EXHIBIT 10.32
TRANSITIONAL TRADEMARK LICENSE AGREEMENT
THIS TRANSITIONAL TRADEMARK LICENSE AGREEMENT (this
"Agreement"), dated as of July 1, 2003, is by and among ROYAL & SUNALLIANCE USA,
INC., ("Licensor"), a corporation organized under the laws of Delaware, ROYAL
SPECIALTY UNDERWRITING, INC. ("RSUI"), a corporation organized under the laws of
Georgia, and RSA SURPLUS LINES INSURANCE SERVICES, INC., a corporation organized
under the laws of Delaware ("RSA SLISI", each of RSUI and RSA SLISI a
"Licensee", and together "Licensees").
WHEREAS, Licensor is the owner of the Licensed Marks (as
hereinafter defined); and
WHEREAS, prior to the date hereof, each Licensee was an
indirect, wholly-owned subsidiary of Licensor, and each Licensee was using the
Licensed Marks pursuant to an unwritten license from Licensor; and
WHEREAS, Royal Group, Inc., a subsidiary of Assignor, and
Alleghany Corporation ("Alleghany") have entered into that certain Acquisition
Agreement, dated June 6, 2003 (the "Acquisition Agreement"), pursuant to which
Alleghany acquired all of Licensees' issued and outstanding shares of common
stock and certain operating assets used in the Business (as such term is defined
in the Acquisition Agreement); and
WHEREAS, in order to effect an orderly transition of
Licensees' operations as contemplated under the Acquisition Agreement, the
parties hereto acknowledge that Licensees need to use the Licensed Marks as such
were used by Licensees prior to the Closing for a limited period; and
WHEREAS, a condition to the closing of the transactions
contemplated by the Acquisition Agreement is the execution and delivery of this
Agreement by the parties hereto.
NOW THEREFORE, in consideration of the execution, delivery and
performance of the obligations under the Acquisition Agreement and this
Agreement, the mutual covenants hereafter set forth and other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Licensor and Licensees agree as follows:
1. DEFINITIONS. Capitalized terms used but not defined herein and
which are defined in the Acquisition Agreement shall have the meanings ascribed
to them in the Acquisition Agreement.
2. TERM. The term of this Agreement shall begin on the Closing
Date and shall terminate six (6) months after the Closing Date (the "Term"),
unless extended by written mutual agreement among Licensor and Licensees.
3. GRANT OF LICENSE
3.1 Subject to the terms of this Agreement, Licensor
hereby grants to each Licensee a royalty-free, personal, non-exclusive,
non-transferable (subject to Section 3.2), non-sublicenseable (subject to
Section 3.2) license during the Term to use the Licensed Marks as used by such
Licensee prior to the Closing Date, including, without limitation, in connection
with the offering and sale of insurance products and services in accordance with
practices current as of the Closing Date, on advertisements, brochures,
letterhead stationery, as necessary regulatory forms, and in other ways
customary to the trade. For purposes of this Agreement, "Licensed Marks" shall
mean the following marks and design marks, or any portion thereof: "Royal", the
half-navigator design as depicted on Exhibit A(1), "Royal & Sun Alliance",
"Royal & SunAlliance" plus design, as shown in Exhibit A(2).
3.2 Each Licensee may assign this Agreement and its
rights under this Agreement to any Affiliate or any other entity with which it
is merged or that acquires substantially all of its assets and shall be
permitted to sublicense its rights to Affiliates; provided, however that, no
assignment shall release Licensee from its obligations under this Agreement and
provided, further, that in case of an assignment to any Affiliate, if the
assignee breaches any representations and warranties hereunder, then Licensor,
in addition to any right or remedy, may proceed directly against Licensee for
such breach without first proceeding against such assignee or exhausting any
right or remedies against such assignee.
3.3 Restrictions.
(a) Licensees shall use the Licensed Marks only
in a manner and to the extent substantially consistent with Licensees'
use of the Licensed Marks prior to the Closing Date, and Licensees
shall offer insurance products and services under the Licensed Marks in
compliance with all regulatory and other legal requirements of the
jurisdiction in which they operate.
