Exhibit 2.5
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
HEWLETT-PACKARD COMPANY
AND
AGILENT TECHNOLOGIES, INC.
Effective as of _______, 1999
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
----
ARTICLE I DEFINITIONS......................................................... 1
1.1 AFFILIATED COMPANY................................................. 1
1.2 AGILENT BUSINESS................................................... 1
1.3 AGILENT BUSINESS MARKS............................................. 2
1.4 AGILENT BUSINESS MARKS DATABASE.................................... 2
1.5 AUTHORIZED DEALERS................................................. 2
1.6 COLLATERAL MATERIALS............................................... 2
1.7 CORPORATE IDENTITY MATERIALS....................................... 2
1.8 DISTRIBUTION DATE.................................................. 2
1.9 LICENSED MARKS..................................................... 2
1.10 MAINTENANCE CONTRACTS.............................................. 2
1.11 MARK............................................................... 2
1.12 MASTER SEPARATION AGREEMENT........................................ 3
1.13 MEASUREMENT PRODUCT................................................ 3
1.14 PERSON............................................................. 3
1.15 QUALITY STANDARDS.................................................. 3
1.16 SELL............................................................... 3
1.17 SEPARATION DATE.................................................... 3
1.18 SUBSIDIARY......................................................... 3
1.19 THIRD PARTY........................................................ 3
1.20 TRADEMARK USAGE GUIDELINES......................................... 4
ARTICLE II ASSIGNMENT......................................................... 4
2.1 ASSIGNMENT OF AGILENT BUSINESS MARKS............................... 4
2.2 PRIOR GRANTS....................................................... 4
2.3 ASSIGNMENT DISCLAIMER.............................................. 4
ARTICLE III LICENSES.......................................................... 4
3.1 LICENSE GRANT...................................................... 4
3.2 LICENSE RESTRICTIONS............................................... 5
3.3 LICENSEE UNDERTAKINGS.............................................. 5
3.4 NON-TRADEMARK USE.................................................. 6
3.5 RESERVATION OF RIGHTS.............................................. 6
3.6 THIRD PARTY LICENSES............................................... 6
ARTICLE IV PERMITTED SUBLICENSES.............................................. 7
4.1 SUBLICENSES........................................................ 7
4.2 AUTHORIZED DEALERS' USE OF MARKS................................... 7
4.3 ENFORCEMENT OF AGREEMENTS.......................................... 8
-i-
TABLE OF CONTENTS
(continued)
Page
----
ARTICLE V ROYALTIES.......................................................... 8
5.1 ROYALTIES......................................................... 8
5.2 PAYMENTS AND ACCOUNTING........................................... 9
ARTICLE VI TRADEMARK USAGE GUIDELINES........................................ 10
6.1 TRADEMARK USAGE GUIDELINES........................................ 10
6.2 TRADEMARK REVIEWS................................................. 10
ARTICLE VII TRADEMARK USAGE GUIDELINE ENFORCEMENT............................ 10
7.1 INITIAL CURE PERIOD............................................... 10
7.2 SECOND CURE PERIOD................................................ 10
7.3 FINAL CURE PERIOD................................................. 10
ARTICLE VIII QUALITY STANDARDS............................................... 11
8.1 GENERAL........................................................... 11
8.2 QUALITY STANDARDS................................................. 11
8.3 QUALITY CONTROL REVIEWS........................................... 11
8.4 PRODUCT DISCONTINUATION........................................... 11
ARTICLE IX QUALITY STANDARD ENFORCEMENT...................................... 11
9.1 INITIAL CURE PERIOD............................................... 11
9.2 SECOND CURE PERIOD................................................ 11
9.3 FINAL CURE PERIOD................................................. 12
ARTICLE X PROTECTION OF LICENSED MARKS....................................... 12
10.1 OWNERSHIP AND RIGHTS.............................................. 12
10.2 PROTECTION OF MARKS............................................... 12
10.3 SIMILAR MARKS..................................................... 12
10.4 INFRINGEMENT PROCEEDINGS.......................................... 13
ARTICLE XI TERMINATION....................................................... 13
11.1 VOLUNTARY TERMINATION............................................. 13
11.2 SURVIVAL.......................................................... 13
11.3 NO OTHER TERMINATION.............................................. 13
ARTICLE XII DISPUTE RESOLUTION............................................... 13
12.1 NEGOTIATION....................................................... 13
12.2 NONBINDING MEDIATION.............................................. 14
12.3 PROCEEDINGS....................................................... 14
-ii-
TABLE OF CONTENTS
(continued)
Page
----
ARTICLE XIII LIMITATION OF LIABILITY......................................... 14
ARTICLE XIV MISCELLANEOUS PROVISIONS......................................... 15
14.1 DISCLAIMER....................................................... 15
14.2 NO IMPLIED LICENSES.............................................. 15
14.3 INFRINGEMENT SUITS............................................... 15
14.4 NO OTHER OBLIGATIONS............................................. 15
14.5 ENTIRE AGREEMENT................................................. 15
14.6 GOVERNING LAW.................................................... 16
14.7 DESCRIPTIVE HEADINGS............................................. 16
14.8 NOTICES.......................................................... 16
14.9 NONASSIGNABILITY................................................. 17
14.10 SEVERABILITY..................................................... 17
14.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE............ 17
14.12 AMENDMENT........................................................ 17
14.13 COUNTERPARTS..................................................... 17
EXHIBIT A: LICENSED MARKS
EXHIBIT B: AFFILIATED COMPANIES
-iii-
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement") is
effective as of _________, 1999 (the "Effective Date"), between Hewlett-Packard
Company, a Delaware corporation ("HP"), having an office at 3000 Hanover Street,
Palo Alto, California 94304, and Agilent Technologies, Inc., a Delaware
corporation ("Agilent"), having an office at 3000 Hanover Street, Palo Alto,
California 94304.
