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Exhibit
10.3
Dated
,
2007
UNILEVER
PLC
- and -
UNILEVER
N.V.
- and -
JOHNSONDIVERSEY,
INC.
MASTER SUB-LICENCE
AGREEMENT
IN RESPECT OF PROFESSIONAL
PRODUCTS
AGREED
FORM
CONTENTS
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Page |
| 1. |
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Interpretation |
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1 |
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| 2. |
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Grant of
Sub-Licence |
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10 |
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| 3. |
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Licensed
Products |
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13 |
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| 4. |
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Use Of
The Trade Marks and Formulation Rights |
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18 |
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| 5. |
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Quality
Control |
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19 |
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| 6. |
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Payment |
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21 |
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| 7. |
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Taxes |
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21 |
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| 8. |
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Records
and verification |
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22 |
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| 9. |
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Goodwill
and Conduct |
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23 |
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| 10. |
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Trade
Mark Filings |
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24 |
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| 11. |
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Liaison
Managers |
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24 |
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| 12. |
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Recordal |
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24 |
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| 13. |
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Indemnity |
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24 |
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| 14. |
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Infringement |
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25 |
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| 15. |
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Representations or Warranties |
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25 |
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| 16. |
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Term and
Termination |
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26 |
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| 17. |
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Effect of
Termination |
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28 |
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| 18. |
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Assignment |
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29 |
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| 19. |
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Confidentiality |
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30 |
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| 20. |
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Remedies
and Waivers |
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31 |
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| 21. |
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Notices |
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32 |
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| 22. |
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No Agency
or Partnership |
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33 |
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| 23. |
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Costs and
Expenses |
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33 |
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| 24. |
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Counterparts |
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33 |
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| 25. |
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Entire
Agreement |
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33 |
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| 26. |
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Invalidity |
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34 |
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| 27. |
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Further
Assurance |
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34 |
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| 28. |
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Third
Party Rights |
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34 |
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| 29. |
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Agent for
Service |
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34 |
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| 30. |
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Force
Majeure |
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35 |
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| 31. |
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Governing
Law |
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35 |
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| 32. |
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Jurisdiction |
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35 |
Schedules
Schedule 1 Products (By
Territory)
Schedule 2 Royalty Statement
Format
Schedule 3 Corporate Trade
Marks
Schedule 4 Operational
Protocol
Schedule 5 Standard Financial
Information Report
Schedule 6 Affiliates
Schedule 7 Form of Inter-Affiliate
Licence
Schedule 8 Shared Customers
Schedule 9 Non-Follow
Products
AGREED
FORM
THIS AGREEMENT is made
the day of
, 2007
BETWEEN:
| (1) |
UNILEVER PLC , a company incorporated in England and
Wales (registered number 41424) whose registered office is at Port
Sunlight, Wirral, Merseyside CH62 4UJ, United Kingdom, (“
PLC ”) and UNILEVER N.V. , a company
incorporated in The Netherlands whose corporate seat is in
Rotterdam and whose registered office is at Weena 455,
3013 A.L. Rotterdam, The Netherlands (“ NV
”, together with PLC: “ Licensor ”) for
themselves and on behalf of each Unilever Affiliate; |
AND
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(2)
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JOHNSONDIVERSEY, INC.
, a Delaware corporation whose principal place of business is at
8310 16 th
Street, Sturtevant,
Wisconsin, 53177-0902, USA ( “JohnsonDiversey” )
for itself and on behalf of each JD Affiliate.
