Exhibit 10.5(c)
TRADEMARK AGREEMENT OUTLINE
Parties
Background
ARTICLE I - Definitions
1. Licensed Trademark
2. Licensed Product - Appendix A patents
3. Combination Product
4. Territory
5. Net Sales
6. Exclusive License
ARTICLE II - Grant of Exclusive License
1. Exclusive License Grant to Use Licensed Trademark
2. Promote and Sell Licensed Product Employing Licensed
Trademark
3. Use of Licensed Trademark on Combination Product
ARTICLE III - Royalties and Royalty Payment Terms
1. Royalty Rate on Net Sales
2. Royalty Payment and Statement
3. No Multiple Royalties
4. Taxes on Royalty Payments
5. Sublicensees Payment on Behalf of License
6. Records and Audit
ARTICLE IV - Licensor's Obligations
1. Trademark Registration
2. Third Party Infringement of Licensed Trademark
ARTICLE V - Licensee's Obligations
1. Products Bearing Licensed Trademark - Standard of
Quality
2. Licensed Trademark Sole Property of Licensor
3. Licensee Not to Contest Validity of Licensed Trademark
ARTICLE VI - Duration and Termination
1. Duration
2. Termination for Breach
3. Survival of Obligations
ARTICLE VII - Representations and Warranties
1. Licensor's Representations and Warranties
2. Licensee's Representations and Warranties
ARTICLE VIII - Indemnification
1. Intellectual Property Indemnification
2. Licensor Indemnification
3. Licensee Indemnification
ARTICLE IX - Miscellaneous Provisions
1. Successors and Assigns
2. Governing Law
3. Modification or Waiver
4. Notices
5. Force majeure
6. Counterparts
7. Entire Agreement
8. Severability
ARTICLE X - Arbitration
Execution
TRADEMARK AGREEMENT
AGREEMENT made this ________ day of January, 1993, by and between
________________________, a _______________ corporation (hereinafter called
"Licensor") ________________________________ and CEPHALON INC., a Delaware
corporation (hereinafter called "Licensee"), 145 Brandywine Parkway, West
Chester, PA 19380, U.S.A.
WITNESSETH:
WHEREAS, Licensee and Laboratoire Lafon ("LAFON") entered into an agreement
dated this day (hereinafter called the "License Agreement") in which Licensee
was granted an Exclusive License to make, have made, use and sell Licensed
Products (as defined herein) in the Territory (as defined herein); and
WHEREAS, Licensor warrants and represents that it is the sole owner of and has
the full right, title and interest in and to the Licensed Trademark (as defined
herein) in the Territory; and
WHEREAS, Licensor is interested in granting and Licensee is interested in
receiving an Exclusive License to use the Licensed Trademark in connection with
the sale of Licensed Product in the Territory.
NOW, THEREFORE, in consideration of the mutual covenants herein contained, the
parties mutually agree as follows:
ARTICLE I - DEFINITIONS
Capitalized terms not otherwise defined herein shall have the same meaning
assigned to them in the License Agreement. For purposes of this Agreement the
following words and phrases shall have the following meanings:
1. "Licensed Trademark" shall mean the word "___________" (to be completed
later by the parties) or such other word or name as shall be agreed upon by
the parties in writing which word or name is to be registered as a
trademark in the Territory and owned by Licensor.
2. "Licensed Product" shall mean any pharmaceutical specialty (whether sold by
prescription, over-the-counter, or otherwise) containing the Compound.
3. "Combination Product" shall mean any Licensed Product containing the
Compound and one or more other pharmacologically active ingredients.
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4. "Compound" shall mean Modafinil and/or other compounds, isomers or salts
thereof.
5. "Territory" shall mean the territory of U.S.A., its territories and
possessions, and Mexico.
6. "Net Sales" shall mean the gross proceeds derived by Licensee and/or its
sublicensees from the sale of Licensed Product bearing the Licensed
Trademark in the Territory while this Agreement is in effect, after
deducting normal and customary cash and trade discounts, returns,
allowances, transportation and insurance charges or allowances, if shown on
the invoice for the sale, and sales, excise, turnover or similar taxes, if
any paid or allowed by Licensee, or its sublicensees directly in respect of
such sales. Net Sales for Combination Products shall be determined by
multiplying the Net Sales of such Combination Product by a fraction; the
numerator of the fraction shall be the cost to Licensee of the active
substance supplied by Licensor, and the denominator shall be the total cost
to Licensee of all active ingredients contained in such Combination Product
but in no event shall the royalty be decreased to less than one-half (1/2)
of the amount obtained in applying the royalty rate under Article III,
Paragraph 1 below to the Net Sales of the Combination Product. Costs shall
be determined according to Licensee's accounting methods for determining
the cost of its pharmaceutical products.
