EXHIBIT 10.5
AMENDED AND RESTATED TRADEMARK LICENSE AGREEMENT
This Amended and Restated Trademark License Agreement (the "Agreement") is
entered into as of May 10, 2004 by and between the following two parties in
Beijing.
The Licensor: KONGZHONG INFORMATION TECHNOLOGIES (BEIJING) CO., LTD. ("KONGZHONG
BEIJING")
Legal Address: 12th floor, Xxxxx Xxxx Building, Xxxxx Xxxx Cun Nan Da Jie, Hai
Xxxx District, Beijing
The Licensee: BEIJING AIRINBOX INFORMATION TECHNOLOGIES CO., LTD. ("BEIJING
AIRINBOX")
Legal Address: 12th floor, Xxxxx Xxxx Building, Xxxxx Xxxx Xxx Xxx Da Jie, Hai
Xxxx District, Beijing
WHEREAS, the Licensor, a wholly foreign-owned enterprise registered in
Beijing under the laws of People's Republic of China (not including Hong Kong,
Macao and Taiwan, hereinafter called "China"), has the right to use and apply
for registration the trademarks listed in the Exhibit 1 of this Agreement;
WHEREAS, the Licensee, a limited liability company sponsored by natural
persons in China registered in Beijing under the laws of the People's Republic
of China (the "PRC"), is licensed to engage in the business of providing
Internet information and the telecom value-added services;
WHEREAS, the Licensor agrees to license the said trademarks to the
Licensee in accordance with the terms and conditions set forth herein and the
Licensee as well agrees to accept the license on the terms and conditions set
forth herein;
NOW THEREFORE, on the basis of mutual benefit and friendly negotiation,
the parties
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agree as follows:
1. Grant of License
1.1 The Trademarks
Under the terms and conditions hereinafter set forth, the Licensor
hereby grants to the Licensee and the Licensee accepts from the
Licensor the license to use parts of or all parts of the trademarks
listed in Exhibit 1, or any design, character, symbol and visible
representation that presents any part of such trademarks (collectively
the "Trademarks"), and the Licensee may deal its business with these
Trademarks. Such license is non-monopolized, non-exclusive and
non-transferable.
1.2 Territory
1.2.1 The use of the Trademarks grants by the Licensor to the
Licensor extends only to the scope of the business operated
by Licensee and the business relating to KongZhong Net. The
Licensee agrees that it will not make, or authorize any use
direct or indirect, of the Trademarks by any means, unless
the Licensor agrees.
1.2.2 The License in this Agreement is effective in the district
of China and where the Licensor grant the Licensee in the
writing form from time to time. The Licensee agrees that it
will not make, or authorize to use, direct or indirect of
the Trademarks in any area.
1.3 Standards
The Licensee shall strictly comply with any standards and criteria the
Licensor requests from time to time when the Licensee uses the
Trademarks.
1.4 Licensee's confirmation
The Licensee confirms that it will not enjoy any rights, titles and
interests of the Trademarks except the rights, titles and interests in
the Trademarks under this Agreement.
2. TERMS OF PAYMENT
The Licensee agrees to pay to the Licensor a license fee and the details of
the calculation method and the form of payment are set forth in Exhibit 2.
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3. GOODWILL
The Licensee recognizes the value of the goodwill associated with the
Trademarks and the relevant rights, and acknowledges that the Trademarks
therein and goodwill (including but not limited to the goodwill occurs from
the Licensee's use) pertaining thereto shall be the sole and exclusive
property of the Licensor.
4. CONFIDENTIALITY
4.1 The Licensee shall protect and maintain the confidentiality of any and
all confidential data and information acknowledged or received by the
Licensee by accepting licensing of the Trademarks from the Licensor
(collectively the "Confidential Information"). Upon termination or
expiration of this Agreement, the Licensee shall, at the Licensor's
option, return all and any documents, information or software
contained any of such Confidential Information to the Licensor or
destroy it and delete such Confidential Information from any
electronic devices and cease to use them. The Licensee shall not
disclose, grant or transfer any Confidential Information to any third
party and will not use the Confidential Information without the
Licensor's written consent. Licensee shall disclose the protected
Confidential Information to the necessary employees, agents or
consultants by the necessary measures, and shall urge the necessary
employees, agents or consultants to observe the obligations under this
Agreement.