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WHEREAS:
| (A) |
Licensor is the proprietor of a portfolio of trade marks,
patents and know-how relating to, and has extensive goodwill in and
a valuable and distinctive reputation which is associated with, the
Products. |
| (B) |
Licensor has granted licences of such trade marks, patents and
know-how to the Unilever Affiliate in each Territory in respect of
such Territory. |
| (C) |
It is agreed that the JD Affiliate in each Territory shall
manufacture (or have manufactured), and market the Products to
Customers in that Territory. |
| (D) |
Accordingly, Licensor has agreed to procure the grant by the
Unilever Affiliate in each Territory and JohnsonDiversey has agreed
to procure that the JD Affiliate in each Territory accept, a
sub-licence of the Trade Marks and Formulations Rights in that
Territory on the terms set out herein in each
Territory. |
NOW IT IS HEREBY AGREED as
follows:
| 1.1 |
In this Agreement unless otherwise specified: |
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| “Clawback Amount” |
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Means an amount equal to the relevant compensation amount paid
by any Unilever Affiliate to a JD Affiliate pursuant to the
Umbrella Agreement in respect of any termination pursuant to Clause
16.2(B)(i) minus two times the Margin Reduction. |
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| “Control” |
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Means legal or beneficial ownership or control (whether direct
or indirect) of more than 50% of the issued share capital, or the
right to direct or cause the direction of the general management
and policies, of the entity in question, but for the avoidance of
doubt neither Licensor nor any member of its Group (including the
Unilever Affiliates) shall for purposes of this Agreement be deemed
to Control JohnsonDiversey or any JD Affiliate. |
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| “Commencement Date” |
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Means 1 st January 2008. |
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| “Copyrights” |
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Means all copyrights and database rights (whether registered or
unregistered and including applications for the registration of any
such thing) and unregistered design rights, and all forms of
protection of a similar nature or having equivalent or similar
effect to any of these which may subsist anywhere in the
world. |
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| “Corporate Trade Marks” |
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Means the trade marks listed in Schedule 3. |
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| “Customers” |
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Means Professional Customers and Shared Customers. |
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| “De
Minimis Change” |
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Means a non-material change to artwork or labels of any
Products, such that following any such change the appearance of the
Product and the artwork and labels used on it continue to be
consistent in all respects with the Use Guidelines and the Product
Template. |
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| “Equivalent Consumer Product” |
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Means a consumer product (regardless of pack size) that is
promoted and sold under the same Product Trade Mark, using the same
formulation and for the same application as any Product (regardless
of size) in the same Territory. |
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| “EURIBOR” |
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Means the spot rate for one month deposits in Euros as reported
by the British Banking Association on its website on the date that
is the first day after the original due date for
payment. |
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| “Fiscal Year” |
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Means each fiscal year of JohnsonDiversey, being the 52 or 53
week period ending on the Friday occurring nearest December 31
st
and commencing on the
Saturday following the end of the preceding fiscal year of
JohnsonDiversey and “ Fiscal Quarter ” shall be
defined accordingly. |
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| “Formulation Rights” |
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Means all Patents and Know-How (including any Improvement
Know-How supplied from time to time) owned by Licensor from time to
time and relevant to any of the Products in the relevant
Territory. |
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| “Gross Profit” |
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Means Net Proceeds of Sale LESS costs of goods sold in
accordance with United States GAAP. |
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| “Group” |
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In relation to Licensor, means the Licensor’s Group and
in relation to JohnsonDiversey, means the JohnsonDiversey Group in
each case from time to time. |
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| “Intellectual Property” |
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Means all intellectual property, including, without limitation,
Patents, Trade Mark Rights, Know-How and Copyrights. |
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| “Improvement Know-How” |
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Shall have the meaning given to it in Clause 3.7. |
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| “Inter-Affiliate Licence” |
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Means the sub-licence agreement in the form attached as
Schedule 7. |
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| “JD
Affiliate” |
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Means, for any Territory, the member of the JohnsonDiversey
Group specified in relation to such Territory in Schedule 6 or any
successor in business to such member of the JohnsonDiversey
Group. |
2
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| “JohnsonDiversey Group” |