7. "Exclusive License" shall mean a license whereby Licensee's rights shall be
sole and entire and shall operate to exclude all others including Licensor.
8. "Licensee" shall mean Cephalon, Inc. and any entity controlled by Cephalon,
including any subsidiary or other entity as to which Cephalon owns at least
50% of the voting stock or the right to receive at least 50% of the
profits.
ARTICLE II - GRANT OF LICENSE
1. Licensor hereby grants to Licensee an Exclusive License to use the Licensed
Trademark as a trademark for the Licensed Product in the Territory,
including the right to grant sublicenses, subject to the terms and
conditions of this Agreement. Licensee shall be liable to Licensor for the
thorough application by its sublicensees of the obligations of its
sublicensees hereunder.
2. During the term of the License Agreement, Licensee agrees to promote and
sell Licensed Product employing the Licensed Trademark, in the Territory;
provided, however, Licensee may promote and sell Licensed Product solely by
its generic drug designation without employing the Licensed Trademark when
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such action is necessary in order to sell Licensed Product in compliance
with governmental regulations or restrictions.
3. Licensee shall to the extent reasonably possible use the Licensed Trademark
on Combination Products giving consideration to the amount of Licensed
Product in such Combination Product and other relevant business factors. In
the event Licensee is unable to use the Licensed Trademark for a
Combination Product, Licensee will under the terms of this Agreement sell
such Combination Product using a registered trademark owned by Licensor in
the Territory, provided that Licensor shall have granted to Licensee all
rights necessary to so use such registered trademark.
ARTICLE III - ROYALTIES
1. For and in consideration of the Exclusive License to use the Licensed
Trademark granted herein, Licensee shall pay Licensor a royalty as follows:
a) during the first fifteen (15) years of the term of this Agreement,
four percent (4%) of Net Sales; and
b) during the next succeeding five (5) years of the term of this
Agreement, two percent (2%) of Net Sales.
Thereafter, Licensee's license under Article II to use the Licensed
Trademark shall be fully paid-up and irrevocable.
2. Royalty payments shall be made in U.S. Dollars within sixty (60) days after
the last day of June and December for royalties accruing on sales during
the six (6) preceding calendar months. Each royalty payment shall be
accompanied by a statement which shall set forth the gross sales, the
detail of the deductions made according to Article I, Paragraph 5 above,
and the Net Sales figure. If Licensee receives Net Sales in a currency
other than US Dollars, royalties shall be calculated by using the rate for
converting such currency into US Dollars quoted as the New York foreign
exchange selling rate on the last business day of the royalty period.
3. No royalties shall be payable on sales between Licensee and its
sublicensees.
4. All taxes assessed, imposed on or required to be withheld from royalty
payments due Licensor, will be deducted from the sums due. Tax receipts
will be received by Licensee evidencing such payments which receipts will
be forwarded to Licensor.
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5. Any sublicensee of the Licensee may pay on behalf of Licensee any
obligation of Licensee under this Agreement and such payment shall be
received by Licensor in lieu of payment by Licensee with the same effect as
if payment had been tendered by Licensee in satisfaction of such obligation
under this Agreement.
6. Licensee shall, and shall require its sublicensees to, keep and maintain
records of sales made pursuant to the license and/or sublicenses granted
hereunder. Such records shall be open to inspection at any reasonable time
and upon reasonable notice (but not more than once each calendar year)
within three (3) years after the royalty period to which such records
relate, by an independent certified public accountant selected by Licensor,
retained at Licensor's expense and approved by Licensee, such approval not
to be unreasonably withheld. Such accountant shall have the right to
examine the records kept pursuant to this Agreement only to verify the
royalty payments to be made by Licensee to Licensor hereunder. Such
accountant shall keep confidential all information it receives in the
course of such inspection and may report the findings of said examination
of records to Licensor and to Licensee only insofar as it is necessary to
evidence any mistake or impropriety on the part of Licensee and/or its
sublicensees.
ARTICLE IV - LICENSOR'S OBLIGATIONS
1. Licensor agrees that it will file and diligently prosecute an application
to register the Licensed Trademark in the Territory. Licensor, at its
expense, will maintain such registration in the Territory for so long as
Licensee shall market Licensed Product bearing the Licensed Trademark in
the Territory.
