivf) uniQure acknowledges that except as otherwise expressly provided The Parties, including any future licensee of Lexicon in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Lexicon Territory, with to the right extent reasonably feasible shall collaborate to grant sublicenses. uniQure shall nothave a global, during worldwide trademark to be used on the Term or thereafter, register, use, or attempt to obtain any right Licensed Product in the Licensed Territory and to (A) such Trademark and in the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transferLexicon Territory.

Appears in 2 contracts

Sources: License and Collaboration Agreement (Lexicon Pharmaceuticals, Inc.), License and Collaboration Agreement (Lexicon Pharmaceuticals, Inc./De)

Trademark. (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject 3.1 Subject to the prior written consent terms of uniQurethis Agreement, such alternative trademark identified by Chiesi (ZOGENIX hereby grants to DESITIN, its Affiliates and permitted sub-licensees a license to the “Trademark”). In Trademark for no additional consideration. 3.2 DESITIN will use the event that Chiesi provides sufficient written evidence Trademark to uniQure that identify the use Product and in its development and commercialisation of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this purposeTerritory. Therefore, then Chiesi DESITIN shall be entitled to Commercialize use the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization as part of the Product throughout name along with such other words as ZOGENIX and DESITIN shall mutually agree are appropriate for the entire commercialisation of the Product in the Territory. The Trademark shall be owned and registered by ZOGENIX or its nominee and ZOGENIX or its nominee shall ensure that the registration of such Trademark is kept valid within the Territory, unless otherwise agreed upon between the Parties in writing. 3.3 The Trademark shall only be used in connection with sale and marketing of the Product within the Field and other activities pursuant to this Agreement in the Territory. (ii) In case the Product is Commercialized 3.4 DESITIN shall ensure that each use by Chiesi under it, its Affiliates and permitted sub-licensees of the Trademark “Glybera”is accompanied by an acknowledgement that the Trademark is owned by ZOGENIX. DESITIN, uniQure hereby grants to Chiesi the exclusive, royaltyits Affiliates and permitted sub-free, perpetual, irrevocable, right and license licensees shall not (subject to Section 9.3 belowA) to use the Trademark “Glybera” to Commercialize in a way that might materially prejudice its distinctiveness or validity or the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country goodwill of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”ZOGENIX therein, or (B) use any name, logo trademarks or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend trade names so resembling the Trademark “Glybera” in each country inside the Territory during andas to be likely to cause confusion or deception. 3.5 DESITIN shall not have, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at assert or acquire any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and or interest in such or to the Trademark or the goodwill pertaining thereto, except as explicitly provided in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transferClause 3.1 of this Agreement. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi 3.6 DESITIN shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity give ZOGENIX prompt notice of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside infringement or threatened infringement of the Territory during andTrademark. ZOGENIX shall determine in its sole discretion what action, for as long as uniQure retains licenses theretoif any, after to take in response to the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution infringement or maintenance of such Trademark anywhere inside or outside threatened infringement of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transferTrademark.

Appears in 2 contracts

Sources: Licensing and Distribution Agreement (Zogenix Inc), Licensing and Distribution Agreement (Zogenix Inc)

