FIRST FIT-CROWN DISTRIBUTION AND LICENSE AGREEMENT by and among REMEDENT, INC., REMEDENT, N.V., and DEN-MAT HOLDINGS, LLC Dated as of June 3, 2009
EXHIBIT
10.34
[***]
Represents material information which has been redacted and filed separately
with the Commission pursuant to a request for confidential treatment pursuant to
Rule 24b-2 of the Securities Exvhange Act of 1934, as amended.
FIRST
FIT-CROWN DISTRIBUTION AND LICENSE AGREEMENT
by
and among
REMEDENT,
N.V.,
and
DEN-MAT
HOLDINGS, LLC
Dated
as of June 3, 2009
TABLE
OF CONTENTS
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Page
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1.
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DEFINED
TERMS
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1
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2.
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DISTRIBUTION
RIGHTS
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1
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2.1
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Appointment
as Distributor of the Products
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1
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2.2
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[RESERVED]
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2
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2.3
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Cessation
of Use
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2
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3.
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INTELLECTUAL
PROPERTY LICENSE RIGHTS
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2
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3.1
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Grants
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2
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3.2
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Rights
in Future Intellectual Property
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3
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3.3
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Delivery
of Intellectual Property
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3
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3.4
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Cessation
of Use
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4
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3.5
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Ownership
of Intellectual Property
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4
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4.
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MANUFACTURING
RIGHTS
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6
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4.1
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Products
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6
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4.2
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Termination
of Right
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6
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5.
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DEN-MAT
SUPPORT OBLIGATIONS
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6
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5.1
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Marketing
Support Efforts
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6
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6.
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PAYMENTS
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7
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6.1
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Development
Payment
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7
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6.2
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Fixed
License Payment
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7
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6.3
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Royalty
Payments
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7
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6.4
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Payment
and Reports
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7
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7.
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REQUIREMENTS
TO MAINTAIN EXCLUSIVITY
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8
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7.1
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Den-Mat
Exclusivity
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8
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8.
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REMEDENT
SUPPORT OBLIGATIONS
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8
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8.1
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Remedent’s
Marketing Support
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8
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9.
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ENFORCEMENT
OF RIGHTS
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9
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9.1
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Intellectual
Property
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9
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10.
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TRAINING
AND SUPPORT; DELIVERY OF CUSTOMER INFORMATION
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10
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10.1
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Manuals
and Information
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10
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10.2
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Marketing
and Sales Assistance
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10
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-i-
TABLE
OF CONTENTS
(continued)
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Page
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10.3
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Advertising
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11
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10.4
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Regulatory
Matters
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11
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11.
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[RESERVED]
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11
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12.
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PAYMENT
TERMS, TAXES AND AUDITS
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11
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12.1
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Payment
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11
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12.2
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Taxes
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12
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12.3
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Audit
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12
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13.
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TERM
AND TERMINATION
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13
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13.1
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Term
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13
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13.2
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Termination
for Cause
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13
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13.3
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Sell-Off
Period
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13
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13.4
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Survival
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13
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14.
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REPRESENTATIONS
AND WARRANTIES
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13
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14.1
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Representations
and Warranties of Remedent
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13
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14.2
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Representations
and Warranties of Den-Mat
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17
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15.
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CLOSING
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18
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16.
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CLOSING
CONDITIONS
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18
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16.1
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Conditions
to the Obligation of Remedent
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18
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16.2
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Conditions
to the Obligation of Den-Mat
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19
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17.
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CONFIDENTIALITY
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20
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17.1
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Confidential
Information of Den-Mat
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20
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17.2
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Confidential
Information of Remedent
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21
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18.
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INDEMNIFICATION
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22
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18.1
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Indemnification
by Den-Mat
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22
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18.2
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Indemnification
by Remedent
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22
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18.3
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IP
Indemnity
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22
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18.4
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Product
Liability Indemnity
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23
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18.5
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Indemnification
Procedures
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23
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18.6
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Products
Liability Insurance
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23
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19.
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FORCE
MAJEURE EVENTS
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24
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-ii-
TABLE
OF CONTENTS
(continued)
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Page
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19.1
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No
Liability
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24
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19.2
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Notification
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24
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19.3
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Termination
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24
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20.
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MISCELLANEOUS
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25
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20.1
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Expenses
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25
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20.2
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Further
Actions
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25
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20.3
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Notices
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25
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20.4
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Binding
Effect; Assignment
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26
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20.5
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Amendment;
Waiver
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26
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20.6
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Entire
Agreement
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26
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20.7
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Severability
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27
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20.8
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Headings
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27
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20.9
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Counterparts
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27
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20.10
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Governing
Law
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27
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20.11
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Consent
to Jurisdiction
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27
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20.12
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Waiver
of Punitive and Other Damages and Jury Trial
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28
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20.13
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No
Waiver; Remedies
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28
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20.14
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No
Limitation on Competitive Activities
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29
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20.15
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No
Partnership or Joint Venture
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29
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20.16
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Jointly
Drafted; Review by Counsel
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29
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20.17
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Specific
Performance
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29
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20.18
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Interpretation
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29
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20.19
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Mitigation
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30
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-iii-
FIRST
FIT-CROWN DISTRIBUTION AND LICENSE AGREEMENT
THIS AGREEMENT (this “Agreement”) is made
as of June 3, 2009 (the “Effective Date”) by
and among Remedent, Inc., a Nevada corporation (“Remedent Nevada”),
Remedent N.V., a Belgian corporation (“Remedent Belgium”,
and together with Remedent Nevada “Remedent”), and
Den-Mat Holdings, LLC, a Delaware limited liability company (“Den-Mat”).
WHEREAS, Remedent Nevada and
Remedent Belgium have developed certain products and services known as the First
Fit Technology;
WHEREAS, Remedent desires to
license such products and services and Remedent desires to appoint Den-Mat to
act as the sole and exclusive licensee and distributor of such products and
services in the Territory (as defined below);
WHEREAS, Den-Mat and Remedent
have agreed that Den-Mat will make royalty payments to First Fit in connection
with the sale of certain products by Den-Mat;
WHEREAS, Remedent owns certain
patents, trademarks and other intellectual property, and has rights pursuant to
certain licenses and other agreements with respect to other patents, trademarks
and other intellectual property, and Remedent desires to grant to Den-Mat (to
the extent such third party licenses and other agreements permit) an exclusive
license of such patents, trademarks and other intellectual property in the
Territory; and
WHEREAS, Remedent desires to
grant Den-Mat the non-exclusive right to manufacture or have manufactured
certain products developed by Remedent.
NOW, THEREFORE, in
consideration of the foregoing and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, Remedent and
Den-Mat hereby agree as follows.
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1.
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Defined
Terms.
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Capitalized
terms used herein without definition shall have the respective meanings given to
them in Schedule
1.
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2.
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Distribution
Rights.
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2.1 Appointment as Distributor
of the Products.
2.1.1 Exclusive
Distributor. Subject to the terms and conditions in this Agreement,
Remedent hereby appoints Den-Mat as the sole and exclusive (even as to Remedent)
distributor to market, distribute, license and sell Products in the Territory,
and Den-Mat hereby accepts this appointment. Den-Mat shall market and
sell the Products under the trade name “First Fit” or such other trade names
and/or trademarks (each a “Designated Xxxx”)
designated by Remedent, provided that once Den-Mat begins marketing a Product
under a Designated Xxxx, any change in, addition of, or cessation of the
Designated Xxxx used in connection with such Product shall require the mutual
agreement of Remedent and Den-Mat. All rights to the Designated Marks
shall belong to Remedent and, except in the case of termination pursuant to
Section 11.3,
upon termination of this Agreement (and expiration of any Sell-Off Period),
Den-Mat shall assign to Remedent all of Den-Mat’s right, title and interest in
and to the Designated Marks. Notwithstanding the foregoing, Den-Mat
may use the Designated Xxxx together with another trademark or trade name
selected by Den-Mat (such as “Lumi-Crown”) (hereinafter, “Den-Mat’s Xxxx”) in connection
with the sale and/or marketing of the Products, provided that in any packaging
or marketing materials in which the Products are co-branded, the size of the
type set used for the Designated Xxxx must be at least 150% of the size of the
type set used for Den-Mat’s Xxxx.
2.1.2 Subdistributors.
Den-Mat may authorize sub-distributors and subcontractors to manufacture,
market, distribute, license and sell Products in accordance with this Section 2, without
Remedent’s consent, provided that within ten (10) days after the appointment of
such sub-distributor or subcontractor after the Effective Date, Den-Mat shall
notify Remedent of the identity, address and market of such sub-distributor or
subcontractor. Den-Mat shall not sell or otherwise transfer Products
to any sub-distributor or subcontractor until such sub-distributor or
subcontractor enters into a form of written agreement ("Subdistributor
Agreement") with Den-Mat, which shall (a) include provisions to bind such
sub-distributor or subcontractor to terms and conditions substantially similar
to the product scope and other limitations set forth in Sections 2, 3 and
4 and (b)
authorize Remedent to enforce such provisions.
2.2 [RESERVED]
2.3 Cessation of
Use. Upon termination of this Agreement or, if later, upon the
conclusion of any applicable Sell-Off Period, Den-Mat shall cease having rights
to manufacture, market, distribute, license and sell Products in the
Territory.
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3.
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Intellectual Property License
Rights.
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3.1 Grants.
3.1.1 Use of Existing Intellectual
Property in the Territory. Subject to the terms and conditions
in this Agreement, Remedent hereby grants to Den-Mat a sole and exclusive (even
as to Remedent) transferable and sublicensable right and license to use within
the Territory the Intellectual Property owned or used by Remedent that is
related to the Products as it exists on the Effective
Date. Notwithstanding the foregoing, (a) Remedent retains the right
to use and license to any Person performing contract manufacturing for Remedent
(concurrently with Den-Mat’s right to use) such Intellectual Property solely in
connection with the manufacture of the Products for sale outside of the
Territory and for internal product development related to the Products and (b)
this grant shall not include any rights to the name, logo, trade name or
trademark ‘Remedent’. For purposes of clarity, during the term of
this Agreement, Remedent shall not use the Designated Xxxx in the Territory
without the prior written consent of Den-Mat. During the forty-five
(45) day period after the Effective Date, Den-Mat shall provide such cooperation
to Remedent as Remedent may reasonably request related to developing and
implementing guidelines for use of the trademarks included among the
Intellectual Property licensed to Den-Mat pursuant to this Section 3.1.1
sufficient to enable Remedent to preserve such trademarks; provided, however, Den-Mat
shall not be required to adopt or implement any such guideline to the extent
doing so would adversely affect Den-Mat's ability to comply with the terms of
this Agreement, materially impact Den-Mat's costs of performance under this
Agreement or otherwise would not be commercially reasonable.
-2-
3.1.2 Use of
Future Intellectual Property. Subject to the terms and
conditions in this Agreement, Remedent hereby grants to Den-Mat a sole and
exclusive (even as to Remedent) transferable and sublicensable right and license
to use within the Territory the Intellectual Property owned or used by Remedent
that is related to the Products and is developed (whether directly or
indirectly, individually or jointly with others) by Remedent (or any of
Remedent’s Affiliates) or acquired by Remedent (or any of Remedent’s Affiliates)
after the Effective Date, except that (a) such grant is subject to the
limitations set forth in Section
3.2, and (b) Remedent
retains the right to use and license to any Person providing contract
manufacturing to Remedent (concurrently with Den-Mat’s right to use) such
Intellectual Property solely in connection with the manufacture of the Products
for sale outside of the Territory and for internal product development related
to the Products.
3.1.3 Grants to
Third Parties. The parties acknowledge
that the rights granted to Den-Mat pursuant to this Agreement are exclusive only
in the Territory and that Remedent may appoint other Persons to become
manufacturers, distributors or licensees of the Products for sale in countries
outside of the Territory.
3.2 Rights in Future
Intellectual Property.