4.2 The above limitations shall not apply to the situations as follows:
4.2.1 The materials which can be obtained in public in the time of
disclosure;
4.2.2 The public materials disclosed not due to the mistake of
Licensee;
4.2.3 The Licensee may prove that before the disclosure the
materials were under its title and were not obtained
directly or indirectly from the other resources;
4.2.4 Upon the legal demands of any party, the Confidential
Information shall be disclosed to the government
authorities, security exchange agent, and etc.; and upon the
general operation needs, the above Confidential Information
shall be disclosed to direct legal consultants and financial
advisor.
4.3 With the consent of both parties, Article 4 shall survive any
amendment, expiration or termination of this Agreement.
5. REPRESENTATIONS AND WARRANTIES
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5.1 The Licensor represents and warrants as follows:
5.1.1 the Licensor is a company duly registered and in good
standing under the applicable laws of the China;
5.1.2 the Licensor, subject to its business scope, has full right,
power, authority and capacity and all necessary consents any
approvals of any third party and government authorities to
execute and perform this Agreement, which shall not be
against any enforceable and effective laws or contracts;
5.1.3 the Agreement will constitute a legal, valid and binding
agreement of the Licensor and will be enforceable against
the Licensor in accordance with its terms upon its
execution;
5.1.4 the Licensor has the exclusive ownership of the Trademarks.
5.2 The Licensee represents and warrants as follows:
5.2.1 the Licensee is a company duly registered and in good
standing under the applicable laws of the China, and is
approved by the relevant authorities to provide the internet
information services and the value-added telecom service;
5.2.2 the Licensee, subject to its business scope, has full right,
power, authority and capacity and all necessary consents and
approvals of any third party and government authorities to
execute and perform this Agreement, which shall not be
against any enforceable and effective laws or contracts;
5.2.3 the Licensee will not use or authorize to use any trademarks
or symbols, which the Licensor judges by itself, are similar
to the Trademarks and to make confusion.
5.2.5 the Agreement will constitute a legal, valid and binding
agreement of the Licensor and will be enforceable against
the Licensor in accordance with its terms upon its
execution.
6. The Licensor's Right of Licensing and Protection of the Licensor's Rights:
6.1 The Licensee agrees that it will not, during the term of this
Agreement, or thereafter, attack the rights of Licensing or any rights
of the Licensor in and to the Trademarks or attack the validity of
this Agreement, or otherwise take or fail to
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take any action that impairs such rights or license.
6.2 The Licensee agrees to assist the Licensor to the extent necessary in
the procurement of any protection or to protect any of the Licensor's
rights to the Trademarks. In the event any third party lodges a claim
concerning the Trademarks, the Licensor, if it so desires, may
commence or prosecute any claims or lawsuits in its own name or in the
name of the Licensee or join the Licensee as a party thereto. In the
event any third party infringes on the above mention Trademarks, the
Licensee shall notify the Licensor in writing of any infringements, or
imitation by others of the Trademarks which may come to the Licensee's
attention, and the Licensor shall have the sole right to determine
whether or not any action shall be taken on account of any such
infringements.
6.3 The Licensee further agrees to use the Trademarks only in accordance
with this Agreement and shall not use the Trademarks in any way that,
in the opinion of the Licensor, is deceptive, misleading or in any way
damaging to such Trademarks or the reputation of the Licensor.
7. QUALITY
The Licensee shall use its reasonable best efforts to improve the quality
of KongZhong Net, so to protect and enhance the reputation of the
Trademarks.