Trademark. (ia) The During the Term, Licensee shall be the sole owner of the Assigned Trademarks and solely responsible, at its own cost, for the registration, filing, and maintenance of the Assigned Trademarks. Licensee shall keep Lipocine reasonably informed with respect to such activities, consult in good faith with Lipocine regarding such activities, and provide Lipocine with copies of all of material communications and filings with the trademark authority. Licensee shall not abandon the Assigned Trademark without Lipocine’s prior written consent. In the event Licensee materially fails to fulfill its obligations under this Section 5.9 and such failure materially adversely affects Lipocine or the Assigned Trademarks, Licensee shall assign back to Lipocine the Assigned Trademark and all associated goodwill therein within [***] days following notice of such failure from Lipocine if Licensee fails to cure such failure within such [***] day notice period. In the event the Assigned Trademark and all associated goodwill is assigned back to Lipocine, such Assigned Trademark and all associated goodwill shall automatically be deemed licensed to Licensee and shall be considered Licensed Technology, subject to the terms and conditions of this Agreement, including Section 5.9(c). (b) In addition to the Assigned Trademark, Licensee shall have the right to use and apply for additional trademarks for Licensed Products (including for the Second Product will be Commercialized by Chiesi if applicable) for use in the Field in the Territory exclusively under (“Additional Trademarks”). Licensee shall be the trademark “Glybera” (as defined in Schedule 2.2(a)) orsole owner of any Additional Trademarks and shall be solely responsible, at its own cost, for the registration, filing, and maintenance of any Additional Trademark. For avoidance of doubt, subject to Section 5.9(c), Lipocine shall have the prior written consent of uniQure, such alternative right to use and apply for any trademark identified by Chiesi (for Licensed Products outside the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product Field in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize outside the Product under such alternative trademark without Territory inside or outside the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire TerritoryField. (c) Neither Party shall, directly or indirectly: (i) use in their respective businesses, any trademark that is confusingly similar to, misleading or deceptive with respect to or that dilutes any Assigned Trademark or Additional Trademark, (ii) In case do any act which endangers, destroys, or similarly affects, in any material respect, the Product is Commercialized by Chiesi under value of the goodwill pertaining to the Assigned Trademark “Glybera”or Additional Trademark, uniQure hereby grants or (iii) attack, dispute, or contest the validity of or ownership of the Assigned Trademark or Additional Trademark. Licensee shall conform to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right customary industry standards for the protection of the Assigned Trademark and license (subject Additional Trademark with respect to Section 9.3 below) to manner of use of the Assigned Trademark “Glybera” to Commercialize the Product solely and Additional Trademark in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iiid) Chiesi acknowledges thatLicensee shall include, subject to the foregoing licensesextent permitted by Applicable Law, uniQure on the label or package insert of each unit of Licensed Product intended for sale a statement that such Licensed Product (but not the Assigned Trademark) “is produced under license from Lipocine, Inc.” or a similar phrase as mutually agreed by the Parties. Licensee shall own all right, title and interest in and to m▇▇▇ the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated Licensed Products with the Trademark “Glybera”. Chiesi shall ensure appropriate use patent numbers of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQureLicensed Patents, as amended from timeconsistent with Applicable Laws, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transferincluding patent marking statutes. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 1 contract

Sources: License Agreement (Lipocine Inc.)

Trademark. 8.1 Honeywell hereby grants Distributor a non-exclusive, royalty free sublicense during the term of this Agreement, to use the trademarks, names and related designs applicable to the Products set out in Schedule A (collectively, the “Trademarks”) in a form approved in writing by Honeywell. The Trademarks shall be used solely in connection with the marketing, sale, installation, and servicing of Products. Use of or linkage between any of Honeywell’s domain names, websites or URLs, or those of Honeywell’s affiliates, and any of Distributor’s must be approved by Honeywell in advance in writing. All such use will be in accordance with the Trademark Use Guidelines as set out in Schedule G and as Honeywell notifies Distributor from time to time. Upon expiration or termination of this Agreement, Distributor shall immediately cease any and all use of the Trademarks in any manner. The rights granted to Distributor pursuant to this Agreement are personal to Distributor and may not be transferred, assigned or sublicensed, by operation of law or otherwise, nor may Distributor delegate its obligations hereunder without the written consent of Honeywell. 8.2 All such Trademarks, trade names, other marks, product names, domain names, web sites, registrations, URLs, other proprietary information, as well as Honeywell’s patents, and those of Honeywell’s affiliates, are recognized by Distributor as the exclusive intellectual property of Honeywell International Inc. and its affiliates. All goodwill resulting from the use of the Trademarks by Distributor, including any additional goodwill that may develop because of Distributor’s use of the Trademarks shall inure solely to the benefit of Honeywell International Inc and its affiliates and Distributor shall not acquire any rights in the Trademarks except the limited use rights specifically granted in this Agreement. Distributor shall not (i) The Product will be Commercialized use the Trademarks in any manner likely to diminish their commercial value; (ii) knowingly use any name, domain name, social media name, logo or icon likely to cause confusion with the Trademarks; (iii) make any representation to the effect that the Trademarks are owned by Chiesi in Distributor; (iv) file or obtain, or cause any third party to file or obtain, any applications or registrations or domain names for the Field in Trademarks or any terms confusingly similar to the Territory exclusively Trademarks; or (v) challenge the validity of Honeywell Inc's (or its affiliates’) ownership of the Trademarks. Distributor further shall not at any time, either during the life of or after expiration of this Agreement, contest the validity of the Trademarks or assert or claim any other right to manufacture, sell or offer for sale products under the trademark “Glybera” (as defined in Schedule 2.2(a)) orTrademarks, subject to the prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi confusingly similar thereto. 8.3 All materials of any kind which contain the Trademarks which Distributor intends to use and its proposed placement must be approved in advance and in writing (including facsimile) by Honeywell to ensure proper trademark usage by Distributor. Honeywell shall be entitled to Commercialize the Product under promptly review such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure Copy received from Distributor and shall not unreasonably withhold its consent. Such Copy shall be entitled deemed disapproved if Honeywell does not provide a reply to Commercialize Distributor within fifteen (15) business days of Honeywell’s receipt of such proposed Copy. Honeywell may refuse to approve, and Distributor shall not distribute, any materials containing or referring to the Product under an alternative Trademark without that derogates, erodes or tends to tarnish the prior written consent of uniQureTrademark, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly or otherwise diminish the value of the need Trademark, in Honeywell’s opinion. 8.4 Distributor will promptly inform Honeywell of any actual or possible infringement of such alternative trademark, such notice intellectual property which comes to Distributor’s attention. Honeywell may decide in its sole discretion whether and what steps should be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization taken to prevent or terminate infringement of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field Trademarks in the Territory, with including the right to grant sublicenses to Sub-distributors according to Section 2.1(b)institution of legal proceedings and settlement of any claim or proceeding. FurtherDistributor will provide or procure reasonable assistance, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure such as the manufacturer furnishing of documents and Marketing Authorization holder information and the execution of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQurereasonably necessary documents, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure Honeywell may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transferreasonably request. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 1 contract