3.2.1 Remedent. Remedent
shall promptly notify Den-Mat of any Intellectual Property developed (whether
directly or indirectly, individually or jointly with others) by Remedent (or any
of Remedent’s Affiliates) or acquired by Remedent (or any of Remedent’s
Affiliates) after the Effective Date related to the Products and concurrently
therewith deliver such Intellectual Property to Den-Mat as provided in Section
3.3. The grants provided in Section 3.1 shall not
apply to any Intellectual Property licensed by Remedent after the Effective Date
for which, despite commercially reasonable efforts, Remedent is not able to
obtain a sublicense or the right to grant a sublicense enabling Remedent to
grant the license contemplated by Section 3.1; provided, however, Remedent
shall not thereafter use such Intellectual Property in competition with the
Products in the Territory during the term of this Agreement. Upon
being advised that any Intellectual Property Remedent desires to license from
another Person after the Effective Date would not be available to Den-Mat as
contemplated by Section 3.1, Remedent
shall give prompt written notice of such event to Den-Mat and thereafter will
not license such Intellectual Property without first cooperating with Den-Mat
for a period of at least fifteen (15) Business Days, in such manner as Den-Mat
may reasonably request, to obtain a license of such Intellectual Property, on
commercially reasonable terms, in the scope contemplated by Section 3.1 or in
such more limited scope as Den-Mat may agree.
-3-
3.3 Delivery of Intellectual
Property. In connection with the licenses granted to Den-Mat
pursuant to Section
3.1, Remedent shall deliver to Den-Mat, not less than one (1)
copy of all computer object code (in machine readable form) and all computer
source code and other technology related to the Intellectual Property of
Remedent that is related to the Products, provided however,
that Remedent’s delivery obligations under this Section 3.3 relating
to any Intellectual Property licensed from a Person other than Remedent will be
subject to any restrictions that may apply in the license agreements related
thereto and, in the event any such restrictions would prohibit delivery to
Den-Mat of any such object code, source code or other Intellectual Property,
then the restricted object code, source code or other intellectual property
shall be held in an escrow arrangement of which Remedent shall cause Den-Mat to
be a direct beneficiary in the event of a Remedent Bankruptcy. From
time to time as upgrades or updates of the source code are developed, Remedent
and/or its Affiliates shall deliver to Den-Mat a copy of each such upgrade and
update. Notwithstanding anything contained in this Agreement to the
contrary, in the event of a Remedent Bankruptcy, Den-Mat shall have the
perpetual right and license to use object code, source code and other
Intellectual Property delivered to or held in escrow for the benefit of Den-Mat
pursuant to the terms of this Agreement. Den-Mat will protect and
maintain the confidentiality of such source code and any confidential
Intellectual Property provided to it hereunder to the same extent as it protects
and maintains the confidentiality of its own source code and confidential
Intellectual Property.
3.4 Cessation of
Use.
3.4.1 End of
Agreement. Upon termination of this Agreement (other than due
to a Remedent Bankruptcy) or, if later, upon the conclusion of any applicable
Sell-Off Period, Den-Mat shall cease using, and shall use its commercially
reasonable efforts to cause its subcontractors and subdistributors to cease
using, all Intellectual Property of Remedent and all materials, in any format or
media, bearing or using the Intellectual Property of Remedent, and promptly
return or destroy all tangible and electronic copies of such Intellectual
Property, as requested by Remedent, and upon the request of Remedent, certify
such destruction in writing. Notwithstanding the foregoing provisions of this
Section 3.4.1,
Den-Mat may retain one (1) copy of the Intellectual Property of Remedent for
Den-Mat’s internal compliance purposes, provided Den-Mat shall protect and
maintain the confidentiality of the Intellectual Property retained by it to the
same extent as it protects and maintains the confidentiality of its own
Intellectual Property.
3.5 Ownership of Intellectual
Property.
3.5.1 Independently Developed
Intellectual Property. Subject to Section 3.5.2, each
Party shall have the sole and exclusive right to apply for, prosecute and obtain
all rights, grants, registrations, orders or proprietary interests of any
nature, including, without limitation, patents, copyrights, industrial design
and trademark and service xxxx registrations and any other registrations or
grants of rights that are analogous thereto in any and all countries throughout
the world in respect of Intellectual Property now owned or independently
developed by such Party after the Effective Date. In addition, with
respect to any Intellectual Property related to the Products developed by
Remedent (and not subject to Section 3.5.2),
Remedent, in its sole discretion at its own cost and expense may apply for,
prosecute and obtain all rights, grants, registrations, orders or proprietary
interests of any nature, including, without limitation, patents, copyrights,
industrial design and trademark and service xxxx registrations and any other
registrations or grants of rights that are analogous thereto in the Territory,
in each case as reasonably requested by Den-Mat, and take such other actions as
Den-Mat may reasonably request to protect such Intellectual Property in the
Territory. In the event Remedent fails to take any action reasonably
requested by Den-Mat as described in the preceding sentence, including, without
limitation, upon the occurrence of a Remedent Bankruptcy: (a) Den-Mat may take
such action in the Territory, (b) Remedent hereby authorizes Den-Mat to take any
such action in its name, (c) Remedent shall provide such assistance as Den-Mat
may reasonably request in connection therewith, (d) Den-Mat shall be reimbursed
for the costs and expenses incurred by it in connection with such actions as a
priority payment from any sale, license fees, royalties, proceeds of
infringement actions or other amounts received by Remedent or Den-Mat with
respect to such Intellectual Property in the Territory covered by such rights,
grants, registration orders or proprietary interests, (e) Remedent shall be
reimbursed for the costs and expenses incurred by it in connection with
providing cooperation to Den-Mat related to obtaining such rights, grants,
registration orders or proprietary interests as a second priority payment from
any sale, license fees, royalties, proceeds of infringement actions or other
amounts received by Remedent or Den-Mat with respect to such Intellectual
Property in the Territory covered by such rights, grants, registration orders or
proprietary interests, (f) each of Den-Mat and Remedent shall take such actions
as the other may reasonably request to implement the provisions of this Section 3.5.1 with
respect to any particular Intellectual Property and (g) the rights, grants,
registration orders or proprietary interests so obtained shall be jointly owned
by Remedent and Den-Mat.
-4-
3.5.2 Jointly Arising Intellectual
Property. In the event the Parties jointly develop any
Intellectual Property related to the Products for which a patent or copyright
would be available, and if either Remedent or Den-Mat desires to pursue a patent
or copyright on such Intellectual Property in any jurisdiction, then the Party
who desires to pursue such patent or copyright (in this capacity, the “Filing Party”), shall
deliver a notice (a “Notice of Intent to
File”) to the other Party identifying the subject Intellectual Property,
whether the filing will be for a patent or copyright and the jurisdiction in
which such filing will be made. The Party receiving such Notice of
Intent to File may then elect to participate in such filing, in which case it
shall cooperate with the Filing Party in connection with such filing and the
subsequent prosecution thereof and share the related costs and expenses evenly
with the Filing Party. If the Party receiving such Notice of Intent
to File does not deliver to the Filing Party a notice that it elects to
participate in such filing and prosecution within thirty (30) days after
receiving such Notice of Intent to File, the Filing Party may proceed with such
filing and prosecution individually. If a Filing Party proceeds with
such a filing and prosecution individually: (a) the other Party hereby
authorizes the Filing Party to identify such Party as a co-owner of the subject
Intellectual Property and a co-holder of the rights filed for, (b) the other
Party shall provide such assistance as the Filing Party may reasonably request
in connection therewith, (c) the Filing Party shall be reimbursed for the costs
and expenses incurred by it in connection with such filing and prosecution as a
priority payment from any sale, license fees, royalties, proceeds of
infringement actions or other amounts received by Remedent or Den-Mat with
respect to such Intellectual Property in the territory covered by such patent or
copyright, (d) the other Party shall be reimbursed for the costs and expenses
incurred by it in connection with providing cooperation as a second priority
payment from any sale, license fees, royalties, proceeds of infringement actions
or other amounts received by Remedent or Den-Mat with respect to such
Intellectual Property in the territory covered by such patent or copyright, (e)
each of Den-Mat and Remedent shall take such actions as the other may reasonably
request to implement the provisions of this Section 3.5.2 with
respect to such Intellectual Property and (f) the patents or copyrights so
obtained shall be jointly owned by Remedent and
Den-Mat. Notwithstanding the foregoing, upon the occurrence of a
Remedent Bankruptcy, Den-Mat may apply for and obtain exclusive ownership of
patents and/or copyrights in any jurisdiction in which such Intellectual
Property is then unregistered.
-5-
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4.
|
Manufacturing
Rights.
|
4.1 Products. Remedent
hereby grants to Den-Mat the non-exclusive worldwide right to manufacture and
produce the Products for sale in the Territory or have the Products manufactured
and produced for Den-Mat and/or its subcontractors and subdistributors for sale
in the Territory.
4.2 Termination of
Right. Upon termination of this Agreement, or, if later, upon
the conclusion of any applicable Sell-Off Period, Den-Mat and/or its
subcontractors and subdistributors, shall cease having the right to manufacture
Products.
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5.
|
Den-Mat
Support Obligations.
|
5.1 Marketing Support
Efforts. Within 12 months after Den-Mat becomes Fully
Operational, Den-Mat shall spend a minimum of one million dollars ($1,000,000),
(the “Initial Launch
Spend”), to develop and implement commercially reasonable marketing
support to maximize sales of Remedent products (which for purposes hereof shall
include the Products, as well as the GlamSmile Products and the Other Products
(as such terms are defined in the 2008 Agreement)), which support shall
include:
[***]
It is
understood and agreed that any of the foregoing advertising, mailings, and other
sales and marketing materials may include Den-Mat products and all expenditures
incurred in connection therewith shall be considered as part of, and counted
toward satisfying, Den-Mat’s obligation for the Initial Launch Spend so long as
the Remedent products are those most prominently and predominantly featured in
such sales and marketing materials.
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6.
|
Payments.
|
6.1 Development
Payment. Subject to the terms and conditions of this
Agreement, Den-Mat shall pay a non-refundable development fee of Four Hundred
Thousand Dollars ($400,000) (the “Development Payment”)
to Remedent. The Development Payment shall be payable to Remedent (a)
Fifty Thousand Dollars ($50,000) within seven (7) days after the Effective Date
and, (b) Three Hundred Fifty Thousand Dollars ($350,000) within twenty one (21)
days after the Effective Date. As additional inducement for Den-Mat’s
payment of the Development Payment, Remedent hereby acknowledges that Den-Mat
has and shall have no obligation under Section 7.3 of that certain Sub-License
Agreement between Den-Mat and Remedent Belgium dated October 21, 2008 for the
purchase of the haptic arm products, but such Sub-License Agreement shall remain
in full force and effect in all other respects. In the event that
Den-Mat fails to purchase the quantities set forth in Section 7.2 of said
Sub-License Agreement then Remedent’s sole remedy shall be to convert Den-Mat
into a non-exclusive sub-licensee and distributor.
6.2 Fixed License
Payment. Subject to the terms and conditions of this Agreement
(including the satisfaction of the closing conditions described in Section 16), Den-Mat
shall pay a non-refundable license fee of Six Hundred Thousand Dollars
($600,000) (the “License Payment”) to
Remedent. The License Payment shall be payable to Remedent in three
(3) equal installments of $200,000 each, the first installment being payable on
the Closing Date, and the second and third installments being payable on the
30th
and 60th day,
respectively, after the Closing Date.
-6-
6.3 Royalty
Payments. During the term of this Agreement, for each sale of
Products, Den-Mat shall pay to Remedent, or its designee, a royalty
payment equal to [***] (the “Royalty Rate”) of
Den-Mat’s Net Revenues generated by the sale of the Products. In
addition, in the event that Den-Mat appoints any sublicensees with respect to
the Products, (a) Den-Mat shall pay Remedent [***] percent of the royalties it
receives from its sub-licensees with respect to sales of the Products made by
its sublicensees (the “Royalty Split”), and
(b) the amount paid to Remedent in Royalty Split shall not be less than [***]
per Case (as defined below), including, for this purpose, any royalty paid by
Den-Mat pursuant to the first sentence of this Section 6.3 with respect to
Product used in connection with such Case. For purposes hereof, a
“Case” shall
mean a dentist’s order for Product in connection with a particular patient
prescription with respect to which Den-Mat receives a royalty from its
sublicensee.
