EXHIBIT 2.28
TRADE NAME AND TRADEMARK LICENSE AGREEMENT
Agreement, dated March 1, 1996, by and between UNION CARBIDE
CORPORATION (hereinafter "Licensor"), a New York corporation, and UCAR
CARBON TECHNOLOGY CORPORATION (hereinafter "Licensee"), a Delaware
corporation.
WHEREAS, Licensor and its affiliates, subsidiaries and predecessors have
for many years been engaged in the manufacture and sale of carbon and graphite
products, and related systems and services (hereinafter "Products"), under the
trade or company name UCAR (hereinafter "Name") and the trademark UCAR
(hereinafter "Trademark"); and
WHEREAS, Licensor is the owner of the Name and Trademark for a wide
variety of goods and services and such Name and Trademark are derivatives of
Licensor's corporate name Union Carbide Corporation, and the reputation of
Licensor is associated with high quality in the production and sales of its
goods and services; and
WHEREAS, Licensee desires to use the Name and Trademark throughout the
world in accordance with the terms of this Agreement in connection with its
corporate name and Products manufactured and/or sold by Licensee or its
sublicensees; and
WHEREAS, Licensor is willing to grant Licensee the right to use the
Name and Trademark and to grant sublicenses, subject to the provisions of this
Agreement;
NOW, THEREFORE, in consideration of the mutual covenants and
obligations herein contained, the parties agree as follows:
1. Licensee acknowledges that Licensor is the owner of all right,
title and interest in the Name and Trademark in connection with the Products.
Licensee
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acknowledges that it has not acquired any ownership rights in the Name or
Trademark and will not acquire any ownership rights in the Name or Trademark by
reason of this Agreement or otherwise. Licensee will not at any time willfully
do or knowingly permit to be done any act or thing which would in any way
impair the rights of Licensor in and to the Name and Trademark or which would
affect the validity of the Name or Trademark or which would depreciate the
value or reputation of the Name or Trademark. Licensee explicitly agrees that
all use of the Name and Trademark by Licensee shall inure to the benefit of
Licensor.
2. Licensor hereby grants Licensee a non-exclusive, non-
assignable, non-transferable and royalty-free right and license to use the
Name in its corporate and business names. Licensor further grants Licensee an
exclusive, non-assignable, non-transferable and royalty-free right and license
to use the Trademark throughout the world only on or in connection with
Products manufactured by or for it or any Affiliated Company (as hereinafter
defined), provided that such Products are manufactured in accordance with the
formulations, specifications and standards of quality heretofore observed by
Licensor, Licensee and their licensees, or set forth from time to time in
writing by Licensor, or approved in writing by Licensor prior to the first
commercial manufacture thereof, which approval shall not be unreasonably
withheld.
3. Unless sooner terminated pursuant to any provision contained in
this Agreement, the license grant shall have a term from the date hereof and
ending January 26, 2015. Thereafter, it will be automatically renewed for
successive terms of ten years, but with Licensor retaining the right to
terminate this Agreement by giving written notice to Licensee at least five
years before the end of the then current term. Licensee may terminate this
Agreement at any time by giving written notice to Licensor.
4. Licensor acknowledges and agrees to Licensee's grant of a
sublicense of the Name and Trademark to UCAR INTERNATIONAL INC. (hereinafter
UCAR INTERNATIONAL). Licensee may grant additional sublicenses of the Name and
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Trademark to any company of which UCAR INTERNATIONAL owns or controls,
directly or indirectly, fifty percent (50%) or more of the issued and
outstanding voting stock (hereinafter "Affiliated Company"), provided that, as
to all sublicenses, unless Licensor otherwise gives its prior written consent,
(i) each such sublicense shall be subject to all the terms and conditions of
this Agreement with the exception that no sublicensee may itself grant any
sublicense or any right, title or interest in the sublicense granted to it;
(ii) except for provisions respecting royalties, Licensor shall be a third
party beneficiary to each such sublicense and shall have the right under each
such sublicense directly to exercise any rights as if it were the licensor
thereunder; (iii) Licensee may not grant any such sublicense in any country
or territory which does not recognize the validity of such a sublicense;
provided, however, in such event, Licensor agrees to issue a direct license to
Licensee or to any Affiliated Company of Licensee as Licensee may designate to
permit use of the Trademark in such country or territory under terms and
conditions consistent with this Agreement; (iv) each sublicense will provide
that in the event that the sublicensee ceases to be an Affiliated Company, all
rights to the use of the Name and Mark shall immediately terminate and each
such sublicensee shall immediately cease to use the Name and Trademark; and
(v) Licensee agrees, at its expense, to record all sublicenses or registered
user agreements in those countries and territories where such recording is
deemed necessary by the Licensor and provided that no use of the Name or
Trademark shall commence under any such sublicense in any country or territory
in which approval of the sublicense by any entity is required prior to the use
of the Name or Trademark thereunder until such approval is obtained.
5. No consent or approval required by this Agreement will be
unreasonably withheld. All consents or approvals required by this Agreement
shall be deemed granted unless denied within sixty (60) days following
Licensor's receipt thereof.
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6. Licensee undertakes and agrees to use the Name and Trademark
only on or in connection with Products which are of a quality which is
acceptable to Licensor. Licensee agrees to comply with reasonable rules set
forth from time to time by Licensor with respect to the appearance and manner
of use of the Name and Trademark. Any form of use of the Name and Trademark
not specifically covered by such rules shall be adopted by Licensee only upon
prior approval in writing by Licensor. Representative specimens showing the
use of the Name and Trademark by Licensee shall be sent to Licensor from time
to time upon request by Licensor.