Upon the request of Licensor from time to time, Licensee will execute all
instruments or papers and render such other assistance as Licensor may
reasonably request in order to effect the registration and/or the recording
of Licensee as the registered user of the Licensed Trademark.
2. In the event the Licensed Trademark is infringed in any country of the
Territory, Licensor agrees to immediately commence appropriate legal action
to stop such infringement at its sole expense, and Licensee shall assist it
to do so, at Licensee's expense. If Licensor fails to initiate such action
within ninety (90) days after being notified by Licensee of the
infringement, Licensee shall have the right to bring such action at its own
expense, in the name of Licensor, and the latter agrees to give Licensee
its complete cooperation, at Licensor's expense.
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ARTICLE V - LICENSEE'S OBLIGATIONS
1. Licensee agrees that the Licensed Products sold by Licensee bearing the
Licensed Trademark will be of such a standard of quality so as not to
jeopardize the Licensed Trademark. The standard of quality shall meet the
requirements of the appropriate administrative agency in the Territory in
connection with such Licensed Product. Licensee will periodically forward
to Licensor, upon Licensor's written request, samples of the Licensed
Products as may reasonably be required to determine that the above
standards are being met.
2. Nothing contained in this Agreement will grant to Licensee any right, title
or interest in the Licensed Trademark. The Licensed Trademark is the sole
property of the Licensor and any and all uses by Licensee of the Licensed
Trademark in the Territory will inure to the benefit of the Licensor.
3. Licensee will not raise or cause to be raised any questions concerning, or
objections to, the validity of the Licensed Trademark or to the right of
the Licensor thereto, on any grounds whatsoever.
ARTICLE VI - DURATION AND TERMINATION
1. Unless sooner terminated as provided herein, this Agreement shall terminate
at the date upon which Licensee and its sublicensees shall cease to market
and sell the Licensed Product in the Territory.
2. If either party hereto shall fail to comply with any of its obligations
under this Agreement, and shall fail to remedy any such breach within
ninety (90) days, after receipt of written notice thereof from the other
party, the party not in default shall have the right to terminate this
Agreement by giving written notice of termination.
3. Termination of this Agreement or any license granted hereunder for any
reason by either party shall not relieve the parties of any obligation
accruing prior to such termination.
ARTICLE VII - REPRESENTATIONS AND WARRANTIES
1. The Licensor hereby represents and warrants to the Licensee as follows:
a) This Agreement has been duly executed and delivered by the Licensor
and constitutes the legal, valid and binding obligation of the
Licensor enforceable against the Licensor in accordance with its
terms.
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b) The execution, delivery and performance of this Agreement by the
Licensor, and any acts contemplated to be performed by the Licensor
hereby, will not violate, be in conflict with or result in the breach
(with or without the giving of notice or lapse of time, or both) of
any term, condition or provision of, or require the consent of any
other party to, any agreement, contract, commitment or other
instrument, document or understanding, oral or written, to which the
Licensor is a party or by which the Licensor is otherwise bound.
c) The Licensor is the sole owner of the entire right title and interest
in and to the Licensed Trademark free and clear of all liens,
encumbrances and claims of others. The Licensor has received no notice
of any claims for infringement, unfair competition, appropriation of
trade secret or the like relating to the Licensed Trademarks.
2. The Licensee hereby represents and warrants to the Licensor as follows:
a) This Agreement has been duly executed and delivered by the Licensee
and constitutes the legal, valid and binding obligation of the
Licensee enforceable against the Licensee in accordance with its
terms.
b) The execution, delivery and performance of this Agreement by the
Licensee, and any acts contemplated to be performed by the Licensee
hereby, will not violate, be in conflict with or result in the breach
(with or without the giving of notice or lapse of time, or both) of
any term, condition or provision of, or require the consent of any
other party to, any agreement, contract, commitment or other
instrument, document or understanding, oral or written, to which the
Licensee is a party or by which the Licensee is otherwise bound.
ARTICLE VIII - INDEMNIFICATION
1. The Licensor will reimburse, indemnify and hold harmless the Licensee from
and against (i) breach by the Licensor of its representations, warranties
or covenants hereunder; (ii) any and all actions, claims or demands of
third parties arising out of any action or omission of the Licensor
hereunder and (iii) all actions, proceedings, claims, damages, costs,
expenses (including, without limitation, costs of defense and fees and
expenses of legal counsel) and demands by third parties of every kind and
nature arising from the licenses and assignments granted hereunder,
including any demands by third parties with respect to the infringement or
alleged infringement of any trademark or other proprietary rights
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belonging to such third parties resulting from the Licensee's use of the
Licensed Trademarks in connection with this Agreement.