6.4 Payment and
Reports. For purposes of Section 6.3 , a sale
shall be deemed to have been made by Den-Mat at the time the related revenue is
recognized by Den-Mat and/or any subdistributor for its internal
accounting purposes (in accordance with GAAP). Within thirty (30)
days after the end of each calendar quarter, Den-Mat shall deliver to Remedent a
certified statement from an officer of Den-Mat setting forth (a) the total
amount of Den-Mat’s Net Revenues generated by the sale of the Products during
such quarter, and (b) a calculation of the royalties payable to Remedent under
Section
6.3. Concurrently with delivering such statement Den-Mat shall
pay to Remedent, or its designee, the amount of the royalty payment set forth on
such statement.
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7.
|
Requirements
to Maintain Exclusivity.
|
7.1 Den-Mat
Exclusivity.
7.1.1 Initial Exclusivity
Period. Den-Mat’s rights as exclusive distributor and licensee
under Sections
2 and 3
(“Den-Mat’s
Exclusivity”) shall continue at least through the end of the first
Contract Period and thereafter throughout the term of this Agreement, unless
terminated in accordance with Section
7.1.2.
7.1.2 Termination of
Exclusivity. Den-Mat’s Exclusivity shall terminate at the end
of any Contract Period that Den-Mat fails to pay minimum royalties to Remedent
in the amount set forth on Exhibit A annexed hereto for such Contract
Period. Notwithstanding the foregoing, Den-Mat may avoid termination
of Den-Mat’s Exclusivity by paying to Remedent within thirty (30) days from the
end of such Contract Period an amount equal to the difference between the
minimum royalties for such Contract Period as set forth on Exhibit A and the
amount of royalties actually paid by Den-Mat for such Contract
Period. If Den-Mat’s Exclusivity is terminated, Den-Mat may, at its
option, either terminate this Agreement upon ninety (90) days written notice to
Remedent, or become a non-exclusive distributor and licensee. If
Den-Mat elects to become a non-exclusive distributor and licensee, this
Agreement and Den-Mat’s obligation to pay royalties under Section 6, shall
nevertheless continue.
-7-
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8.
|
Remedent
Support Obligations.
|
8.1 Remedent’s Marketing
Support. Remedent shall develop and implement commercially
reasonable sales and marketing support to the Den-Mat sales
effort. Any materials developed by Remedent will be the property of
Remedent, but Den-Mat shall have the exclusive right to use such materials in
the Territory during the term of this Agreement. Remedent shall use
its commercially reasonable efforts to provide the following support (all of
which shall be subject to Den-Mat’s reasonable approval) for Den-Mat’s sales and
marketing efforts:
[***]
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9.
|
Enforcement
or Transfer of Rights.
|
9.1 Intellectual
Property.
9.1.1 From
and after the date of this Agreement, Remedent, at its sole discretion, in
addition to its obligations under Section 3.5.1, shall
maintain all of its Intellectual Property related to the Products and enforce
all of its rights to protect against any infringing or unauthorized use of such
Intellectual Property in the Territory by any Person, except in each case, with
the prior written consent of Den-Mat. Without limitation to the
preceding sentence, (a) Remedent shall, at its sole discretion, pay all renewal
and maintenance fees on their trademarks, patents and other Intellectual
Property in the Territory related to the Products, (b) Remedent shall not
acquiesce in any infringement by any Person of such Intellectual Property, nor
shall it waive or forbear the exercise of its rights with respect to any such
infringement, without, in each case, the prior written consent of Den-Mat and
(c) Remedent shall not agree to or acquiesce in any amendment, waiver or
forbearance of any provision of any license or other grant by it of any interest
in any such Intellectual Property or fail to enforce any right of termination
arising from a breach thereof, without, in each case, obtaining the prior
written consent of Den-Mat. In the event Remedent fails to take any
such action reasonably requested by Den-Mat referred to in this Section 9.1.1,
Den-Mat may take such action, and Remedent hereby authorizes Den-Mat to take any
such action in its name. If Remedent requests the assistance of
Den-Mat in connection with the taking of any actions by Remedent under this
Section 9.1.1,
then Den-Mat shall be entitled to recoup its fees and expenses related thereto
either from any recovery obtained by Remedent (after Remedent has recouped its
own costs and expenses related thereto) or by off-set against its payment
obligations to Remedent under this Agreement. In addition, in the
event Remedent fails to commence an action reasonably requested by Den-Mat and
if Den-Mat commences an action in accordance with this Section 9.1.1
involving the commencement or threatened commencement of an action involving an
infringement of the Intellectual Property of Remedent related to the Products,
and Den-Mat is successful on such claims, then the amount payable by the
infringing party shall be applied: first, to pay any fees and expenses incurred
by Den-Mat in connection with such action, next to pay any fees and expenses
incurred by Remedent in connection with such action at the request of Den-Mat
and, finally, any excess shall be allocated [***] to Den-Mat and [***] to
Remedent.
-8-
9.1.2 So
long as Den-Mat’s rights under Section 2.1.1. and Section
3.1.1. remain exclusive to Den-Mat pursuant to the terms of this
Agreement, Remedent agrees that in no case, under bankruptcy or otherwise, shall
it assign or license any of the Intellectual Property related to the Products or
dispose of any interest therein (other than license and distribution agreements
in territories other than the Territory), unless prior to effecting any such
assignment or license by Remedent of the Intellectual Property, Remedent shall
obtain the assignee’s or licensee’s (as applicable) written acknowledgement of
the existence of this Agreement and Den-Mat’s rights hereunder.
9.1.3 Remedent
acknowledges that this Agreement is an executory contract that would be subject
to the provisions of section 365(n) of the U.S. Bankruptcy Code if in the future
an involuntary or voluntary proceeding shall have been instituted in a court
having jurisdiction seeking a decree or order for relief in respect of Remedent
under any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or for the appointment of a receiver, liquidator, assignee,
custodian, trustee, sequestrator (or similar official) of Remedent or for any
substantial part of its property, or for the winding-up or liquidation of its
affairs, and further acknowledges that failure to perform continuing obligations
under this Agreement would constitute material breach of this
Agreement. Remedent believes that the royalty payments set forth in
this Agreement are distinct from and separate from payments made in this
Agreement for other services. Remedent agrees that Den-Mat may assume
or retain the licenses granted under this Agreement if any such proceeding has
been instituted, regardless of whether the underlying license is interpreted to
prohibit or restrict assignment in any manner, provided that Den-Mat continues
to timely make the royalty payments under this Agreement.
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10.
|
Training
and Support; Delivery of Customer
Information.
|
10.1 Manuals and
Information. As promptly as practical after execution and
delivery of this Agreement, Remedent shall deliver to Den-Mat information,
materials, manuals and other technical documents of Remedent sufficient to
enable Den-Mat to manufacture, market, distribute, license and sell Products in
the Territory as contemplated by this Agreement. In addition,
Remedent shall provide manufacturing personnel to train Den-Mat staff, on fully
installed software and hardware, in the technical aspects of manufacturing the
Products using the First Fit Technology.
10.2 Marketing and Sales
Assistance.
10.2.1 So
long as Den-Mat’s rights under Section 2.1.1. and Section
3.1.1. remain exclusive to Den-Mat pursuant to the terms of this
Agreement, if Remedent is contacted by any Person seeking to acquire Products in
the Territory, Remedent shall refer such sales lead promptly to
Den-Mat.
10.2.2 In
addition to its obligations under Section 8 and so long
as Den-Mat’s rights under Section 2.1.1. and Section
3.1.1. remain exclusive to Den-Mat pursuant to the terms of this
Agreement Remedent shall use commercially reasonable efforts to provide the
following commercial and technical assistance to Den-Mat in connection with the
marketing, distribution and sale by Den-Mat of Products under this
Agreement,:
(a) Remedent
shall train the appropriate employees of Den-Mat in marketing the
Products;
-9-
(b) At
least one (1) time during each calendar year during the term of this Agreement,
qualified employees of Remedent shall meet with representatives of Den-Mat, at
Remedent’s expense and at such location as Den-Mat may designate, to assist in
technical training, sales and/or important customer meetings;
(c) Remedent
shall use all commercially reasonable efforts to cause the individuals specified
on Schedule
10.2.2 to provide sales and marketing training, education of Den-Mat’s
sales and marketing force and customers and other services related to sales and
marketing as Den-Mat may reasonably request from the Effective Date through at
least December 31, 2009, at no cost or expense to Den-Mat. If any of
such persons ceases to be an employee of or consultant to Remedent, Remedent
shall use its commercially reasonable efforts to cause a replacement for such
individual, as Remedent and Den-Mat may agree, to provide such services to
Den-Mat. Any training and support with respect to marketing and sales
assistance and training beyond the scope set forth in this Section 10.2.2 or
Section 8 shall
be at Den-Mat’s expense.
10.3 Advertising. So
long as Den-Mat’s rights under Section 2.1.1. and Section
3.1.1. remain exclusive to Den-Mat pursuant to the terms of this
Agreement, Remedent shall not mail, publish or broadcast (including by email or
other electronic means) any advertisement or other promotional materials related
to the Products in the Territory unless Den-Mat has given its prior written
approval to such advertisement or other promotion.
10.4 Regulatory
Matters. Den-Mat shall be responsible for obtaining all
regulatory approvals (for the joint benefit of Remedent and Den-Mat) as may be
required in connection with the manufacture, distribution, marketing and sale of
the Products in the Territory in each jurisdiction where such approval is
required to be obtained. Remedent shall provide to Den-Mat, upon
reasonable request, materials in its possession and access to their employees,
that Remedent reasonably determines to be relevant to any regulatory approval
sought or required to be obtained by it with respect to the manufacture,
distribution, marketing or sale of the Products.
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11.
|
[RESERVED]
|
|
12.
|
Payment
Terms, Taxes and Audits.
|
12.1 Payment. All
payments due under this Agreement to Remedent shall be made by bank wire
transfer in immediately available funds to the account of Remedent designated on
Schedule 12.1
or such other account designated by notice from Remedent to Den-Mat from time to
time. All payments hereunder shall be in the legal currency of the
United States of America, and all references to “$” or “Dollars” shall refer to
United States dollars. If any currency conversion shall be required
in connection with the calculation of amounts payable hereunder, such conversion
shall be made in a manner consistent with Den-Mat’s normal practices used to
prepare its audited financial statements for external reporting purposes; provided that such
practices use a widely accepted source of published exchange
rates. Any payment under this Agreement shall be due on such date as
specified in this Agreement and, in the event that such date is not a Business
Day, then the next succeeding Business Day.
-10-
12.2 Taxes.
12.2.1 Den-Mat. Den-Mat
shall be responsible for all taxes, duties, tariffs and/or license fees (“Taxes”) imposed
with respect to (a) Den-Mat’s marketing, distribution and sales of Products and
(b) Den-Mat’s performance of its obligations under this Agreement, and Den-Mat
shall pay all such Taxes in accordance with the regulations of any applicable
taxing authority and applicable law
12.2.2 Remedent. Remedent
shall be responsible for all Taxes imposed upon it with respect to Remedent’s
performance of its obligations under this Agreement, and Remedent shall pay all
such Taxes for which it is responsible in accordance with the regulations of any
applicable taxing authority and applicable law.
12.3 Audit. Upon
not less than sixty (60) days’ prior written notice to Den-Mat, Remedent shall
have the right, at its expense, to have an internationally recognized
independent public accounting firm which is reasonably acceptable to Den-Mat
examine during normal business hours the books and records of Den-Mat and its
Affiliates to the extent necessary to verify the accuracy of any amount paid to
Remedent under this Agreement; provided, however, that (a)
such examinations shall not be conducted more frequently than annually, (b) no
such examination may be of a period previously examined and (c) such firm
executes and delivers to Den-Mat and its Affiliates prior to any such
examination a written agreement in form and substance reasonably acceptable to
Den-Mat pursuant to which such firm agrees to disclose to Remedent only the
final results of such examination and not the information (including resale
price lists and actual resale prices), books, records, workpapers or materials
used to determine such final results. Den-Mat shall retain its books and records
necessary to verify such royalty amounts for a period of not less than three (3)
years. Any examination of Den-Mat’s books, records and royalty
calculations under this Section 12.3 shall be
at Remedent’s expense; provided, however, that if it
is determined that the payment of royalties by Den-Mat with respect to any
period reviewed by Remedent is understated by [***] or more, Den-Mat shall
reimburse to Remedent costs of such examination.
