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Exhibit 10.2
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PERMITTED USER AGREEMENT - TRADE MARK MARSTON
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THIS AGREEMENT is made the 27th day of March One Thousand nine hundred and
ninety-eight between IMI Marston Limited (registered in England No 155987) whose
registered office is at Wobaston Road, Fordhouses, Wolverhampton WV10 6QJ,
United Kingdom (hereinafter called "IMI") of the one part and Chart Marston
Limited (registered in England No 3497115) whose registered office is at 55
Colmore Row, Birmingham B3 2AS (hereinafter called the "User") of the other part
WHEREAS
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A. IMI is the proprietor of the trade mark MARSTON details of which are set
out in Schedule 1 in respect of heat exchangers (hereinafter called "the
Trade Mark").
B. The User desires to be permitted to use the Trade Mark in respect of the
goods described in Parts 1 and 2 of Schedule 4 (hereinafter called "the
Goods").
NOW IT IS HEREBY AGREED AS FOLLOWS:
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1 IMI hereby grants to the User:
(i) an exclusive royalty-free licence to use the Trade Mark in, upon
or in connection with the manufacture, marketing, promotion,
sale, repair, design, testing and provision of after-sales
services of the Part 1 Goods (as defined in Schedule 4); and
(ii) an exclusive royalty free licence to use the name "Chart
Marston" or "Chart Marston Limited" as a corporate, business or
trading name and to use the
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Trade Mark in conjunction with any other corporate, business or
trading name subject to the prior written approval of IMI which
shall not be unreasonably withheld or delayed; and
(iii) a non-exclusive royalty free licence to use the Trade Mark in,
upon or in connection with the manufacture, marketing,
promotion, sale, repair, design, testing and provision of after
sales services of the Part 2 Goods (as defined in Schedule 4).
within the countries listed in Schedule 2 to this Agreement ("the
Territory") providing the User observes the following conditions or
restrictions:
a) The User shall use the Trade Mark only upon or in connection
with the Goods which are manufactured by or on behalf of the
User in accordance with standards, specifications and
instructions reasonably laid down by IMI and notified in writing
to the User from time to time and to the quality standards
required by BS9001 or ASME "U" stamp approval as updated from
time to time or an equivalent national or international
standard. For the sake of clarity, standards other than relating
to quality shall be no more onerous than the standards in use
during 1997 by IMI for the Goods.
b) The User, on being given reasonable written notice, shall permit
IMI and/or its authorised representative to inspect the premises
of the User, the Goods offered for sale under the Trade Mark in
accordance with this Agreement and the method by which they are
manufactured, and shall do all such things as may be reasonably
necessary to ensure that the Goods conform to the standards
specified above.
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c) The User undertakes not to use the Trade Mark accompanied by any
other trade marks in relation to the Goods unless the Trade Mark
is sufficiently distinguished from the surrounding and adjacent
text and/or trade mark(s) and IMI or any subsequent proprietor
is identified as the proprietor of the Trade Mark, nor to take
any actions which would compromise the continuing validity of
any rights of IMI in the Trade Marks. The User shall further
comply with all reasonable written directions given by IMI
regarding the use of the Trade Mark on the Goods and/or on all
notepaper, invoices, transfers, labels, packages, package
inserts, advertising matter and other media of all kinds issued
or employed by the User upon or in connection with the Goods
(the "Materials"). The User shall also submit to IMI, for
approval, the original format and all subsequent new formats of
such of the Materials which incorporate the Trade Mark and shall
not issue the same without the prior approval of IMI, which
shall not unreasonably be withheld or delayed. IMI shall be
deemed to have given its approval of any of the Materials if it
does not give to the User written notice to the contrary within
10 days after receipt of the original format or subsequent new
format, as appropriate, of the Materials.
d) The User may sub-contract the manufacture, marketing, promotion,
sale, repair, design, testing and provision of after-sales
services of the Goods to any third party and shall be entitled
to sub-license such third party to use the Trade Mark for such
purposes provided that the User shall remain liable for all of
its obligations and responsibilities under this Agreement.
