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EXHIBIT 10.23 (b)
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (together with all Schedules attached
hereto and made a part hereof, this "License Agreement"), effective as of the
Restatement Effective Date (as defined in the Master Lease (as hereinafter
defined)), is entered into by and between: Getty TM Corp. (hereinafter called
"TM"), a corporation organized and existing under the laws of the State of
Maryland, located at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇; and Getty
Petroleum Marketing Inc. (together with any successors and permitted assignees,
hereinafter called "MARKETING"), a corporation organized and existing under the
laws of the State of Maryland, located at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇
▇▇▇▇ ▇▇▇▇▇.
WHEREAS, TM is the owner of certain trademarks, service marks and
trade names for use in, among other businesses, the motor fuels marketing
business, as conducted in certain areas of the United States (defined below as
the Licensed Territory);
WHEREAS, the corporate parent of TM, Getty Properties Corp. (f/k/a
Getty Realty Corp.) (hereinafter called "REALTY"), a corporation organized and
existing under the laws of the State of Delaware, has leased and subleased
various motor fuels outlet properties to MARKETING under certain net lease
agreements, all of which net lease agreements have been incorporated,
consolidated, amended and restated as of the date hereof pursuant to that
certain Consolidated, Amended and Restated Master Lease between REALTY, as
landlord, and MARKETING, as tenant (as so incorporated, consolidated, amended
and restated, the "Master Lease");
WHEREAS, TM seeks to license those trademarks, service marks and trade
names to MARKETING for use in its marketing business in the Licensed Territory
as defined below;
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WHEREAS, MARKETING seeks to license those trademarks, service marks
and trade names from TM for use in its marketing business in the Licensed
Territory as defined below;
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, the parties agree as follows:
1. DEFINITIONS
A. "Affiliate" means any stockholder of MARKETING that beneficially
owns at least a majority of the then issued and outstanding capital stock of
MARKETING or any wholly-owned or majority-owned subsidiary of MARKETING that are
involved in the Marketing Business (as defined hereinafter).
B. "Branded Gasoline" means gasoline that is sold through a Branded
Outlet and is identified using any of the Licensed Marks.
C. "Branded Outlet" means a retail service station with signage
bearing any of the Licensed Marks and located in the Licensed Territory that is,
or is hereafter, owned or operated by MARKETING or persons that sublicense the
Licensed Marks from MARKETING pursuant to Paragraph 2E hereof.
D. "Licensed Marks" means the trademarks, service marks or trade names
listed on Schedule A attached hereto and as subsequently included pursuant to
Paragraph 6D hereof.
E. "Licensed Territory" means all of the states, territories and
possessions of the United States with the exception of Maine, New Hampshire,
Vermont, Massachusetts, Rhode Island, Connecticut, New York, New Jersey,
Pennsylvania, Delaware, Maryland, Virginia and the District of Columbia.
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F. "Marketing Business" means: (i) the purchase, storage,
distribution, marketing, and sale of gasoline, diesel fuel and other related
products at wholesale and through terminals and a retail service station
network; and (ii) the operation of convenience stores.
G. "Material Monetary Default" means the failure to pay to TM royalty
fees when due and payable pursuant to Paragraph 2C herein and unpaid for a
period exceeding ten (10) days after receipt of written notice unless such
payments are then being contested by MARKETING in good faith.
H. "Material Non-Monetary Default" means a material breach or breaches
of MARKETING's obligations under this License Agreement that reasonably would be
expected to result in a significant and lasting diminution of the value of the
Licensed Marks in the Marketing Business.
I. "Royalty-Paying License Territory" shall mean all of the Licensed
Territory with the exception of West Virginia.
2. GRANT OF LICENSE; ROYALTY FEES
A. Subject to the terms and conditions set out herein, TM grants to
MARKETING a non-exclusive, royalty-bearing license to use the Licensed Marks in
the Licensed Territory in connection with its Marketing Business. The license to
use the Licensed Marks in West Virginia shall be royalty free. TM shall not
grant any rights to use any of the Licensed Marks in the Licensed Territory to
any entity to be used in connection with (i) the purchase, storage,
distribution, marketing, or sale of gasoline, diesel fuel and other related
products or (ii) the operation of convenience stores without MARKETING's prior
written consent, which consent may be withheld if MARKETING reasonably believes
that the entity to whom TM wishes to grant such license would materially tarnish
the image or cause a material adverse impact on the value of the Licensed Marks.