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13.
|
Term
and Termination.
|
13.1 Term. This
Agreement shall remain in effect unless and until terminated as set forth in
Section 7.1 or
this Section
13.
13.2 Termination for
Cause.
13.2.1 By
Remedent. This Agreement may be terminated by Remedent: (a) at
any time upon thirty (30) days’ prior written notice to Den-Mat in the event
Den-Mat materially breaches any of its obligations under this Agreement and
fails to cure such breach within such thirty (30) day period (or ten (10) days
for an undisputed payment obligation); (b) immediately upon notice of
termination to Den-Mat if an involuntary or voluntary proceeding shall have been
instituted in a court having jurisdiction seeking a decree or order for relief
in respect of Den-Mat under any applicable bankruptcy, insolvency or other
similar law now or hereafter in effect, or for the appointment of a receiver,
liquidator, assignee, custodian, trustee, sequestrator (or similar official) of
Den-Mat, or for any substantial part of its property, or for the winding-up or
liquidation of its affairs, or Den-Mat fails generally to pay its debts as they
become due, or takes any corporate action in furtherance of any of the
foregoing; or (c) upon thirty (30) prior written notice to Den-Mat in the event
that Den-Mat is not Fully Operational within nine (9) months from the date of
this Agreement, provided that Remedent has delivered the First Fit Technology to
Den-Mat and has provided all training of Den-Mat personnel, as required by Sections 8 and 10, at least sixty
(60) days prior to its notice of termination under this Section
13.2.1(c).
-11-
13.2.2 By
Den-Mat. This Agreement may be terminated by Den-Mat: (a) at
any time upon thirty (30) days’ prior written notice to Remedent (subject to
reduction under the circumstances described in Section 19.3) in the
event of Remedent materially breaches any of its obligations under
this Agreement and fails to cure such breach within such thirty (30) day period;
or (b) immediately upon notice of termination delivered to Remedent if an
involuntary or voluntary proceeding shall have been instituted in a court having
jurisdiction seeking a decree or order for relief in respect of Remedent under
any applicable bankruptcy, insolvency or other similar law now or hereafter in
effect, or for the appointment of a receiver, liquidator, assignee, custodian,
trustee, sequestrator (or similar official) of Remedent, or for any substantial
part of its property, or for the winding-up or liquidation of its affairs, or
Remedent fails generally to pay its debts as they become due, or takes any
corporate action in furtherance of any of the foregoing (each such event being
referred to herein as a “Remedent Bankruptcy”).
13.3 Sell-Off
Period. Upon the termination of this Agreement by Den-Mat
pursuant to Section
7.1, Section 13.2.2 or Section 19 (but not
upon a termination by Remedent in accordance with Section 13.2.1),
Den-Mat shall be permitted to consummate sales in process (including the
manufacture and sale to complete open orders), and make sales of Products in
transit or in its inventory as of the date of termination for the duration of
the Sell-Off Period. Upon the conclusion of the Sell-Off Period,
Den-Mat shall promptly, but in no event later than fifteen (15) days after the
end of the Sell-Off Period, sell to Remedent all unsold Products and Remedent
shall acquire such Products from Den-Mat at Den-Mat’s cost for such
Products. If Remedent terminates this Agreement in accordance with
Section 13.2.1,
it may request an inventory count from Den-Mat and access for a physical
inspection of the Products, and Den-Mat will provide such access and inventory
count promptly (and in any event within ten (10) Business Days) after receiving
such request. Within ten (10) Business Days after receiving such
inventory count, Remedent shall deliver a notice to Den-Mat electing either to
permit Den-Mat to continue to sell Products during the Sell-Off Period or
electing to acquire all such Products then held by Den-Mat at Den-Mat’s
cost.
13.4 Survival. The
provisions of Sections
1, 12.2,
12.3, 13.3, 13.4, 17, 18 and 20 shall survive any
termination of this Agreement, and termination of this Agreement shall not
release any Party from liability to the other Parties for any breach of this
Agreement occurring or arising prior to such termination.
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14.
|
Representations
and Warranties.
|
14.1 Representations and
Warranties of Remedent. As of the Effective Date, Remedent
represents and warrants to Den-Mat as follows:
-12-
14.1.1 Organization. Remedent
Nevada is a duly organized corporation, validly existing and in good standing
under the laws of the State of Nevada and has the corporate power and authority
to conduct its business as it is currently conducted by it and to own, operate
and lease its assets. Remedent Belgium is a duly organized corporation, validly
existing and in good standing under the laws of Belgium and has the corporate
power and authority to conduct its business as it is currently conducted by it
and to own, operate and lease its assets. Each of Remedent Nevada and
Remedent Belgium is duly licensed or qualified to do business as a foreign
corporation and is in good standing in each jurisdiction in which it is required
to be so licensed or qualified, except where the failure to be so qualified
would not have a material adverse effect on Remedent Nevada, Remedent Belgium,
their respective businesses or their collective ability to fulfill their
obligations under this Agreement.
14.1.2 Authorization. Each
of Remedent Nevada and Remedent Belgium has all required power and authority to
enter into this Agreement and the other agreements, documents and instruments
contemplated by this Agreement to which it will be a party (collectively,
the “Remedent
Transaction Documents”), to perform their respective obligations
hereunder and thereunder and to consummate the transactions contemplated hereby
and thereby, including the appointments and grants set forth in this
Agreement. The execution and delivery of this Agreement and the other
Remedent Transaction Documents to which either Remedent Nevada or Remedent
Belgium is a party and the consummation of the transactions contemplated hereby
and thereby have been duly authorized by directors and, to the extent required
by applicable law or otherwise, by stockholders entitled to vote thereon of
Remedent Nevada or Remedent Belgium, as applicable, and no other corporate
action or approval by Remedent Nevada or Remedent Belgium, as applicable, is
necessary for the execution, delivery or performance of this Agreement or such
other Remedent Transaction Documents by Remedent Nevada or Remedent Belgium, as
applicable. This Agreement has been, and each of the other Remedent
Transaction Documents to which Remedent Nevada or Remedent Belgium is a party
will be when executed and delivered in accordance with the terms and conditions
hereof, duly executed and delivered by Remedent Nevada or Remedent Belgium, as
applicable, and this Agreement is, and each of the other Remedent Transaction
Documents to which Remedent Nevada or Remedent Belgium, as applicable, is a
party will be when executed and delivered in accordance with the terms and
conditions hereof, a valid and binding obligation of Remedent Nevada or Remedent
Belgium, as applicable, enforceable against Remedent Nevada or Remedent Belgium,
as the case may be, in accordance with each of its terms, except as such
enforceability may be limited by (i) bankruptcy, insolvency, reorganization,
moratorium or other similar laws, now or hereafter in effect, relating to or
limiting creditors’ rights generally and (ii) general principles of equity
(whether considered in an action in equity or at law).
14.1.3 Compliance with
Laws. Neither Remedent Nevada nor Remedent Belgium is in
violation of any applicable Law which
would reasonably be expected to have a material adverse impact on its business,
its assets or its ability to fulfill its obligations under this
Agreement. Neither Remedent Nevada nor Remedent Belgium has received
any written or, to the Knowledge of Remedent, oral notice from any Governmental
Authority to the effect that either Remedent Nevada or Remedent Belgium is not
in compliance with any applicable Law. To the Knowledge of Remedent,
no investigation, review or other Proceeding by any Governmental Authority with
respect to either of Remedent Nevada or Remedent Belgium in relation to any
actual or alleged violation of Law is pending or, to the Knowledge of Remedent,
threatened, nor has any of Remedent Nevada or Remedent Belgium received any
written or, to the Knowledge of Remedent, oral notice from any Governmental
Authority indicating an intention to conduct any such investigation, review or
other Proceeding. None of Remedent Nevada, Remedent Belgium, any of
their respective assets or properties, or any of their respective directors,
officers or stockholders in their capacities as such, is a party to any consent
decree, Order or similar restriction that restricts the conduct of business by
Remedent Nevada or Remedent Belgium or which would otherwise reasonably be
expected to have a material adverse impact on the ability of Remedent Nevada or
Remedent Belgium to conduct their respective businesses.
-13-
14.1.4 No Conflicts;
Consents. Neither the execution and delivery of this Agreement
or the other Remedent Transaction Documents by Remedent Nevada or Remedent
Belgium, nor the consummation by them of the transactions contemplated hereby
and thereby, nor the fulfillment by Remedent Nevada and Remedent Belgium of any
of the terms and conditions hereof and thereof will: (a) violate any applicable
Law or any Order applicable to Remedent Nevada or Remedent Belgium or any of
their respective assets or properties; or (b) conflict with, violate, result in
a breach of, constitute a default under or create an event that, with or without
the giving of notice or the lapse of time or both, will result in the
acceleration of, create in any party the right to accelerate, terminate, modify,
or cancel, or result in the loss of a benefit, or require any notice under any
agreement, contract, lease, license, permit, instrument or other arrangement to
which it is a party or by which it is bound or to which any of its assets is
subject (or result in the imposition of any lien upon any of its
assets). No notice to or consent of or with any Governmental
Authority, or other Person, is required to be obtained by Remedent Belgium or
Remedent Nevada in connection with its execution and delivery of this Agreement
or the performance of its obligations hereunder.
14.1.5 Remedent Intellectual
Property. Schedule 14.1.5 lists
each patent, registered trademark, design xxxx, service xxxx and trade name,
registered copyright and domain name, and each application for any of the
foregoing, that is included among the Intellectual Property owned by
or licensed to Remedent related to the Products. Except as set forth
in Schedule
14.1.5, (a) Remedent has all right, title and interest in and to the
Intellectual Property related to the Products owned by it, free and clear of all
liens or other encumbrances; (b) there is no claim or notice of infringement of
the Intellectual Property rights of any other Person pending or threatened in
writing within the two (2) year period preceding the date hereof, against
Remedent relating to the operation of Remedent’s business; (c) each material
item of Intellectual Property related to the Products owned by Remedent is
valid, subsisting, in full force and effect, has not been abandoned or passed
into public domain, and all necessary registration, maintenance and renewal
documentation and fees in connection with such Intellectual Property of Remedent
have been timely filed with the appropriate authorities and paid; (d) to the
Knowledge of Remedent, each material item of Intellectual Property related to
the Products licensed to and used by Remedent is valid, subsisting, in full
force and effect, has not been abandoned or passed into public domain, and all
necessary registration, maintenance and renewal documentation and fees in
connection with such Intellectual Property used by Remedent have been timely
filed with appropriate authorities and paid; (e) to the Knowledge of Remedent,
no Person is infringing or misappropriating the Intellectual Property of
Remedent except for such infringements or misappropriations that would not
reasonably be likely to have, individually or in the aggregate, a material
adverse effect on Remedent, its business or its ability to fulfill its
obligations under this Agreement; (f) no present or former employee of Remedent
has any proprietary, financial or other interest, direct or indirect, in any
material item of the Intellectual Property of Remedent; and (g) Remedent has
taken reasonable precautions to protect trade secrets constituting material
Intellectual Property owned or used by Remedent, including the execution of
appropriate agreements. Use by Remedent of the Intellectual Property
owned or licensed by Remedent does not infringe, misappropriate or violate any
Intellectual Property rights of any Person.
-14-
14.1.6 Significant
Contracts. There are no contracts, agreements, indentures, notes, bonds,
loans, instruments, leases, conditional sales contracts, mortgages, licenses,
franchise agreements or undertakings, commitments or arrangements to which
Remedent is a party and which grant any distribution rights related to any of
the Products or which grant any Person any interest in the Intellectual Property
of Remedent or any of its Affiliates related to the Products.
14.1.7 Litigation. Except
as set forth in Schedule 14.1.7,
there is no Proceeding pending or, to the Knowledge of Remedent, threatened in
writing against Remedent that would reasonably be likely to have, individually
or in the aggregate, a material adverse effect on Remedent, its business or its
ability to fulfill its obligations under this Agreement. Except as
set forth in Schedule
14.1.7, Remedent is not subject to any unsatisfied Order entered in any
Proceeding.