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2 The User shall be the sole permitted user of the Trade Mark for the Part
1 Goods during the life of this Agreement. The parties shall immediately
upon the execution of this Agreement execute a formal licence of the
Trade Mark in the form set out in Schedule 3 to this Agreement to be
registered with the United Kingdom Trade Marks Registry or such formal
licence in substantially similar terms to be registered with the
relevant competent authority in the country of registration of the Trade
Mark within the Territory. The costs of registration shall be borne by
both parties equally. In the event of any inconsistency between the
provisions of this Agreement and any formal licence executed pursuant to
this Clause 2, the provisions of this Agreement shall prevail.
3 No right, title or interest in the Trade Mark, except as set out in this
Agreement, is transferred by this Agreement to the User, and the Trade
Mark remains the sole property of IMI and any and all use thereof
including use by the User shall inure to the benefit of IMI.
4 As and when requested by and at the expense of IMI, the User hereby
undertakes to use all reasonable efforts to provide any documentation
which is required by IMI to apply for or renew a registration of the
Trade Mark. Where IMI applies for and subsequently obtains further
registrations of the Trade Mark in respect of the Goods then such new
registrations shall be included in Part 1 of Schedule 1 and shall be
deemed to be licensed by IMI to the User as part of the Trade Mark
pursuant to this Agreement. The User also undertakes not to obstruct or
to try to prevent the registration of the Trade Mark by IMI and not to
assist third parties, whether directly or indirectly, in any action
against registration or renewal of the Trade Mark.
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5 The User shall forthwith notify IMI of any suspected unauthorised use of
the Trade Mark which may come to its notice. The User may request IMI to
commence or defend any proceedings in respect of any unauthorised use or
suspect unauthorised use of the Trade Mark but if IMI decides not to
commence or defend any such proceedings within a period of two months
from the date of such request the User shall have the right to commence
or defend any such proceedings in its own name, subject to IMI's prior
written approval which shall not be reasonably withheld or delayed.
Where such written approval is given by IMI, it shall give the User such
assistance as may be reasonably required by the User including agreeing
to be joined in as a party to the issue or defence of any proceedings,
subject to payment by the User of all reasonable costs and expenses
incurred by IMI in providing such assistance. The User shall be entitled
to retain for its own absolute benefit any damages, costs or other
expenses awarded or recovered in any such proceedings.
6 The User shall not sell or transfer control of any company using the
name MARSTON as part of the name of such company without first changing
the name of the company to exclude the name MARSTON.
7 IMI shall promptly pay all renewal and maintenance fees for the
registration of the Trade Mark for the Goods during the term of this
Agreement. With effect from 1 January 1999, the User shall reimburse IMI
for sixty per cent of the total direct costs (including attorneys costs
and internal administration costs) reasonably incurred by IMI in
registering, establishing use of, renewing and defending the Trade Mark
(subject to an overall maximum contribution by the User of (pound)25,000
per calendar year) (the "Contribution") in the Territory.
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IMI shall provide the User with a calendar quarterly statement in
arrears setting out full details of all direct costs paid by IMI
together with copies of payment receipts accompanied by an invoice for
part of the Contribution. Such invoices shall be payable by the User
within 30 days of receipt.
In the event that, for whatever reason, the total direct costs incurred
by IMI in registering, establishing use of, renewing and defending the
Trade Mark in the Territory in any calendar year, exceed the
Contributions from the User, and if IMI wishes to cease to maintain or
defend any registration of the Trade Mark for the Goods, it shall notify
the User to that effect. The User may within 30 days of the date of
receipt of such notification from IMI call for an assignment of the
Trade Mark and in that event IMI shall at the User's costs, do all such
things and take all such actions as may be necessary to assign the Trade
Mark to the User. In the event that the User takes such an assignment it
shall further reimburse IMI for any reasonable costs incurred in
defending or maintaining an assigned registration between the date of
notification to the User and the date of assignment.