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Means any company in which JohnsonDiversey directly or
indirectly owns or controls the voting rights attaching to not less
than 50% of the issued share capital, or controls directly or
indirectly the appointment of a majority of the board of
management. |
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| “Know-How” |
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Means all proprietary know-how and trade secrets held in any
form, including all such rights in product specifications,
processes, formulas, product designs, plans, ideas, concepts,
inventions, manufacturing, engineering and other manuals and
drawings, technical information data, research records and all
other confidential or proprietary technical and business
information. |
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| “Know-How Documents” |
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Means all documents and other things in or on which any
information regarding any of the Technical Specifications,
Formulation Rights or Improvement Know-How is recorded. |
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| “Licensor’s Group” |
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Means PLC, NV and any company in which either or both together
directly or indirectly owns or controls the voting rights attaching
to not less than 50% of the issued share capital, or controls
directly or indirectly the appointment of a majority of the board
of management. |
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| “Losses” |
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Has the meaning given to the term in Clause 13.1. |
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| “Margin Reduction” |
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Means the amount by which any JD Affiliate’s annual Gross
Profit, in relation to any Product Trade Marks or Products (or
replacements therefor) sold by Licensor, would be less under a
Replacement Agreement (after taking into account any royalty that
is to be paid under such Replacement Agreement but subject to a cap
of 6% of Net Proceeds of Sale), assuming that all other factors
would be identical to the previous Fiscal Year, than its Gross
Profit would have been under the terms of this Agreement (in
relation to the same Product Trade Marks or Products (or
replacements therefor)), and shall be zero if the JD
Affiliate’s annual Gross Profit would be the same or would
increase. |
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| “Master Sales Agency Agreement” |
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Means the Amended and Restated Master Sales Agency Agreement of
even date herewith between the Parties in relation to the sale by
members of the JohnsonDiversey Group as agent for and on behalf of
members of the Licensor’s Group of products in Professional
Packs under trade marks of the Licensor’s Group to
Professional Customers in certain territories other than the
Territories. |
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| “Materials” |
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Means all materials and things whatsoever in or on which any of
the Trade Marks are, or are proposed by JohnsonDiversey to be, used
or incorporated (including, without limitation, all stationery,
business cards, packaging, labelling, signage and advertising and
promotional material) in any format or medium (including, without
limitation, all printed, electronic, magnetic, optical, audio,
internet or other media). |
3
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| “Net Proceeds of Sale” |
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Means: |
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(A) |
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in relation
to a bona fide arm’s length commercial transaction, the
aggregate amount actually invoiced in respect of sales of the
Products (excluding amounts in respect of VAT, sales tax, or duty
thereon whether segregated on the invoices or not) less credit
notes and refunds given for goods returned or destroyed, temporary
price reductions, permanent price reductions, rebates,
“prebates”, listing fees and display allowances (in
each such case (i) excluding amounts in respect of VAT, sales tax,
or duty thereon whether segregated on the invoices or not and (ii)
only as applied in respect of the Products); and |
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(B) |
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in relation
to any sale or other disposal of any Products otherwise than in any
arm’s length transaction (including, without limiting the
generality of the foregoing, any transaction where Products are
sold as part of a bundle of products and where (i) discounts are
not applied universally against normal values across all products
forming part of the bundle; or (ii) the products forming part of
the bundle are not priced individually on an SKU basis, which shall
not be considered as arms length), the higher of (a) the usual
value of sales of (and the provision of after-sales services and
customer care in respect of) all of the Products so sold or
disposed of (or, if there is no usual selling price, the fair
market value thereof) (excluding amounts in respect of VAT, sales
tax, or duty thereon whether segregated on the invoices or not);
and (b) the aggregate gross amount invoiced (after the deductions
referred to in sub-paragraph (A) above) in respect of the Products
(in each such case excluding amounts in respect of VAT, sales tax,
or duty thereon whether segregated on the invoices or
not), |
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provided that for the purposes of sub-paragraph (B) above,
Products either (i) used for inspections required under this
Agreement or other internal testing; or (ii) given to others for
less than fair value as promotional items in the ordinary course of
business and up to a reasonable level (considering the nature of
the business and consistent with past practice in the relevant
Territory), shall in each case not be considered sold or otherwise
disposed. |
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| “Non-Follow Products” |