WHEREAS, the Board of Directors of HP has determined that it is in the best
interest of HP and its stockholders to separate HP's existing businesses into
two independent businesses;
WHEREAS, as part of the foregoing, HP and Agilent have entered into a
Master Separation Agreement (as defined below) which provides, among other
things, for the separation of certain Agilent assets and Agilent liabilities,
the initial public offering of Agilent stock, the distribution of such stock and
the execution and delivery of certain other agreements in order to facilitate
and provide for the foregoing;
WHEREAS, the parties desire that HP assign and transfer to Agilent the
Agilent Business Marks (as defined below); and
WHEREAS, the parties further desire that HP license the Licensed Marks (as
defined below) to Agilent after the separation of the Agilent businesses.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article I and shall have the meaning specified herein:
1.1 AFFILIATED COMPANY. "Affiliated Company" means, with respect to HP,
any entity in which HP holds a 50% or less ownership interest and that is listed
on Exhibit A hereto and, with respect to Agilent, any entity in which Agilent
holds a 50% or less ownership interest and that is listed on Exhibit A hereto;
provided, however, that any such entity listed in Exhibit A shall be considered
to be an Affiliated Company under this Agreement only if it agrees in writing to
be bound by the terms and conditions of this Agreement. Exhibit A may be amended
from time to time after the date hereof upon mutual consent of the parties.
1.2 AGILENT BUSINESS. "Agilent Business" means (a) the business and
operations of the following business entities of HP, as described in the IPO
Registration Statement (as defined in the Master Separation Agreement): (i) the
Test and Measurement Organization, (ii) the Semiconductor Products Group, (iii)
the Chemical Analysis Group, (iv) the Healthcare Solutions Group and (v) any
related infrastructure organizations and (b) except as otherwise expressly
provided herein, any terminated, divested or discontinued businesses or
operations that at the time of
termination, divestiture or discontinuation primarily related to the Agilent
Business as then conducted.
1.3 AGILENT BUSINESS MARKS. "Agilent Business Marks" means the Marks
listed in the Agilent Business Marks Database.
1.4 AGILENT BUSINESS MARKS DATABASE. "Agilent Business Marks Database"
means the Agilent Business Marks Database, as it may be updated by the parties
upon mutual agreement to add additional Marks as of the Separation Date.
1.5 AUTHORIZED DEALERS. "Authorized Dealers" means any distributor,
dealer, OEM customer, VAR customer, VAD customer, systems integrator or other
agent that on or after the Separation Date is authorized to market, advertise,
sell, lease, rent, service or otherwise offer Measurement Products. Agilent will
provide HP a list of the then current Authorized Dealers within a reasonable
period after HP's request.
1.6 COLLATERAL MATERIALS. "Collateral Materials" means all packaging,
tags, labels, advertising, promotions, display fixtures, instructions,
warranties and other materials of any and all types associated with the
Measurement Products that are marked with at least one of the Licensed Marks.
1.7 CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials" means
materials that are not products or product-related and that Agilent may now or
hereafter use to communicate its identity, including, by way of example and
without limitation, business cards, letterhead, stationery, paper stock and
other supplies, signage on real property, buildings, fleet and uniforms.
1.8 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Master Separation Agreement.
1.9 LICENSED MARKS. "Licensed Marks" means the Marks set forth on Exhibit
A hereto.
1.10 MAINTENANCE CONTRACTS. "Maintenance Contracts" means agreements
pursuant to which Agilent, its Subsidiaries or Affiliated Companies or its or
their Authorized Dealers or their designees provide repair and maintenance
services (whether preventive, diagnostic, remedial, warranty or non-warranty) in
connection with Measurement Products, including without limitation agreements
entered into by HP prior to the Separation Date and assigned to Agilent pursuant
to the Master Separation Agreement or the Ancillary Agreements (as such term is
defined in the Master Separation Agreement).
1.11 MARK. "Mark" means any trademark, service mark, trade name, domain
name, and the like, or other word, name, symbol or device, or any combination
thereof, used or intended to be used by a Person to identify and distinguish the
products or services of that Person from the products or services of others and
to indicate the source of such goods or services, including without
-2-
limitation all registrations and applications therefor throughout the world and
all common law and other rights therein throughout the world.
1.12 MASTER SEPARATION AGREEMENT. "Master Separation Agreement" means the
Master Separation and Distribution Agreement between the parties.
1.13 MEASUREMENT PRODUCT. "Measurement Product" means any Agilent product
that is listed on an Agilent corporate price list as of the Distribution Date,
and new versions thereof that have merely minor incremental differences from any
such product. Measurement Products shall also include maintenance (whether
diagnostic, preventive, remedial, warranty or non-warranty), support and similar
services associated with Measurement Products, pursuant to Maintenance Contracts
or otherwise.
1.14 PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
1.15 QUALITY STANDARDS. "Quality Standards" means standards of quality
applicable to the Measurement Products, as in use immediately prior to the
Separation Date, unless otherwise communicated in writing by HP from time to
time.
1.16 SELL. To "Sell" a product means to sell, transfer, lease or otherwise
dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed
thereto.
1.17 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
November 1, 1999 or such other date as may be fixed by the Board of Directors of
HP.
1.18 SUBSIDIARY. "Subsidiary" means with respect to any specified Person,
any corporation, any limited liability company, any partnership or other legal
entity of which such Person owns, directly or indirectly, more than 50% of the
stock or other equity interest entitled to vote on the election of the members
of the board of directors or similar governing body. Unless the context
otherwise requires, reference to HP and its Subsidiaries shall not include the
subsidiaries of HP that will be transferred to Agilent after giving effect to
the Separation (as defined in the Master Separation Agreement), including the
actions taken pursuant to the Non-US Plan (as defined in the Master Separation
Agreement). For example, if HP owns 70% of the stock of another corporation, and
that corporation owns 60% of the equity interest of a limited liability company,
then that corporation is a Subsidiary of HP but that limited liability company
is not. However, if such corporation owns 90% of the equity interest of a
limited liability company, then that limited liability company is a Subsidiary
of HP. For the avoidance of doubt, this definition of Subsidiary is different
from the definition of Subsidiary in the Master Separation Agreement.