Any license that TM hereinafter grants to
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any person other than MARKETING to use any of the Licensed Marks in the
Marketing Business in the Licensed Territory shall prohibit the opening and
operation of retail gasoline outlets bearing any of the Licensed Marks within a
one-quarter-mile radius of any Branded Outlet.
B. The royalty rate for the use of the Licensed Marks in the
Royalty-Paying Licensed Territory shall be as follows:
if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 0 and 199,999,999 gallons of Branded
Gasoline, inclusive, the royalty rate shall be $.0035 per gallon of Branded
Gasoline sold (i.e. $35.00 for every ten thousand gallons of Branded Gasoline
sold) for that calendar year;
if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 200,000,000 and 399,999,999 gallons of
Branded Gasoline, inclusive, the royalty rate shall be $.0032 per gallon of
Branded Gasoline sold (i.e. $32.00 for every ten thousand gallons of Branded
Gasoline sold) for that calendar year;
if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 400,000,000 and 599,999,999 gallons of
Branded Gasoline, inclusive, the royalty rate shall be $.0029 per gallon of
Branded Gasoline sold (i.e. $29.00 for every ten thousand gallons of Branded
Gasoline sold) for that calendar year;
if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 600,000,000 and 799,999,999 gallons of
Branded Gasoline, inclusive, the royalty rate shall be $.0026 per gallon of
Branded Gasoline sold (i.e. $26.00 for every ten thousand gallons of Branded
Gasoline sold) for that calendar year;
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if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 800,000,000 and 999,999,999 gallons of
Branded Gasoline, inclusive, the royalty rate shall be $.0023 per gallon of
Branded Gasoline sold (i.e. $23.00 for every ten thousand gallons of Branded
Gasoline sold) for that calendar year; and
if in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is 1,000,000,000 gallons of Branded Gasoline or more,
the royalty rate shall be $.0020 per gallon of Branded Gasoline sold (i.e.
$20.00 for every ten thousand gallons of Branded Gasoline sold) for that
calendar year.
C. Within thirty days of the end of each month, MARKETING shall make a
monthly royalty payment to TM, equal to the number of gallons of Branded
Gasoline sold that month in the Licensed Territory, multiplied by the applicable
royalty rate as set forth in Paragraph 2B. In the event that, during any such
month, the amount of Branded Gasoline sold by MARKETING in the Licensed
Territory reaches a gallonage at which the royalty rate decreases pursuant to
Paragraph 2B (a "Gallonage Threshold Event"), then MARKETING shall be entitled
to receive a credit against such month's royalty payment equal to the product of
(a) the amount of Branded Gasoline sold, in gallons, in the preceding months of
such calendar year, times (b) the difference between the royalty rate used to
compute the royalty fee for the preceding months of such calendar year and the
royalty rate to be used to compute such fee for the calendar month in which the
Gallonage Threshold Event occurs. If the amount of such credit is greater than
the royalty payment due in the month in which the Gallonage Threshold Event
occurs, then such credit shall be applied to the royalty payment for each
subsequent month (whether or not such subsequent month occurs in same calendar
year) until exhausted. Each time a Gallonage Threshold Event occurs in a given
calendar year, the procedure set forth above shall
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govern with respect to adjustment of the royalty fees due for such calendar
year. In the event that this License Agreement expires before any such credit
has been exhausted, then, provided that such expiration did not result from any
of the events described in Paragraph 13 hereof, TM shall pay MARKETING a refund
within thirty days of the expiration of this License Agreement.