(b) Nothing herein shall be construed as
prohibiting or limiting the adoption or use of other designations,
trademarks, service marks or trade names by Licensees; provided,
however, that, subject to the provisions of the Acquisition Agreement
and the Service Xxxx Assignment, during the Term neither Licensee shall
adopt or use as one of its own trademarks or trade names, a trademark
or trade name which includes or is confusingly similar to the Licensed
Marks, nor shall Licensee combine any other name or trademark with any
of the Licensed Marks or otherwise modify or alter any of the Licensed
Marks; provided, further, however, Licensor expressly agrees and
acknowledges that use or registration by the Licensees of the
trademark, service xxxx and trade name "RSUI" shall not be a breach of
this Section 3.2(c). Licensees agree that, during the Term, whenever
Licensor calls their attention to any reasonable confusion or
reasonable risk of confusion, they will, within a reasonable period of
time and at Licensor's cost, accept any reasonable suggestion that may
be made by Licensor for avoiding such confusion.
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4. QUALITY CONTROL
4.1 Licensees acknowledge that the Licensed Marks have
established valuable goodwill and are well-regarded by consumers as representing
insurance products and services of the highest caliber, and that it is of great
importance to Licensor that this valuable goodwill and reputation be maintained.
Licensees undertake and agree that in the use of the Licensed Marks and the
promotion and sale of insurance products they will conduct their respective
businesses in a manner which will uphold the reputation of the Licensed Marks in
the marketplace, and that they will not engage in any commercial or other
practices which would reasonably be anticipated to injure, impair the value of,
or otherwise detract from the reputation and goodwill associated with the
Licensor or the Licensed Marks. Licensor expressly agrees and acknowledges that
any use of the Licensed Marks by Licensees that is substantially consistent with
Licensees' use prior to the Closing Date and Applicable Law shall not constitute
a breach of this Section 4.1.
4.2 All products and services covered by the grant of
license hereunder shall conform to standards of quality at least comparable to
those generally prevailing on the Closing Date with respect to similar products
and services sold under the Licensed Marks by or on behalf of Licensee,
consistent with Licensees' current use of the Licensed Marks immediately before
the Closing Date.
4.3 Licensees shall supply to Licensor at such time as is
reasonably requested by Licensor (i) representative samples of any products or
services used in connection with the Licensed Marks, (ii) a reasonable number of
samples of advertising, and (iii) subject to Applicable Law, information on
regulatory compliance so that Licensor can monitor the use of the Licensed Marks
and the quality of the products and services offered thereunder. In addition,
upon reasonable request and reasonable prior notice, Licensor may inspect during
regular business hours all facilities operated by Licensees to verify proper use
of the Licensed Marks as provided herein. Licensor shall not, by means of such
inspection, interfere with Licensee's operations. All information received or
reviewed by Licensor in connection with the exercise of its rights under this
Section 4.3 shall be Confidential Information (as defined in Section 8) subject
to the provisions of Section 8. If a Licensee fails to meet any applicable
quality standard, then Licensor may request that such Licensee take reasonable
steps to remedy any such deficiencies and such Licensee shall use commercially
reasonable efforts to comply with such requests.
5. OWNERSHIP AND REGISTRATIONS OF LICENSED MARKS
5.1 Subject to the provisions of the Service Xxxx
Assignment, Licensees acknowledge that, as among the parties, Licensor owns all
right, title and interest in the Licensed Marks and agrees that any use of the
Licensed Marks by Licensees and the goodwill associated therewith, in any manner
whatsoever, for purposes of trademark, service xxxx and trade name ownership,
registration, maintenance and enforcement shall inure to the benefit of
Licensor. The parties hereto agree that no right, title, or interest in the
Licensed Marks is being transferred to Licensee under this Agreement, except the
right to use them in the manner and subject to the terms and
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conditions set forth herein.
