EXHIBIT 10.44
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT is effective as of September 3, 1998 (hereinafter the
"EFFECTIVE DATE") by and between:
S & J Perfume Company, (hereinafter referred to as "LICENSOR"), and
Tristar Corporation, a Delaware corporation (hereinafter referred to as
"LICENSEE");
WHEREAS, Licensor is the owner of the trademarks and registrations thereof
listed on SCHEDULE A, which Schedule may be amended from time to time by mutual
consent of the parties (the "MARKS");
WHEREAS, Licensee desires to obtain a license from Licensor to use the
Marks on products produced, marketed, sold and distributed by Licensee (the
"PRODUCTS"); and
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, the parties agree as follows:
1. DEFINITIONS
In this Agreement, the following terms shall have the meanings set forth
below:
"NET SALES" shall mean the total of all charges invoiced by Licensee for
sales of the Products less the following items insofar as they are separately
stated but included in the amounts invoiced to customers: usual trade discounts
actually taken, returns, allowances, packing costs, insurance, transportation
costs, customs duties and sales, use, import, export and excise taxes.
"TERRITORY" shall mean North America, Central America and South America
excluding, however, Argentina, Chile, Brazil, Uruguay and Paraguay.
2. TERM
2.1 Subject to the provision of ARTICLE 10 herein, this Agreement shall
continue with respect to each of the Marks, in force from the Effective Date
until the termination, cancellation or expiration of such Mark (the "Term").
3. GRANT OF LICENSE
3.1 Subject to the provisions of this Agreement, Licensor grants to
Licensee, and Licensee accepts, a nonexclusive, nontransferable, personal
license (with the right to enter into sublicenses only with producers of the
Products and only for the sole purpose of producing the Products for Licensee)
to use the Marks in the Territory solely in connection with the production,
distribution, sale and advertisement of the Products.
3.2 Licensee shall not use the Marks other than as provided in SECTION 3.1
hereof.
4. PAYMENT
4.1 Licensee shall pay to Licensor an initial payment of one dollar
($1.00) on the Effective Date.
4.2 In addition to the payment set forth in SECTION 4.1 hereof, Licensee
also shall pay to Licensor royalties in the amount of five percent (5%) of the
Net Sales of the Products. Licensor hereby waives its right to such royalties;
provided however, at the sole discretion of Licensor and upon thirty (30) days
written notice to Licensee, Licensor has the right to revoke such waiver and to
collect royalties for any Net Sales made after such thirty (30) day period.
5. ACCOUNTING AND AUDITING
5.1 After Licensor's revocation of the waiver set forth in SECTION 4.2
hereof, within sixty (60) days following the end of each quarterly period ending
three (3) months, six (6) months, nine (9) months, and twelve (12) months after
the Effective Date and any anniversary date of the Effective Date, during the
Term, Licensee shall provide Licensor with a written statement of Licensee's
inventory and Net Sales during such quarterly period showing the number, type
and Net Sales of each Product and a calculation of the royalty due based
thereon. Within sixty (60) days after any expiration or termination of this
Agreement, Licensee shall provide Licensor such a statement for the last whole
or partial quarterly period during the Term. Each such statement shall be
accompanied by the remittance to Licensor of the royalties shown to be due
thereby.
5.2 Upon five (5) days' notice to Licensee, Licensor, at its expense,
shall have the right at any time during regular business hours, not more
frequently than twice annually, to have a qualified accountant selected by
Licensor audit the records of Licensee to the extent necessary to verify
Licensee's statements and payments of royalties. Such records shall be made
available to Licensor's accountant at Licensee's office located at the address
stated below. Licensee shall cooperate with and assist Licensor's accountant for
the purpose of facilitating such audit.
5.3 If, as a result of such audit, Licensor's accountant determines that
the amount of royalties due was greater than the amount reported by Licensee in
a quarterly statement furnished pursuant to SECTION 5.1, Licensor shall promptly
furnish to Licensee a copy of the report of its accountant setting forth the
amount of the deficiency showing, in reasonable detail, the basis upon which
such deficiency was determined. Licensee shall promptly remit to Licensor a sum
equal to such deficiency so claimed, together with interest thereon at the rate
of the lesser of twelve percent (12%) per annum or the maximum non-usurious rate
allowed by law, from the date such royalty was due until the date of such
remittance. In addition, if the audit reveals the underpayment by more than ten
percent (10%) of the royalties in any quarterly period, Licensee shall pay to
Licensor the cost of such audit.