7. Licensee agrees to furnish Licensor, from time to time as
requested, representative samples of Products to which it affixes the
Trademark. Licensor or its authorized representative shall also have the
right to conduct during regular business hours and under conditions of
confidentiality an examination of Products and of the plants and processes for
making Products. If, at any time, any Products manufactured by or for
Licensee (and not acquired from Licensor) and bearing the Trademark shall fail
to conform to one of the provisos set forth in Paragraph 1, Licensee shall
promptly remove the Trademark from such non-conforming Products in its
inventory and shall use best efforts to replace, at its own cost, any such
non-conforming Products held by the trade with conforming Products.
8. Licensee agrees to defend, indemnify and hold Licensor harmless
from, against and in respect of all claims, demands, losses, lawsuits,
proceedings, obligations, assessments, fines, penalties, administrative
orders, costs, expenses, liabilities and damages, including interest,
penalties and reasonable attorneys' fees, which Licensor may incur for any
damage to property and/or injury to persons (including death), resulting from
the manufacture, storage, packaging, handling, transportation, sale or use of
Products bearing the Trademark which are manufactured by or for Licensee and
not acquired from Licensor.
9. Licensee agrees to hold comprehensive general liability insurance
(including contractual liability) properly safeguarding Licensor against
liability
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indemnified against under Paragraph 8 hereof.
10. Notwithstanding any provisions to the contrary contained in
this Agreement, the indemnification obligations under Paragraph 8 shall
survive the termination or expiration of this Agreement.
11. Licensee shall comply with all laws, rules, regulations,
ordinances, decrees, edicts and orders pertaining to the proper use and
designation of the Trademark and shall at all times designate the Trademark as
a registered trademark. Licensee shall, upon reasonable request in writing
Trademark, and on each item of advertising and promotion containing the
Trademark, such designations as ownership and/or licensing relationship.
12. Licensee shall give Licensor notice of any known or presumed
infringement of the Name or Trademark, and Licensee shall render to Licensor
full cooperation, at Licensor's and Licensee's shared expense, for the
protection of the Name and Trademark.
13. Licensor will renew and maintain registrations of the Trademark
and obtain new registrations for the Trademark, covering the Products made by
or for Licensee or any Affiliated Company. Licensee shall pay or reimburse
Licensor for all costs and expenses relating to or arising from registration
and renewal or maintenance of the registration of the Trademark, registered,
renewed or maintained for the Products in any jurisdiction.
14. In the event Licensee materially breaches any provision of this
Agreement, Licensor may elect to give Licensee written notice of such breach.
If Licensee does not commence remedy of such breach within sixty (60) days
after such notice is given and thereafter diligently pursue such remedy,
Licensor shall have the right to terminate this Agreement at any time
thereafter, but prior to the completion of the remedy of such breach, by
giving Licensee written notice of such termination.
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15. In the event termination of this Agreement occurs, Licensee
shall have a period of six (6) months from the date of such termination to use
up its inventories of Products, literature, packaging and other materials to
which the Name and/or Trademark have already been applied on the date of
termination. Any such use of the Name and/or Trademark under this Paragraph
shall otherwise be in accordance with the provisions of this Agreement.
16. This Agreement and all rights and obligations hereunder shall
inure to the benefit of and be binding upon the successors and permitted
assigns of Licensor. Except as otherwise provided herein, neither this
Agreement nor any rights granted herein shall be assigned by Licensee without
the written consent of Licensor, and any attempted assignment or transfer
without such consent shall be null and void.
17. Any notices or requests with reference to this Agreement shall
be by letter, telegram, telex, or electronic facsimile confirmed promptly by
letter and shall be directed by one party to the other at its respective
address as follows:
Licensor: Union Carbide Corporation
Attention: Trademark Counsel
39 Old Ridgebury Road
Danbury, Connecticut 06817, U.S.A.
Fax: (203) 794-6269
Licensee: UCAR Carbon Technology Corporation
Attention: President
39 Old Ridgebury Road
Danbury, Connecticut 06817, U.S.A.
Fax: (203) 207-7785
Either party may change its address to which notices or requests shall be
directed by notice to the other party. Any notices or requests sent to the
current notice address of record (either an address listed above or one
subsequently established by notice) shall be effective and considered as
having been received upon transmittal.
20. This instrument contains the entire agreement between the parties
hereto regarding the Name and Trademark, and this Agreement supersedes and
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cancels all previous negotiations, agreements, commitments and writings in
respect to the subject matter hereof. This Agreement may not be released,
discharged, abandoned, changed or modified in any manner, orally or otherwise,
except by an instrument in writing signed by duly authorized officers or
representatives of the parties hereto.
21. This Agreement shall be construed and the legal relations
between the parties hereto with respect to the subject matter hereof shall be
governed by the laws of the State of New York, United States of America,
without recourse to its conflict of law principles.
IN WITNESS WHEREOF, Licensor and Licensee have caused this instrument
to be executed in duplicate by their duly authorized representatives as of the
date first above written.
UNION CARBIDE CORPORATION
By: /s/ John K. Wulff
---------------------------------
Name: John K. Wulff
Title: Vice President
UCAR CARBON TECHNOLOGY CORPORATION
By: /s/ F. J. McCarthy
---------------------------------
Name: F. J. McCarthy
Title: President
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