Exhibit 10.3
LICENSING AGREEMENT
BY AND BETWEEN
EATWARE GLOBAL, INC.
AND
PACKITGREEN HOLDINGS, INC.
December 1, 2007
LICENSING AGREEMENT
EATware Global, Inc., a Hong Kong corporation
("EATware") with its principal offices and place of business at 23
rd Floor, Westin Center, 26 Hung To Road, Kwun Tong,
Hong Kong and: PackItGreen Holdings, Inc., a Nevada corporation
("PackItGreen") with its principal offices and place of business at
3420 Ocean Park Blvd, Suite 3000, Santa Monica, California
90405
This license agreement ("Agreement") is entered
into by and between EATware and PackItGreen as of the date first
set forth above.
BACKGROUND
A. EATware owns certain names, trademarks, patents,
equipment and procedures for the manufacture, distribution and
sales of organically sensitive, environmentally friendly and
biodegradable tableware, packaging and other cellulose based
products (the Product). EATware markets and distributes the
Product principally in the Far East and to a lesser extent in the
United States.
B. PackItGreen has a manufacturing and packaging
facility in Monticello, Mississippi (the Facility") for the purpose
of manufacturing and packaging biodegradable cellulose based
products.
C. EATware and PackItGreen desire for PackItGreen
to manufacture and package the Product at the Facility (and any
subsequently acquired facilities) and to distribute the Product for
sale in North America.
AGREEMENT
Based on the mutual promises set forth below and
other good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, EATware and PackItGreen hereby
agree as follows:
1. Grant of License.
1.1 Trade Secrets. Upon the terms and conditions
hereinafter set forth, EATware hereby grants to PackItGreen and
PackItGreen hereby accepts, an exclusive, non-transferable license
to use the Trade Secrets solely to produce the Product at the
Facility. PackItGreen may not use the Trade Secrets for any other
purpose. Without limiting the foregoing, PackItGreen may not use
the Trade Secrets to sell the Product outside the Territory and may
not use the Trade Secrets to sell any products within the Territory
following the expiration or earlier termination of this
agreement.
1.2 Trademarks. Upon the terms and conditions
hereinafter set forth, EATware hereby grants to PackItGreen, and
PackItGreen hereby accepts, an exclusive, non-transferable
sub-license to use the trademarks set forth on Exhibit A, attached
hereto (the "Trademarks"), solely in connection with the packaging,
promotion, sale, and distribution of the Product in North America
as set forth on Exhibit B, attached hereto (the "Territory"). All
packaging, advertising, labeling, or other uses of the Trademarks
shall be approved in writing by EATware before any use of such
Trademark, which approval shall not be unreasonably withheld,
conditioned, or delayed. PackItGreen may not use the Trademarks for
any other purpose including (without limitation) in connection with
the sale or promotion of any product other than the Product.
Without limiting the foregoing, PackItGreen may not sell the
Product or use the Trademarks outside the Territory and may not use
the Trademarks within the Territory following the expiration or
earlier termination of this Agreement.
1.3 Good Will. PackItGreen recognizes the value of
the good will associated with the Trademarks. PackItGreen agrees
that its use of the Trademarks shall inure to the benefit of
EATware.
1.4 Exclusive Appointment. Subject to the terms and
conditions of this Agreement, EATware hereby grants PackItGreen the
exclusive right to produce, package, and distribute the Product for
sale in the Territory. EATware will neither distribute nor grant
any other person or entity the right to manufacture or distribute
the Product in the Territory.
1.5 Expansion of Territory. The parties acknowledge
that they may in the future determine that it is in their mutual
benefit to expand the Territory to include other regions or states.
Such expansion may only occur if the parties agree in writing,
which agreement will be subject to each party's sole and absolute
discretion.
2. Product Quality Control.
2.1 The objectives of this Section 2 are to assure
that the physical and sensory characteristics of the Product
manufactured and packaged by PackItGreen will be essentially the
same as the Product produced by EATware and packaged by EATware in
its facilities in the Far East.
2.2 Information regarding the process conditions,
quality control procedures, equipment and materials that are
required for the Product will be provided by EATware (collectively,
the "Formula") as part of the Trade Secrets. PackItGreen
understands and agrees that changes in the Formula may be required
by EATware from time to time in order to attain such physical and
sensory characteristics.
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2.3 PackItGreen shall use all necessary ability,
know-how, methods, and means to produce, handle, package, and
store the Product strictly in accordance with the Formula. No
change in the Formula shall be made by PackItGreen without
EATware's prior written consent.
2.4 EATware shall have the right to inspect and
approve the Facility and equipment used by PackItGreen to produce,
handle, package, and store the Product, as well as any ingredients,
processing aids, and containers used in producing or packaging the
Product; and to test samples of the Product at the Facility.
Promptly following the date of this Agreement, EATware shall
have the obligation to send to the Facility qualified technical
persons employed by EATware for a reasonable period of time as
determined by mutual agreement between EATware and PackItGreen to
(a) communicate the Formula to PackItGreen, (b) train selected
persons employed by PackItGreen to use the Formula and the
machinery used in the production of the Product, and (c) test the
Product prior to the initial distribution to determine whether the
Product complies with the objectives set forth in Section 2.1.
EATware shall pay for any necessary technical assistance for the
first six months of production. For any additional technical
assistance requested by PackItGreen, PackItGreen shall pay all
travel and employee costs related to the assistance.