D. MARKETING and any Affiliate may use and continue to use the name
"Getty" in the name under which it incorporates, organizes or conducts its
business and its subsidiaries', provided that there is no likelihood of
confusion between MARKETING's and its subsidiaries' incorporated name and Getty
Properties Corp. or Getty Realty Corp., and that the use of the name "Getty" in
MARKETING's or its subsidiaries' incorporated name does not exceed REALTY's
rights to the name "Getty". The parties agree that the use by MARKETING and its
subsidiary of the incorporated names Getty Petroleum Marketing Inc. and Getty
Terminals Corp. does not create any likelihood of confusion. MARKETING or any
Affiliate may use the name "Getty" in combination with the name "Lukoil", or any
variation thereof, and any other name under which OAO LUKOIL operates, or
subsequently operates, all or part of its operations, in the names under which
such entities incorporate, organize or conduct their respective businesses,
provided that such use of the name "Getty" does not exceed REALTY's rights to
the name "Getty" and does not create a likelihood of confusion with Getty
Properties Corp. or Getty Realty Corp. The act of combining the name "Lukoil",
or any stylistic variation thereof, or any other name with the name "Getty" or
using such combined name in commerce shall give no rights to TM to use the names
combined with "Getty". Upon the request of MARKETING, TM shall execute and
deliver to MARKETING any consents that may be required from time to time by the
secretary of state or similar office of a state, commonwealth or other
jurisdiction in order for MARKETING or any Affiliate to use the name "Getty" in
the
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name under which it incorporates, organizes or conducts its business. MARKETING
accepts the license subject to the terms and conditions of this License
Agreement.
E. Subject to the consent of TM, which consent shall not be
unreasonably withheld or delayed, MARKETING may sublicense the Licensed Marks to
retailers or wholesalers of petroleum and other related products and operators
of convenience stores, including but not limited to service station retailers,
jobbers and distributors, but only subject to the terms and conditions of this
License Agreement, all of which shall be equally binding on the sublicensees. In
determining the reasonableness of a refusal to consent to a sublicense, the
parties shall be guided by the following considerations: (i) the parties shall
not knowingly take any action which would materially tarnish the image or cause
a material adverse impact on the value of the Licensed Marks and (ii) the
parties shall not permit the indiscriminate proliferation of sublicensees which
would reasonably be expected to cause the Licensed Marks to lose significance as
a source of origin. In connection with any sublicense granted hereunder, the
sublicensee shall be required to agree in writing to be bound by and comply all
terms and conditions of this License Agreement, except the obligation to pay
royalty fees hereunder which shall remain the obligation of MARKETING.
TM hereby consents to the sublicensing of the Licensed Marks pursuant
to this Paragraph 2E and authorizes MARKETING to make amendments and revisions
in those sublicenses that are not of a material nature.
F. Nothing in this License Agreement shall be construed as restricting
MARKETING'S ability to (i) purchase, store, distribute, market, or sell
gasoline, diesel fuel and other related products at wholesale and through
terminals and a retail service station network and
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(ii) to operate convenience stores in the Licensed Territory, in each case using
any trademark, trade name or service ▇▇▇▇ other than the Licensed Marks.
3. OWNERSHIP OF MARKS
MARKETING acknowledges TM's ownership of the Licensed Marks in the
Licensed Territory. MARKETING agrees that it will do nothing inconsistent with
such ownership and that all use of the Licensed Marks by MARKETING shall inure
to the benefit of, and be on behalf of, TM. MARKETING agrees that nothing in
this License Agreement shall give MARKETING any right, title or interest in the
Licensed Marks other than the right to use the Licensed Marks in accordance with
this License Agreement. MARKETING agrees that it will not attack the title of TM
to the Licensed Marks or attack the validity of this License Agreement.
4. QUALITY STANDARDS
MARKETING agrees that the nature and quality of all services rendered
by MARKETING in connection with the Licensed Marks, all goods sold by MARKETING
under the Licensed Marks, and all related advertising, promotional and other
related uses of the Licensed Marks by MARKETING shall conform to reasonable
standards set by and be under the control of TM. MARKETING agrees that the
quality of all such services, goods, and advertising and promotional materials
associated with the Licensed Marks shall be of the same quality as previously
associated with the Licensed Marks. MARKETING further agrees that the quality of
all such services, goods, and advertising, promotional and other related uses of
the Licensed Marks shall conform with the standards, specifications, and
instructions as established by TM or such subsequent standards, specifications,
or instructions reasonably comparable thereto promulgated by MARKETING subject
to the approval of TM, such approval not to be unreasonably withheld or delayed.