14.1.8 Product
Liability. There are no existing or threatened product
liability or other similar claims against either of Remedent Nevada or Remedent
Belgium for products or services of Remedent Nevada or Remedent
Belgium. None of Remedent Nevada nor Remedent Belgium has received
any statements, citations, decisions or orders by any Governmental Authority
stating that any Product manufactured, sold, shipped, designed, marketed,
distributed or otherwise introduced into the stream of commerce at any time by
any or all of Remedent Nevada and Remedent Belgium is defective or unsafe or
fails to meet any standards promulgated by any such Governmental
Authority. To the Knowledge of Remedent, there are no material latent
or overt design, manufacturing or other defects in any Product. All
Products sold by Remedent in its business comply in all material respects with
all industry and trade association standards and legal requirements, if any,
applicable to such Products, including consumer product, manufacturing,
labeling, quality and safety laws of the United States and each state in which
the Products are sold and each other jurisdiction (including foreign
jurisdictions) in which the Products are sold.
14.1.9 Insurance. Remedent
maintains adequate policies of insurance to provide coverage to Remedent Nevada
and Remedent Belgium, their assets and their businesses, and all such policies
(a) are currently valid, outstanding and enforceable, (b) provide adequate
coverage for the business and assets of Remedent; and (c) are sufficient for
compliance with all applicable Laws; and none of Remedent Nevada nor Remedent
Belgium has received any written, or to the Knowledge of Remedent, oral notice
of cancellation, termination, non-renewal or reduction in or refusal of coverage
under any policy of insurance within the past three (3) years or other
indication that any insurance policy is no longer in full force and effect or
will not be renewed and no material dispute with any insurance carrier exists
with respect to the scope of any insurance coverage.
-15-
14.1.10 Disclosure. No
representation, statement, or information provided by or on behalf of either of
Remedent Nevada or Remedent Belgium, which is contained in this Agreement, any
of the schedules to this Agreement or any of the other Remedent Transaction
Documents, contains or will contain any untrue statement of a material fact or
omits or will omit a material fact necessary to make the information contained
therein not misleading.
14.2 Representations and
Warranties of Den-Mat. As of the Effective Date, Den-Mat
represents and warrants to Remedent as follows:
14.2.1 Organization. Den-Mat
is a duly organized limited liability company, validly existing and in good
standing under the laws of the State of Delaware, and has the limited liability
company power and authority to conduct its business as it is currently conducted
by it and to own, operate and lease its assets. Den-Mat is duly
licensed or qualified to do business as a foreign limited liability company and
is in good standing (to the extent such concept is applicable to it) in each
jurisdiction in which it is required to be so licensed or qualified, except
where the failure to be so qualified would not have a material adverse effect on
Den-Mat, its business or its ability to fulfill its obligations under this
Agreement.
14.2.2 Authorization. Subject
to obtaining Board Approval, Den-Mat has all required power and authority to
enter into this Agreement and the other agreements, documents and instruments
contemplated by this Agreement to which it will be a party (collectively,
the “Den-Mat
Transaction Documents”), to perform its obligations hereunder and
thereunder and to consummate the transactions contemplated hereby and
thereby. Upon obtaining Board Approval, the execution and delivery of
this Agreement and the other Den-Mat Transaction Documents to which Den-Mat is a
party and the consummation of the transactions contemplated hereby and thereby
will have been duly authorized by the managers and members of Den-Mat entitled
to vote thereon, and no other limited liability company action or approval by
Den-Mat is necessary for the execution, delivery or performance of this
Agreement or such other Den-Mat Transaction Documents by
Den-Mat. Subject to obtaining Board Approval, this Agreement has
been, and each of the other Den-Mat Transaction Documents to which Den-Mat is a
party will be when executed and delivered in accordance with the terms and
conditions hereof, duly executed and delivered by Den-Mat, and this Agreement
is, and each of the other Den-Mat Transaction Documents to which Den-Mat is a
party will be when executed and delivered in accordance with the terms and
conditions hereof, a valid and binding obligation of Den-Mat, enforceable
against it accordance with each of its terms, except as such enforceability may
be limited by (i) bankruptcy, insolvency, reorganization, moratorium or other
similar laws, now or hereafter in effect, relating to or limiting creditors’
rights generally and (ii) general principles of equity (whether considered in an
action in equity or at law).
14.2.3 Compliance with
Laws. Den-Mat is not in violation of any applicable Law which
would reasonably be expected to have a material adverse impact on its business,
its assets or its ability to fulfill its obligations under this
Agreement. Den-Mat has not received any written or, to the Knowledge
of Den-Mat, oral notice from any Governmental Authority to the effect that
Den-Mat is not in compliance with any applicable Law. To the
Knowledge of Den-Mat, no investigation, review or other Proceeding by any
Governmental Authority with respect to Den-Mat in relation to any actual or
alleged violation of Law is pending or, to the Knowledge of Den-Mat, threatened,
nor has Den-Mat received any written or, to the Knowledge of Den-Mat, oral
notice from any Governmental Authority indicating an intention to conduct any
such investigation, review or other Proceeding. None of Den-Mat, any
of its assets or properties, or any of its directors, officers or stockholders
in their capacities as such, is a party to any consent decree, Order or similar
restriction that restricts the conduct of business by Den-Mat or which would
otherwise reasonably be expected to have a material adverse impact on the
ability of Den-Mat to conduct its business.
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14.2.4 No Conflicts;
Consents. Neither the execution and delivery of this Agreement
or the other Den-Mat Transaction Documents by Den-Mat, nor the consummation by
Den-Mat of the transactions contemplated hereby and thereby, nor the fulfillment
by Den-Mat of any of the terms and conditions hereof and thereof will: (a)
violate any applicable Law or any Order applicable to Den-Mat or any of its
assets or properties; or (b) conflict with, violate, result in a breach of,
constitute a default under or create an event that, with or without the giving
of notice or the lapse of time or both, result in the acceleration of, create in
any party the right to accelerate, terminate, modify, or cancel, or result in
the loss of a benefit, or require any notice under any agreement, contract,
lease, license, permit, instrument, or other arrangement to which it is a party
or by which it is bound or to which any of its assets is subject (or, except as
permitted by Section
20.4, result in the imposition of any lien upon any of its
assets). No notice to or consent of or with any Governmental
Authority, or other Person, is required to be obtained by Den-Mat in connection
with Den-Mat’s execution and delivery of this Agreement or the performance of
its obligations hereunder, excluding notices given and consents obtained prior
to the date of this Agreement.
14.2.5 Litigation. There
is no Proceeding pending or, to the Knowledge of Den-Mat, threatened in writing
against Den-Mat that would reasonably be likely to have, individually or in the
aggregate, a material adverse effect on Den-Mat, its business or its ability to
fulfill its obligations under this Agreement. Den-Mat is not subject
to any unsatisfied Order entered in any Proceeding.
14.2.6 Insurance. Den-Mat
maintains adequate policies of insurance to provide coverage to it, its assets
and its business, and all such policies (a) are currently valid, outstanding and
enforceable, (b) provide adequate coverage for the business and assets of
Den-Mat and (c) are sufficient for compliance with all applicable Laws; and
Den-Mat has not received any written, or to the Knowledge of Den-Mat, oral
notice of cancellation, termination, non-renewal or reduction in or refusal of
coverage under any policy of insurance within the past three (3) years or other
indication that any insurance policy is no longer in full force and effect or
will not be renewed and no material dispute with any insurance carrier exists
with respect to the scope of any insurance coverage.
15. Closing. The
closing under this Agreement (the “Closing”) will take
place at the offices of Xxxxxxxx Xxxxxxxx Xxxxxxxxx & Xxxxxx LLP, located at
Xxx Xxxxxxx Xxxxxx, Xxxxxx, Xxx Xxxxxx 00000 on the fifth business day after the
satisfaction or waiver (by the appropriate party) of the closing conditions set
forth in Section 16, or at such other time and place mutually agreed upon by the
parties (the “Closing
Date”).
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16.
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Closing
Conditions.
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16.1 Conditions to the Obligation
of Remedent. The obligation of Remedent to consummate the
transactions contemplated by this Agreement in connection with the Closing shall
be subject to the satisfaction by Den-Mat or waiver by Remedent on or prior to
the Closing Date of each of the following conditions (unless waived by Remedent
in writing):
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16.1.1 The
representations and warranties of Den-Mat contained in Section 14.2 shall be
true and correct in all respects (if qualified by materiality) and shall be true
and correct in all material respects (if not qualified by materiality), as if
made at and as of the Closing.
16.1.2 Den-Mat
shall have duly performed and complied in all material respects with all
covenants and agreements contained herein required to be performed or complied
with by Den-Mat at or before the Closing.
16.1.3 Remedent
shall have received written evidence satisfactory to Remedent that the
Development Payment and the first installment of the License Payment provided
for in Sections
6.1 and 6.2 have been paid by
wire transfer.
16.1.4 Remedent
Nevada’s Board of Director (“Board Approval”) shall have approved the execution
and delivery of this Agreement and the consummation of the transactions
contemplated hereby.
16.1.5 The
“Guaranty Period” shall have commenced pursuant to the terms of the
Distribution, License and Manufacturing Agreement between Remedent and Den-Mat,
dated August 24, 2008, as amended.
16.2 Conditions to the Obligation
of Den-Mat. The obligation of Den-Mat to consummate the
transactions contemplated by this Agreement in connection with the Closing shall
be subject to the satisfaction by Remedent on or prior to the Closing Date of
each of the following conditions (unless waived by Den-Mat in
writing):
16.2.1 The
representations and warranties of Remedent contained in Section 14.1 shall be
true and correct in all respects (if qualified by materiality) and shall be true
and correct in all material respects (if not qualified by materiality), as if
made at and as of the Closing.
16.2.2 Remedent
shall have duly performed and complied in all material respects with all
covenants and agreements contained herein required to be performed or complied
with by Remedent at or before the Closing.
16.2.3 Den-Mat’s
Board of Directors (“Board Approval”) and
lenders shall have approved the execution and delivery of this Agreement and the
consummation of the transactions contemplated hereby.
16.2.4 Den-Mat
shall have concluded its due diligence with respect to the Products, the
First-Fit Technology and the Intellectual Property and shall have determined, in
its sole and absolute discretion, that the foregoing are satisfactory in all
material respects.
16.2.5 Remedent
shall have delivered to Den-Mat executed copies of the following: (a) a
Non-Competition Agreement duly executed by Guy De Vreese substantially in the
form attached as Exhibit C hereto (the
“De Vreese
Non-Competition Agreement”), and (b) a Non-Competition Agreement duly
executed by Xxxxxxx Jacquemyns substantially in the form attached as Exhibit D hereto (the
“Jacquemyns
Non-Competition Agreement”).
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16.2.6 Remedent
shall have delivered to Den-Mat an opinion, dated the Closing Date, of Bullivant
Xxxxxx Xxxxxx PC substantially similar to the opinion delivered by Remedent to
Den-Mat in connection with the 2008 Agreement, but also including an opinion
that the Intellectual Property and the Products do not infringe the rights of
any third party, the form of such opinion to be reasonably satisfactory to
Den-Mat and its counsel.
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17.
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Confidentiality.
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17.1 Confidential Information of
Den-Mat. All Confidential Information with respect to Den-Mat
and its Affiliates that is disclosed to Remedent by Den-Mat, its Affiliates or
representatives, whether in physical or intangible form, and all Confidential
Information regarding Den-Mat of which Remedent becomes aware in connection with
its performance of services on behalf of Den-Mat or otherwise in connection with
this Agreement, shall be held as confidential by Remedent. Such
information shall at all times remain the property of Den-Mat and Den-Mat shall
own and retain all right, title and interest therein and
thereto. Remedent shall hold all Confidential Information in
confidence, using the same degree of care to prevent unauthorized disclosure or
access that it uses with its own confidential information of similar type, and
shall not disclose such Confidential Information to others, allow others to
access it, or use it in any way, commercially or otherwise, except in direct
furtherance of this Agreement. Remedent may disclose Confidential
Information to its employees and its attorneys, accountants and other
confidential advisors with a need to know such Confidential Information in
connection with this Agreement; provided, however, that all
such employees and advisors are bound by obligations to maintain the
confidentiality of the Confidential Information at least as protective as those
set forth in this Agreement. Except as set forth herein, nothing in
this Agreement shall be construed as conveying any other right or license
(implied or otherwise) to Remedent in such Den-Mat Confidential
Information.