5.2 Subject to the provisions of the Service Xxxx
Assignment, Licensees agree that they shall not, directly or indirectly: (i) use
any Licensed Xxxx in any way that would be reasonably likely to impair its
validity as a trademark; (ii) challenge or take any other action that would be
reasonably likely to impair Licensor's rights in any Licensed Xxxx or impair its
validity or enforceability as a trademark, or call into question the validity or
ownership of any of the Licensed Marks or their registrations in any
jurisdiction; (iii) apply for the registration of the Licensed Marks, or any
name or xxxx which is confusingly similar to the Licensed Marks; or (iv) use or
promote, any name or xxxx that is confusingly similar to the Licensed Marks.
Licensee agrees to execute any acknowledgements or waivers that may be required
to establish Licensor as the sole and exclusive owner of the Licensed Marks.
6. BREACH OF AGREEMENT; TERMINATION
6.1 Licensor may without prejudice to its other remedies
terminate this Agreement immediately by notice in writing to Licensees on or
after the occurrence of any of the following:
(a) the commission of one or more material
breaches of this Agreement by any Licensee which are not capable of
remedy;
(b) the commission of a material breach of this
Agreement by any Licensee which is capable of remedy (a "Remediable
Breach") which shall not have been remedied within a period of one (1)
month after the party in breach has been given notice in writing
specifying such Remediable Breach and requiring it to be remedied;
provided, however, that such one-month period shall be extended for
such additional period, not to exceed thirty (30) days, as shall be
reasonably necessary if that Remediable Breach is incapable of remedy
within that one-month period and during that one-month period the party
in breach shall diligently endeavor to remedy that Remediable Breach,
but only if such extension would not reasonably be expected to have a
material adverse effect on the validity of the Licensed Marks.
(c) the bankruptcy or insolvency of, a general
assignment for the benefit of creditors or similar event by, or the
appointment of a trustee, receiver or similar person for the Licensees.
6.2 Except as set forth in Section 6.1 herein, in no
event shall any party to this Agreement have the right to terminate this
Agreement or the rights granted hereunder during the Term. Except as set forth
in Section 6.1 herein, in the event that either Licensee has committed a
material breach of this Agreement, Licensor shall be entitled to all legal
remedies (except termination of this Agreement) and injunctive or other
equitable relief as a remedy for any such breach (including, without limitation,
enjoining any of Licensee's actions that are in breach of this Agreement).
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6.3 Upon a termination of this Agreement with respect to
a Licensee, such Licensee shall, at Licensor's election, either deliver to
Licensor all materials that include the Licensed Marks, including, but not
limited to, advertisements, brochures, letterhead stationery and regulatory
forms, or certify that such materials have been destroyed.
6.4 Upon the termination of this Agreement, the rights
and obligations of the parties shall terminate, except that the provisions of
Articles 7, 8 and 9 shall survive termination of this Agreement. Expiration or
termination of this Agreement shall not discharge, affect or modify any rights
or obligations which accrue or are incurred prior to the date of expiration or
termination.
7. DISCLAIMER; INDEMNIFICATION
7.1 Representations; Disclaimer of Warranties.
(a) Licensor represents and warrants to
Licensees that (i) Licensor has the right to grant the licenses granted
herein, (ii) Licensee's use of the Licensed Marks in the same manner as
used by Licensees in the conduct of their respective operations prior
to the Closing Date does not and will not violate or infringe the
Intellectual Property rights of any Person who is not a party to this
Agreement, and (iii) the Licensed Marks comprise all the trademarks,
service marks, trade names and trade dress owned or controlled by
Licensor and its Affiliates as were used by Licensees prior to the
Closing Date in connection with the operation of the Business.
(b) EXCEPT AS SET FORTH IN SECTION 7.1(a),
NEITHER PARTY MAKES ANY REPRESENTATION AND WARRANTY OF ANY KIND,
EXPRESS OR IMPLIED, IN RELATION TO THE LICENSED MARKS OR ANY OTHER
MATTER RELATED TO THIS AGREEMENT. WITHOUT LIMITING THE FOREGOING, BUT
SUBJECT TO THE REPRESENTATIONS AND WARRANTIES INCLUDED IN SECTION
7.1(a), EACH PARTY EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES,
INCLUDING, WITHOUT LIMITATION, MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE AND NONINFRINGEMENT.