2.5 If EATware disapproves of the quality of the
Product being produced and/or packaged by PackItGreen, it shall so
notify PackItGreen in writing and the parties shall immediately
cooperate with each other in attempting to resolve such quality
problem. The first step shall be a meeting to be held within seven
(7) days of notification, between a senior production official from
each of EATware and PackItGreen. EATware may require PackItGreen to
and PackItGreen will immediately suspend shipment of the Product
prior to such meeting. EATware will provide PackItGreen with full
technical and analytical support to assist PackItGreen in
identifying the problem and determining the correct procedures for
resolving the same, including, if appropriate, blending with other
batches of the Product. If such efforts do not result in a prompt
resolution of the quality problem, EATware may require PackItGreen
to recall or destroy such Product, or use such Product in another
mutually agreeable manner. Upon notice to PackItGreen, EATware may,
at its expense, have a representative visit the Facility to suggest
changes and to perform testing of the Product. All costs related to
such suspension, recall and destruction shall be borne by
PackItGreen.
2.6 If the quality problem described in Subsection
2.5 is not corrected within ninety-days (90) following the date on
which EATware required PackItGreen to discontinue packaging and
shipping of the Product, then EATware shall have the option to
terminate this Agreement by giving PackItGreen notice of such
termination.
3. Royalties.
3.1 Royalties. EATware has waived the payment of
royalties in exchange for its participation in the ownership of
PackItGreen.
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4. Rights in Trade Secrets and Trademarks.
4.1 Trade Secrets and Trademarks. PackItGreen
hereby acknowledges EATware's right in the Trade Secrets and
Trademarks, and will not at any time during the term of this
Agreement or thereafter do or cause to be done any act or thing in
any way impairing or tending to impair such rights. PackItGreen
acknowledges and agrees that it will not, nor will it assist
another party to, dispute EATware's rights in the Trade Secrets and
Trademarks. PackItGreen acknowledges that its use of the Trade
Secrets and Trademarks licensed hereunder shall not create any
right, title, or interest in or to the Trade Secrets or Trademarks
licensed hereunder in PackItGreen. PackItGreen shall neither
sublicense nor authorize nor represent that it is empowered to
sublicense or authorize any other party to use the Trade Secrets or
Trademarks nor in any manner represent that it has any ownership or
sublicensing rights in the Trade Secrets or Trademarks. PackItGreen
agrees to assist EATware and execute such documents as EATware may
reasonably request to the extent necessary to protect any of
EATware's rights in the Trade Secrets and Trademarks.
4.2 Trademark Registration. PackItGreen shall
neither apply at any time anywhere in the world for any trademark
protection in its name for any of the Trademarks, nor file any
application or other document with any governmental authority or
take any other action which could affect or is inconsistent with
EATware's rights in the Trademarks, nor aid nor abet any third
party in doing so.
4.3 Notices. PackItGreen agrees that the Product or
Materials shall bear appropriate proprietary legends or notices as
specified by EATware from time to time.
4.5 Representations and Warranties. EATware
represents and warrants that (a) it has the right to use the Trade
Secrets and Trademarks and (b) it has the right to license the
Trade Secrets and the Trademarks to PackItGreen as provided under
this Agreement. EATware shall indemnify and hold PackItGreen and
its affiliates, successors, and assigns harmless from and against
any and all charges, actions, and proceedings (including
investigations) resulting from EATware's breach of such
representations and warranties.
5. Infringement.
5.1 Infringement By Third Parties. PackItGreen
shall notify EATware promptly in writing of any suspected
infringement or unauthorized use of the Trade Secrets or Trademarks
by third parties that may come to its attention.
5.2 Infringement By PackItGreen. PackItGreen shall
notify EATware promptly in writing of any and all allegations or
claims by others which may come to its attention that the use of
the Trade Secrets or Trademarks infringes or violates a patent,
copyright, trademark, or trade secret, or other proprietary right
of any third party, or violates or is contrary to any applicable
law, regulation, order, consent, or the like. EATware may, but is
not obligated to, procure for PackItGreen the right to continue to
use the matter which is the subject of the claim, or to modify the
same so that it becomes non-infringing. If EATware shall elect, in
its sole discretion, to undertake and conduct the defense of any
suit, action, or proceeding arising out of the use by PackItGreen
of the Trade Secrets or Trademarks, PackItGreen shall cooperate in
such defense provided EATware shall pay any out-of-pocket expenses
incurred by PackItGreen in connection therewith. No settlement of
any such claim or suit shall be made without the prior written
consent of EATware and PackItGreen.
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6. Compliance with Law.
6.1 Facility. PackItGreen represents and warrants
that the Facility and manufacturing practices comply with, and will
continue to comply with all applicable laws, ordinances,
regulations, and health and safety standards of all applicable
regulatory bodies. EATware represents and warrants that any
processing instructions, product formula, packaging instructions
and machinery furnished by it will comply with applicable federal,
state, and local laws, ordinances, regulations, and health and
safety standards.
6.2 Operations. Both EATware and PackItGreen shall
comply with all applicable rules and regulations of the DoC, and
any other regulatory agency that has jurisdiction over the Product
or the Facility.
6.3 Cooperation. The parties will cooperate with
each other to provide and retain any regulatory, taxation, or other
reports or information required by DoC, or any other regulatory
agency.
7. Confidentiality.
7.1 Access to Information. Each party acknowledges
that during the term of this Agreement it may have access to
nonpublic information about the existing or proposed business or
products ("Confidential Information") of the other party (the
"Disclosing Party"). Confidential Information includes, without
limitation, (i) information marked or otherwise designated by the
Disclosing Party as confidential, (ii) information that the
Disclosing Party does not designate as public information, and
(iii) information provided to the Disclosing Party by third parties
that it is obligated to keep confidential. Confidential Information
may be written, oral, embodied in products (including the Product),
or in other forms. Confidential Information does not include
information that is or becomes publicly known, other than as a