MARKETING shall be deemed to have complied with the
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quality standards in existence from time to time under this License Agreement so
long as MARKETING maintains the physical condition of, and the services provided
through, Branded Outlets not materially worse than the physical condition and
level of service generally characteristic on the date hereof of retail service
stations of MARKETING and its sublicensees that use the Licensed Marks. Except
as may be required by law or as reasonably necessary to protect the Licensed
Marks, TM shall not set quality standards higher than those generally
characteristic on the date hereof of services rendered and goods sold through
retail service stations of MARKETING and its sublicensees that use the Licensed
Marks. TM shall not set quality standards for other licensees of the Licensed
Marks that are lower than those set for MARKETING from time to time during the
term of this License Agreement. Without limiting the generality of the
foregoing, MARKETING agrees to comply with the standards, specifications, and
instructions set out in Schedule B hereto, as may be modified from time to time
in accordance with this Paragraph 4. If MARKETING intends to use the Licensed
Marks on a new product within the ambit of a particular registration it shall
request approval for such new product from TM at least thirty (30) days prior to
initiating such new product use, and such approval shall not be unreasonably
withheld by TM. TM shall provide MARKETING with notice of approval or
non-approval, as the case may be, within thirty (30) days of the receipt of the
notice with respect to MARKETING's intended new product; provided that TM shall
be deemed to have given such approval if TM fails to deliver to MARKETING any
notice within such 30-day period. If TM rejects any proposal to use any of the
Licensed Marks with a new product, then TM shall provide a reasonably detailed
explanation to MARKETING as to why TM found the proposed use of the Licensed
Marks unacceptable. MARKETING may resubmit
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to TM, and TM shall give reasonable consideration to, an amended proposal for
such new product.
5. QUALITY MAINTENANCE
MARKETING agrees to cooperate with TM in facilitating TM's control of
the nature and quality of goods, services and related uses associated with the
Licensed Marks, to permit reasonable inspection of MARKETING's operations once
in any four-month period during normal business hours and upon ten day's prior
written notice, and to supply TM with specimens of all uses of the Licensed
Marks upon request. TM shall have no right to inspect the books and records of
MARKETING other than those books and records reasonably related to the use of
the Licensed Marks by MARKETING in accordance with the terms of this License
Agreement, and TM shall maintain all such information in the strictest of
confidence. MARKETING shall comply with all applicable laws and regulations,
including, but not limited to laws and regulations applicable to the storage and
sale of gasoline at Branded Outlets and will obtain all appropriate government
approvals pertaining to the sale, distribution and advertising of goods and
services covered by this License Agreement. TM shall have the right to enter and
inspect up to fifteen Branded Outlets in any three-month period, which number,
for purposes of clarification, includes Branded Outlets operated by sublicensees
of the Licensed Marks. TM shall have the right to receive from MARKETING, upon
request and without charge, a reasonable number of samples of products sold by
MARKETING as well as labels, promotional materials, advertising materials, sales
materials and related materials using any of the Licensed Marks.
6. FORM OF USE
A. MARKETING agrees to use the Licensed Marks only in the form, manner
and trade dress and with appropriate legends as reasonably prescribed from time
to time by TM,
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and not to use any other trademark, trade name, trade dress, or service ▇▇▇▇ in
combination with any of the Licensed Marks without prior written approval of TM.
TM hereby approves of the use of the Licensed Marks in combination with other
trademarks, trade names, trade dress, or service marks set out in Schedule C.