1.19 THIRD PARTY. "Third Party" means a Person other than HP and its
Subsidiaries and Affiliated Companies and Agilent and its Subsidiaries and
Affiliated Companies.
-3-
1.20 TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means the
guidelines for proper usage of the Licensed Marks, as in use immediately prior
to the Separation Date, as such guidelines may be revised and updated in writing
by HP from time to time.
ARTICLE II
ASSIGNMENT
2.1 ASSIGNMENT OF AGILENT BUSINESS MARKS. Subject to Sections 2.2 and 2.3
below, HP hereby grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Agilent, by execution
hereof (or, where appropriate or required, by execution of separate instruments
of assignment), all its (and their) right, title and interest in and to the
Agilent Business Marks, including all goodwill of the Agilent Business
appurtenant thereto, to be held and enjoyed by Agilent, its successors and
assigns. HP further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Agilent all its (and
their) right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of the Agilent Business Marks. HP will,
without demanding any further consideration therefor, at the request and expense
of Agilent (except for the value of the time of HP employees), do (and to cause
its Subsidiaries to do) all lawful and just acts that may be or become necessary
for evidencing, maintaining, recording and perfecting Agilent's rights to such
Agilent Business Marks consistent with HP's general business practice as of the
Separation Date, including but not limited to execution and acknowledgement of
(and causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Agilent or the relevant
governmental or other authorities for each Mark in all jurisdictions in which HP
owns rights thereto.
2.2 PRIOR GRANTS. Agilent acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have been
granted by HP or its Subsidiaries with respect to the Agilent Business Marks
prior to the Separation Date. HP shall respond to reasonable inquiries from
Agilent regarding any such
prior grants.
2.3 ASSIGNMENT DISCLAIMER. AGILENT ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER
HP NOR ANY SUBSIDIARY OR AFFILIATED COMPANY OF HP HAS MADE OR WILL MAKE ANY
WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
ARTICLE III
LICENSES
3.1 LICENSE GRANT. HP grants (and agrees to cause its appropriate
Subsidiaries to grant) to Agilent a personal, irrevocable, nonexclusive,
perpetual, worldwide, fully-paid and non-transferable (except as set forth in
Section 14.9) license to use the Licensed Marks on the Measurement Products and
in connection with the Sale and offer for Sale of Measurement Products (or, in
the case of Measurement Products in the form of software, in connection with
licensing of
-4-
Measurement Products) and to use the Licensed Marks in the advertisement and
promotion of such Measurement Products.
3.2 LICENSE RESTRICTIONS.
(a) Once Agilent abandons the use of all of the Licensed Marks on a
particular Measurement Product, then Agilent agrees that its license granted
hereunder with respect to that Measurement Product shall thereupon terminate.
(b) Agilent may not make any use whatsoever, in whole or in part, of
the Licensed Marks, or any other Mark owned by HP, in connection with Agilent's
corporate, doing business as, or fictitious name, or on Corporate Identity
Materials without the prior written consent of HP, except as expressly set forth
in this Section 3.2(b) or in Section 3.4 below. Notwithstanding the foregoing,
Agilent may use any business cards, letterhead, stationery, paper stock and
other supplies, uniforms and the like throughout their useful life in connection
with the conduct of the Agilent Business, to the extent that, as of the
Separation Date, they are in use, in inventory or on order.
(c) Agilent may not use any Licensed Mark in direct association with
another Mark such that the two Marks appear to be a single Mark or in any other
composite manner with any Marks of Agilent or any Third Party (other than the
Agilent Business Marks as permitted herein).
(d) In all respects, Agilent's usage of the Licensed Marks pursuant
to the license granted hereunder shall be in a manner consistent with the high
standards, reputation and prestige represented by the Licensed Marks, and any
usage by Agilent that is inconsistent with the foregoing shall be deemed to be
outside the scope of the license granted hereunder. As a condition to the
license granted hereunder, Agilent shall at all times present, position and
promote the Measurement Products marked with one or more of the Licensed Marks
in a manner consistent with the high standards and prestige represented by the
Licensed Marks.
3.3 LICENSEE UNDERTAKINGS. As a condition to the licenses granted
hereunder, Agilent undertakes to HP that:
(a) Agilent shall not use the Licensed Marks (or any other Mark of
HP) in any manner contrary to public morals, in any manner which is deceptive or
misleading, which ridicules or is derogatory to the Licensed Marks, or which
compromises or reflects unfavorably upon the goodwill, good name, reputation or
image of HP or the Licensed Marks, or which might jeopardize or limit HP's
proprietary interest therein.
(b) Agilent shall not use the Licensed Marks in connection with any
products or services other than the Measurement Products, including, without
limitation, any other Agilent Business products.
(c) Agilent shall not (i) misrepresent to any Person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to HP, or (iii) take
-5-
any actions that would impose upon HP any obligation or liability to a Third
Party other than obligations under this Agreement, or other obligations which HP
expressly approves in writing for Agilent to incur on its behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be consistent with
the high standards and prestige represented by the Licensed Marks.
3.4 NON-TRADEMARK USE.
(a) Each party may make appropriate and truthful references to the
other party and the other party's products and technology.
(b) The parties acknowledge that the letters "HP" are a part of
several well-known generic acronyms, (for example, "HPLC" for "high performance
liquid chromatography", and "HPCE" for "high pressure capillary
electrophoresis"), or are part of the name of certain concepts or principles
(such as "the HP Way"). This Agreement does not apply to the proper use of such
acronyms or names.