8 In the event that the User shall be in breach of this Agreement and
fails or be unable to remedy the same within sixty days of its attention
being called thereto in writing specifying the breach and requiring it
to be remedied, or the User shall go into liquidation whether
voluntarily or compulsorily (otherwise than for the purpose of
amalgamation or reconstruction), or ceases to be owned beneficially by
Chart Industries Inc, IMI shall have the right by notice in writing to
terminate this Agreement forthwith in its entirety without prejudice,
however, to any rights either party may have against the other arising
prior to termination.
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9 Subject to Clause 8 hereof this Agreement shall commence on the date
hereof and shall remain in force for five years from the date of this
Agreement. It may be renewed by the User for further periods of five
years each, by the User giving notice in writing to IMI or any
subsequent beneficial owner of the Trade Mark within the last twelve
months of the then current term of the Agreement.
10.1 The User may at any time assign all or any of its rights and obligations
under this Agreement to any company which is for the time being a
subsidiary or holding company of the User or a subsidiary of any such
holding company (and the terms "subsidiary" and "holding company" shall
have the meaning given to them by Sections 736 and 736A of the Companies
Act 1985 ("Users Group") without the prior written consent of IMI or to
any third party subject to the prior written consent of IMI which shall
not be unreasonably withheld or delayed provided that in each case it is
only assigned with the whole of the business of the User and provided in
the case of any assignment to a member of the User's Group it notifies
IMI in writing to that effect at least 7 days prior to such assignment.
IMI may not assign the whole or any part of the benefit or burden of
this Agreement without the prior written consent of the User which shall
not be unreasonably withheld or delayed except that IMI shall be free to
assign the benefit of this Agreement to any third party which acquires
the legal and beneficial ownership of the Trade Mark, provided it
notifies the User in writing to that effect at least 7 days prior to
such transfer of ownership.
10.2 The User shall indemnify IMI in respect of any liability of IMI for
taxation consequent upon the assignment of all or any of the User's
rights and obligations under this Agreement.
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10.3 If any sum payable under Clause 10.2 of this Agreement by the User to
IMI is subject to tax in the hands of IMI, the User shall pay to IMI
such additional amount (after taking into account any taxation payable
in respect of such additional amount) as will ensure that IMI receives
and retains a nett amount equal to the full amount which it would have
received and retained had the payment not been subject to tax.
11 Upon the termination of this Agreement in accordance with Clause 8, the
User shall not later than 60 days from the date of termination remove or
obliterate the Trade Mark from all and any Materials used in connection
with the Goods in the possession, custody or control of the User and the
User shall after expiry of such 60 day period cease to make any use of
the Trade Mark or any colourable imitation thereof.
12.1 Any notice, request or other communication to be given by either party
to the other party under this Agreement shall be in writing and may be
served by personal delivery or by registered or recorded first class
post or facsimile to the addresses and numbers set out above (or such
other address(es) or number(s) as either party may have specified by
giving at least seven (7) days prior written notice to the other).
12.2 The effective date of any notice given in accordance with Clause 12.1
shall be, in the case of personal delivery upon delivery or in the case
of facsimile, the next day after it was transmitted and, in the case of
post three (3) days after it was sent.
12.3 To prove service of any notice it shall be sufficient to show in the
case of a notice delivered by hand that the same was duly addressed and
delivered by hand and in the case of a notice served by post that the
same was duly addressed prepaid and posted in the manner set out in
Clause 12.1. In the case of a notice given by facsimile it shall be
sufficient to produce a transmission report generated by the relevant
facsimile
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machine to show that the notice was successfully transmitted.
