TRADEMARK LICENSE AGREEMENT
BETWEEN
UNIDEN AMERICA CORPORATION
AND
RELM WIRELESS CORPORATION
FOR THE MARK "ESAS"
THIS TRADEMARK LICENSE AGREEMENT (hereinafter, the "Agreement") is entered
into effective as of March 13, 2000 (hereinafter, the "Effective Date"), by and
between Uniden America Corporation, a Delaware, United States, corporation,
having a place of business at 4700 Amon Carter Blvd., Fort Worth, Texas 76155
U.S.A. (hereinafter, "Seller"), and RELM Wireless Corporation, a Nevada
corporation, having a place of business at 7505 Technology Drive, West
Melbourne, Florida 32904 U.S.A. (hereinafter, "Buyer") (hereinafter Seller and
Buyer will collectively be referred to as the "Parties"). Capitalized terms used
in this Agreement will have the meanings set forth in the Asset Purchase
Agreement (as hereinafter defined).
W I T N E S S E T H:
--------------------
WHEREAS, Buyer and Seller have entered into a certain Asset Purchase
Agreement dated March 13, 2000 (the "Asset Purchase Agreement"), and a certain
Technology License Agreement of even date herewith;
WHEREAS, in connection with these agreements, Buyer desires the certain
rights to use the mark "ESAS(R)" as shown in Exhibit A (the "Marks") and Seller
is willing to grant permission to do so, on the terms and conditions hereinafter
provided.
NOW, THEREFORE, and in consideration of the promises and the mutual
agreements, covenants and provisions contained herein, the sufficiency of which
are hereby acknowledged and confessed, the Parties agree as follows:
1. License. Seller grants to Buyer and Buyer accepts a personal,
world-wide, non-exclusive, royalty-free right to use the Marks solely in
conjunction with (i) existing units of product models of Inventory Assets (as
defined in the Asset Purchase Agreement) that include ESAS brand technology and
(ii) other authorized products designed or developed by Buyer that include ESAS
brand technology. This License shall only apply in the field of specialized
mobile radio and land mobile radio. Buyer agrees not to use the Marks in any
manner, except as defined above, including, but not limited to, as any portion
of a product name, and in or as a business name.
2. NO REPRESENTATIONS OR WARRANTIES. SELLER MAKES NO REPRESENTATIONS OR
WARRANTIES EXPRESS OR IMPLIED REGARDING THE MARKS, INCLUDING, WITHOUT
LIMITATION, REPRESENTATIONS OR WARRANTIES
REGARDING THE VALIDITY OF THE MARKS OR THE INFRINGEMENT OR NON-INFRINGEMENT OF
THE MARKS OR OF THE RIGHTS OF THIRD PARTIES. THE LICENSE IS RECEIVED BY BUYER IN
"AS IS, WHERE IS" CONDITION, WITH ALL FAULTS, IF ANY. THE LICENSE IS ONLY A
LICENSE OF WHATEVER INTEREST, IF ANY, SELLER HAS IN THE MARKS.
3. Enforcement. Nothing in this Agreement shall require Seller to bring
suit or otherwise enforce any of the Marks. Buyer shall inform Seller promptly
of any possible infringements of, or unfair competition affecting, the Marks
which come to the attention of Buyer.
4. Quality of Goods. Buyer shall use the Marks in accordance with the
guidance and directions furnished to Buyer by Seller or its representatives or
agents, from time to time, but always the quality of the goods shall be
satisfactory to Seller or as specified by it and shall be at a level consistent
with the quality maintained by Seller. Seller shall be the sole judge of whether
or not Buyer has met or is meeting the standards of quality so established.
5. Use of the Marks. Upon request, Buyer shall provide Seller with samples
of all goods, literature, brochures, signs and advertising material prepared by
Buyer bearing the Marks. When using the Marks under this Agreement, Buyer
undertakes to comply substantially with all laws pertaining to trademarks in
force at any time within the United States and within foreign jurisdictions.
This provision includes compliance with marking requirements.
6. Inspection. Buyer will permit duly authorized representatives of Seller
to inspect the premises of Buyer at all reasonable times, for the purposes of
ascertaining or determining compliance of use of the Marks as provided for
herein.
7. Indemnity. Seller assumes no liability to Buyer or to any third parties
with respect to use by Buyer of the Marks, and Buyer shall indemnify and hold
harmless Seller against any losses incurred arising from any claims of any third
parties against Seller based upon Buyer's use of the Marks or upon any sale or
other use of Inventory Assets, or products, made, owned or sold by Buyer that
bear any of the Marks. This indemnity is in addition to the indemnity in the
Asset Purchase Agreement.