(c) This Agreement does not apply to Agilent's use of "HP-IB" with
regard to the IEEE-488 Interface Bus.
3.5 RESERVATION OF RIGHTS. Except as otherwise expressly provided in this
Agreement, HP shall retain all rights in and to the Licensed Marks, including
without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of HP's Subsidiaries and
Affiliated Companies to use) the Licensed Marks, either alone or in combination
with other Marks, in connection with the marketing, offer or provision of any
product or service, including any product or service which competes with Agilent
Business products; and
(c) The right to license Third Parties to use the Licensed Marks.
3.6 THIRD PARTY LICENSES. HP agrees that it and its Subsidiaries and
Affiliated Companies will not license or transfer the Licensed Marks to Third
Parties (other than to and among Subsidiaries of HP) for use in connection with
products or services which compete with Measurement Products that are listed on
an Agilent corporate price list as of the Distribution Date until three (3)
years after the Separation Date. Such restriction shall be binding on any
successors and assigns of the Licensed Marks. The foregoing shall not, in any
event, limit any of the following: (i) any licenses that may have been granted
by HP with respect to the Licensed Marks prior to the Separation Date or (ii)
licenses granted to Third Parties in connection with any co-branding program
(including, by way of example and not by way of limitation, the OpenView
program). For purposes of clarification, a product will not necessarily be
deemed to compete with another product if it is merely complementary or merely
has some functions in common. Each party promptly will respond
-6-
to requests from the other party regarding whether it considers one product to
compete with another product. Except as set forth in this Section 3.6, nothing
in this Agreement shall be construed to prevent HP from granting any licenses
for the use of the Licensed Marks, or from utilizing the Licensed Marks in any
manner whatsoever other than as provided in this Section 3.6.
ARTICLE IV
PERMITTED SUBLICENSES
4.1 SUBLICENSES
(a) SUBLICENSES TO SUBSIDIARIES AND AFFILIATED COMPANIES. Subject to
the terms and conditions of this Agreement, including all applicable Quality
Standards and Trademark Usage Guidelines and other restrictions in this
Agreement, Agilent may grant sublicenses to its Subsidiaries and Affiliated
Companies to use the Licensed Marks in accordance with the license grant in
Section 3.1 above; provided, that (i) Agilent enters into a written sublicense
agreement with each such Subsidiary and Affiliated Company sublicensee, and (ii)
such agreement does not include the right to grant further sublicenses other
than, in the case of a sublicensed Subsidiary of Agilent, to another Subsidiary
of Agilent. Agilent shall provide copies of such written sublicense agreements
to HP upon request. If Agilent grants any sublicense rights pursuant to this
Section 4.1(a) and any such sublicensed Subsidiary ceases to be a Subsidiary or
Agilent ceases to hold at least a thirty percent (30%) ownership interest in
such sublicensed Affiliated Company, then the sublicense granted to such
Subsidiary or Affiliated Company pursuant to this Section 4.1(a) shall terminate
one hundred eighty (180) days from the date of such cessation.
(b) SUBLICENSES TO TRANSFEREES. In addition, if Agilent, within five
(5) years after the Separation Date, transfers a going business (but not all or
substantially all of its business or assets), and such transfer includes at
least one marketable product and tangible assets having a net value of at least
ten million U.S. dollars ($10,000,000.00) then, subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, Agilent may
grant sublicenses to the transferee of such business to use the Licensed Marks
on the Measurement Products that are in the transferred business as of the
effective date of the transfer in accordance with the license grant in Section
3.1 above; provided, that (i) Agilent enters into a written sublicense agreement
with the sublicensee, (ii) such agreement does not include the right to grant
further sublicenses and (iii) in any event, such sublicense shall terminate one
hundred eighty (180) days after the effective date of the transfer. Agilent
shall provide copies of such written sublicense agreements to HP upon request.
4.2 AUTHORIZED DEALERS' USE OF MARKS. Subject to the terms and conditions
of this Agreement, including all applicable Quality Standards and Trademark
Usage Guidelines and other restrictions in this Agreement, Agilent (and those
Subsidiaries and Affiliated Companies sublicensed to use the Licensed Marks
pursuant to Section 4.1) may allow Authorized Dealers to, and may allow such
Authorized Dealers to allow other Authorized Dealers to, use the Licensed Marks
in the advertisement and promotion of Measurement Products Sold by such
Authorized Dealers.
-7-
4.3 ENFORCEMENT OF AGREEMENTS. Agilent shall take all appropriate
measures at Agilent's expense promptly and diligently to enforce the terms of
any sublicense agreement or other agreement with any Subsidiary, Affiliated
Company or Authorized Dealer, or of any existing agreement with any Authorized
Dealer, and shall restrain any such Subsidiary, Affiliated Company or Authorized
Dealer from violating such terms, including without limitation (i) monitoring
the Subsidiaries', Affiliated Companies' and Authorized Dealers' compliance with
the relevant Trademark Usage Guidelines and Quality Standards and causing any
noncomplying Subsidiary, Affiliated Company or Authorized Dealer promptly to
remedy any failure, (ii) terminating such agreement and/or (iii) commencing
legal action, in each case, using a standard of care consistent with HP's
practices as of the Separation Date. In the event that HP determines that
Agilent has failed promptly and diligently to enforce the terms of any such
agreement using such standard of care, HP reserves the right to enforce such
terms, and Agilent shall reimburse HP for its fully allocated direct costs and
expenses incurred in enforcing such agreement, plus all out-of-pocket costs and
expenses, plus five percent (5%) (or, if such costs and expenses are incurred
more than two (2) years after the Separation Date, ten percent (10%)).