17.1.1 Permitted
Disclosure. If Remedent is compelled to disclose all or any
part of any Confidential Information by any Governmental Authority, it shall, to
the extent practicable and subject to applicable laws, first give prompt written
notice of such request to Den-Mat to enable Den-Mat to seek a protective order
or take other appropriate measures to prevent or modify the disclosure, and
shall, at Den-Mat’s expense, cooperate in such efforts.
17.1.2 Exclusions. Confidential
Information with respect to Den-Mat and its Affiliates shall not include
information if and to the extent Remedent can demonstrate such information: (a)
is or becomes known to the public other than by disclosure by Remedent in
violation of this Agreement; (b) was known to Remedent before disclosure
hereunder, without a duty of confidentiality; (c) was independently developed by
Remedent outside of this Agreement and without reference to or use of any
Confidential Information of Den-Mat; or (d) was rightfully obtained by Remedent
from a third party without a duty of confidentiality in favor of
Den-Mat.
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17.1.3 Return of Confidential
Information. Upon the termination of this Agreement, Remedent
shall promptly return to Den-Mat all Confidential Information with respect to
Den-Mat and its Affiliates and all copies, summaries, excerpts and abstracts
thereof then in its possession. Notwithstanding the foregoing,
Remedent may keep one copy of any document requested to be returned or destroyed
in the files of its legal department or outside counsel for record purposes only
and for purposes of ensuring compliance with the terms of this
Agreement.
17.1.4 Injunctive
Relief. Remedent acknowledges and agrees that in the event of
any breach or threatened breach of its obligations hereunder with respect to
Confidential Information, damages will not be an adequate remedy and Den-Mat
shall be entitled to obtain injunctive relief, without having to post a bond or
other security.
17.2 Confidential Information of
Remedent. All Confidential Information with respect to
Remedent and its Affiliates that is disclosed to Den-Mat by Remedent, its
Affiliates or representatives, whether in physical or tangible form, and all
Confidential Information regarding Remedent of which Den-Mat becomes aware in
connection with its performance of this Agreement shall be held as confidential
by Den-Mat. Such Confidential Information shall at all times remain
the property of Remedent and Remedent shall own and retain all right, title and
interest therein and thereto, except for the interests granted to Den-Mat as
part of the license contemplated by this Agreement. Den-Mat shall
hold all Confidential Information in confidence, using the same degree of care
to prevent unauthorized disclosure or access that it uses with its own
confidential information of similar type, and shall not disclose such
Confidential Information to others, allow others to access it, or use it in any
way, commercially or otherwise, except in direct furtherance of this
Agreement. Den-Mat may disclose the Remedent Confidential Information
to its employees and its attorneys, accountants, financing sources and other
confidential advisors with a need to know such Confidential Information in
connection with this Agreement or their representation of Den-Mat generally;
provided, however, that all
such employees and advisors are bound by obligations to maintain the
confidentiality of such Confidential Information at least as protective as those
set forth in this Agreement. Except as set forth herein, nothing in
this Agreement shall be construed as conveying any other right or license
(implied or otherwise) to Den-Mat in such Remedent Confidential
Information.
17.2.1 Permitted
Disclosure. If Den-Mat is compelled to disclose all or any
part of any Remedent Confidential Information by any Governmental Authority, it
shall, to the extent practicable and subject to applicable laws, first give
prompt written notice of such request to Remedent to enable Remedent to seek a
protective order or take other appropriate measures to prevent or modify the
disclosure, and shall, at Remedent’s expense, cooperate in such
efforts.
17.2.2 Exclusions. Confidential
Information with respect to Remedent and its Affiliates shall not include
information if and to the extent Den-Mat can demonstrate such information: (a)
is or becomes known to the public other than by disclosure by Den-Mat in
violation of this Agreement; (b) was known to Den-Mat before disclosure
hereunder, without a duty of confidentiality; (c) was independently developed by
Den-Mat outside of this Agreement and without reference to or use of any
Confidential Information of Remedent; or (d) was rightfully obtained by Den-Mat
from a third party without a duty of confidentiality. Den-Mat may
also use and disclose Confidential Information of Remedent to the extent such
information is otherwise permitted to be used or disclosed by Den-Mat pursuant
to other provisions of this Agreement, including to sub-distributors and
subcontractors who agree to maintain the confidentiality thereof on terms
comparable to those set forth in this Section
17.
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17.2.3 Return of Confidential
Information. Upon the termination of this Agreement, Den-Mat
shall promptly return to Remedent all Confidential Information with respect to
Remedent and its Affiliates and all copies, summaries, excerpts and abstracts
thereof then in its possession. Notwithstanding the foregoing,
Den-Mat may keep one copy of any document requested to be returned or destroyed
in the files of its legal department or outside counsel for record purposes only
and for purposes of ensuring compliance with the terms of this
Agreement.
17.2.4 Injunctive
Relief. Den-Mat acknowledges and agrees that in the event of
any breach or threatened breach of its obligations hereunder with respect to
Confidential Information, damages will not be an adequate remedy and Remedent
shall be entitled to obtain injunctive relief, without having to post a bond or
other security.
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18.
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Indemnification.
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18.1 Indemnification by Den-Mat. Den-Mat
shall defend, indemnify and hold harmless Remedent and its Affiliates and its
and their respective officers, directors, members, managers, employees, agents
and representatives from and against any and all claims, judgments, damages,
liabilities, actions, demands, costs, expenses or losses, including reasonable
attorneys’ fees and costs (collectively, “Liabilities”), to the
extent resulting from, arising out of, or in connection with, an act or omission
of Den-Mat in connection with performance of its obligations under this
Agreement and the other Den-Mat Transaction Documents, or the breach of any
representation, warranty or covenant made by Den-Mat in this Agreement or any of
the other Den-Mat Transaction Documents.
18.2 Indemnification by Remedent. Remedent
shall defend, indemnify and hold harmless Den-Mat and its Affiliates and its and
their respective officers, directors, members, managers, employees, agents and
representatives from and against any and all Liabilities, to the extent
resulting from, arising out of, or in connection with any act or omission by
Remedent in connection with performance of its obligations under this Agreement
and the other Remedent Transaction Documents, or the breach of any
representation, warranty or covenant made by Remedent in this Agreement or any
of the other Remedent Transaction Documents.
18.3 IP
Indemnity. Remedent shall indemnify Den-Mat and its Affiliates
and its and their respective officers, directors, members, managers, employees,
agents and representatives from and against any and all Liabilities, to the
extent resulting from, arising out of, or in connection with any infringement or
alleged infringement of the Products, the Intellectual Property of Remedent, or
any use or application thereof upon any Intellectual Property of any
Person. If the manufacture, distribution, marketing, licensing, sale
or use of any Product or Intellectual Property, as contemplated by this
Agreement, is enjoined as a result of any Intellectual Property claim or
judgment, then Remedent, in addition to its other obligations under this
Agreement, shall, at its option, (i) obtain for Den-Mat, at Remedent’s expense,
any license required for Den-Mat to manufacture, market, distribute, license and
sell the Products as contemplated by this Agreement, or (ii) redesign the
infringing item or items to be non-infringing, while maintaining the original
function thereof or (iii) replace the infringing item or items with an
equivalent, non-infringing item approved by Den-Mat.
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18.4 Product Liability
Indemnity. Remedent shall indemnify Den-Mat and its
Affiliates and its and their respective officers, directors, members, managers,
employees, agents and representatives from and against any and all Liabilities,
to the extent resulting from, arising out of, the design, and formulation of the
Products, in each case other than those certain Liabilities arising out of the
gross negligence or willful misconduct of Den-Mat or its
Affiliates. Den-Mat shall indemnify Remedent and its Affiliates and
its and their respective officers, directors, members, managers, employees,
agents and representatives from and against any and all Liabilities, to the
extent resulting from, arising out of, the manufacture of the Products, in each
case other than those certain Liabilities (i) arising out of the gross
negligence or willful misconduct of Remedent or its Affiliates or (ii) arising
out of the design and/or formulation of the Products.
18.5 Indemnification Procedures. A
Party seeking indemnification under this Section 18 for itself
or any of its Affiliates or any of its or their respective officers, directors,
members, managers, employees, agents and representatives (collectively in this
capacity, the “Indemnified Party”)
shall promptly notify the Party from whom indemnification is sought (in this
capacity, the “Indemnitor”) of any
Liability in respect of which such Indemnified Party intends to claim
indemnification; provided, however, that the
failure to so notify the Indemnitor shall not affect the Indemnified Party’s
rights to indemnification hereunder except to the extent that the Indemnitor is
materially prejudiced by such failure. With respect to any
Liabilities that relate to a third party claim, the Indemnified Party shall
permit the Indemnitor to control the defense of any such Liabilities; provided, however, if the
Indemnified Party reasonably determines that the joint representation of the
Indemnified Party and the Indemnitor by a single counsel would result in a
conflict of interest arising out of the joint representation by counsel selected
by the Indemnitor of the interests of the Indemnitor and the Indemnified Party,
the Indemnitor shall be entitled to engage separate counsel to represent the
Indemnified Party (at the Indemnitor’s sole cost and expense) and, if the
Indemnitor fails to do so, the Indemnitor shall not be entitled to assume the
Indemnified Party’s defense of such Liability. If the Indemnitor
assumes the defense of any Liability, the Indemnitor shall consult with the
Indemnified Party for the purpose of allowing the Indemnified Party to
participate in such defense, but in such case the legal expenses of the
Indemnified Party incurred as a result of such participation shall be paid by
the Indemnified Party. With respect to any Proceeding for which the
Indemnitor has assumed the defense of an Indemnified Party, the Indemnitor shall
promptly inform the applicable Indemnified Party of all material developments
related thereto, including copying such Indemnified Party on all pleadings,
filings and other correspondence relating thereto. If the Indemnitor
fails to assume and defend a Liability or if, after commencing or undertaking
any such defense, the Indemnitor fails to prosecute such Liability, the
Indemnified Party shall have the right to undertake the defense or settlement
thereof. With respect to any Liabilities that relate to a third party
claim, the Indemnified Party shall have the right to settle such Liabilities,
provided the Indemnified Party consents in writing to such settlement, which
consent shall not be unreasonably withheld.
18.6 Products Liability
Insurance. During the term of this Agreement and for a period
of three (3) years thereafter, Remedent and Den-Mat shall maintain in full force
and effect products liability insurance providing coverage for sales of the
Products in the Territory issued by a reputable insurance company, on a per
occurrence form, with minimum limits of no less than Two Million (US $2,000,000)
Dollars per year and naming the other Party as an additional
insured. From time to time, at a Party’s request, the other Party
shall provide to the requesting Party a copy of the insurance policy required by
this Section
18.6 then in effect.
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19.
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Force
Majeure Events.
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19.1 No
Liability. No Party shall be liable for its failure to perform
its obligations under this Agreement to the extent that such performance is made
impracticable due to any occurrence beyond its reasonable control, including,
without limitation: acts of God; fires; floods; wars; sabotage; labor disputes
or shortages; governmental laws, ordinances, rules, regulations, standards or
decrees, whether valid or invalid (including, but not limited to, those related
to priorities, requisitions and allocations); inability to obtain raw material,
equipment or transportation; and any other similar occurrences (any such
occurrence, a “Force
Majeure Event”). The Parties acknowledge and agree that this Section 19 will not
be applicable to any payment obligations of either party. During a
Force Majeure Event that results in Den-Mat being unable to obtain an adequate
supply of Products, the amount of the applicable minimum royalty payment in each
Contract Period required to maintain Den-Mat’s Exclusivity will be reduced pro
rata based on the number of days in such Force Majeure Event divided by the
number of days in such Contract Period, and the Contract Period in which such
Force Majeure Event occurs will not be extended.
19.2 Notification. If
a Party fails to perform its obligations under this Agreement as a result of a
Force Majeure Event, such Party shall immediately give written notice to the
other Parties of such Force Majeure Event, which notice shall include a summary
of the occurrence, a reasonably detailed description of the impact on such Party
and, if available, a non-binding estimate of how long such Force Majeure Event
will prevent such Party from fulfilling its obligations under this Agreement.