(c) LIMITATIONS ON DAMAGES. IN NO EVENT SHALL
EITHER PARTY BE LIABLE TO THE OTHER OR ANY OTHER PERSON FOR ANY
INDIRECT, INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES INCURRED BY ANY
PERSON, OR FOR ANY PUNITIVE OR EXEMPLARY DAMAGES IN CONNECTION WITH ANY
CAUSE OF ACTION ARISING FROM OR RELATED TO THIS AGREEMENT, REGARDLESS
OF THE THEORY OF LIABILITY ON WHICH SUCH CLAIMS ARE BASED, AND EVEN IF
SUCH PARTY IS ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR CLAIMS.
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7.2 Each Licensee shall indemnify and agree to hold
Licensor and its Affiliates harmless from, against and in respect of and shall
reimburse Licensor and/or its Affiliates for any and all loss, liability or
damage (including reasonable attorneys' fees and costs and expenses) resulting
from any claim brought by any third party (excluding any Affiliate of Licensor)
alleging infringement by Licensee of such third party's Trademark rights based
upon such Licensee's use of the Licensed Marks to the extent such use of the
Licensed Marks exceeds the scope of or is contrary to the rights granted to such
Licensee herein, except for losses, liabilities or damages arising from any
claim that the Licensed Marks or Licensor's grant hereunder infringe or
otherwise violate the Trademark rights of such third party independent of any
such Licensee use of the Licensed Marks beyond the scope of or contrary to the
rights granted to such Licensee herein.
7.3 In the event that Licensor wishes to assert a claim
for indemnification under Section 7.2, Licensor shall deliver written notice (a
"Claims Notice") to Licensees no later than ten (10) Business Days after such
claim becomes known to Licensor, specifying the facts constituting the basis
for, and the amount (if known) of the claim asserted. Failure to deliver a
Claims Notice with respect to a claim in a timely manner as specified in the
preceding sentence shall not release Licensee from any of its obligations under
Section 7.2, except to the extent Licensees are materially prejudiced by such
failure.
8. CONFIDENTIALITY
8.1 Each party hereto will hold, and will use its
reasonable best efforts to cause its Affiliates and representatives to hold, in
strict confidence from any Person (other than any such Affiliates or
representatives), this Agreement the terms and conditions hereof and thereof,
and all documents and information concerning the other party or any of its
Affiliates (the "Confidential Information") furnished to it by the other party
(the "Disclosing Party") or such Disclosing Party's representatives in
connection with this Agreement, except to the extent that such Confidential
Information can be shown to have been (a) previously known by the party
receiving such Confidential Information (the "Receiving Party"), (b) in the
public domain (either prior to or after the furnishing of such Confidential
Information hereunder) through no fault of such Receiving Party or (c) later
acquired by the Receiving Party from another source if the Receiving Party is
not aware that such source is under an obligation to another party hereto to
keep such Confidential Information confidential; provided that, a Receiving
Party may make any disclosure of Confidential Information (i) the use of such
Confidential Information is reasonably required in connection with disclosure of
the tax treatment and any facts that may be relevant to the tax structure of the
transactions contemplated by this Agreement, (ii) with the prior written consent
of the other party, (iii) if compelled to disclose by judicial or administrative
process (including, without limitation, in connection with obtaining the
necessary approvals for this Agreement and the transactions contemplated hereby
of governmental or regulatory authorities) or by other requirements of
Applicable Law or the rules of a national securities exchange or (iv) in
connection with an action or proceeding brought by a party hereto in pursuit of
its rights or in the exercise of its remedies hereunder. In the event a
Receiving Party
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becomes compelled to disclose Confidential Information as described in clauses
(iii) and (iv) above, such party will provide the Disclosing Party with prompt
notice of such legal proceedings so that the Disclosing Party may seek an
appropriate protective order or other appropriate relief or waive compliance
with the provisions of this Section 8.1. In the absence of a protective order or
a waiver from the Disclosing Party, the Receiving Party compelled to disclose
Confidential Information is permitted to disclose that portion (and only that
portion) of the Confidential Information that such Receiving Party is legally
compelled to disclose; provided, however, that the Receiving Party must use
reasonable efforts to obtain reliable assurance that confidential treatment will
be accorded by any Person to whom any Confidential Information is disclosed.