ARTICLE V
ROYALTIES
5.1 ROYALTIES.
(a) Upon (i) any Sale occurring more than five (5) years after the
Separation Date by Agilent, its Subsidiaries or Affiliated Companies of tangible
Measurement Products that are marked with one or more of the Licensed Marks
(other than repaired, refurbished or reconstructed Measurement Products or
repair parts and other than Sales to HP, its Subsidiaries and its Affiliated
Companies), and (ii) the use by Agilent, its Subsidiaries or Affiliated
Companies of one or more of the Licensed Marks as a service mark in connection
with the sale of services associated with Measurement Products (other than
repair, maintenance and calibration services and other than sales to HP, its
Subsidiaries and its Affiliated Companies), Agilent shall pay to HP a royalty on
the Net Sales earned by Agilent in each Agilent fiscal quarter as a result of
such sale. The royalty rate shall be the standard royalty rate that is charged
by HP to the Agilent Business as of the Separation Date for use of the Licensed
Marks.
(b) As used in this Article V, "Net Sales" means the gross invoice
price from (i) royalty-bearing Sales under Section 5.1(a)(i) above and (ii)
royalty-bearing sales of services under Section 5.1(a)(ii) above, in any case
less (A) charges for handling, freight, sales taxes, insurance costs and import
duties where such items are included in the invoiced price, (B) point-of-sale
credits (or other similar adjustments to price) granted to independent
distributors and (C) credits actually granted or refunds actually given for
returns during such Agilent fiscal quarter. In the event that the foregoing
Measurement Products are Sold for no or nominal consideration or to a Subsidiary
or Affiliated Company or in any other circumstances in which the selling price
is established on other than an arms-length basis, the Net Sales on such Sales
shall be determined on the average selling price earned by Agilent during the
preceding Agilent fiscal quarter on Sales of like volumes of the applicable
Measurement Products to unaffiliated customers in arms-length sales. However, in
-8-
the event that the foregoing Measurement Products are Sold to Agilent's
Subsidiaries or Affiliated Companies for resale to Third Parties, then the
royalties will be based on Net Sales from the Subsidiaries or Affiliated
Companies to the Third Parties and no royalties will be due on the Sales to the
Subsidiaries and Affiliated Companies.
(c) For the purposes of clarification, no royalty is due under this
Article V for uses of the Licensed Marks that are covered by Section 3.4.
5.2 PAYMENTS AND ACCOUNTING.
(a) With respect to the royalties set forth herein, Agilent shall
keep full, clear and accurate records until otherwise provided in Section
5.2(b). These records shall be retained for a period of three (3) years from the
date of payment notwithstanding the expiration or other termination of this
Agreement. HP shall have the right, through a mutually agreed upon independent
certified public accountant (consent to which shall not be unreasonably withheld
or delayed by Agilent), and at HP's expense, to examine and audit, not more than
once a year, and during normal business hours, all such records and such other
records and accounts as may under recognized accounting practices contain
information bearing upon the amount of royalty payable to HP under this
Agreement. Prompt adjustment shall be made by either party to compensate for any
errors and/or omissions disclosed by such examination or audit. Should any such
error and/or omission result in an underpayment of more than five percent (5%)
of the total royalties due for the period under audit, Agilent shall upon HP's
request pay for the cost of the audit and pay HP an additional fee equal to a
compound annual interest rate of ten percent (10%) of such error and/or
omission.
(b) Within forty-five (45) days after the end of each Agilent fiscal
quarter, Agilent shall furnish to HP a statement in suitable form showing all
Measurement Products and related services subject to royalties that were sold,
during such quarter, and the amount of royalty payable thereon. If no products
or services subject to royalty have been sold, that fact shall be shown on such
statement. Also, within such forty-five (45) days, Agilent shall pay to HP the
royalties payable hereunder for such quarter. HP and Agilent will determine the
form of the statement prior to submission of the first such statement. All
royalty and other payments to HP hereunder shall be in United States dollars.
Royalties based on sales in other currencies shall be converted to United States
dollars according to the official rate of exchange for that currency, as
published in the Wall Street Journal on the last day of the calendar month in
which the royalty accrued (or, if not published on that day, the last
publication day for the Wall Street Journal during that month). If two
consecutive Agilent fiscal quarters pass in which no royalties are due under
this Agreement and Agilent reasonably believes no royalties will be due, the
obligations pursuant to this Article V shall terminate. If Agilent resumes sale
of Measurement Products or related services that are subject to royalties, the
obligations of this Article V shall automatically resume.
-9-
ARTICLE VI
TRADEMARK USAGE GUIDELINES
6.1 TRADEMARK USAGE GUIDELINES. Agilent and its Subsidiaries, Affiliated
Companies and Authorized Dealers shall use the Licensed Marks only in a manner
that is consistent with the Trademark Usage Guidelines.
6.2 TRADEMARK REVIEWS. At HP's request, Agilent agrees to furnish or make
available for inspection to HP samples of all Measurement Products and
Collateral Materials of Agilent, its Subsidiaries, Affiliated Companies and
Authorized Dealers that are marked with one or more of the Licensed Marks (to
the extent that Agilent has the right to obtain such samples). If Agilent is
notified or determines that it or any of its Subsidiaries, Affiliated Companies
or Authorized Dealers is not complying with any Trademark Usage Guidelines, it
shall notify HP and the provisions of Article VII and Section 4.3 shall apply to
such noncompliance.
ARTICLE VII
TRADEMARK USAGE GUIDELINE ENFORCEMENT
7.1 INITIAL CURE PERIOD. If HP becomes aware that Agilent or any
Subsidiary, Affiliated Company or Authorized Dealer is not complying with any
Trademark Usage Guidelines, HP shall notify Agilent in writing, setting forth in
reasonable detail a written description of the noncompliance and any requested
action for curing such noncompliance. Agilent shall then have sixty (60) days
with regard to noncompliance by Authorized Dealers and thirty (30) days with
regard to noncompliance by Agilent or any Subsidiary or Affiliated Company after
receipt of such notice ("Guideline Initial Cure Period") to correct such
noncompliance or submit to HP a written plan to correct such noncompliance which
written plan is reasonably acceptable to HP.