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6. USE OF MARKS
6.1 Licensee agrees that the nature and quality of: (i) all services and
goods rendered by Licensee in connection with the Marks; (ii) all goods
produced, distributed or sold by Licensee under the Marks; and (iii) all related
advertising, promotional, and other related uses of the Marks by Licensee shall
conform to standards set by Licensor. Any usage not in conformity with standards
set by Licensor shall require Licensor's prior written consent.
6.2 Licensee may use its own trademarks and the trademarks of third
parties in conjunction with the Marks.
6.3 Licensee agrees to permit reasonable, periodic inspection of
Licensee's and/or sublicensees' operations, at reasonable times and with
reasonable notice, and to supply Licensor with specimens of all uses of the
Marks upon request. Licensee shall comply with all applicable laws and
regulations and obtain all appropriate governmental approvals pertaining to the
production, distribution, sale and advertising of the Products.
6.4 Licensor shall not use or adopt, during the term of the License nor at
any time thereafter, except as expressly permitted by this Agreement, in its
business, in its business name, in its trading style, or in any of its services
or on any of its products any trademark, service mark, name, style or dress
which is so similar to, or so nearly resembles any of the Marks or any other
trademark, service mark, trade name, trade dress or label of Licensor as to be
likely to cause or as to be calculated to cause deception or confusion, or which
is graphically or phonetically similar to or is derived from or based upon any
of the Marks. If Licensee adopts or uses, at any time, any trademark, service
mark, name, dress or style which Licensor regards as being in breach of this
Section, Licensee shall, immediately upon request of Licensor, discontinue such
adoption or use.
6.5 Licensee shall not use any of the Marks in Licensee's name or in any
trade name, trademark, service mark, or trade dress of Licensee. Nor shall
Licensee use any of the Marks in it stationery, letterhead, advertising or
otherwise in such a way as may cause any confusion between Licensee and Licensor
in respect to third parties.
6.6 Licensee shall include the Marks on or with all Products sold under
the Marks and shall include all notices and legends with respect to the Marks as
are or may be required by applicable federal, state, and local laws or which may
be reasonably requested by Licensor.
7. OWNERSHIP OF MARKS
7.1 Licensee acknowledges the ownership of the Marks by Licensor, agrees
that it will do nothing inconsistent with such ownership, and that all use of
the Marks by Licensee and all good will developed therefrom shall inure to the
benefit of and be on behalf of Licensor.
7.2 Licensee agrees that nothing in this Agreement shall give Licensee any
right, title, or interest in the Marks other than the right to use the Marks in
accordance with this Agreement, and Licensee agrees that it will not challenge
the title of Licensor to the Marks or challenge the validity of this Agreement.
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7.3 If notwithstanding the foregoing, Licensee at any time develops,
adopts or acquires (including development or acquisition as a matter of law),
directly or indirectly, any right, title or interest in or to the use of any of
the Marks in any jurisdiction, then Licensee shall, at Licensee's request
whether during the Term or thereafter, assign to Licensor or any designee or
Licensor all such right, title and interest together with any and all good will
incident thereto.
8. INFRINGEMENT
8.1 Licensee shall notify Licensor promptly of any actual or threatened
infringements, imitations or unauthorized use of the Marks by third parties of
which Licensee becomes aware. Licensor shall have the sole right, at its
expense, to bring any action on account of any such infringements, imitations,
or unauthorized use, and Licensee shall cooperate with Licensor, as Licensor may
reasonably request, in connection with any such action brought by Licensor.
Licensor shall retain any and all damages, settlement and/or compensation paid
in connection with any such action brought by Licensor.
9. INDEMNIFICATION
9.1 Licensee, at its expense, shall defend and indemnify, and save and
hold Licensor harmless from and against any and all liabilities, claims, causes
of action, suits, damages, including without limitation, suits for personal
injury or death of third parties, and expenses, including reasonable attorneys'
fees and expenses, for which Licensor becomes liable, or may incur or be
compelled to pay by reason of Licensee's activities or breach of the terms of
this Agreement, including but not limited to (i) claims of infringement of any
intellectual property right, or (ii) product liability suits by direct or
indirect customers of Licensee.
10. TERMINATION
10.1 Licensor shall have the right to terminate this Agreement effective
immediately upon (i) Licensee's receipt of written notice from Licensor in the
event of any affirmative act of insolvency by Licensee, (ii) the appointment of
any receiver or trustee to take possession of the properties of Licensee or upon
the winding-up, or any sequestration by governmental authority of Licensee,
(iii) any material breach of any of the duties and obligations of Licensee under
this Agreement, or (iv) the value or validity of the Marks reasonably being
expected to be compromised in any way by Licensee's continued use of the Marks.