Sources: Distributor Agreement

Trademark. (i) The Product will be Commercialized by Chiesi in the Field Licensed Products sold in the Territory exclusively under shall bear a trademark ("Trademark") chosen and owned by Peninsula. Peninsula, at its reasonable discretion, may use the trademark “Glybera” (if any) owned by Shionogi for the marketing of the Licensed Products (the "Shionogi Trademark") for so long as defined in Schedule 2.2(a)) orPeninsula markets the Licensed Products. If Peninsula desires to use the Shionogi Trademark, subject then to the prior written consent extent legally permitted, Shionogi shall grant the right to use the Shionogi Trademark for such purpose free of uniQure, such alternative trademark identified by Chiesi charge during the term of this Agreement. The Licensed Products sold in the Territory shall bear the Shionogi name or logo (the “Trademark”"Marks"), as provided in Subsection 6.3(b), and Shionogi grants Peninsula the right to use the Marks to the extent necessary for Peninsula to fulfill the obligations set forth in Subsection 6.3(b) applicable to the Licensed Products sold in the Territory. In the event that Chiesi provides sufficient written evidence Peninsula will have no obligation to uniQure that the pay royalties for such use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of Marks and Shionogi Trademark during the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize term the Product under such alternative trademark without the prior written consent of uniQureAgreement. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) If Shionogi desires to use the Trademark “Glybera” owned or Controlled by Peninsula to Commercialize market products containing the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product Compound outside the Territory, with then to the extent legally permitted, Peninsula shall grant the right to grant sublicensesuse the Trademark for such purpose free of charge for so long as Shionogi (or its licensee) markets and sells any products containing the Compound outside the Territory. uniQure Shionogi shall notnot use the [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, during MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. Trademark outside the Term or thereafterscope of this Agreement and shall use the Trademark in accordance with Peninsula's then-current reasonable trademark guidelines, registerif any, use, or attempt as provided to obtain any right Shionogi in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity writing in advance of any such trademark during the Termuse as they may be updated from time to time by Peninsula, Chiesi may terminate this Agreement in accordance or alternatively, with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days Peninsula's prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi written approval for such transferuse.

Appears in 1 contract

Sources: License Agreement (Peninsula Pharmaceuticals Inc)