7.2 SECOND CURE PERIOD. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, Agilent and HP
shall each promptly appoint a representative to negotiate in good faith actions
that may be necessary to correct such noncompliance. The parties shall have
thirty (30) days following the expiration of the Guideline Initial Cure Period
to agree on corrective actions, and Agilent shall have thirty (30) days from the
date of an agreement of corrective actions to implement such corrective actions
and cure or cause the cure of such noncompliance ("Second Guideline Cure
Period").
7.3 FINAL CURE PERIOD. If the noncompliance with the Trademark Usage
Guidelines remains uncured after the expiration of the Second Guideline Cure
Period, then at HP's election, Agilent, or the noncomplying Subsidiary,
Affiliated Company or Authorized Dealer, whichever is applicable, promptly shall
cease using the noncomplying Collateral Materials until HP determines that
Agilent, or the noncomplying Subsidiary, Affiliated Company or Authorized
Dealer, whichever is applicable, has demonstrated its ability and commitment to
comply with the Trademark Usage Guidelines. Nothing in this Article VII shall be
deemed to limit Agilent's obligations under Section 4.3 above or to preclude HP
from exercising any rights or remedies under Section 4.3 above.
-10-
ARTICLE VIII
QUALITY STANDARDS
8.1 GENERAL. Agilent acknowledges that the Measurement Products permitted
by this Agreement to be marked with one or more of the Licensed Marks must
continue to be of sufficiently high quality as to provide protection of the
Licensed Marks and the goodwill they symbolize, and Agilent further acknowledges
that the maintenance of the high quality standards associated with such products
is of the essence of this Agreement.
8.2 QUALITY STANDARDS. Agilent and its Authorized Dealers, Affiliated
Companies and Subsidiaries shall use the Licensed Marks only on and in
connection with Measurement Products that meet or exceed in all respects the
Quality Standards.
8.3 QUALITY CONTROL REVIEWS. At HP's request, Agilent agrees to furnish
or make available to HP for inspection sample Measurement Products marked with
one or more of the Licensed Marks. HP may also independently conduct customer
satisfaction surveys to determine if Agilent and its Subsidiaries, Affiliated
Companies and Authorized Dealers are meeting the Quality Standards. Agilent
shall cooperate with HP fully in the distribution of such surveys. In the event
of a challenge by HP, HP shall, at the request of Agilent, provide Agilent with
copies of customer surveys used by HP to determine if Agilent is meeting the
Quality Standards. If Agilent is notified or determines that it or any of its
Subsidiaries, Affiliated Companies or Authorized Dealers is not complying with
any Quality Standards, it shall notify HP and the provisions of Article IX and
Section 4.3 shall apply to such noncompliance.
8.4 PRODUCT DISCONTINUATION. If, at any time during or after the term of
this Agreement, Agilent discontinues the sale of a Measurement Product that has
been marked with one or more of the Licensed Marks, Agilent shall substantially
comply with the discontinuation procedure used by HP for such or similar
products immediately prior to Separation Date.
ARTICLE IX
QUALITY STANDARD ENFORCEMENT
9.1 INITIAL CURE PERIOD. If HP becomes aware that Agilent or any
Subsidiary, Affiliated Company or Authorized Dealer sublicensee is not complying
with any Quality Standards, HP shall notify Agilent in writing, setting forth in
reasonable detail a written description of the noncompliance and any requested
action for curing such noncompliance. Agilent shall then have thirty (30) days
after receipt of such notice ("Initial Cure Period") to correct such
noncompliance or submit to HP a written plan to correct such noncompliance which
written plan is reasonably acceptable to HP.
9.2 SECOND CURE PERIOD. If noncompliance with the Quality Standards
continues beyond the Initial Cure Period, Agilent and HP shall each promptly
appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have thirty (30) days
following the expiration of the Initial Cure Period to agree on corrective
actions, and Agilent shall have thirty (30) days from the date of an agreement
of corrective actions to
-11-
implement such corrective actions and cure or cause the cure of such
noncompliance ("Second Cure Period").
9.3 FINAL CURE PERIOD. If the noncompliance with the Quality Standards
remains uncured after the expiration of the Second Cure Period, then at HP's
election, Agilent, or the noncomplying Subsidiary, Affiliated Company or
Authorized Dealer, whichever is applicable, promptly shall cease offering the
noncomplying Measurement Products under the Licensed Marks until HP determines
that Agilent, or the noncomplying Subsidiary, Affiliated Company or Authorized
Dealer, whichever is applicable, has demonstrated its ability and commitment to
comply with the Quality Standards. Nothing in this Article IX shall be deemed to
limit Agilent's obligations under Section 4.3 above or to preclude HP from
exercising any rights or remedies under Section 4.3 above.
ARTICLE X
PROTECTION OF LICENSED MARKS
10.1 OWNERSHIP AND RIGHTS. Agilent agrees not to challenge the ownership
or validity of the Licensed Marks. Agilent shall not disparage, dilute or
adversely affect the validity of the Licensed Marks. Agilent's use of the
Licensed Marks shall inure exclusively to the benefit of HP, and Agilent shall
not acquire or assert any rights therein. Agilent recognizes the value of the
goodwill associated with the Licensed Marks, and that the Licensed Marks may
have acquired secondary meaning in the minds of the public.
