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EXHIBIT 10.5
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of the 19th day of
February, 1997, and effective as of the Effective Date as defined below, by and
between AMERICAN CYANAMID COMPANY, a Maine corporation (Licensor), and SELFCARE
ACQUISITION CORP., a Delaware corporation (Licensee).
WHEREAS, Licensor (or its Affiliates) is the owner of certain
trademarks for pharmaceuticals, dietary supplements and related products.
WHEREAS, Licensee has purchased certain assets of the dietary
supplement business of Licensor including, inter alia, the relevant trademarks
therefor, under the terms of an Asset Purchase Agreement dated January 14, 1997
(the "Asset Purchase Agreement").
WHEREAS, some of the relevant trademarks are associated with other
trademarks of Licensor (or its Affiliates)
WHEREAS, Licensee desires to make use of these relevant associated
trademarks owned by Licensor in connection with the manufacture, use and sale
of the Products as defined below, and Licensor is willing to license such
trademarks to Licensee for such purposes, subject to the terms and conditions
hereinafter set forth.
ARTICLE I - DEFINITIONS
Whenever used in this Agreement, unless otherwise clearly indicated by
the context, the terms defined below shall have the indicated meanings:
1.1. "Affiliate" shall mean, with respect to either party, any
entity which directly or indirectly through stock ownership or through other
arrangements either controls, or is controlled by, or is under common control
with that party.
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1.2. "Effective Date" of this Agreement shall mean the date first
written above.
1.3. "Products" shall mean dietary supplements including without
limitation iron preparations in sustained release dosage form.
1.4. "Territory" shall mean the United States of America. 1.5
"Trademark" shall mean the trademark FERRO-SEQUELS. ARTICLE II
ARTICLE II - GRANT OF RIGHTS
For good and adequate consideration, the receipt and sufficiency of
which are hereby acknowledged, as of the Effective Date, Licensor grants to
Licensee and its Affiliates an exclusive, paid-up, royalty-free license, with
the right, subject to Licensor's consent which shall not be unreasonably
withheld, to grant sublicenses, to use the Trademark in connection with the
manufacture, packaging, use, advertising, promotion and sale of Products in the
Territory. Except for the license granted to Licensee herein, Licensor shall
not, itself or through its Affiliates, otherwise use or cause or permit the use
of the Trademark in connection with the Products in the Territory or elsewhere.
ARTICLE III - QUALITY CONTROL
3.1. Licensor has evaluated Licensee's current Products and
determined that they are of a quality that justifies this grant of license.
Licensee will not permit the quality of the Products with which Licensee uses
the Trademark to deteriorate so as to adversely affect the good will associated
with the Trademark.
3.2. Licensee shall, upon request of Licensor, from time to time
furnish Licensor, without charge, specifications and samples of Products in
connection with which Licensee is using the Trademark for quality review by
Licensor.
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ARTICLE IV - USE OF TRADEMARK
4.1. Licensee shall use the Trademark only in connection with the
Products and in the manner and style which shall have the prior approval of
Licensor in writing, such approval not to be unreasonably withheld; provided,
however, that the manner and style in which the Trademark are used on the
Effective Date shall be deemed to have Licensor's approval. If a substantial
change in such usage from that initially approved which requires regulatory
approval or filing is proposed, such usage shall be submitted to Licensor for
approval before commercial use thereof. Such approval shall not be unreasonably
withheld or delayed. With respect to any written approval requested of Licensor
under this paragraph, failure of Licensor to respond to a written request for
approval within thirty (30) business days of the request shall be deemed to
constitute approval.
4.2. If either Licensor or Licensee deems it necessary to record
this Agreement with the authorities of any jurisdiction in the Territory, the
other party agrees to execute any applications or documentation necessary or
desirable, in recording party's reasonable judgment, to complete such recordal.
4.3. Except as provided in Article II, Licensee agrees not to
claim or to assert any right of ownership in or to the Trademark or the
goodwill associated therewith and shall not initiate any regulatory or other
action respecting the Trademark which may destroy, damage or impair in any way
the ownership or rights of Licensor in and to the Trademark. Licensee shall not
register anywhere in the world in its own name, or on behalf of any other
person or entity, any of the Trademark, and shall not associate the Trademark
with any articles other than the Products and shall, at the request and expense
of Licensor do all such lawful acts and things and execute all
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such documents as Licensor shall in its reasonable discretion consider
necessary or proper to register the Trademark in the name of Licensor in any
country.
4.4. Licensee and its Affiliates may advertise, promote, market,
distribute and sell Products under any trademark(s), tradename(s) and trade
dress of their own choosing in addition to the Trademark, provided same are not
confusingly similar to any trademark(s), tradename(s) or trade dress of
Licensor. Licensor shall have no right, title or interest whatsoever in or to
any such trademark(s), tradename(s) or trade dress by virtue of such use by
Licensee.
