--------------------------------------------------------------------------------
Trademark License Agreement
--------------------------------------------------------------------------------
between
Xxxxxxxx-Xxxxx Corporation.
("Licensor")
and
Derma Sciences, Inc.
("Licensee")
Made as of the 9th day of January 2004
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT made this 9th day of January, 2004, between
XXXXXXXX-XXXXX WORLDWIDE, INC., a subsidiary of XXXXXXXX-XXXXX CORPORATION, a
company incorporated under the laws of Delaware, (collectively, "Licensor"), and
DERMA SCIENCES, INC., a company registered under the laws of Pennsylvania,
("Licensee").
W I T N E S S E T H:
- - - - - - - - - -
WHEREAS, concurrently herewith the parties are entering into a Purchase
Agreement (the "Purchase Agreement") which transfers certain trademarks and
wound care manufacturing equipment and a Supply Agreement (the "Supply
Agreement") pursuant to which Licensor shall sell and Licensee shall buy certain
wound care products and raw materials.
WHEREAS, in support of the Purchase Agreement and Supply Agreement the
parties want to enter into this License Agreement which would license a
trademark of Licensor;
NOW THEREFORE, the parties agree as follows:
ARTICLE 1
DEFINITIONS
For the purposes of this Agreement:
Licensed Products. Those products listed opposite the trademarks in the
----------------- attached Appendix A.
Licensed Trademark. The trademark listed in the attached Appendix A.
------------------
Licensed Territory. United States and Canada.
------------------
ARTICLE 2
TRADEMARK LICENSE
Subject to the terms and conditions hereinafter set forth and for good
and valuable consideration, Licensor hereby grants to Licensee a nonexclusive
license to use the Licensed Trademark in connection with the manufacturing,
producing and packaging of the Licensed Products in the Licensed Territory, and
a nonexclusive license for the distribution and sale of the Licensed Products in
the Licensed Territory to customers or distributors, or both for consumption in
the Licensed Territory. If requested to do so by Licensor, Licensee agrees to
join with Licensor in the execution of documents for recordal of this Agreement
in the appropriate Trademark Offices, and in the execution of any requisite
amendments to such documents.
2
ARTICLE 3
QUALITY CONTROL
(a) All Licensed Products shall be manufactured, produced or packaged
under sanitary conditions, and shall comply in all respects with
the quality standards, package standards and other specifications
which shall be supplied to Licensee by Licensor during the term
of this Agreement.
(b) Prior to commencing commercial production of any Licensed
Products, Licensee shall furnish Licensor samples of all
packages, labels, direction sheets, cartons, containers,
advertising and promotional materials which Licensee proposes to
use in connection therewith, including a copy of the printing
layout and any printing or other markings which are to appear
thereon, and Licensee shall not commence commercial production of
any such products until Licensor shall have given Licensee
written approval of such samples. Licensor shall within thirty
(30) days subsequent to the receipt of such samples approve or
disapprove the same. In the event of disapproval, Licensor shall
inform Licensee of the changes required to obtain approval.
(c) Licensee shall maintain the quality and other standards of the
Licensed Products produced or packaged, or both, and sold
hereunder equivalent or superior to the quality, package and
other standards of the previously approved samples. Licensee
shall conform all packages, labels, direction sheets, cartons,
containers and advertising and promotional materials used in
connection with the approved products to the previously approved
samples, and shall not make any change in the previously approved
printing or other markings appearing thereon without the prior
written consent of Licensor.
(d) At intervals of three (3) months, and at such other times as may
be reasonable, Licensee shall furnish Licensor with samples of
the packages, labels, cartons and containers related to the
Licensed Products. In addition, Licensor shall have the right at
any reasonable time or times to inspect all facilities and
equipment used by Licensee in the producing and packaging of
Licensed Products. Licensee shall not do or permit to be done any
act or thing which might in any way impair the goodwill and other
rights of Licensor in the Licensed Trademark, or which might
otherwise prejudice, or damage the reputation of, the Licensed
Trademark or the sale of the Licensed Products.
3
ARTICLE 4
CAPACITY; LOCAL LAWS; TAXES, ETC.
(a) Licensee shall act hereunder as an independent contractor and
shall not be deemed, expressly or by implication, to be an agent,
employee, or servant of Licensor for any purpose whatsoever.
(b) In the performance of this Agreement, Licensee shall comply with
all applicable laws and Licensor shall not be responsible for the
consequences of any violation thereof unless such violation shall
be caused by Licensor's willful or negligent disregard of
Licensee's instructions or advice.