10.2 PROTECTION OF MARKS. Agilent shall assist HP, at HP's request and
expense, in the procurement and maintenance of HP's intellectual property rights
in the Licensed Marks. Agilent will not grant or attempt to grant a security
interest in the Licensed Marks, or to record any such security interest in the
United States Patent and Trademark Office or elsewhere, against any trademark
application or registration belonging to HP. Agilent agrees to, and to cause its
Subsidiaries and Affiliated Companies to, execute all documents reasonably
requested by HP to effect further registration of, maintenance and renewal of
the Licensed Marks, recordation of the license relationship between HP and
Agilent, and recordation of Agilent as a registered user. HP makes no warranty
or representation that trademark registrations have been or will be applied for,
secured or maintained in the Licensed Marks throughout, or anywhere within, the
world. Agilent shall cause to appear on all Measurement Products, and all
Collateral Materials, such legends, markings and notices as may be required by
applicable law or reasonably requested by HP.
10.3 SIMILAR MARKS. Agilent agrees not to use or register in any country
any Mark that infringes HP's rights in the Licensed Marks, or any element
thereof. If any application for registration is, or has been, filed in any
country by Agilent which relates to any Mark that infringes HP's rights in the
Licensed Marks, Agilent shall immediately abandon any such application or
registration or assign it to HP. Agilent shall not challenge HP's ownership of
or the validity of the Licensed Marks or any application for registration
thereof throughout the world. Agilent shall not use or register in any country
any copyright, domain name, telephone number or any other intellectual property
right, whether recognized currently or in the future, or other designation which
-12-
would affect the ownership or rights of HP in and to the Licensed Marks, or
otherwise to take any action which would adversely affect any of such ownership
rights, or assist anyone else in doing so. Agilent shall cause its Subsidiaries,
Affiliated Companies and Authorized Dealers to comply with the provisions of
this Section 10.3.
10.4 INFRINGEMENT PROCEEDINGS. In the event that the Agilent Director of
Intellectual Property or Agilent Trademark Counsel learns of any infringement or
threatened infringement of the Licensed Marks, or any unfair competition,
passing-off or dilution with respect to the Licensed Marks, Agilent shall notify
HP or its authorized representative giving particulars thereof, and Agilent
shall provide necessary information and assistance to HP or its authorized
representatives at HP's expense in the event that HP decides that proceedings
should be commenced. Notwithstanding the foregoing, Agilent is not obligated to
monitor or police use of the Licensed Marks by Third Parties other than as
specifically set forth in Section 4.3. HP shall have exclusive control of any
litigation, opposition, cancellation or related legal proceedings. The decision
whether to bring, maintain or settle any such proceedings shall be at the
exclusive option and expense of HP, and all recoveries shall belong exclusively
to HP. Agilent shall not and shall have no right to initiate any such
litigation, opposition, cancellation or related legal proceedings in its own
name, but, at HP's request, agrees to be joined as a party in any action taken
by HP to enforce its rights in the Licensed Marks. HP shall incur no liability
to Agilent or any other Person under any legal theory by reason of HP's failure
or refusal to prosecute or by HP's refusal to permit Agilent to prosecute, any
alleged infringement by Third Parties, nor by reason of any settlement to which
HP may agree.
ARTICLE XI
TERMINATION
11.1 VOLUNTARY TERMINATION. By written notice to HP, Agilent may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by HP. Such notice shall specify the effective date of
such termination and shall clearly specify any affected Licensed Marks,
Measurement Products or services.
11.2 SURVIVAL. Any voluntary termination of licenses and rights of
Agilent under Section 11.1 shall not affect Agilent's licenses and rights with
respect to any Measurement Products made or furnished prior to such termination.
11.3 OTHER TERMINATION. HP acknowledges and agrees that its rights to
terminate the licenses granted to Agilent hereunder are solely as set forth in
Section 4.3 and Articles VII and IX.
ARTICLE XII
DISPUTE RESOLUTION
12.1 NEGOTIATION. The parties shall make a good faith attempt to resolve
any dispute or claim arising out of or related to this Agreement through
negotiation. Within thirty (30) days after notice of a dispute or claim is given
by either party to the other party, the parties' first tier
-13-
negotiating teams (as determined by each party's Director of Intellectual
Property or his or her delegate) shall meet and make a good faith attempt to
resolve such dispute or claim and shall continue to negotiate in good faith in
an effort to resolve the dispute or claim or renegotiate the applicable section
or provision without the necessity of any formal proceedings. If the first tier
negotiating teams are unable to agree within thirty (30) days of their first
meeting, then the parties' second tier negotiating teams (as determined by each
party's Director of Intellectual Property or his or her delegate) shall meet
within thirty (30) days after the end of the first thirty (30) day negotiating
period to attempt to resolve the matter. During the course of negotiations under
this Section 12.1, all reasonable requests made by one party to the other for
information, including requests for copies of relevant documents, will be
honored. The specific format for such negotiations will be left to the
discretion of the designated negotiating teams but may include the preparation
of agreed upon statements of fact or written statements of position furnished to
the other party.
12.2 NONBINDING MEDIATION. In the event that any dispute or claim arising
out of or related to this Agreement is not settled by the parties within fifteen
(15) days after the first meeting of the second tier negotiating teams under
Section 12.1, the parties will attempt in good faith to resolve such dispute or
claim by nonbinding mediation in accordance with the American Arbitration
Association Commercial Mediation Rules. The mediation shall be held within
thirty (30) days of the end of such fifteen (15) day negotiation period of the
second tier negotiating teams. Except as provided below in Section 12.3, no
litigation for the resolution of such dispute may be commenced until the parties
try in good faith to settle the dispute by such mediation in accordance with
such rules, and either party has concluded in good faith that amicable
resolution through continued mediation of the matter does not appear likely. The
costs of mediation shall be shared equally by the parties to the mediation. Any
settlement reached by mediation shall be recorded in writing, signed by the
parties, and shall be binding on them.
12.3 PROCEEDINGS. Nothing herein, however, shall prohibit either party
from initiating litigation or other judicial or administrative proceedings if
such party would be substantially harmed by a failure to act during the time
that such good faith efforts are being made to resolve the dispute or claim
through negotiation or mediation. In the event that litigation is commenced
under this Section 12.3, the parties agree to continue to attempt to resolve any
dispute or claim according to the terms of Sections 12.1 and 12.2 during the
course of such litigation proceedings under this Section 12.3.