B. MARKETING shall submit to TM for prior approval all new or revised
labels that are a material departure from those presently used at least sixty
(60) days prior to initiating use of a revised or new label. TM's approval shall
not be unreasonably withheld or delayed. TM shall provide MARKETING with notice
of approval or non-approval, as the case may be, within thirty (30) days of the
receipt of the notice with respect to MARKETING's intended new or revised label;
provided that TM shall be deemed to have given such approval if TM fails to
deliver to MARKETING any notice within such 30-day period. If TM rejects any
proposal to use any new or revised labels, then TM shall provide a reasonably
detailed explanation to MARKETING as to why TM found the proposed labels
unacceptable, and MARKETING may resubmit to TM, and TM shall give reasonable
consideration to, any amended proposal for such new or revised label.
C. If during the term of this Agreement TM owns or obtains the right
to use any trademark, service ▇▇▇▇ or trade name that incorporates the name
"Getty" and is associated with the Marketing Business, TM promptly shall give
written notice of such new trademark, service ▇▇▇▇ or trade name to MARKETING,
and upon the written request of MARKETING, such trademark, service ▇▇▇▇ or trade
name shall become a Licensed ▇▇▇▇. The royalty rate shall not be increased as a
result of the addition of such trademark, service ▇▇▇▇ or trade name as a
Licensed ▇▇▇▇.
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7. TRADEMARK NOTICES
MARKETING will utilize on its products bearing the Licensed Marks,
packaging and advertising, whatever lawful notice is reasonably requested in
writing by TM in order to protect the Licensed Marks and properly designate TM's
legal ownership thereof. Without limiting the foregoing, MARKETING agrees to
utilize, where commercially practicable, a notice sufficient to indicate that
each of the utilized Licensed Marks is a registered trademark of TM. If TM does
not request a particular trademark notice, MARKETING shall utilize such notice
as in the opinion of its counsel is appropriate in order to protect the Licensed
Marks and properly designate TM's legal ownership thereof and the fact of
registration thereof. However, MARKETING shall advise TM of each such intended
notice, and make any changes thereto reasonably requested by TM.
8. APPROVAL AND PROTECTION OF THE LICENSED MARKS
In discharging their respective rights and obligations with respect to
Paragraphs 4, 5, 6, or 7 above, the parties shall be guided by the following
consideration: The parties shall not knowingly take any action which would
materially tarnish the image or cause a material adverse impact on the value of
the Licensed Marks including, without limitation, the indiscriminate
proliferation of uses of the Licensed Marks which would cause any of the
Licensed Marks to lose significance as a source of origin. If there is any
dispute as to either party's obligations with respect to Paragraphs 4, 5, 6, or
7 above, or the application thereof, the parties shall promptly consult to
resolve the matter. If the parties cannot resolve the matter, the dispute shall
be submitted to arbitration in accordance with Paragraph 15 below and the
arbitrator in that case shall be guided by the same considerations described
above in this Paragraph 8.
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9. CONFLICTING TRADEMARKS
MARKETING will not at any time adopt or use, without TM's prior
written consent, any word, ▇▇▇▇, or designation which is similar or likely to be
confused with any of the Licensed Marks.
10. FUTURE DOCUMENTS, RECORDING
AND TRADEMARK MAINTENANCE
A. The parties agree to cooperate in the execution and delivery, from
time to time, throughout the term of this License Agreement, of any documents
that may be reasonably required or desirable to effectuate and carry out the
purpose and intent of this License Agreement. Such documents shall include
instruments required to file, renew, protect, perfect and/or maintain the
Licensed Marks and TM's ownership therein, or to provide for the granting of any
license hereunder. Without limiting the generality of the foregoing, TM shall
enter MARKETING or its local designee or cause MARKETING or its local designee
to be entered as a registered user of the Licensed Marks wherever necessary or
desirable, and MARKETING and/or its local designee shall, upon written request,
execute such registered user agreements.
B. Except as provided in Paragraph 11B below with respect to
infringement of the Licensed Marks by third parties, TM shall take such action
as is reasonably required or desirable to obtain and maintain appropriate
protection of the Licensed Marks applicable to MARKETING's business. Except as
provided in Paragraph 11B below, with respect to infringement of the Licensed
Marks by third parties, TM shall bear the full cost of all trademark filings,
renewals, registered user entries and actions to protect, perfect or maintain
the Licensed Marks applicable to the Marketing Business, including the
attorney's and local agent's fees, taxes, government filing and other fees.