9. GENERAL
9.1 Amendment, Modification and Waiver. This Agreement
may not be amended, modified or waived except by an instrument or instruments in
writing signed and delivered on behalf of each of the parties hereto.
9.2 Entire Agreement. This Agreement constitutes the
entire agreement among the parties with respect to the subject matter hereof and
thereof and supersede all other prior agreements and understandings (other than
the Confidentiality Agreement), both written and verbal, among the parties or
any of them with respect to the subject matter hereof.
9.3 Interpretation.
(a) When a reference is made in this Agreement
to a Section or Article, such reference shall be to a section or
article of this Agreement unless otherwise clearly indicated to the
contrary. Whenever the words "include," "includes" or "including" are
used in this Agreement they shall be deemed to be followed by the words
"without limitation." The words "hereof," "herein" and "herewith" and
words of similar import shall, unless otherwise stated, be construed to
refer to this Agreement as a whole and not to any particular provision
of this Agreement. The meaning assigned to each term used in this
Agreement shall be equally applicable to both the singular and the
plural forms of such term, and words denoting any gender shall include
all genders. Where a word or phrase is defined herein, each of its
other grammatical forms shall have a corresponding meaning.
(b) The parties have participated jointly in the
negotiation and drafting of this Agreement; consequently, in the event
an ambiguity or question of intent or interpretation arises, this
Agreement shall be construed as if drafted jointly by the parties
thereto, and no presumption or burden of proof shall arise favoring or
disfavoring any party by virtue of the authorship of any provisions of
this Agreement.
9.4 Notices. All notices, requests, claims, demands and
other communications hereunder shall be in writing and shall be given (and shall
be deemed to
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have been duly given upon receipt) by delivery in Person, by telecopy (delivery
of which is confirmed), by courier (delivery of which is confirmed) or by
registered or certified mail (postage prepaid, return receipt requested) to the
respective parties to this Agreement as follows:
If to the Licensor, to:
Xxxxx X. Xxxxxxxx, Esq.
General Counsel
Royal & SunAlliance USA, Inc.
0000 Xxxxxxxxxx Xxxx.
Xxxxxxxxx, Xxxxx Xxxxxxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
with a copy to (which shall not constitute notice to Licensor
for purposes of this Section 9.4):
Xxxxxx X. Xxxxxxxx, Esq.
Skadden, Arps, Slate, Xxxxxxx & Xxxx LLP
Xxxx Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
If to a Licensee:
Royal Specialty Underwriting, Inc.
Xx. Xxxxx X. Xxxxxxx
Executive Vice President
000 Xxxx Xxxxx Xxxxx Xxxx
Xxxxxxx, XX 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
with a copy to (which shall not constitute notice to Licensee
for purposes of this Section 9.4):
Xxxxxx X. Xxxxxx, Esq.
Xxxxx Xxxxxxxxxx LLP
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
All such notices, requests and other communications shall be deemed received on
the date of receipt by the recipient thereof if received prior to 5:00 p.m. in
the place of receipt and such day is a Business Day. Otherwise, any such notice,
request or communication
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shall be deemed not to have been received until the next succeeding Business Day
in the place of receipt.
9.5 Governing Law. This Agreement shall be governed by
and construed in accordance with the laws of the State of Delaware, regardless
of the laws that might otherwise govern under applicable principles of conflicts
of laws thereof.
9.6 Assignment; Binding Agreement. Subject to Section
3.2, neither this Agreement, nor any rights, interests or obligations hereunder,
may be directly or indirectly assigned, delegated, sublicensed or transferred by
Licensees, in whole or in part, to any other Person (including any bankruptcy
trustee) by operation of law or otherwise, whether voluntarily or involuntarily,
without the prior written consent of Licensor, except that each Licensee shall
have the right any time, without such consent, to assign, in whole or in part,
its rights hereunder to any wholly owned Subsidiary of such Licensee, provided
that such assignment shall not relieve such Licensee of any of its obligations
hereunder. Subject to the foregoing, this Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective successors and
permitted assigns.