ARTICLE V - INFRINGEMENT OF TRADEMARK
5.1. In the event either Licensee or Licensor learns that any
Trademark pertaining to Product(s) is being infringed in the Territory by any
third party, it shall promptly notify the other of such infringement. Licensee
shall have the right to act to terminate any such third-party infringement,
including without limitation prosecuting a lawsuit or other legal proceeding,
at Licensee's own expense; and Licensee may retain any recovery it may receive
as a result of its actions to terminate such infringement. Licensor shall fully
cooperate with Licensee in any such action taken by Licensee, including without
limitation agreeing to be joined as party plaintiff and approving any
reasonable settlement agreement achieved by Licensee, and shall be reimbursed
by Licensee for all reasonable expenses incurred in connection therewith.
5.2. If Licensee fails to take any action within sixty (60) days
after Licensor's request, Licensor shall have the right to act as it sees fit
to terminate the infringement, including without limitation prosecuting a
lawsuit or other legal proceeding, at Licensor's own expense; and Licensor may
retain any recovery it may receive as a result of its actions to terminate such
infringement. Licensee shall fully cooperate with Licensor in any action
Licensor takes to
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terminate infringement and shall be reimbursed by Licensor for all reasonable
expenses incurred in connection therewith.
ARTICLE VI - WARRANTIES AND INDEMNITIES
6.1. Licensor warrants that it is the owner of the Trademark and
that Licensee is and shall be free to use same without restriction pursuant
hereto. To the knowledge of the Licensor, there is no unauthorized use,
infringement or misappropriation of the Trademark by any third party, including
without limitation any employee or former employee of the Licensor. Except as
set forth on Schedule 3.9(b) of the Asset Purchase Agreement, to Licensor's
knowledge, no person or entity has asserted or threatened to assert any
material claim with respect to the Trademark.
6.2. Ownership Warranty. Except as disclosed on Schedule 3.9(c) to
the Asset Purchase Agreement, Seller represents and warrants: that it owns all
right, title, and interest in and to the Trademark free and clear of any
Encumbrances as that term is defined in the Asset Purchase Agreement.
6.3. Licensor shall maintain and renew all registrations of the
Trademark for the duration of this Agreement unless notice to the contrary is
given by Licensee to Licensor at least six (6) months prior to the renewal
date(s).
6.4. Licensor agrees to indemnify and hold Licensee and its
Affiliates harmless against any action, claims, damages, injuries, losses,
costs and expenses (including without limitation reasonable attorney's fees and
disbursements) arising from Licensee's use of the Trademark hereunder, to the
extent such use conforms with the terms of this Agreement, or any material
breach by Licensor of its obligations or warranties under this Agreement.
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6.5. Licensee agrees that during the term of this Agreement
Licensee shall be responsible for complying with and assuring compliance with
all laws and regulations applicable to its or its licensees' or their
respective designees' manufacture, packaging, labelling, government
registration, transportation, performance or use of Products; provided,
however, that nothing in this Section 6.5 shall be construed as limiting or
altering Licensor's warranties and obligations under this Article VI.
6.6. Licensee agrees to indemnify and hold Licensor and its
Affiliates harmless against any action, claims, damages, injuries, losses,
costs and expenses (including reasonable attorney's fees and disbursements)
arising from or claimed to arise from (i) the manufacture, packaging,
labelling, government registration, transportation, sale, performance or use of
the Products, and (ii) any material breach by Licensee of its obligations or
warranties under this Agreement; provided, however, that Licensee shall have no
obligations under this Section 6.6 with respect to matters for which Licensor
has warranty or indemnification obligations as provided in this Article VI or
with respect to Products supplied by or on behalf of Licensor as set forth in
the Supply Agreement unless directly caused by or arising from the action or
inaction of Licensee.
6.7. A party seeking indemnification hereunder agrees to give
prompt written notice to the indemnifying party after the receipt of any
written notice of the commencement of any action, suit, proceeding or
investigation or threat thereof made in writing for which such party will claim
indemnification pursuant to this Agreement. Section 8.2 of the Asset Purchase
Agreement, which is incorporated herein by this reference, shall govern the
discharge of the parties' obligations with respect to the matter for which
indemnification is sought.
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6.8. The provisions and obligations of this Article VI shall
survive any termination of this Agreement.
ARTICLE VII - TERM AND TERMINATION
7.1. This Agreement shall become effective upon the Effective
Date, and shall remain in full force and effect for a perpetual term, unless
earlier terminated in accordance with provision 7.2 of this Article VII.