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11. INFRINGEMENT AND OTHER ACTIONS
A. The parties shall promptly notify each other of any claim that is
asserted, and of any action or proceeding that is threatened or commenced, in
which a third party (i) challenges MARKETING's right to use any of the Licensed
Marks, (ii) alleges that any Licensed ▇▇▇▇ infringes the trademark or trade name
rights of such third party, or (iii) in which the revocation, cancellation or
declaration of invalidity of any of the Licensed Marks is sought. TM and
MARKETING shall consult with respect to each such claim, action, or proceeding,
the assertion of counterclaims thereto and the settlement thereof and shall
jointly defend, in the name of TM and/or in the name of MARKETING, each such
action or proceeding that is commenced. If an action or proceeding brought by a
third party concerns the registrations and/or products of both TM and MARKETING,
both TM and MARKETING shall be responsible for their pro rata share of legal
expenses incurred in defending such action or proceeding, said pro rata share to
be determined by the proportion of products and/or registrations at issue in the
third party action or proceeding. If there is a disagreement as to the
appropriate pro rata share of legal expenses to be borne by each party, the
matter shall be submitted to arbitration in accordance with Paragraph 15 below.
If the claim or action concerns only products (other than claims pertaining to
the Licensed Marks) and/or registrations of MARKETING, MARKETING shall bear all
legal expenses incurred in defending such actions and proceedings and bear all
damages and costs, if any, recovered by the third party.
B. TM and MARKETING will each undertake commercially reasonable
efforts to learn of any unauthorized uses of the Licensed Marks. Promptly upon
receiving notice or knowledge thereof, the parties shall notify each other of
any infringement or other violation by a third party of any of the Licensed
Marks. TM and MARKETING shall consult with respect to any such infringement, and
any action or proceeding, including opposition and cancellation
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actions, that may be brought against such infringement. TM shall exercise its
discretion with respect to taking appropriate action including the bringing of
actions at TM's expense in the name of TM and/or MARKETING, but shall not be
obligated to take any action or institute any proceedings. If such action or
proceeding is commenced by TM, it shall promptly notify MARKETING and MARKETING
shall cooperate, including the defense of counterclaims, and TM shall bear the
expenses of MARKETING except for fees charged by any attorneys retained solely
by MARKETING in connection with such cooperation. MARKETING shall be given an
opportunity to participate with counsel of its choice bearing its own legal and
other costs.
In the event that TM determines not to commence such action or
proceeding at its expense, it shall promptly notify MARKETING. MARKETING may
then, at its expense, initiate such action or proceedings in its capacity as a
licensee of such Licensed Marks, provided however, that MARKETING must obtain
the prior written approval of TM regarding commencement of such action, such
consent not to be unreasonably withheld. The foregoing notwithstanding, in the
event of any unauthorized use of the Licensed Marks by one of MARKETING'S
sublicensees, MARKETING shall undertake efforts to cause the unauthorized use to
stop. In the event those efforts are unsuccessful, MARKETING shall, at its
expense, initiate such action or proceedings in its capacity as a licensee of
such Licensed Marks with respect to such unauthorized use. TM shall cooperate
with MARKETING in any such proceeding or action, including the defense of any
counterclaims, and MARKETING shall bear the expenses of TM, except for fees
charged by any attorneys retained solely by TM in connection with such
cooperation. TM may, if not a party, join in, with counsel of its own choice,
bearing its own legal and other costs. The party bringing any action or
proceeding under this sub-paragraph (B) shall keep the other party informed of
the proceedings and give the other
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party an opportunity to participate in any settlements, but the final decision
whether to settle the action or proceeding shall be made by the party bringing
the action or proceeding, subject to the approval of TM (if not a party), such
approval not to be unreasonably withheld. If within ten (10) business days or
such shorter time period as shall be reasonably practicable under the
circumstances TM does not approve a proposed settlement recommended by MARKETING
in good faith, TM shall be deemed to have taken over responsibility for the
action or proceeding, including subsequent legal fees, awards against TM or
MARKETING and expenses relating thereto. No settlement by either party shall
bind the other to make any payment or suffer any loss of existing or future
rights without such other party's consent, which shall not be unreasonably
withheld. Any recovery in such action or proceeding shall be applied first to
reimburse the party or parties for its or their legal expenses in maintaining
such action or proceeding. The excess shall belong to the party maintaining the
action or proceeding at the time such recovery is awarded. If the action is
brought jointly and the recovery is not sufficient to reimburse TM and MARKETING
for their legal expenses in such action, the unreimbursed portion of such legal
expenses shall be borne equally by each party.