9.7 Third Party Beneficiaries. Nothing in this Agreement,
express or implied, is intended to or shall confer upon any Person other than
the parties hereto any rights, benefits or remedies of any nature whatsoever
under or by reason of this Agreement.
9.8 Specific Performance. The parties recognize and agree
that if for any reason any of the provisions of this Agreement are not performed
in accordance with their specific terms or are otherwise breached, immediate and
irreparable harm or injury would be caused for which money damages would not be
an adequate remedy. Accordingly, each party agrees that, in addition to any
other available remedies, each other party shall be entitled to an injunction
restraining any violation or threatened violation of any of the provisions of
this Agreement without the necessity of posting a bond or other form of
security. In the event that any action should be brought in equity to enforce
any of the provisions of this Agreement, no party will allege, and each party
hereby waives the defense, that there is an adequate remedy at Law.
9.9 Severability. Any term or provision of this Agreement
which is invalid or unenforceable in any jurisdiction shall, as to that
jurisdiction, be ineffective to the extent of such invalidity or
unenforceability without rendering invalid or unenforceable the remaining terms
and provisions of this Agreement or affecting the validity or enforceability of
any of the terms or provisions of this Agreement in any other jurisdiction. If
any provision of this Agreement is so broad as to be unenforceable, the
provision shall be interpreted to be only so broad as would be enforceable.
9.10 Counterparts. This Agreement may be executed in
counterparts, each of which shall be deemed to be an original, but all of which
shall constitute one and the same agreement.
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9.11 Waiver of Jury Trial. EACH OF THE PARTIES HERETO
HEREBY IRREVOCABLY WAIVES ANY AND ALL RIGHT TO TRIAL BY JURY IN ANY LEGAL
PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT OR THE TRANSACTIONS
CONTEMPLATED HEREBY.
9.12 Consent to Jurisdiction. Each of the parties hereto
irrevocably and unconditionally submits to the exclusive jurisdiction of the
state and federal courts located in the State of Delaware for the purposes of
enforcing this Agreement or any of the Ancillary Agreements. If any action is
brought in a state court, the parties shall take such actions as are within
their control to cause any matter contemplated hereby to be assigned to the
Chancery Court of the State of Delaware. In any action, suit or other
proceeding, each of the parties hereto irrevocably and unconditionally waives
and agrees not to assert by way of motion, as a defense or otherwise any claims
that it is not subject to the jurisdiction of the above courts, that such action
or suit is brought in an inconvenient forum or that the venue of such action,
suit or other proceeding is improper. Each of the parties hereto also agrees
that any final and unappealable judgment against a party hereto in connection
with any action, suit or other proceeding shall be conclusive and binding on
such party and that such award or judgment may be enforced in any court of
competent jurisdiction, either within or outside of the United States. A
certified or exemplified copy of such award or judgment shall be conclusive
evidence of the fact and amount of such award or judgment.
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IN WITNESS WHEREOF, each of the parties has caused this
Agreement to be executed on its behalf by its officer thereunto duly authorized,
all as of the day and year first above written.
LICENSOR:
ROYAL & SUNALLIANCE USA, INC.
By: /s/ Xxxxx Xxxxxxxx
-------------------------
Xxxxx Xxxxxxxx
Senior Vice President
LICENSEES:
ROYAL SPECIALTY UNDERWRITING,
INC.
By: /s/ E.G. Xxxxxxxx, III
---------------------------
E.G. Xxxxxxxx, III
President and Chief
Executive Officer
RSA SURPLUS LINES INSURANCE
SERVICES, INC.
By: /s/ E.G. Xxxxxxxx, III
--------------------------
E.G. Xxxxxxxx, III
President and Chief
Executive Officer
EXHIBIT A(1)
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EXHIBIT A(2)
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