7.2. Licensor may terminate this Agreement for any reason by
assigning the Trademark in question and the goodwill associated therewith to
Licensee. This Agreement may be sooner terminated by Licensor if Licensee
materially breaches provisions 3.1 or 3.2 of Article III, Quality Control, and
such breach is not cured within 180 days after delivery of a written notice
thereof by Licensor to Licensee.
If either party shall (i) become insolvent, (ii) make an assignment
for the benefit of creditors, (iii) file or become subject to a filing for
reorganization, receivership or bankruptcy under the insolvency or bankruptcy
laws of the U.S., provided that if such filing is made without the acquiescence
of the party subject to such filing, such filing remains undismissed for ninety
(90) days, or (iv) be dissolved, liquidated or wound-up or otherwise cease or
be compelled to cease business, then in any such event, this Agreement shall
automatically terminate ninety (90) days after written notice is received from
the other party.
7.3. Upon the termination of this Agreement pursuant to provision
7.2 by reason of Licensee's insolvency, Licensee shall cease and discontinue,
effective upon the date of such termination, all use of the Trademark in the
Territory and Licensor may take all necessary actions to cancel the entry of
Licensee as a registered user. Notwithstanding the foregoing,
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Licensee shall have a period of six (6) months after termination to dispose of
all existing inventory and work-in-progress of Products using the mark.
ARTICLE VIII - MISCELLANEOUS
8.1. Licensee agrees to carry out this Agreement as an independent
contractor and not as an employee, servant or agent of or joint venturer with
Licensor. Except as specifically provided herein, neither party shall have
authority to bind or otherwise render the other party liable in any way,
whether by agreement, contract, representation or order, written or oral, or by
instrument or action of any kind. Unless otherwise specifically provided for
herein the obligations undertaken by each party hereto and set forth in this
Agreement shall be at the expense of the party which incurred the expense. All
relationships entered into by Licensee shall be for its exclusive account and
risk, and Licensee shall have no power to bind Licensor in any way with respect
to third parties unless previously authorized in writing.
8.2. This Agreement shall be assignable by either party, in whole
or in part, provided prior written notice is given by the assigning party to
the other party, and provided further that assignment shall not affect either
party's obligations under Article VI of this Agreement.
8.3. All communications required or permitted to be given by one
party to the other hereunder (collectively, "Notice") shall be given in the
manner and subject to the provisions of Section 10.2 of the Asset Purchase
Agreement, which is incorporated herein by this reference.
8.4. Any part or provision of this Agreement which may be held for
any reason to be illegal, invalid, unenforceable in or in conflict with the
applicable laws or regulations of any jurisdiction shall be ineffective to the
extent of such illegality, invalidity, unenforceability or conflict, and shall
be replaced with a part of provision that accomplishes, to the extent possible,
the original purpose of such part or provision in a valid and enforceable
manner, without
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affecting, impairing or invalidating the remaining provisions in any other
jurisdiction, which provisions shall remain binding upon the parties hereto and
in full force and effect.
8.5. The failure of a party at any time to require or enforce the
strict performance by the other party of any term or condition of this
Agreement shall not constitute a surrender or waiver of that particular breach
or failure, or of any subsequent breach or failure by said other party with
respect to any term or condition of this Agreement, or the waiver by a party of
a breach or default committed by the other party with respect to any term or
condition of this Agreement, and shall not to any extent prejudice or adversely
effect the other party's rights, interest or remedies available or provided to
it by law or otherwise which it may exercise or invoke with respect to that
particular breach or failure or any subsequent breach or failure.
8.6. No right or remedy given to a party under this Agreement or
by applicable law is intended to be exclusive of, or constitute a waiver of,
any other right or remedy. Each right or remedy may be pursued singly,
concurrently, successively, or otherwise, at the sole discretion of either
party.
8.7. This Agreement shall be governed by, and construed in
accordance with, the laws of the State of New York without reference to the
choice of law principles thereof.
8.8. The provisions of this Agreement, together with the
provisions of the Asset Purchase Agreement, the FERRO-SEQUELS Trade Dress
Assignment, and the Supply Agreement to the extent relevant to the Trademark
and in addition to the extent incorporated herein by reference, represent the
entire understanding and agreement between the parties with respect to the
subject matter hereof, and supersede all previous agreements, statements,
representations, promises, warranties, covenants, undertakings or writing
relating thereto, other
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than those contained herein. Any changes in or amendments to the terms of this
Agreement shall be in writing and signed by duly authorized representatives of
each of the parties hereto.
AMERICAN CYANAMID COMPANY
By: /s/ Gerald A. Jibilian
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Gerald A. Jibilian
Vice President and Assistant Secretary
SELFCARE ACQUISITION CORP.
By: /s/ Kenneth D. Legg
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Kenneth D. Legg
Vice President
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