Trademark. The Parties agree that Group A transfers and licenses the trademarks of which it has ownership and full right of disposition and are related to Group B’s business (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject to the prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”) and Trademark under registration application on the effective date of this Agreement (“Trademark Application”) to Group B with a total consideration of RMB 10.9 million (tax inclusive) (including the consideration of transfer and the fees of license). In Party B shall pay or procure Group B to pay within ten working days upon receipt of a valid tax invoice from Group A. And: 1.1 Group A transfers the event that Chiesi provides sufficient written evidence Trademarks of which it has ownership and full right of disposition and are solely related to uniQure that Group B’s business, which is allowed to be transferred independently in accordance with relevant laws and regulations (“Transferred Trademark”) and the Trademark Applications (“Transferred Application”) to Group B. The exclusive right to use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction Trademarks of the Territory Transferred Trademarks shall be enjoyed by Group B from the announcement date of State Administration of Industry and if Chiesi identifies Commerce after its approval (“Announcement Date”). From the effective date of this Agreement to the Announcement Date (“Trademark Transition Period”), Group A grants an irrevocable license of the Transferred Trademarks to Group B, allowing Group B to use the Trademark by any trademark means as permitted by the law. Group B shall undertake all the rights and obligations of the Transferred Applications and its relevant Trademark since the effective date of this Agreement. 1.2 Group A exclusively authorizes Group B to use the Trademarks and Trademark Applications of which it has ownership and full right of disposition and are solely related to Group B’s business, which is not allowed to be transferred independently in accordance with relevant laws and regulations (“Exclusively Licensed Trademark”), including but not limited to “Kingsoft Network”, “Kingsoft Duba Antivirus” and etc., by any means as permitted by the law, and without Party B’s prior written consent, Group A shall not use the Exclusively Licensed Trademark under circumstances other than advertising, introducing or presenting Group A and Group B. However, Group A is entitled to use or authorize a third party to use the Exclusive Licensing Trademarks related to Information Security within Japan. 1.3 With respect to the Trademarks and Trademark Applications of which Group A has ownership and full right of disposition and are related to both of Group A and Group B’s business (GlyberaGeneral License Trademark”), including but not limited to “ for this purpose(Note: Chinese version of “Kingsoft”) and “Kingsoft”, then Chiesi Group A authorizes Group B to use within the field of Group B’s business and its relevant products and services (including but not limited to Information Security, computer software, browser, mobile internet applications, internet advertisement and value-added service) which are not in competition with Group A’s other business lines, within the approved region(s) of Trademarks or regions covered by the Trademark Applications by any means as permitted by the laws. Such authorization shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure non-exclusive and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQuresub-licensed. However, such consent Group A shall not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and use nor authorize a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) third party to use the Trademark General License Trademarks in products or services (except for advertising or introducing Group A and Group B) major in antivirus, antimalware, personal firewall, system cleaning and optimization software for PC and security and system optimization software of mobile internet (Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(bInformation Security”). FurtherHowever, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license Group A is entitled to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of or authorize a third party to use the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this AgreementGeneral License Trademark related to Information Security within Japan. (iii) Chiesi acknowledges that, subject 1.4 With regard to the foregoing licenses, uniQure shall own all right, title term of license under Clause 1.2 and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside 1.3 of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to Article One (A1) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territoryhereof, it shall inform Chiesi at least [**] days prior to doing so be its validity period for Trademarks (including those become Trademarks after approval which are under application presently) and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi it shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than be the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside valid period of the Territory during and, for as long as uniQure retains licenses thereto, after Trademarks under application until the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution applications are rejected or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transferbecome invalid.

Appears in 1 contract

Sources: Intellectual Property Transfer and License Framework Agreement (Cheetah Mobile Inc.)

Trademark. (i) The Product will be Commercialized by Chiesi in the Field in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) or, subject to the prior written consent of uniQure, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country [†] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product outside the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transfer.

Appears in 1 contract

Sources: Sublicense and Research Agreement (Xenon Pharmaceuticals Inc.)