(c) Licensee shall, in furtherance of this general obligation, render
all reports and pay all taxes and duties hereunder by reason of
any stamp or documentary tax or duty imposed by any governmental
body of or in the Licensed Territory upon contracts or license
agreements. Licensee shall also be responsible for all duties,
tariffs, property taxes, fees, and other similar charges not
incurred through the negligence or willful misconduct of
Licensor, imposed upon the Licensed Products wherever located and
upon materials purchased thereunder, after departure, from port
of exit.
ARTICLE 5
TRADEMARKS
Licensee acknowledges that Licensor is the sole owner of the entire
right, title and interest in and to the Licensed Trademark throughout the
Licensed Territory. Licensee acknowledges the validity of, and Licensor's title
to and in, Licensor's registrations and applications to register the Licensed
Trademark in the aforementioned areas. If requested to do so by Licensor,
Licensee agrees to join with Licensor in the execution of appropriate trademark
license agreements for recordal in the appropriate Trademark Offices and in the
execution of any requisite amendments to such agreements. Licensee further
agrees that during the term of, and after the termination of, this Agreement,
however occurring, Licensee shall not do any of the following:
(a) Use the Licensed Trademark, or any words, marks, characters or
symbols in any language confusingly similar thereto or which, due
to their manner of display or use, may either initially or as a
result of such display or use, be considered the equivalent of
the Licensed Trademark in connection with the manufacturing,
producing, packaging, use, sale or distribution of any product
not manufactured or packaged by Licensor or those duly authorized
by it; or
(b) Apply for or seek registration at any time of the Licensed
Trademark or any words, marks, characters or symbols in any
language confusingly similar thereto or which due to their manner
of display or use, may either initially or as a result of such
display or use, be considered the equivalent of the Licensed
Trademark (it being agreed that, when called upon in writing by
Licensor at any time to do so, Licensee shall, at Licensor's
election, either assign to Licensor in writing any rights which
4
Licensee may have therein or release and cancel any rights of
record which Licensee might have therein); or
(c) Use the Licensed Trademark, or any words, marks, characters or
symbols in any language confusingly similar thereto or which, due
to their manner of display or use, may either initially or as a
result of such display or use, be considered the equivalent of
the Licensed Trademark in any corporate or trade name without
Licensor's specific written permission in advance (such
permission, if granted, to expire concurrently with the
termination of this Agreement, and the use thereof to be
discontinued and such corporate or trade name to be removed from
all corporate and other official registries forthwith upon
termination of this Agreement); or
(d) Use any label or container embodying any printing or
ornamentation similar in appearance to any labels or containers
used at any time during the term of this Agreement for any
product bearing the Licensed Trademark, in connection with the
manufacture, packaging, use, sale or distribution of any product
(even though not distributed under a name or trademark the same
as or confusingly similar to the Licensed Trademark) not
manufactured or packaged by Licensor or those duly authorized by
it; or
(e) Do anything or commit any act which might prejudice or adversely
affect the validity of the Licensed Trademark or Licensor's
ownership thereof.
Upon termination of this Agreement, however occurring, Licensee shall
immediately cease to use the Licensed Trademark, or any similar trademarks or
combination thereof, with any letters, other words, or designs, in any manner,
including use upon stationery, letterheads, trade bulletins, in telephone
listings, building directories, offices, plants and factories, labels,
containers, packing boxes and in or on any other item whatsoever.
ARTICLE 6
INFRINGEMENTS
During the term hereof, Licensee shall promptly and fully advise
Licensor of any infringement in the Licensed Territory of the Licensed Trademark
which comes to its notice and of the appearance on the market in the Licensed
Territory of any products reasonably similar in name or package appearance to
any of the Licensed Products. Licensee shall not xxx any such infringer, either
in its own name or in the name of Licensor, and should Licensee nevertheless
bring suit against any infringer, this Agreement shall terminate immediately.
Licensor shall take all reasonable steps to xxxxx all infringements and package
simulations, including, if Licensor shall so decide, the bringing of a lawsuit
or lawsuits, as appropriate. Licensee shall participate on a fair and equitable
basis in any money damages recovered, if Licensee has been damaged by such
infringements.
5
ARTICLE 7
ASSIGNMENT
Licensee shall not, without Licensor's prior written consent,
sublicense, assign or transfer all or any part of its interest under this
Agreement. Any purported sublicense, assignment or transfer in violation of this
section shall be void.
ARTICLE 8
OWNERSHIP
Except for any transfer of shares in Licensee by Licensor, Licensee
shall immediately notify Licensor whenever, whether as a result of one or more
transfers or as a result of recapitalization, a change occurs in the ownership
of fifty percent (50%) or more of the Licensee shares outstanding.