The affected Party shall use all reasonable efforts to remedy such occurrence or
failure to comply with its obligations under this Agreement with all reasonable
dispatch. Subject to Section 19.1 and
19.3 to the
extent required by any Force Majeure Event, the performance by each Party of its
obligations under this Agreement shall be suspended during the continuance of
such Force Majeure Event (but for no longer period), and the time periods for
the performance by a Party of its obligations, or the exercise of its rights,
under this Agreement shall be extended for a period of time equal to the
duration of such Force Majeure Event and this Agreement shall otherwise remain
unaffected. Notwithstanding the foregoing, if at any time during the
term of this Agreement a Force Majeure Event is remedied or such compliance is
achieved, such Party shall promptly notify the other Parties and any such
suspension shall end.
19.3 Termination. If
a Force Majeure Event prevents Den-Mat, on the one hand, or Remedent, on the
other hand, from fulfilling its obligations under this Agreement for a period of
sixty (60) days or more, the performing Party shall have the right at any time
thereafter during the term of this Agreement to terminate this Agreement without
liability to the other Party effective immediately upon notice of termination to
the other Party. The right set forth in this Section 19.3 shall be
in addition to, and shall not be exclusive of or prejudicial to, any other
rights, powers or remedies the performing Party may have under this Agreement,
at law, in equity or otherwise on account of the non-performance (or threatened
or anticipated non-performance) by the other Party of any of its obligations
under this Agreement. The exercise of such right by the performing
Party shall not under any circumstance be deemed to constitute or operate as a
waiver of the performing Party’s right to require the other Party to fully
perform, or a release of the other Party from, its obligations under this
Agreement.
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20.
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Miscellaneous.
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20.1 Expenses. Except
as otherwise specifically provided for in this Agreement, each Party shall bear
its expenses, costs and fees (including attorneys’, auditors’ and financing
fees, if any) incurred in connection with the transactions contemplated hereby,
including the preparation, execution and delivery of this Agreement and
compliance herewith.
20.2 Further
Actions. Subject to the terms and conditions of this
Agreement, each Party shall execute and deliver such certificates and other
documents and take such actions as may reasonably be requested by any other
Party in order to effect the transactions contemplated by this
Agreement.
20.3 Notices. All
notices, requests, demands, waivers and other communications required or
permitted to be given under this Agreement shall be in writing and shall be
deemed to have been duly given if: (a) delivered personally;
(b) mailed, using certified or registered mail with postage prepaid; or
(c) sent by next-day or overnight mail or delivery using an internationally
recognized overnight courier service, as follows:
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To
Remedent Nevada or
Remedent
Belgium:
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Remedent,
Inc. or Remedent, N.V.
Xavier
De Cocklaan
42,9831
Deurle,
Belgium
Attn:
Guy De Vreese
|
|
with
a copy (which shall not
constitute
notice) sent to:
|
Bullivant
Xxxxxx Xxxxxx PC
0000
X Xxxxxx, Xxxxx 0000
Xxxxxxxxxx,
Xxxxxxxxxx 00000
Attn: Xxxxx
X. Xxxxxx
|
|
To
Den-Mat:
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Den-Mat
Holdings, LLC
0000
Xxxxxx Xxxxx
Xxxxx
Xxxxx, Xxxxxxxxxx 00000
Attn: Chief
Executive Officer
|
|
with
a copy (which shall not
constitute
notice) sent to:
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Xxxxxxxx
Xxxxxxxx Xxxxxxxxx & Xxxxxx LLP
Xxx
Xxxxxxx Xxxxxx, 0xx
Xxxxx
Xxxxxx,
Xxx Xxxxxx 00000
Attn:
Xxxx X. Xxxxxx, Esq.
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or, in
each case, at such other address as may be specified in writing to the other
Parties in accordance with this Section
20.3.
All such
notices, requests, demands, waivers and other communications shall be deemed to
have been received: (a) if by personal delivery, on the day of such
delivery; (b) if by certified or registered mail, on the third (3rd)
Business Day after the mailing thereof; or (c) if by next-day or overnight
mail or delivery, on the day delivered.
20.4 Binding Effect; Joint and
Several Liability; Assignment. This Agreement shall be binding
upon and inure to the benefit of the Parties and their respective successors and
permitted assigns. Remedent Nevada and Remedent Belgium shall be
jointly and severally liable for all of Remedent’s obligations, and for the
performance by Remedent of all covenants, conditions and agreements to be
performed by Remedent, under this Agreement. Except for assignments
acknowledging Den-Mat’s rights under this Agreement as provided for in Section
9.1.2, Remedent shall not assign this Agreement either in whole or in part
without the prior written consent of Den-Mat, provided, however, that
Remedent shall have the right to assign this Agreement either in whole or in
part to Affiliates of Remedent, to any successor to all or substantially all of
Remedent’s business and in connection with a collateral assignment to lenders,
provided that, in each instance, the assignee shall have acknowledged in writing
the existence of this Agreement and Den-Mat’s rights
hereunder. Den-Mat shall not assign this Agreement either in whole or
in part without the prior written consent of Remedent; provided, however, that Den-Mat
shall have the right to assign this Agreement either in whole or in part to
Affiliates of Den-Mat, to any successor to all or substantially all of Den-Mat’s
business and in connection with a collateral assignment to
lenders. Any attempted assignment or delegation in violation of this
Section 20.4
will be void. Except as expressly set forth in Section 17, nothing
in this Agreement, expressed or implied, is intended or shall be construed to
confer upon any Person, other than the Parties and the successors and assigns
permitted by this Section 20.4, any
right, remedy or claim under or by reason of this Agreement.
20.5 Amendment;
Waiver. No amendment, modification or discharge of this
Agreement, and no waiver hereunder, shall be valid or binding unless set forth
in writing and duly executed by the Party or Parties against whom enforcement of
the amendment, modification, discharge or waiver is sought; provided, however, that if
Den-Mat is the Party against whom enforcement of any amendment, modification,
discharge or waiver is sought, such amendment, modification, discharge or waiver
will only be valid and binding if duly approved by the board of
managers of Den-Mat. Any such waiver shall constitute a waiver only
with respect to the specific matter described in such writing and shall in no
way impair the rights of the Party or Parties granting such waiver in any other
respect or at any other time. The waiver by any of the Parties of a
breach of or a default under any of the provisions of this Agreement or a
failure to or delay in exercising any right or privilege hereunder, shall not be
construed as a waiver of any other breach or default of a similar nature, or as
a waiver of any of such provisions, rights or privileges
hereunder. The rights and remedies herein provided are cumulative and
none is exclusive of any other, or of any rights or remedies that any Party may
otherwise have at law or in equity.
-25-
20.6 Entire
Agreement. This Agreement (including the Exhibits and
Schedules referred to herein or delivered hereunder) and the agreements
expressly contemplated to be executed and delivered by the Parties pursuant to
this Agreement constitute the entire agreement between the Parties with respect
to the subject matter hereof and supersedes all contemporaneous oral agreements
and all prior oral and written quotations, communications, agreements,
understandings of the Parties and written or oral representations of any Party
with respect to the subject matter of this Agreement. Nothing
contained herein shall be construed to replace or supersede the 2008 Agreement,
which shall remain in full force and effect.
20.7 Severability. If
any provision of this Agreement shall be held or declared to be invalid or
unenforceable, such invalid or unenforceable provision shall not affect any
other provision of this Agreement, and the remainder of this Agreement, and each
Party’s obligations hereunder, shall continue in full force and effect as though
such provision had not been contained in this Agreement and, if permitted under
applicable rules of instruction and interpretation, such provision shall be
reformed to the extent necessary to render such provision valid and enforceable
and to reflect the intent of the Parties to the maximum extent possible under
applicable law.
20.8 Headings. The
headings contained in this Agreement are for reference purposes only and shall
not in any way affect the meaning or interpretation of this
Agreement.
20.9 Counterparts. This
Agreement may be executed in one or more counterparts, all of which will be
considered one and the same agreement and will become effective when one or more
counterparts have been signed by each of the Parties and delivered to the other
Parties, regardless of whether all of the Parties have executed the same
counterpart. Counterparts may be delivered via facsimile, electronic
mail (including pdf) or other transmission method and any counterpart so
delivered shall be deemed to have been duly and validly delivered and be valid
and effective for all purposes.
20.10 Governing
Law. THIS AGREEMENT AND THE RIGHTS AND OBLIGATIONS OF THE
PARTIES SHALL BE GOVERNED BY, CONSTRUED AND ENFORCED IN ACCORDANCE WITH THE LAWS
OF THE STATE OF NEW YORK, WITHOUT GIVING EFFECT TO ANY CHOICE OR CONFLICT OF LAW
RULE THAT WOULD CAUSE THE APPLICATION OR THE LAWS OF ANY JURISDICTION OTHER THAN
THE INTERNAL LAWS OF THE STATE OF NEW YORK TO THE RIGHTS AND DUTIES OF THE
PARTIES.
20.11 Consent to
Jurisdiction.
20.11.1 EACH
OF THE PARTIES IRREVOCABLY AND UNCONDITIONALLY SUBMITS, FOR ITSELF AND ITS
PROPERTIES AND ASSETS, TO THE EXCLUSIVE JURISDICTION OF THE COURTS IN THE STATE
OF NEW YORK IN THE COUNTY OF NEW YORK OR THE UNITED STATES OF AMERICA FOR THE
SOUTHERN DISTRICT OF NEW YORK AND ANY APPELLATE COURT THEREFROM (COLLECTIVELY,
THE “NEW YORK
COURTS”), IN ANY PROCEEDING ARISING OUT OF OR RELATING TO THIS AGREEMENT
OR THE TRANSACTIONS CONTEMPLATED HEREBY OR FOR RECOGNITION OR ENFORCEMENT OF ANY
JUDGMENT RELATING THERETO, AND EACH OF THE PARTIES IRREVOCABLY AND
UNCONDITIONALLY AGREES THAT ALL CLAIMS IN RESPECT OF ANY SUCH PROCEEDING SHALL
BE HEARD AND DETERMINED IN THE NEW YORK COURTS. EACH OF THE PARTIES
AGREES THAT A FINAL JUDGMENT IN ANY SUCH PROCEEDING SHALL BE CONCLUSIVE AND MAY
BE ENFORCED IN OTHER JURISDICTIONS BY SUIT ON THE JUDGMENT OR IN ANY OTHER
MANNER PROVIDED BY LAW.
-26-
20.11.2 EACH
OF THE PARTIES IRREVOCABLY AND UNCONDITIONALLY WAIVES, TO THE FULLEST EXTENT IT
MAY LEGALLY AND EFFECTIVELY DO SO, ANY OBJECTION WHICH IT MAY NOW OR HEREAFTER
HAVE TO THE LAYING OF VENUE OF ANY PROCEEDING ARISING OUT OF OR RELATING TO THIS
AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY IN ANY OF THE
NEW YORK COURTS. EACH OF THE PARTIES IRREVOCABLY WAIVES,
TO THE FULLEST EXTENT PERMITTED BY LAW, THE DEFENSE OF AN INCONVENIENT FORUM TO
THE MAINTENANCE OF SUCH PROCEEDING IN ANY OF THE NEW YORK COURTS.
20.12 Waiver of Punitive and Other
Damages and Jury Trial.
20.12.1 THE
PARTIES TO THIS AGREEMENT EXPRESSLY WAIVE AND FORGO ANY RIGHT TO RECOVER
PUNITIVE, EXEMPLARY OR SIMILAR DAMAGES IN ANY ARBITRATION, LAWSUIT, LITIGATION
OR PROCEEDING ARISING OUT OF OR RESULTING FROM ANY CONTROVERSY OR CLAIM ARISING
OUT OF OR RELATING TO THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED
HEREBY.
20.12.2 EACH
PARTY ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY WHICH MAY ARISE UNDER THIS
AGREEMENT IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT ISSUES, AND THEREFORE,
TO THE FULLEST EXTENT IT MAY LEGALLY AND EFFECTIVELY DO SO, IT HEREBY
IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY
IN RESPECT OF ANY LITIGATION DIRECTLY OR INDIRECTLY ARISING OUT OF OR RELATING
TO THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY.
