EXHIBIT 10.39
LICENSE AND DISTRIBUTION AGREEMENT
THIS AGREEMENT (the "Agreement") is made between Helena Laboratories
Corporation (hereinafter referred to as "Licensor") located at 0000 Xxxxxxxxx
Xxxxx, Xxxxxxxx, Xxxxx 00000-0000 and ChemTrak Inc. (hereinafter referred to as
"Licensee") located at 000 Xxxx Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000-0000.
WHEREAS, Licensor is the owner of all right, title and interest in
and to the trademark COLOCARE(R) as shown in U.S. Trademark Registration No.
1,651,398 issued July 23, 1991, has used that trademark and established
substantial goodwill associated therewith; and
WHEREAS, Licensee desires to distribute Colocare brand products under
license from Licensor; and
WHEREAS, Licensor is willing to provide Colocare brand products under
license to Licensee under specific terms and conditions; and
WHEREAS, Licensee and Licensor are desirous of formalizing an
agreement;
IT IS HEREBY AGREED AS FOLLOWS:
1. Licensor grants to Licensee a non-exclusive license to use its
trademark COLOCARE(R) solely in conjunction with distribution of a test for
fecal occult blood manufactured by Licensor, in the retail, over-the-counter
market in the United States. Licensee agrees that any other use of the product
in connection with the trademark COLOCARE(R), is expressly prohibited under this
Agreement. By way of example and not by way of limitation, any use of the
trademark COLOCARE(R), and any distribution of a fecal occult blood test product
in connection with the trademark COLOCARE(R), in the U.S., professional market
and/or in any non-U.S. markets is expressly prohibited by this Agreement.
2. All use of the COLOCARE(R) trademark by Licensee, shall inure to the
benefit of Licensor.
3. In consideration of the license granted hereunder, Licensee agrees
that it shall only use the COLOCARE(R) trademark on goods manufactured by
Licensor and supplied to Licensee by Licensor, thereby assuring that the quality
of the goods meets Licensor's standards.
4. The parties agree that (a) Licensee shall order COLOCARE(R) brand
fecal occult blood test products in [*] lots; (b) the price per test unit shall
be [*], (c) no order shall be placed for less than [*] at a time; and (d) the
test unit shall include one fecal occult blood test (3 individual pads per test
unit) in one foil pouch with one printed instruction sheet.
5. Licensee agrees that during the term of this Agreement it will not
develop, contract to develop, manufacture, sell, license, lease, or otherwise
distribute any product which is directly competitive with the COLOCARE(R) brand
fecal occult blood test product.
6. Licensee shall not do, or permit to be done, anything that may tend to
jeopardize the validity of, or diminish the value of the licensed trademark.
7. The licensed trademark shall not be sublicensed by Licensee.
8. Licensee shall not assign this Agreement or any part thereof without
Licensor's prior express written consent and any attempted or purported
assignment without such consent shall be void. In the event Licensor grants
such approval, then and in that event this Agreement shall be binding upon the
parties and their respective successors and assigns.
9. Licensee shall hold Licensor and its agents harmless and indemnify
Licensor from and against all claims, charges, damages and liabilities of all
kinds, including reasonable attorneys' fees and losses to intangibles such as,
but not limited to, trademark value and good will, incurred as a result of the
breach by licensee of any provision contained in this Agreement.
10. This Agreement is effective from the date of execution until February
28, 1999. The Agreement may be renewed for successive one-year periods provided
both parties agree to such a renewal, in writing, in advance.
11. Licensor shall have the right to terminate the license agreement at
any time in the event that Licensee is in default in the performance of any
covenant contained in this Agreement. Grounds for such termination shall
include, but not be limited to, the failure of Licensee to comply with the
quality control provisions of Paragraph 3 hereof or abandonment of the xxxx by
Licensee. Such termination shall be effected by notice to Licensee specifying
the grounds for termination and the date for termination, which date shall not
be less than 90 days after the giving of such notice. Such termination shall
not become effective, however, if the specified grounds for termination are
cured on or before the specified date of termination. In no event shall any
money paid by Licensee to Licensor under the terms of this agreement be refunded
to Licensee upon termination of this Agreement.
------------
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
12. Licensor shall review and approve all labeling, marketing,
advertisements and other uses of the COLOCARE (R) trademark [*] for product
accuracy and for proper trademark usage. Licensee shall always use the symbol
(R) in connection with the term "colocare" except that Licensee's initial
printing of COLOCARE (TM) is hereby approved as other time exception to this
paragraph 11. No non-approved labeling, marketing, advertisements or other uses
of the COLOCARE (R) will be used by Licenses and any non-approved use shall be
considered non-licensed.
13. While the Agreement is non-exclusive, in the event that Licensor
[*], Licensor shall [*] and [*]. In the event Licensee [*], then such [*].
14. This Agreement shall be interpreted under the laws of the Sate of
Texas except that matters of federal trademark law shall be interpreted under
federal law. In the event that any portion of this Agreement should be
determined to be void or invalid or unenforceable for any reason, the remaining
terms shall be interpreted so as to reflect the basic intentions and intentions
and objectives of the parties.
15. The Licensor and Licensee agree that the terms of this Agreement,
shall not be the subject of any public announcement and shall not be disclosed,
except as required by statute, regulation or order of court.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives.
XXXXX LABORATORIES CORPORATION CHEMTRAK INC.
Date: 2/27/97 Date: 2/27/97
------------------------- -----------------------------------
By: /s/ Xxxx Xxxxxxxx By: /s/ Xxxxxx X. Xxxxxx
------------------------- -----------------------------------
Name: Xxxx Xxxxxxxx Name: Xxxxxx X. Xxxxxx
------------------------- -----------------------------------
Title: Vice President Title: President/Chief Executive Officer
------------------------- -----------------------------------
------------
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