12. TERM
This License Agreement shall continue in force and effect until
fifteen years from the effective date of this License Agreement unless sooner
terminated as provided for herein. This License Agreement shall be automatically
renewed when and to the extent that the Master Lease is extended. All extended
terms of this License Agreement shall be coterminous with the Master Lease.
13. TERMINATION AND BREACH
This License Agreement shall be terminated upon (a) the voluntary
filing by MARKETING of a bankruptcy petition or an involuntary bankruptcy
proceeding having been
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commenced and not stayed or terminated within 120 days of such commencement or
(b) the termination of the Master Lease in accordance with its terms. TM shall
have the right to terminate this License Agreement upon (a) a Material Monetary
Default or (b) the determination that a Material Non-Monetary Default has
occurred, as provided in this Paragraph 13, and such Material Non-Monetary
Default has not been cured by MARKETING within one year of such determination or
within thirty (30) days of such determination if the breach giving rise to such
Material Non-Monetary Default constitutes commingling as described in Section 1
of Schedule B attached hereto. TM's only remedy with respect to breaches by
MARKETING other than Material Monetary Defaults and Material Non-Monetary
Defaults shall be to seek damages or injunctive relief. In the event of any
breach or threatened breach of this License Agreement or a claimed Material
Non-Monetary Default, notice shall be given and the parties shall promptly
consult in good faith to cure such breach, with the party at fault being given
an adequate period of time to remedy the matter. If such breach or claimed
Material Non-Monetary Default is not cured within sixty (60) days of the notice,
the matter may be submitted to arbitration in accordance with Paragraph 15
below, which may include a determination whether a material breach or Material
Non-Monetary Default, as the case may be, has occurred and/or been cured. In the
event the arbitrator determines that a material breach has occurred, the
arbitrator shall not be authorized to terminate this License Agreement but shall
be authorized to issue any other order or award any other relief deemed
appropriate, including, without limitation, injunctive relief.
14. EFFECT OF TERMINATION
Upon termination of this License Agreement, MARKETING agrees (a) to
immediately discontinue all use of the Licensed Marks and any term confusingly
similar thereto, and to delete the same from its corporate or business name; (b)
to cooperate with TM or its
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appointed agent to apply to the appropriate authorities to cancel any recording
of this License Agreement from all government records; (c) to use reasonable
best efforts to destroy or cause the destruction of all printed materials and
signs bearing any of the Licensed Marks; (d) that all rights in the Licensed
Marks and the good will connected therewith shall remain the property of TM; (e)
to cause all sublicenses to terminate and (f) to use reasonable best efforts to
cause all sublicensees to immediately discontinue all use of the Licensed Marks
and any term confusingly similar thereto, and to delete the same from their
respective business names, if applicable. Notwithstanding the foregoing,
MARKETING and its sublicensees may continue to sell all goods bearing any of the
Licensed Marks on packaging in inventory at the time this License Agreement is
terminated for a period of 30 days, and MARKETING shall continue to pay to TM
any royalty fees that become due and payable pursuant to Paragraph 2B herein.
15. ARBITRATION
Any controversy or claim arising out of, or relating to this License
Agreement or its interpretation, performance or nonperformance or any breach
thereof, which the parties are unable to resolve between themselves, shall first
be submitted to a single arbitrator who shall be knowledgeable in marketing and
trademark matters. The arbitrator shall be mutually appointed by the parties,
and shall not be bound by rules of the American Arbitration Association, but
shall adopt such procedures as shall appear appropriate to expedite decision
making, in order that disputes may be resolved within commercially reasonable
time periods. If the parties cannot agree on the selection of the arbitrator,
the arbitrator shall be selected by The American Arbitration Association. Each
party shall bear its own costs in any such proceeding. The decision of the
arbitrator shall be final and binding upon the parties and may be enforced in
any court of competent jurisdiction.