8. Ownership of the Marks. Buyer acknowledges Seller's right, title and
interest in and to the Marks and any registrations that have issued or may issue
thereon, and Buyer agrees that it will not at any time do or cause to be done
any act or thing contesting or in any way impairing or tending to impair any
part of such right, title and interest. In connection with the use of the Marks,
Buyer shall not in any manner represent that it has any ownership in the Marks
or registrations thereof, and the Parties hereto acknowledge that any use of the
Marks, including all goodwill associated therewith, shall inure to the benefit
of Seller. Furthermore, Buyer will not at any time, during the term of this
Agreement or afterwards, adopt or use without Seller's prior written consent,
any word, mark, symbol or slogan which is likely to be similar to or confusing
with the Marks.
2
9. Partnership; Agency. The Parties specifically intend that this Agreement
not constitute any agency, partnership, joint venture or similar agreement and
no agency, partnership, joint venture or similar arrangement is intended.
10. Assignments. Either party may assign its rights or obligations under
this Agreement to any Affiliate (as defined in the Asset Purchase Agreement) of
such party; provided, however, that the assignor must guaranty the obligations
and performance of the assignee. Otherwise, neither party shall transfer or
assign its rights or obligations under this Agreement. The terms and conditions
of this Agreement are binding upon Buyer and Seller and their respective
subsidiaries, parents, successors, permitted assigns, if any, and licensees, if
applicable.
11. Third Parties. Except as set forth or referred to herein, nothing in
this Agreement is intended or shall be construed to confer upon or give to any
party other than the Parties hereto and their successors and assigns any rights
or remedies under or by reason of this Agreement.
12. Notices. Any notices required or permitted to be given under this
Agreement shall be deemed sufficiently given if hand delivered with receipt
acknowledged, or mailed by certified or registered mail postage prepaid, or
mailed by a nationally recognized overnight delivery service addressed to the
Party to be notified at its address shown above, or to such other person or at
such other address as may be furnished in writing to the other Party hereto.
13. Entire Agreement. This Agreement encompasses the entire agreement and
understanding between the Parties hereto with respect to the subject matter
hereof, and shall be governed, construed and enforced exclusively in accordance
with the laws of the State of Texas, notwithstanding any conflict of law
principles in that jurisdiction, and the Parties agree, to the exclusive venue
and jurisdiction of the United States District Court for the Northern District
of Texas, Dallas Division.
14. Severability. If any of the provisions of this Agreement are determined
to be invalid or unenforceable, such invalidity or unenforceability will not
invalidate or render unenforceable the remainder of this Agreement, but rather
the entire Agreement will be construed as if not containing the particular
invalid or unenforceable provision or provisions, and the rights and obligations
of the Parties hereto shall be construed and enforced accordingly. The Parties
hereto acknowledge that if any provision of this Agreement is determined to be
invalid or unenforceable, it is their desire and intention that such provision
be reformed and construed in such manner that it will, to the maximum extent
practicable, be deemed to be valid and enforceable.
15. Term and Termination. The term of this Agreement shall be for a period
of eighteen (18) months commencing on the Effective Date. This Agreement may be
terminated for any reason or no reason by Seller upon thirty (30) days written
notice given by Seller to Buyer. Upon termination or expiration of this
Agreement, Buyer shall immediately discontinue use of the Marks in advertising
or any other promotional manner. Any remaining inventory bearing the Marks may
be sold by Buyer for a period of no more than two (2) years after the date of
termination or expiration of this Agreement.
3
SELLER:
UNIDEN AMERICA CORPORATION
By: ______________________________________________
Printed Name: _______________________________
Title: _______________________________________
State of Texas ss.
ss.
County of Dallas ss.
On this ____ day of ______________, 2000, personally appeared
__________________, to me known and known to me to be _______________ of Uniden
America Corporation and acknowledged that he/she executed the foregoing
Agreement on behalf of Uniden America Corporation and pursuant to authority duly
received.
[SEAL]
--------------------------------------------------
Notary Public
4
BUYER:
RELM WIRELESS CORPORATION
By: ______________________________________________
Printed Name: _______________________________
Title: _______________________________________
ss.
ss.
ss.
On this ______ day of ______________, 2000, personally appeared
____________, to me known and known to me to be ____________________ of RELM
Wireless Corporation and acknowledged that he/she executed the foregoing
Agreement on behalf of RELM Wireless Corporation and pursuant to authority duly
received.
[SEAL]
--------------------------------------------------
Notary Public
5
EXHIBIT A
TRADEMARK
ESAS