8. PROMOTION MATERIAL
In all cases where the Licensee makes promotion material involving the
Trademarks, the production cost of such material thereof shall be borne by
the Licensee. All copyrights or other intellectual property rights of such
material concerning the Trademarks thereto shall be the sole and exclusive
property of the Licensor whether developed by the Licensor or the Licensee.
The Licensee agrees not to advertise or publicize any of the Trademarks on
radio, television, papers, magazines, the Internet or otherwise the prior
written consent of the Licensor.
9. EFFECTIVE DATE AND TERM
9.1 This Agreement has been duly executed as of the date first set forth
above and shall be effective simultaneously. The term of this
Agreement is 10 (ten) years unless earlier terminated as set forth in
this Agreement.
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9.2 Unless any other provisions set forth in written form, this Agreement
shall be applicable to any other trademarks licensed to the Licensee
within the term of this Agreement. After the execution of this
Agreement, the Licensor and Licensee shall review this Agreement every
3 months to determine whether to make any amendment or supplement to
this Agreement upon the detail situation.
9.3 This Agreement shall be extended for 10 (ten) years automatically only
if the Licensor gives the Licensee written notice of termination of
this Agreement 3 (three) months prior to the expiration of this
Agreement. However, the Licensee has no right to determine whether to
extend.
10. RECORD FILING
Within 3(three) months after the Licensor becomes the exclusive owner of
the Trademarks, both parties shall, in compliance with the law of China,
make a record filing of the copy of the Agreement to the relevant trademark
authority of China (if applicable). Both parties agree to execute or
furnish the relevant documents required in line with the principal hereof
and relevant laws.
11. TERMINATION
11.1 This Agreement shall expire on the date due or the date when the
Licensor's right of ownership terminates unless this Agreement is
extended as set forth above.
11.2 Without prejudice to any legal or other rights or remedies of the
party who asks for termination of this Agreement, any party has the
right to terminate this Agreement immediately with written notice to
the other party in the event the other party materially breaches this
Agreement including without limitation to Sections 6.1, 6.2 and 6.3 of
this Agreement and fails to cure its breach within 30 days from the
date it receives written notice of its breach from the non-breaching
party.
11.3 During the term of this Agreement, the Licensor may terminate this
Agreement at any time with a written notice to the Licensee 30 days
before such termination. The Licensee shall not terminate this
Agreement in prior.
11.4 Article 3, 4, 6, 15 and 16 shall survive after the termination or
expiration of this Agreement.
12. FORCE MAJEURE
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12.1 Force Majeure means any event that is beyond the party's reasonable
control and cannot be prevented with reasonable care including but not
limited to the acts of governments, nature, fire, explosion, typhoon,
flood, earthquake, tide, lightning and war. However, any shortage of
credit, capital or finance shall not be regarded as an event of Force
Majeure. The party affected by Force Majeure shall notify the other
party without delay.
12.2 In the event that the affected party is delayed in or prevented from
performing its obligations under this Agreement by Force Majeure, only
within the scope of such delay or prevention, the affected party will
not be responsible for any damage by reason of such a failure or delay
of performance. The affected party shall take appropriate measures to
minimize or remove the effects of Force Majeure and attempt to resume
performance of the obligations delayed or prevented by the event of
Force Majeure, and the affected party will not be responsible to such
performance and will only be responsible to the delayed parts of
performance. After the event of Force Majeure is removed, both parties
agree to resume the performance of this Agreement with their best
efforts.
13. NOTICES
Notice or other communications required to be given by any party pursuant
to this Agreement shall be written in English and Chinese and shall be
deemed to be duly given when it is delivered personally or sent by
registered mail or postage prepaid mail or by a recognized courier service
or by facsimile transmission to the address set forth below.
The Licensor: KONGZHONG INFORMATION TECHNOLOGIES (BEIJING) CO., LTD.
Legal Address: Room 809, Block A, Xxx Xxx Building, 2#, Xxx Xxx Bei Jie, Xi
Cheng District, Beijing
Fax:(86) 10 - 00000000
Tel.:(86) 10 - 00000000
Receiver: Xxxxxx Xxxx
The Licensee: BEIJING KONGZHONG AIRINBOX INFORMATION TECHNOLOGIES CO.,
LTD.