2. The Licensee will reimburse, indemnify and hold harmless the Licensor from
and against (i) breach by the Licensee of its representations, warranties
or covenants hereunder and (ii) any and all actions, claims or demands of
third parties arising out of any action or omission of the Licensee
hereunder.
ARTICLE IX - MISCELLANEOUS PROVISIONS
1. Successors and Assigns - This Agreement shall be binding upon and inure to
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the benefit of the successors and assigns of the parties hereto. This
Agreement cannot be assigned by any of the parties hereto without the prior
approval of the other party in writing; provided, however, that either
party may, without such consent, assign this Agreement in connection with
the transfer or sale of all or substantially all of its business or in the
event of its merger or consolidation with another company. Any purported
assignment in violation of the preceding sentence shall be void. Any
permitted assignee shall assume all obligations of its assignor under this
Agreement. No assignment shall relieve either party of responsibility for
the performance of any accrued obligation which such party then has
hereunder.
Notwithstanding the foregoing, if prior to FDA approval of the initial
Licensed Product, Licensee (i) sells 60% or more of its tangible assets, or
(ii) participates in or becomes subject to a merger in which it is not the
surviving entity, the transaction may proceed without the consent of
Licensor but, within ninety (90) days after such event, the parties (in the
case of Licensee, any successor to Licensee) shall meet to review the
development and commercialization plans for the Licensed Product of the
successor entity. If the successor to Licensee does not wish to continue
aggressively the development and commercialization plans for the Licensed
Products on the same schedule as CEPHALON, it shall, upon request of
Licensor, sublicense its right under this Agreement (subject to the
approval of Licensor in accordance with Article II), for a sublicense fee
of no more than 1.5X Licensee's investment in the development of Licensed
Products to the date of such sublicensing in addition to any amounts due to
Licensor hereunder.
2. Governing Law - This Agreement shall be governed by and construed in
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accordance with the laws of France, except that the scope and validity of
the Licensed Trademarks shall be governed by the laws of the applicable
jurisdiction.
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3. Modification or Waiver - No modification or waiver of any of the provisions
of this Agreement shall be valid unless in writing signed by the parties
hereto or signed by the party against whom enforcement of such modification
or waiver is sought.
4. Notices - Notice hereunder shall be deemed sufficient if given by
registered air mail, postage prepaid, and addressed to the party to receive
such notice at the address given above, or at such other address as may
hereafter be designated by notice in writing.
5. Force Majeure - Neither party shall be liable to the other party for any
delay in performance or nonperformance of any of its obligations hereunder
caused by any act of God, explosion, fire, war, labor disputes, order or
decree of any court or governmental authority, or other unforeseeable cause
wholly beyond the control and without the negligence of such party provided
the party so affected promptly notifies the other party and uses its best
efforts to remove such cause as soon as reasonably practical.
6. Counterparts - This Agreement shall become binding when any one or more
counterparts hereof, individually or taken together, shall bear the
signatures of Licensor and Licensee. This Agreement may be executed in two
or more counterparts, each of which shall be deemed an original as against
any party whose signature appears thereon, but all of which together shall
constitute one and the same instrument.
7. Entire Agreement - This Agreement contains all of the covenants, terms and
undertakings of the parties with respect to the particular subject matter
hereof and all prior agreements among the parties relating to the subject
matter hereof, whether written or oral, are merged herein and shall be of
no force and effect. This Agreement cannot be changed, modified or
discharged except by an instrument in writing signed by both parties
hereto.
8. Severability - If any provision of this Agreement or application thereof to
anyone or under any circumstances is adjudicated to be invalid or
unenforceable, such invalidity or unenforceability shall not affect any
other provisions or applications of this Agreement which can be given
effect without the invalid or unenforceable provision or application.
ARTICLE X - ARBITRATION
Any difference between the parties hereto concerning the interpretation or
application of this Agreement which could not be resolved amicably shall be
finally settled in accordance with
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the Rules of Conciliation and Arbitration of the International Chamber of
Commerce by three arbitrators designated in accordance with said Rules. This
Agreement shall be construed, and the rights of the parties determined, in
accordance with the French laws. Judgment upon the award rendered may be entered
in any court having jurisdiction thereof. The place of arbitration will be
Geneva.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
as of the day and year first written above.
CEPHALON, INC. [Genelco]
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By /s/ Frank Baldino, Jr. By /s/ [ILLEGIBLE]
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Frank Baldino, Jr.
President
ATTEST ATTEST
By /s/ Jack Lief By /s/ [ILLEGIBLE]
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Jack Lief
Secretary
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