13 This Agreement shall be governed by and construed in accordance with
English law and the parties hereto agree to submit to the exclusive
jurisdiction of the English courts any claim or dispute arising
hereunder provided that any dispute as to the validity, scope or
infringement of the Trade Mark shall be determined by the courts or any
competent authority in the country of registration of the relevant Trade
Mark
IN WITNESS WHEREOF the parties hereto have caused this Agreement to be
executed by their duly authorised representatives as follows the day and
year first above written.
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SCHEDULE 1
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THE TRADE MARK
PART 1 REGISTERED MARK
TERRITORY TRADE MARK REGISTRATION NO
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Benelux Marston 56535
Canada Marston 450515
Denmark Marston 1565-1976
France Marston 1528837
Ireland Marston 81772
Italy Marston 255969
Japan Marston 1025273
Japan Marston 2036677
United States Marston 1885699
UK Marston 997450
UK Marston 997451
UK Marston 1040203
UK Marston 1040204
UK Marson 1040205
UK Marston 1216767
UK Marston 1216768
UK Marston 1286002
UK Marston 1359330
UK Marston Compact 1499186
Exchangers
United States Marston 74/373739
United States Marston 72632500
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PART 2 UNREGISTERED MARK
MARSTON NAME, MARK AND LOGO
SCHEDULE 2
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THE TERRITORY
1 In relation to the Trade Mark set out in Part 1 of Schedule 1: The
United Kingdom, Benelux, Canada, Denmark, France, Ireland, Italy, Japan
and the United States of America.
2 In relation to the Trade Mark set out in Part 2 of Schedule 1: All other
countries in the world other than those listed in 1 above.
SCHEDULE 3
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(THE FORM OF LICENCE FOR REGISTRATION)
THIS AGREEMENT is made on ___________________ 19[__] BETWEEN: IMI
Marston Limited (registered in England No 155987) whose registered
office is at Wobaston Road, Fordhouses, Wolverhampton WV10 6QJ, United
Kingdom (hereinafter called "IMI") of the one part and Chart Marston
Limited (registered in England No 3497115) whose registered office is at
55 Colmore Row, Birmingham B3 2AS (hereinafter called the "User.")
WHEREAS:
(A) IMI is the registered proprietor of the trade marks set out in
the Schedule to this Agreement (the "TRADE MARKS")
(B) The parties have entered into an agreement for the grant of a
licence to the User by IMI under the Trade Marks.
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NOW THIS DEED WITNESSETH:
1 IMI grants to the User, inter alia, an exclusive royalty-free
licence subject to and upon the terms and conditions of an
agreement dated 27th March 1998 between IMI (1) and the User (2)
under the Trade Marks ("MAIN AGREEMENT")
2 IMI will join with the User in making application to the
Registrar of Trade Marks for the purpose of securing the
registration of the User as a licensee of the Trade Marks under
the provisions of Section 25 of the Trade Marks Act 1994
3 This Agreement shall terminate automatically on the termination
of the Main Agreement.
IN WITNESS OF THE ABOVE the parties have executed this Agreement as a
Deed on the date written at the head of this Agreement
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THE SCHEDULE
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[DUPLICATE PART 1 OF SCHEDULE 1 TO THE MAIN AGREEMENT]
EXECUTED as a Deed by )
IMI MARSTON LIMITED )
acting by: ) Director
Director/Secretary
EXECUTED as a Deed by )
CHART MARSTON LIMITED ) Director
acting by: )
Director/Secretary
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SCHEDULE 4
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THE GOODS
PART 1
Industrial heat exchangers manufactured using technology and/or
know-how acquired from IMI and all or any developments, modifications
and improvements arising therefrom (excluding those for use in aerial
or terrestrial transport or electronic applications) ("Part 1 Goods").
PART 2
Industrial heat exchangers for use in Railway Engines and Railway Stock
manufactured using technology and/or know-how acquired from IMI and all
or any developments, modifications and improvements arising therefrom
("Part 2 Goods").
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For and on behalf of
IMI Marston Limited
/s/ Trevor Davies
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Director
For and on behalf of
Chart Marston Limited
/s/ Arthur S. Holmes
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Director
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