20.12.3 EACH
PARTY CERTIFIES AND ACKNOWLEDGES THAT (a) NO REPRESENTATIVE, AGENT OR
ATTORNEY OF ANY OTHER PARTY HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH
OTHER PARTY WOULD NOT, IN THE EVENT OF LITIGATION, SEEK TO ENFORCE EITHER OF THE
FOREGOING WAIVERS, (b) IT UNDERSTANDS AND HAS CONSIDERED THE IMPLICATIONS
OF SUCH WAIVERS, (c) IT MAKES SUCH WAIVERS VOLUNTARILY, AND (d) IT HAS
BEEN INDUCED TO ENTER INTO THIS AGREEMENT BY, AMONG OTHER THINGS, THE MUTUAL
WAIVERS AND CERTIFICATIONS IN THIS SECTION 20.12.3.
20.13 No Waiver;
Remedies. No Party shall by any act (except by written
instrument pursuant to Section 20.5), delay,
indulgence, omission or otherwise be deemed to have waived any right or remedy
hereunder or to have acquiesced in any default in or breach of any of the terms
and conditions of this Agreement. No failure to exercise, nor any
delay in exercising on the part of any Party, any right, power or privilege
hereunder shall operate as a waiver thereof. No single or partial
exercise of any right, power or privilege hereunder shall preclude any other or
further exercise thereof or the exercise of any other right, power or
privilege.
-27-
20.14 No Limitation on Competitive
Activities. Nothing in this Agreement shall, or shall be
construed to, limit in any way Den-Mat’s right and ability to manufacture,
market, distribute, license and sell any other products or services in the
Territory, regardless of whether such other products or services compete with
the Products; provided, however, that, during
the term of this Agreement, Den-Mat shall not sell any products that are
competitive with the First Fit-Crown Products (as such term is used in clause
(i) of the definition contained in Schedule 1) and which utilize technology
substantially similar to the First-Fit Technology.
20.15 No Partnership or Joint
Venture. Nothing in this Agreement shall be construed as (a)
giving any Party any rights as a partner in or owner of the business of the
other Parties, (b) entitling a Party to control in any manner the conduct of the
other Parties’ business, or (c) making any Party a joint venturer, joint
employer, principal, agent, or employee of the other Parties. Except
as expressly set forth in this Agreement or in any of the agreement or
instruments contemplated hereby, no Party shall have, nor shall it represent
itself as having, the power to make any contracts or commitments in the name of
or binding upon any of the other Parties.
20.16 Jointly Drafted; Review by
Counsel. The Parties have participated in the negotiation and
drafting of this Agreement and have had the opportunity to review the Agreement
with counsel of their choosing. In the event an ambiguity or question
of intent or interpretation arises, no presumption or burden of proof will arise
favoring or disfavoring any Party by virtue of the authorship of any of the
provisions of this Agreement.
20.17 Specific
Performance. Each of the Parties acknowledges and agrees that,
in the event of any breach of this Agreement, the non-breaching Party would be
irreparably and immediately harmed and could not be made whole by monetary
damages. It is accordingly agreed that the Parties (a) shall be
entitled, in addition to any other remedy to which they may be entitled at law
or in equity, to compel specific performance of this Agreement; and (b) shall
waive, in any action for specific performance, the defense of the adequacy of a
remedy at law.
20.18 Interpretation. The
language used in this Agreement shall be deemed to be the language chosen by the
Parties to express their mutual intent and no rule of strict construction shall
be applied against any Party. Unless otherwise expressly specified in
this Agreement: (a) the words “hereof”, “hereby” and “hereunder,” and
correlative words, refer to this Agreement as a whole and not any particular
provision; (b) the words “include”, “includes” and “including”, and
correlative words, are deemed to be followed by the phrase “without limitation”;
(c) the word “or” is not exclusive
and is deemed to have the meaning “and/or”; (d) words
using the singular or plural number shall also include the plural or singular
number, respectively; (e) the masculine, feminine or neuter form of a word
includes the other forms of such word and the singular form of a word includes
the plural form of such word; (f) references to a Person shall include the
permitted successors and assigns thereof; (g) references made in this Agreement
to an Article, Section, Schedule or Exhibit mean an Article or Section of, or a
Schedule or Exhibit to, this Agreement; and (h) all consents and approvals are
in the sole discretion of the Party requested to give such consent or approval,
unless otherwise expressly provided.
-28-
20.19 Mitigation. Each
Party shall take commercially reasonable efforts to mitigate its damages in the
event of a breach of this Agreement by the other Party.
[remainder
of page intentionally left blank; signature page follows]
-29-
IN
WITNESS WHEREOF, Remedent Nevada, Remedent Belgium and Den-Mat, by their
respective authorized representatives set forth below, have signed this
Agreement as of the Effective Date.
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“Remedent
Nevada”
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REMEDENT,
N.V.
“Remedent
Belgium”
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By:
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By
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Name:
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Name:
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Title:
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Title:
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DEN-MAT
HOLDINGS, LLC
“Den-Mat”
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By:
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Name:
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Title:
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-30-
Schedule
1
Definitions
(a) “Affiliate” shall
mean, with respect to an entity, any Person that, directly or indirectly,
through one or more intermediaries, Controls, is Controlled by, or is under
common Control with, that entity.
(b) “Business Day” shall
mean any day other than a Saturday, Sunday or any other day on which commercial
banks in New York are authorized or required by law to remain
closed.
(c)
“Confidential
Information” of any Person shall mean all confidential or proprietary
information of such Person, including financial statements, customer and
supplier lists, reports, marketing studies, and business plans and forecasts,
whether written, oral, or in electronic or other form and whether prepared by
such Person, its Affiliates or its representatives.
(d) “Contract Period”
shall mean the following periods: (a) the first eighteen (18) months beginning
on the first day of the month following the month in which the Closing occurs,
provided that if Den-Mat is not Fully Operational within sixty (60) days after
the Closing Date, the first Contract Period shall be extended by one day for
each day after said 60th day
until Den-Mat becomes Fully Operational; (b) the subsequent twelve (12) months;
and (c) each subsequent twelve (12) month period thereafter, in each case during
which the Agreement is in effect.
(e)
“Control”
(including with correlative meanings, the terms “Controlling,” “Controlled by” and
“under common Control
with”) shall mean the possession directly or indirectly of the power to
direct or cause the direction of the management and policies of an entity,
whether through the ownership of voting securities, by trust, management
agreement, contract or otherwise; provided, however, that
beneficial ownership of more than fifty percent (50%) or more of the voting
power of an entity shall be deemed to be Control.
(f) “First-Fit
Technology” shall mean the Intellectual Property, software,
proprietary information and associated technology developed by Remedent as of
the date of this Agreement for the creation of crowns and bridges without use of
temporary crowns or bridges and utilizing a digital technology similar to the
Lumi-Tray technology licensed by Remedent to Den-Mat as of the date of this
Agreement for the creation and sale of veneers, and any extensions or
improvements of such Intellectual Property, software, proprietary information
and technology developed by Remedent during the term of this
Agreement.
(g) “Fully Operational”
shall mean such time as (i) all software and hardware necessary to produce the
First Fit Products shall have been tested and installed at Den-Mat’s facility in
Santa Maria, California or such other manufacturing facility as shall be
designated by Den-Mat, (ii) such manufacturing facility shall be fully prepared
for production of the First Fit Products, and (iii) training of Den-Mat key
staff shall have been completed.
(h) “Governmental
Authority” shall mean any: (a) federal, state, regional, county, city,
municipal or local government, whether foreign or domestic; (b) governmental or
quasi-governmental authority of any nature, including any regulatory or
administrative agency, commission, department, board, bureau, court, tribunal,
arbitrator, arbitral body, agency, branch, official entity or other
administrative or regulatory body obtaining authority from any of the foregoing,
including courts and any supra-national organization, state, county, city or
other political subdivision; or (c) other Person exercising or entitled to
exercise any administrative, executive, judicial, legislative, police,
regulatory or taxing authority or power of any nature.
(i) “Intellectual
Property” shall mean a patent, patent application, industrial design,
invention, design, trade secret, idea, work, methodology, technology,
innovation, creation, concept, moral right, development drawing, research,
analysis, know-how, experiment, copyright, trade name, trademark, service xxxx,
data, formula, method, procedure, process, system or technique and any
registration, application, right or other grant analogous thereto with respect
to any of the foregoing.
(j) “Knowledge of Den-Mat”
shall mean the actual knowledge of any of the executive officers of
Den-Mat.
(k) “Knowledge of
Remedent” shall mean the actual knowledge of any of the executive
officers of either Remedent Nevada or Remedent Belgium.
(l) “Law” shall mean any
treaty, code, statute, law, rule, regulation, convention, ordinance, Order,
legally binding regulatory policy statement or similar legally binding guidance,
binding directive or decree of any kind of any Governmental Authority, as well
as any common law.
(m) “First Fit-Crown
Products” shall mean (i) crowns, bridges and other dental products
manufactured using the First-Fit Technology and (ii) any re-order of a crown,
bridge or prep guide (mouth piece) even if it is manufactured without use of the
First-Fit Technology, provided that such re-order occurs within thirty (30) days
of, and directly relates to the same tooth or teeth in the same patient as, the
original sale of a dental product which was manufactured using the First-Fit
Technology and further provided that a new impression was not required in
connection with such re-order as a result of the failure of the dental product
provided in the original sales.
(n) “Net Revenues” shall
mean all revenues received by Den-Mat from sales of the Products (but not
including any royalties Den-Mat receives from its sub-licensees with respect to
their sale of Products), net of any returns and allowances, freight, sales
taxes, rebates and customary trade discounts.
(o) “Order” means any
judgment, writ, decree, directive, decision, injunction, ruling, award or order
(including any consent decree or cease and desist order) of any
kind.
(p)
“Party” shall
mean any of Remedent, Inc., Remedent, N.V. or Den-Mat Holdings, LLC,
individually, and “Parties” shall mean
all of such Persons collectively.
(q) “Permit” shall mean
any permit, license, authorization, registration, franchise, approval,
certificate, variance, waiver or other authorization, approval, consent,
clearance or similar right issued, granted or obtained by or from any
Governmental Authority.
(r) “Person” shall mean
any natural person, firm, partnership, association, corporation, company, trust,
business trust, governmental entity or other entity.
(s) “Proceeding” shall
mean any action, suit, arbitration, mediation, litigation, hearing,
investigation, inquiry or other proceeding of any kind.
(t) “Product” shall mean,
collectively, the First Fit-Crown Products and any improvements, line extensions
and/or related products.
(u) “Sell-Off Period”
shall mean a period of ninety (90) days after the date of expiration or
termination of this Agreement.
(v) “Territory” means the
United States, Canada and Mexico, and their respective territories and
possessions.
* * *
*
[Index
of Defined Terms follows]
Index
of Defined Terms
|
Defined
Term
|
Reference
|
|
Agreement
|
Preamble
|
|
Board
Approval
|
16.1.4
|
|
Closing
|
15
|
|
Closing
Date
|
15
|
|
Den-Mat
|
Preamble
|
|
Den-Mat’s
Exclusivity
|
7.1.1
|
|
Den-Mat
Transaction Documents
|
14.2.2
|
|
Designated
Xxxx
|
2.1.1
|
|
Development
Payment
|
6.1
|
|
Effective
Date
|
Preamble
|
|
Filing
Party
|
3.5.2
|
|
Force
Majeure Event
|
19.1
|
|
Indemnified
Party
|
18.5
|
|
Indemnitor
|
18.5
|
|
Liabilities
|
18.1
|
|
License
Payment
|
6.1
|
|
New
York Courts
|
20.11.1
|
|
Notice
of Intent to File
|
3.5.2
|
|
Remedent
|
Preamble
|
|
Remedent
Bankruptcy
|
13.2.2
|
|
Remedent
Belgium
|
Preamble
|
|
Remedent
Nevada
|
Preamble
|
|
Remedent
Transaction Documents
|
14.1.2
|
|
Remedent
Policy
|
18.6
|
|
Royalty
Rate
|
6.3
|
|
Subdistributor
Agreement
|
2.1.2
|
|
Taxes
|
12.2.1
|
