Exhibit 10.11
INTELLECTUAL PROPERTY
ASSIGNMENT AND LICENSE AGREEMENT
This Intellectual
Property Assignment and License Agreement (this “
Agreement ”) is entered into on this 27 th
day of March, 2009 by and among Suzhou EZTripMart Business Services
Co., Ltd., a wholly foreign-owned enterprise established in the
People’s Republic of China (“ China ” or
“ PRC ) with its registered office at Suite 201, 1
Venture House, Modern Industrial Square Phase II, 333 Xing Pu Road,
Suzhou Industrial Park, Suzhou, China (“ EZT ”
or “ Grantor ”); and Shanghai EZTripMart Travel
Agency Co., Ltd., a limited liability company incorporated in the
PRC with its registered office at 13/F, 200 Taicang Road, Shanghai,
China (“ Company ” or “ Grantee
”) (Each of EZT and Company is herein referred to as a
“ Party ” and collective as the “
Parties ”).
RECITALS
1.
EZT engages, among other things, in
the business of research and development of computer software and
hardware technologies and the provision of related consulting
services as well as the provision of management consulting services
as set forth in more detail in its business license, and is the
owner of the certain Trademarks (defined below).
2.
Company engages, among other
things, in the business of travel products and services as set
forth in more detail in its business license, including the
operation of websites (the “ Websites ”) for
providing travel products and services (the “ Business
”), and holds a travel agency license and a Value-Added
Telecommunication Services License (collectively, “
Licenses ”).
3.
EZT wishes to assign or license (as
the case may be) to Company certain Software, Trademarks and Domain
Names to be used in Company’s operation of the Business in
accordance with, and subject to, the terms and conditions hereof,
and the Company desires to acquire such assignment or license from
EZT.
NOW THEREFORE
, in consideration of
the covenants and agreements contained herein, the Parties hereby
agree as follows:
1.
CERTAIN
DEFINITIONS
The following
capitalized terms shall have the following meanings for the
purposes of this Agreement:
“ Affiliate
” means, with respect to any Person, any other Person that
directly or indirectly owns a Controlling interest in, or exercises
Control over, such Person, or in or over which such Person directly
or indirectly owns a Controlling interest or exercises Control, or
that is otherwise directly or indirectly under common ownership or
Control with such Person.
“ Agreement
” has the meaning given to such term in the
preamble.
“ Assigned
Marks ” has the meaning given to such term in Section
2(a).
“ Business
” has the meaning given to such term in Recital 2.
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“CIETAC”
has the meaning given to
such term in Section 7(b).
“ Company
” or “ Grantee ” has the meaning given to
such term in the preamble.
“ Control
” having the power to direct or appoint the management of a
company and “Controlled” or “Controlling”
shall have correlative meanings.
“
Dispute” has the meaning given to such term in Section
7.
“Dispute
Notice” has the meaning given to such term
in Section 7(a).
“ Domain
Names ” means the domain names specifically set forth in
Schedule 3 hereto.
“
Documentation ” means the documentation for the
Software supplied by EZT to assist Company in the use of such
Software.
“ Force
Majeure ” means any event that is beyond the
Party’s reasonable control and cannot be prevented with
reasonable care, including, but not limited to, acts of
governments, acts of nature, fire, explosion, typhoon, flood,
earthquake, lightning, war, epidemic, strikes or riot.
However, any shortage of credit, capital or finance shall not
be regarded as an event of Force Majeure.
“ Governmental
Authority ” means any domestic or foreign court or other
governmental or regulatory authority, agency or other body with
jurisdiction over any of the assets or properties of any of the
Parties.
“ Grantee
” or “ Company ” has the meaning given to
such term in the preamble.
“ Grantor
” or “ EZT ” has the meaning given to such
term in the preamble.
“ IPRs
” has the meaning given to such term in Section
5(a).
“ Licenses
” has the meaning given to such term in Recital 2.
“ Licensed
Marks ” means those Trademarks other than the Assigned
Marks.
“ Losses
” has the meaning given to such term in Section
6(a).
“ Party
” or “ Parties ” has the meaning given to
such term in the preamble.
“ Person
” means an individual, corporation, joint venture,
partnership, enterprise, trust, unincorporated association, limited
liability company, government or any department or agency thereof,
or any other entity.
“ PRC
” or “ China ” has the meaning given to
such term in the preamble. For the purpose of this Agreement,
it shall not include the Hong Kong Special Administrative Region of
the PRC, the Macau Special Administrative Region of the PRC and
Taiwan.
“ Software
” means the executable code version of EZT’s software
supporting the Websites, as more specifically set for in
Schedule 1 hereto.
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“
Trademarks ” means (a) all applications to register
registrations and renewals of all trademarks, service marks, logos,
designs and Chinese character equivalents; and (b) all unregistered
brandnames, trademarks, service marks, certification marks, trade
dress, logos, designs, assumed names, Chinese character equivalents
for the aforesaid and other indications of origin, including domain
names, which items (a) and (b) are owned or controlled by EZT or an
Affiliate, and which are set forth on Schedule 2-1
hereto.