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16. REPRESENTATIONS AND WARRANTIES
TM hereby represents and warrants to Marketing that: (a) TM has title
to the Licensed Marks in the Licensed Territory free and clear of any liens and
encumbrances; (b) to TM's knowledge, the Licensed Marks do not infringe any
trademark or other proprietary or intellectual property right of any third
party; (c) TM has the right, power and authority to enter into this License
Agreement and to perform all of TM's obligations hereunder; (d) TM has not
granted to any third party a license for the Licensed Property that would
conflict with the rights granted to MARKETING hereunder; and (e) to TM's
knowledge the Licensed Marks are the only trademarks, service marks or trade
names that incorporate the name "Getty" in the Marketing Business.
17. GENERAL PROVISIONS
A. Assignability: This license may be assigned by either party to the
successor in interest or assignee of substantially all of its business or
assets, or the surviving party of any merger or consolidation to which it is a
party provided that the assignee of any assignment assumes all the assignor's
obligations hereunder. Without the prior written consent of TM, MARKETING shall
be permitted to assign this License Agreement to any majority-owned subsidiary
of MARKETING or a wholly-owned subsidiary of Lukoil Americas Corporation,
provided that the Master Lease is also assigned to any such subsidiary. Apart
from any assignment permissible under the preceding sentences of this Paragraph
16A, MARKETING may not otherwise, assign the license granted herein or the
obligations undertaken herein without the prior written consent of TM, which
consent shall not be unreasonably withheld or delayed.
B. Notices: Any notice, approval, consent or other communication
required or permitted hereunder shall be in writing and shall be given by
personal delivery or telecopy, with acknowledgement of receipt, or by prepaid
registered mail, return receipt requested,
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addressed to the party at its address first above written, to the attention of
its General Counsel, or to any other address that either party may subsequently
designate, by notice in accordance with this paragraph. Notices and other
communications hereunder shall be deemed effective one (1) day after dispatch,
if personally delivered or telecopied, and three (3) days after dispatch, if
posted, subject to proof of delivery.
C. Waiver: The waiver by any party of a breach or default of any
provision of this License Agreement by the other party shall not constitute a
waiver by such party of any succeeding breach of the same or other provision;
nor shall any delay or omission on the part of either party to exercise or avail
itself of any right, power or privilege that it has or may have hereunder,
operate as a waiver of any such right, power or privilege by such party.
D. Governing Law: This License Agreement shall be governed by, subject
to and construed under the laws of the State of New York.
E. Unenforceability: In the event that any term, clause or provision
of this License Agreement shall be construed to be or adjudged invalid, void or
unenforceable, such term, clause or provision shall be construed as severed from
this License Agreement, and the remaining terms, clauses and provisions shall
remain in effect.
F. Association: The parties, by this License Agreement, do not intend
to create a partnership, principal/agent, master/servant, franchisor/franchisee,
or joint venture relationship, and nothing in this License Agreement shall be
construed as creating such a relationship between the parties. The parties agree
that this License Agreement does not create any franchise relationship between
them that is subject to the provisions of the Petroleum Marketing Practices Act
or any similar state or local government law.
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G. Counterparts: This License Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all such
counterparts together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have caused this License
Agreement to be executed as of the day and year first above written.
GETTY TM CORP.
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇
--------------------------------------------
Name: ▇▇▇▇ ▇▇▇▇▇▇▇▇
Title: Senior Vice President
GETTY PETROLEUM MARKETING INC.
By: /s/ ▇▇▇ ▇▇▇▇▇▇▇▇▇
--------------------------------------------
Name: ▇▇▇ ▇▇▇▇▇▇▇▇▇
Title: Chairman and Chief Executive Officer
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