ARTICLE 9
TERM
Unless sooner terminated as hereinafter provided, this Agreement shall
remain in effect for (i) the term of the Supply Agreement between Licensee and
Licensor dated January 9th, 2004 for purposes of the nonexclusive license to use
the Licensed Trademark in connection with manufacturing, producing and packaging
of the Licensed Products in the Licensed Territory and (ii) fifteen (15) months
for the distribution and sale of the Licensed Products in the Licensed Territory
for consumption in the Licensed Territory. In the event of termination of the
Purchase Agreement, this Agreement shall terminate at the same time.
This Agreement may be terminated:
(a) By mutual written consent of the parties at any time; or
(b) By Licensee if it shall be determined by arbitration or by court
proceedings in the Licensed Territory, from which no appeal is
possible, that the Licensed Trademark is not the property of
Licensor and that the rights herein granted are not available for
use by Licensee; or
(c) By either party for a substantial breach of the terms hereof by
the other party if the breach is not corrected within thirty (30)
days after the giving of written notice to the defaulting party
calling for remedy of the breach; or
(d) At the option of Licensor, upon written notice to Licensee
effectively immediately, if Licensee shall become insolvent or
shall make any assignment for the benefit of creditors or shall
be placed in receivership, liquidation or bankruptcy (voluntary
or involuntary); or
6
(e) At the option of Licensor, upon written notice to Licensee
effective immediately, in the event that for any reason, other
than the free and voluntary decision of Licensor:
(i) any of the rights granted by this Agreement, including
trademark license rights, or any of the properties of
Licensee having any relationship to the subject matter of
Licensee's operations under this Agreement are
expropriated, confiscated, limited, or otherwise
restricted or hypothecated, either in whole or in part, by
or through the operation of any law, decree, ordinance or
other governmental action; or
(ii) the management or control, or both, of all or any part of
Licensee's business subject to the terms of this Agreement
by law, decree, ordinance or other governmental action, is
vested in, or is made subject to, the control or direction
of any governmental action, officer, appointee or
designee, or any other person, firm or company not a party
to this Agreement; or
(f) At the option of Licensor, upon written notice to Licensee
effective forthwith, if any person or persons (whether
individuals, partnerships or corporations) acquire a total of
fifty percent (50%) or more of the Licensee shares outstanding.
Termination of this Agreement, however occurring, shall not relieve
either party of any obligation under this Agreement which by its terms is to
continue after termination. Failure by either party in any one or more instances
to terminate this Agreement and any extensions and consents given for whatever
purpose shall not be construed to be a condonation or waiver of any rights.
ARTICLE 10
GOVERNING LAW
The validity and effect of this Agreement and the rights and obligations
of all parties affected hereby shall be construed and determined under the laws
of the State of Texas.
ARTICLE 11
ENTIRE AGREEMENT
This Agreement and its Appendices constitute the entire agreement
between the parties related to the subject matter hereof, and supersede any and
all prior or contemporaneous agreements, whether oral or written, relating to
the subject matter of this Agreement. Any amendment or changes in this Agreement
must be in writing and signed by both parties.
7
ARTICLE 12
NOTICES
All notices and written communications in connection with this License
Agreement shall be deemed sufficient, and delivery thereof shall be deemed
complete, on the seventh day after mailing, on the part of Licensor, if mailed
by registered air mail to:
Derma Sciences, Inc.
000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxx, XX 00000
ATTENTION: CFO
and on the part of Licensee if mailed by registered air mail to:
Xxxxxxxx-Xxxxx Corporation, Inc.
0000 Xxxxxxx Xxxxxx Xxxx
Xxxxxxx, XX 00000
Attention: General Counsel
or to such other address as either party may hereafter specify as its own
address by notice in writing to the other party.
IN WITNESS WHEREOF, this Agreement has been duly executed as on the
effective date above written.
XXXXXXXX-XXXXX CORPORATION
By:
------------------------------------------------------
Name Xxxxxx X. Xxxxxxxxx
Title: President, Business-to-Business
DERMA SCIENCES, INC.
By:
------------------------------------------------------
Name Xxxxxx X. Xxxxxx
Title: President and Chief Executive Officer
8
APPENDIX A
Licensed Trademarks and Products
--------------------------------
Trademark Products
XXXXXXXX-XXXXX Adhesive Skin Closures; Multi-Layered
and Bordered Wound Dressings;
Non-Adherent Dressings (Sterile);
Packing Strips (Sterile)
9