Legal Address: Room 809, Block A, Xxx Xxx Building, 2#, Xxx Xxx Xxx Xxx, Xx
Xxxxx Xxxxxxxx, Xxxxxxx
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Fax:(86) 10 - 00000000
Tel.:(86) 10 - 00000000
Receiver: Xxxxxx Xxxx
14. RE-TRANSFER, RE-LICENSE
This agreement and all the rights and duties hereunder are personal to the
Licensee. The Licensee agrees that it will not assign, lease or pledge to
any third party without the written consent of the Licensor.
15. SETTLEMENT OF DISPUTES
15.1 The parties shall strive to settle any disputes arising from the
interpretation or performance through negotiation in good faith. In
the event that no settlement can be reached through negotiation within
30 days after one party issues a negotiating notice, either party can
submit such matter to China International Economic and Trade
Arbitration Commission (the "CIETAC"). The arbitration shall follow
the current rules of CIETAC, and the arbitration proceedings shall be
conducted in Chinese and shall take place in Beijing. The arbitration
award shall be final and binding upon the parties and shall be
enforceable in accordance with its terms.
15.2 Except the dispute issues, all parties shall perform their own duties
under the Agreement good faith.
16. APPLICABLE LAW
The execution, validity, performance, interpretation and any disputes of
this Agreement shall be governed and construed by the laws of the PRC.
17. AMENDMENT AND SUPPLEMENT
Any amendment and supplement of this Agreement shall come into force only
after a written agreement is signed by both parties. The amendment and
supplement duly executed by both parties shall be part of this Agreement
and shall have the same legal effect as this Agreement.
18. ENTIRE AGREEMENT
This Agreement and all the agreements and/or documents referenced or
specifically included herein constitute the entire agreement among the
parties in respect of the
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subject matter hereof and supersede all prior oral or written agreements,
contract, understanding and correspondence among them, including the
trademark license agreement between the parties dated March 31, 2004.
19. SEVERABILITY
Any provision of this Agreement which is invalid or unenforceable due to
the violation of relevant laws in any jurisdiction shall, as to that
jurisdiction, be ineffective to the extent of such invalidity or
unenforceability, without affecting in any way the remaining provisions
hereof.
20. WAIVER
Any party cannot perform the rights, power, or privileges under this
Agreement shall not be deemed as waiver. Any wholly or partly performance
of the rights, power, or privileges shall not exclude the performance of
any other rights, power, or privileges.
21. EXHIBITS
The Exhibits referred to in this Agreement are an integral part of this
Agreement and have the same legal effect as this Agreement.
IN WITNESS THEREOF the parties hereto have caused this Agreement to be
duly executed by a duly authorized representative each on behalf of the
party here to as of the date first set forth above.
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[Signature page, no Agreement]
The Licensor: KONGZHONG INFORMATION TECHNOLOGIES (BEIJING) CO., LTD.
Authorized Representative: /s/ Xxxx Xxxx
The Licensee: BEIJING AIRINBOX INFORMATION TECHNOLOGIES CO., LTD.
Authorized Representative: /s/ Xxxxxx Xxxx
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EXHIBIT 1
LIST OF LICENSED TRADEMARKS
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EXHIBIT 2
CALCULATION METHOD AND FORM OF PAYMENT OF LICENSE FEE
The license fee under this Agreement shall be 5% of the total income of
Licensee. License fee for each Trademark shall be calculated on an average basis
according to the total license fee. The license fee shall be paid every quarter
and the Licensor shall pay the Licensee within 15 days after each quarter. If
the Licensor considers it helpful to the business of the Licensee, the Licensor
at its sole discretion may reduce or exempt whole or any part of the license
fee. Both parties agree that before the Licensor obtains exclusive ownership of
any Trademark, no license fee in respect of such Trademark will be charged.
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