Trademark. (i) The Product will be Commercialized by Chiesi in the Field Licensed Products sold in the Territory exclusively under shall bear a trademark ("Trademark") chosen and owned by Peninsula. Peninsula, at its reasonable discretion, may use the trademark “Glybera” (if any) owned by Shionogi for the marketing of the Licensed Products (the "Shionogi Trademark") for so long as defined in Schedule 2.2(a)) orPeninsula markets the Licensed Products. If Peninsula desires to use the Shionogi Trademark, subject then to the prior written consent extent legally permitted, Shionogi shall grant the right to use the Shionogi Trademark for such purpose free of uniQure, such alternative trademark identified by Chiesi charge during the term of this Agreement. The Licensed Products sold in the Territory shall bear the Shionogi name or logo (the “Trademark”"Marks"), as provided in Subsection 6.3(b), and Shionogi grants Peninsula the right to use the Marks to the extent necessary for Peninsula to fulfill the obligations set forth in Subsection 6.3(b) applicable to the Licensed Products sold in the Territory. In the event that Chiesi provides sufficient written evidence Peninsula will have no obligation to uniQure that the pay royalties for such use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of Marks and Shionogi Trademark during the Territory and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize term the Product under such alternative trademark without the prior written consent of uniQureAgreement. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) If Shionogi desires to use the Trademark “Glybera” owned or Controlled by Peninsula to Commercialize market products containing the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and to the Trademark “Glybera” inside and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in the entire Territory and observe the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own cost. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of such Trademark anywhere inside the Territory, it shall inform Chiesi at least [**] days prior to doing so and shall, upon request of Chiesi transfer all right, title and interest in such Trademark in such country or jurisdiction to Chiesi for further prosecution and maintenance by Chiesi in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transfer. (iv) uniQure acknowledges that except as otherwise expressly provided in this Agreement, Chiesi shall own all right, title and interest in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use such Trademark to Manufacture and Commercialize the Product Compound outside the Territory, with then to the extent legally permitted, Peninsula shall grant the right to grant sublicensesuse the Trademark for such purpose free of charge for so long as Shionogi (or its licensee) markets and sells any products containing the Compound outside the Territory. uniQure Shionogi shall notnot use the Trademark outside the scope of this Agreement and shall use the Trademark in accordance with Peninsula's then-current reasonable trademark guidelines, during the Term or thereafterif any, register, use, or attempt as provided to obtain any right Shionogi in and to (A) such Trademark and the “Chiesi” trademark, or (B) any name, logo or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges the validity writing in advance of any such trademark during the Termuse as they may be updated from time to time by Peninsula, Chiesi may terminate this Agreement in accordance or alternatively, with the provisions of Section 9.2(d)Peninsula's prior written approval for such use. Chiesi undertakes to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own cost. In the event that at any time during such term Chiesi intends not to continue prosecution or maintenance of such Trademark anywhere inside or outside of the Territory it shall inform uniQure at least [**] days prior to doing so and shall= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, upon request of uniQure transfer all rightMARKED BY BRACKETS, title and interest in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQure’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transferHAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.

Appears in 1 contract

Sources: License Agreement (Peninsula Pharmaceuticals Inc)