10.2 The exercise of any right of termination under this ARTICLE 10 shall
not affect any rights which have accrued prior to termination and shall be
without prejudice to any other legal or equitable remedies to which Licensor may
be entitled by reason of such rights. The obligations and provisions of ARTICLES
5, 7, and 9 shall survive any expiration or termination of this Agreement.
11. EFFECTS OF AND PROCEDURE ON TERMINATION
11.1 Upon the expiration or termination of this Agreement, Licensee agrees
immediately to discontinue all use of the Marks and any term confusingly similar
thereto, to destroy all printed materials bearing any of the Marks, and that all
rights in the Marks and the good will connected therewith shall remain the
property of Licensor.
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12. RELATIONSHIP OF THE PARTIES
12.1 The relationship of Licensee to Licensor is that of an independent
contractor and neither Licensee nor its agents or employees shall be considered
employees or agents of Licensor. This Agreement does not constitute and shall
not be construed as constituting a partnership or joint venture or grant of a
franchise between Licensor and Licensee. Licensee shall not have the right to
bind Licensor to any obligations to third parties.
13. ASSIGNMENT
13.1 This Agreement may be assigned by Licensor but shall not be
assignable or transferable by Licensee without the prior written consent of
Licensor, and any attempted assignment by Licensee without such prior written
consent shall be void and shall constitute a breach of the obligations of
Licensee hereunder.
14. NOTICES
14.1 Any notice, demand, waiver, consent, approval, or disapproval
(collectively referred to as "NOTICE") required or permitted herein shall be in
writing and shall be given personally, by messenger, by air courier, by
telecopy, or by prepaid registered or certified mail, with return receipt
requested, addressed to the parties at their respective addresses set forth
below or at such other address as a party may hereafter designate in writing to
the other party.
14.2 A notice shall be deemed received on the date of receipt.
15. APPLICABLE LAW
15.1 This Agreement shall be governed by and construed in accordance with
the laws of the State of Texas, without regard to principles of conflicts of
laws. Any case, controversy, suit, action, or proceeding arising out of, in
connection with, or related to, this Agreement shall be brought in any Federal
or State court located in Bexar County and the State of Texas, and each party
hereby consents to the jurisdiction of such Courts.
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16. SUBLICENSE
16.1 No sublicense agreement into which Licensee enters pursuant to
SECTION 3.1 of this Agreement may extend beyond the Term. Licensee may not enter
into any sublicense pursuant to this Agreement without the prior written consent
of Licensor, which consent shall not be unreasonably withheld.
17. MODIFICATION, AMENDMENT, SUPPLEMENT OR WAIVER
17.1 This Agreement constitutes the entire agreement between the parties
with respect to the subject matter hereof and supersedes all previous
agreements, promises, representations, understandings, and negotiations whether
written or oral.
17.2 No modification, amendment, supplement to or waiver of this Agreement
or any of its provisions shall be binding upon the parties hereto unless made in
writing and duly signed by both of the parties to this Agreement. A waiver by
either party of any of the terms or conditions of this Agreement in any one
instance shall not be deemed a waiver of such terms or conditions in the future.
[SIGNATURES ON FOLLOWING PAGE]
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed on the Effective Date.
LICENSOR LICENSEE
S & J PERFUME COMPANY TRISTAR CORPORATION
By: _______________________ By: ________________________
Name: _____________________ Name: ______________________
Title: ____________________ Title: _____________________
Address: __________________ Address: ___________________
SCHEDULE A
TRADEMARKS
Adroit Lisette
Anissa L'Ombre
Aria of Love Lovange
Aziano Love Dream
Beseech Luger
Bestow Morning Dream
Bianca Natasha
Black Lace One Way
Blue Mist Oscent
Caneta Pasadena
Cantata Pink Lady
Club Exclusif Precious Diamonds
Crimson Premium
Cyanese Prize
Devoir Red Love
Dikaasa Regal Hush
Dream Birds Renata
Endless Reputation
Entranced* Ribbons N'Roses
Essensuality Rio Grande
Expedition Risky
Fiero Rivoli
Forever Roxy
Gazebo Sandalwood
Gina Shardeena
Gina Logo Silk Flame
Golden Love Simply You
Grand Prize Sparkling Solitaire
Heavenly Tidal Wave
Heavenly Mist Token of Love
Hideout Tsunami
Hinting Utmost
Identity Vibes
Indeed Voix
Insinuation Whirl Wind
Lazoo Wild Wonder
Legrand* Winter Love
Leopard Zanutti
*Copy of registration certificate not available.