“ Websites
” has the meaning given to such term in Recital 2.
2.
ASSIGNMENT
(a)
Subject to the terms and conditions
set forth in this Agreement and any applicable PRC law, Grantor
hereby assigns to Grantee, without a grant fee, all applications to
register, registrations and renewals of the Trademarks (including
the Chinese character equivalents) as set forth on Schedule
2-2 and the Domain Names as set forth on Schedule 3
hereto (the “ Assigned Marks ”). Within
ten (10) days of the execution of this Agreement, the Parties shall
jointly apply to the competent PRC authorities to obtain approval
and registration of the assignment of the Assigned Marks from
Grantor to Grantee. Upon the termination of this Agreement,
the Assigned Marks shall be reverted and assigned to Grantor
without a grant fee.
(b)
Grantee hereby grants back to
Grantor an exclusive (except as to Grantee), royalty-free,
transferrable, irrevocable, worldwide license to use the Assigned
Marks in Grantor’s business, with the right to sublicense, to
the extent not contrary to applicable PRC laws and Grantee’s
ownership of the Assigned Marks during the term of this Agreement,
and shall apply to the relevant Governmental Authorities to obtain
necessary approval, registration or recording of such license (if
applicable).
(c)
Grantee acknowledges that the
registration of the Assigned Marks in the PRC is presently pending.
Grantee shall take commercially reasonable steps to secure
protection of and enforce the Assigned Marks to the fullest extent,
including, but not limited to, filing and prosecuting applications
of Assigned Marks in respect of the relevant services and/or goods,
maintaining the Assigned Marks by filing timely renewals, applying
for recordal of Grantor as licensee of the Assigned Marks where
necessary and taking all appropriate actions including legal
proceedings against any infringement, passing-off or unauthorized
use of the Assigned Marks in the PRC. Grantee shall keep
Grantor timely and fully advised of all actions undertaken pursuant
to this clause.
3.
LICENSE
(a)
Subject to the terms and conditions
set forth in this Agreement and any applicable PRC law, Grantor
hereby grants to Grantee, for a monthly royalty of the greater of
(i) 5% of revenue of Grantee or (ii) RMB10,000, payable within 15
days after the last day of each calendar month, a
non-exclusive, non-transferable, revocable, limited license to use
in China (i) the Licensed Marks and (ii) the Software and
Documentation solely for the purposes of carrying out the Business,
which permitted use includes the right of Grantee to use the
Licensed Mark in its registered business name or
tradenames.
(b)
Conditions of Use
.
(i)
Grantee shall cause the
products and services related to the Business to be labeled, sold
and offered under the Licensed Marks and the Licensed Marks
displayed and used in accordance with all applicable laws and
regulations of the PRC and in accordance with Grantor’s
policies and directions and shall otherwise conform to the same
quality level heretofore maintained by Grantor and standard
trademark indicia prescribed by Grantor or otherwise required by
law such as use of the symbols ®, ™ and SM
.
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(ii)
Grantee agrees that it
(i) shall not use, offer or permit the use of the Licensed Marks in
any manner that would tend to injure, demean or dilute the
reputation or the value of Grantor or Grantor’s brand, any
shareholders or the Affiliates of Grantor, or the Licensed Marks
and the goodwill associated therewith; (ii) shall not act in a
manner which is, or enter into any oral or written agreement with
terms which are, not in compliance with the requirements of this
Agreement or the legal requirements of any territory in which
Grantee is licensed hereby to use the Licensed Marks; and (iii)
shall not adopt or use any variation of the Licensed Marks or any
mark or word in any language likely to be similar or confusingly
similar to the Licensed Marks.
(iii)
Grantee shall not
modify, disassemble, reverse compile, or otherwise reverse engineer
any Software. Grantee shall not translate or make derivative work
of any Software or Documentation without Grantor’s prior
written consent. Any and all derivative works shall be owned
exclusively by Grantor and subject to the terms and conditions of
this Agreement. Grantee may not copy the Software, except for
(i) such copies or portions thereof as may be generated as part of
the normal operation of such Software, (ii) archival copies of such
Software as may be reasonably necessary to support Grantee’s
use thereof, and (iii) for disaster recovery purposes.
Grantee may make copies of the Documentation as Grantee
reasonably determines to be necessary to support Grantee’s
service providers and customers who access the Software.
Grantee may not otherwise copy or reproduce any of the
Documentation. Any such copy of the Software and the
Documentation shall be the property of Grantor and subject to the
terms and conditions of this Agreement.
(c)
Assignment and Transfer
. Unless express
prior written consent is given to such assignment by Grantor (which
consent may be withheld by Grantor in its sole dis