Trademark. (i) The Product will be Commercialized by Chiesi 8.01 MediciNova shall, in the Field its sole discretion, in the Territory exclusively under the trademark “Glybera” (as defined in Schedule 2.2(a)) orits own name and at its own expense, subject to the prior written consent of uniQureselect, such alternative trademark identified by Chiesi (the “Trademark”). In the event that Chiesi provides sufficient written evidence to uniQure that the use of an alternative trademark is required under Applicable Laws to lawfully Commercialize the Product in any country or jurisdiction of the Territory register and if Chiesi identifies any trademark other than “Glybera” for this purpose, then Chiesi shall be entitled to Commercialize the Product under such alternative trademark without the prior written consent of uniQure. In the event that Chiesi identifies any trademark other than “Glybera” for other material commercial reasons, Chiesi shall provide sufficient written evidence for such reasons to uniQure and shall not be entitled to Commercialize the Product under an alternative Trademark without the prior written consent of uniQure, such consent not to be unreasonably withheld. Chiesi shall inform uniQure promptly of the need of such alternative trademark, such notice to be accompanied by the aforementioned written evidence and a list of at least [**] alternative trademarks identified by Chiesi and suitable for Commercialization of the Product throughout the entire Territory. (ii) In case the Product is Commercialized by Chiesi under the Trademark “Glybera”, uniQure hereby grants to Chiesi the exclusive, royalty-free, perpetual, irrevocable, right and license (subject to Section 9.3 below) to use the Trademark “Glybera” to Commercialize the Product solely in the Field in the Territory, with the right to grant sublicenses to Sub-distributors according to Section 2.1(b). Further, uniQure hereby grants to Chiesi the non-exclusive, royalty-free, right and license to use uniQure’s trade name (as defined in Schedule 2.2(a)) in each country of the Territory during the Term solely for the purpose of identifying uniQure as the manufacturer and Marketing Authorization holder of the Product as contemplated in this Agreement. (iii) Chiesi acknowledges that, subject to the foregoing licenses, uniQure shall own all right, title and interest in and its own trademark to be used for the Product in the MediciNova Territory (“Trademark”). 8.02 Kissei shall have the right to register the Trademark “Glybera” inside at Kissei’s expense and outside the Field, whether inside or outside of the Territory as well as any goodwill associated with the Trademark “Glybera”. Chiesi shall ensure appropriate use of the trademark “Glybera” at all times in Kissei’s name in the entire Kissei Territory and observe solely for use with respect to Product in the applicable trademark use guidelines issued by uniQure, as amended from time, attached in Schedule 2.2(b). Chiesi shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) the trademarks “Glybera” and “uniQure”, or (B) any name, logo or trademark confusingly similar thereto. If Chiesi or any of its Affiliates or Sub-distributors challenges the validity of any such trademark during the Term, uniQure may terminate this Agreement in accordance with the provisions of Section 9.2(d). uniQure undertakes to maintain and defend the Trademark “Glybera” in each country inside the Territory during and, for as long as Chiesi retains licenses thereto, after the Term at its own costKissei Territory. In the event that at any time during such term uniQure intends not to continue prosecution or maintenance of the Trademark has been registered by MediciNova in the Kissei Territory, MediciNova shall assign and transfer such Trademark anywhere inside registrations in the Territory, it Kissei Territory to Kissei free of charge upon Kissei’s request. 8.03 MediciNova shall inform Chiesi at least [**] days prior to doing so and shall, upon request be responsible for the clearance of Chiesi transfer all right, title and interest in such the Trademark in such country or jurisdiction to Chiesi the MediciNova Territory whereas Kissei shall be responsible for further prosecution and maintenance by Chiesi the clearance of the Trademark in Chiesi’s name and at Chiesi’s costs and Chiesi shall reimburse uniQure for any reasonable external costs incurred by uniQure for such transferthe Kissei Territory. (iv) uniQure acknowledges that except as otherwise expressly provided 8.04 MediciNova shall continue to be the owner of the Trademark in the MediciNova Territory after the expiration or termination of this Agreement. MediciNova shall have the right to maintain the registrations of the Trademark in the MediciNova Territory at its own expense. 8.05 Neither Party shall use or maintain the Trademark nor will either Party apply for the Trademark outside of its respective territory, Chiesi shall own all right, title and interest except that MediciNova may apply to register the Trademark in and to any Trademark other than the trademark “Glybera” as well as any goodwill associated therewith. In case the Product is Commercialized by Chiesi under such alternative Trademark, Chiesi hereby grants to uniQure an exclusive, royalty-free, perpetual, irrevocable, right and license (Kissei Territory subject to Section 9.3 below8.02 above. Neither Party shall take action ** CERTAIN INFORMATION (INDICATED BY ASTERISKS) to use such Trademark to Manufacture and Commercialize HAS BEEN OMITTED FROM THIS DOCUMENT PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. AN UNREDACTED VERSION OF THIS DOCUMENT HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. which could prejudice the Product outside validity, registration or reputation of the Territory, with the right to grant sublicenses. uniQure shall not, during the Term or thereafter, register, use, or attempt to obtain any right in and to (A) such Trademark and the “Chiesi” trademarkgoodwill associated with the same. 8.06 The Parties undertake to inform each other promptly on any material opposition, infringement or threatened infringement of the Trademark in their respective territories, or (B) any name, logo challenge or trademark confusingly similar thereto. If uniQure or any of its Affiliates challenges threatened challenge to the validity of the Trademark or cancellation or threat thereof of any such trademark during the Term, Chiesi may terminate this Agreement in accordance with the provisions of Section 9.2(d). Chiesi undertakes registration therefor coming to obtain, maintain and defend such Trademark in each country inside and, as requested by uniQure, outside of the Territory during and, for as long as uniQure retains licenses thereto, after the Term at its own costtheir notice. In the event that at any time during such term Chiesi intends not MediciNova Territory, MediciNova shall have the exclusive right to continue prosecution or take action in respect of the registration, defence, infringement, and maintenance of the Trademark and Kissei shall provide all such Trademark anywhere inside assistance and co-operation, including but not limited to furnishing of documents and information and the execution of registered user documentation or outside the like as may be required to give effect to any action as may be taken, or required to be taken by MediciNova, and in the Kissei Territory it is Kissei that shall have the corresponding rights for the Trademark. Each Party must approve in writing any proposed settlement by the other Party if such proposed settlement involves allowing the co-existence of the Territory it shall inform uniQure at least [**] days prior to doing so and shall, upon request of uniQure transfer all right, title and interest Trademark with another m▇▇▇ in such Trademark in such country or jurisdiction to uniQure for further prosecution and maintenance by uniQure in uniQureParty’s name and at uniQure’s costs and uniQure shall reimburse Chiesi for any reasonable external costs incurred by Chiesi for such transferrespective Territory.

Appears in 1 contract

Sources: Exclusive License Agreement (Medicinova Inc)