ARTICLE XIII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED COMPANIES
BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED COMPANIES FOR ANY
DAMAGES, INCLUDING WITHOUT LIMITATION SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH
-14-
DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH
PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT K OF THE MASTER SEPARATION
AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY
IN ANY EVENT.
ARTICLE XIV
MISCELLANEOUS PROVISIONS
14.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL LICENSED
MARKS AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE
LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES OR AFFILIATED COMPANIES MAKES ANY REPRESENTATIONS OR EXTENDS ANY
WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO
INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR
NON-INFRINGEMENT. Without limiting the generality of the foregoing, neither HP
nor any of its Subsidiaries or Affiliated Companies makes any warranty or
representation as to the validity of any Mark licensed by it to Agilent or any
warranty or representation that any use of any Mark with respect to any product
or service will be free from infringement of any rights of any Third Party.
14.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Marks. Neither party is required
hereunder to furnish or disclose to the other any information (including copies
of registrations of the Marks), except as specifically provided herein.
14.3 INFRINGEMENT SUITS. Except as set forth in Section 4.3, (i) neither
party shall have any obligation hereunder to institute any action or suit
against Third Parties for infringement of any of the Licensed Marks or to defend
any action or suit brought by a Third Party which challenges or concerns the
validity of any of the Licensed Marks and (ii) Agilent shall not have any right
to institute any action or suit against Third Parties for infringement of any of
the Licensed Marks.
14.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries or Affiliated Companies, is obligated to (i) file
any application for registration of any Mark, or to secure any rights in any
Marks, (ii) to maintain any Mark registration, or (iii) provide any assistance,
except for the obligations expressly assumed in this Agreement.
14.5 ENTIRE AGREEMENT. This Agreement, the Master Separation Agreement
and the other Ancillary Agreements (as defined in the Master Separation
Agreement) constitute the entire agreement between the parties with respect to
the subject matter hereof and shall supersede all prior
-15-
written and oral and all contemporaneous oral agreements and understandings with
respect to the subject matter hereof. To the extent there is a conflict between
this Agreement and the General Assignment and Assumption Agreement between the
parties, the terms of this Agreement shall govern.
14.6 GOVERNING LAW. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of Delaware as to all matters
regardless of the laws that might otherwise govern under principles of conflicts
of laws applicable thereto.
14.7 DESCRIPTIVE HEADINGS. The descriptive headings herein are inserted
for convenience of reference only and are not intended to be part of or to
affect the meaning or interpretation of this Agreement.
14.8 NOTICES. All notices and other communications hereunder shall be in
writing and shall be deemed to have been duly given when delivered in person, by
telecopy with answer back, by express or overnight mail delivered by a
nationally recognized air courier (delivery charges prepaid), by registered or
certified mail (postage prepaid, return receipt requested) or by e-mail with
receipt confirmed by return e-mail to the respective parties as follows:
if to HP:
c/o Hewlett-Packard Company
3000 Hanover Street
Palo Alto, CA 94304
Attention: Associate General Counsel and
Director of Intellectual Property
Telecopy: (650) 852-8194
if to Agilent:
c/o Agilent Technologies, Inc.
3000 Hanover Street
Palo Alto, CA 94304
Attention: Assistant General Counsel and
Director of Intellectual Property
Telecopy: (650) 813-3095
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by e-mail, telecopy or by air
courier shall be deemed effective on the first Business Day following the day on
which such notice or communication was sent. Any notice or communication sent
by registered or certified mail shall be deemed effective on the third Business
Day following the day on which such notice or communication was mailed. As used
in this Section 14.8, "Business Day" means day other than a
-16-
Saturday, a Sunday or a day on which banking institutions located in the State
of California are authorized or obligated by law or executive order to close.
14.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its permitted successive assignees or transferees
hereunder) may assign or transfer this Agreement as a whole without consent to a
Person that succeeds to all or substantially all of the business or assets of
such party. Without limiting the foregoing, this Agreement will be binding upon
and inure to the benefit of the parties and their permitted successors and
assigns.
14.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a nonappealable decision of a court, administrative agency or
arbitrator to be invalid, illegal or incapable of being enforced by any rule of
law or public policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the economic or
legal substance of the transactions contemplated hereby is not affected in any
manner materially adverse to either party. Upon such determination that any term
or other provision is invalid, illegal or incapable of being enforced, the
parties hereto shall negotiate in good faith to modify this Agreement so as to
effect the original intent of the parties as closely as possible in an
acceptable manner to the end that the transactions contemplated hereby are
fulfilled to the fullest extent possible.
14.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure
or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
14.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
14.13 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, all of which, taken together, shall be considered to be one and
the same instrument.
-17-
WHEREFORE, the parties have signed this Trademark Ownership and License
Agreement effective as of the date first set forth above.
HEWLETT-PACKARD COMPANY AGILENT TECHNOLOGIES, INC.
By:_____________________________ By:____________________________
Name:___________________________ Name:__________________________
Title:__________________________ Title:_________________________
EXHIBIT A
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
LICENSED MARKS
HP
Hewlett Packard
HP Symbol
EXHIBIT B
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
AFFILIATED COMPANIES
1. HP Affiliated Companies
-----------------------
ImagineCard
Idea LLC
Intria-HP
Intria-HP Potomac
Ericsson-HP Telecom (Sweden)
Ericsson-HP Telecom (France)
Hua-Pua
Putial Ome
PT Berka Services
Liquidity Management Group
Hugin Expert
Syc
Sopura Systems
2. Agilent Affiliated Companies
----------------------------
Chartered Semiconductor Partners Singapore
LumiLEDS