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Means those Products listed in Schedule 9 (as amended from time
to time) that are manufactured and packed in accordance with a
Technical Specification of the JohnsonDiversey Group. |
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| “Notice” |
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Means a notice, notification or other communication given or
served in accordance with Clause 21 and “ Notify
” shall be construed accordingly. |
4
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| “Operational Protocol” |
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Means the written directions that regulate the operational
procedures and responsibilities of both Parties, the JD Affiliates
and the Unilever Affiliates under this Agreement, as amended by
agreement in writing between Licensor and JohnsonDiversey from time
to time, the initial version of which is attached as Schedule 4 to
this Agreement; provided, that, in the event of any conflict
between such Operational Protocol and this Agreement, this
Agreement shall prevail. |
|
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| “Packaging Rights” |
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Means all copyrights and design rights owned by Licensor or
Unilever Affiliates from time to time and subsisting in any of the
Trade Marks, packaging designs or other Materials used by JD
Affiliates pursuant to approval given in the Use Guidelines or
expressly by Licensor. |
|
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| “Parties” |
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Means Licensor and JohnsonDiversey and “ Party
” shall be construed accordingly. |
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| “Patents” |
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Means all patents, industrial and utility models and registered
designs, including applications, provisional applications,
reissues, divisions, continuations, continuations-in part,
renewals, re-examinations and extensions of the foregoing, and all
forms of protection of a similar nature or having equivalent or
similar effect to any of these that may subsist anywhere in the
world. |
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| “Proceedings” |
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Means any proceeding, suit or action arising out of or in
connection with this Agreement. |
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| “Products” |
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Means the products listed by Territory in Schedule 1 (as
amended from time to time in accordance with this Agreement and the
Operational Protocol) marketed and sold under the corresponding
Product Trade Marks in a Professional Pack and “
Product ” shall mean any one of them. |
|
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| “Product Group” |
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Means a group of Products, each of which uses the same formula
(other than with respect to colour or fragrance), is for the same
application and is sold under the same Product Trade
Mark. |
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| “Product Template” |
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Means the template and minimum requirements specified by
Licensor from time to time in respect of the appearance of each
Product and the artwork and labels related thereto. |
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| “Product Trade Marks” |
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Means, in relation to each Product, the marks, logos and brands
of the Licensor’s Group in the relevant Territory by
reference to which that Product is promoted or sold by the
JohnsonDiversey Group in accordance with this Agreement, whether or
not they are the subject of trade mark registrations, either alone
or in combination with one another. |
|
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| “Professional Customer” |
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Means (i) any Professional End User and (ii) any Professional
Reseller. |
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| “Professional End User” |
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Means any commercial, institutional or industrial end-user of
Professional Products. |
5
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| “Professional Pack” |
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Means a pack or container which is: |
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(A) |
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within the
specified professional pack size range for the relevant Product or
Shared Customer Product in the relevant Territory, as set out in
Schedule 1 (as amended from time to time in accordance with this
Agreement) or which is otherwise approved by Licensor for use in
connection with a Product in accordance with and subject to Clause
3.16, and |
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(B) |
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marked as
“professional” or otherwise distinguished as part of a
dedicated range of Professional Products for Professional End
Users. |
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| “Professional Products” |
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Means any products intended for use by or formulated or
packaged specifically for Professional End Users (including,
without limitation, products marked as “professional”
or otherwise distinguished as part of a dedicated range of
Professional Products for Professional End Users). |
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| “Professional Reseller” |
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Means:- |
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(A)
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any
wholesaler or distributor (i) who purchases (or who becomes a
purchaser of) Products exclusively for the purpose of resale,
either directly or indirectly, to Professional End Users and (a)
whose shelf space across all its outlets is 95% (ninety five
percent) or more devoted to Professional Products; or (b) whose
sales (by value) are 95% (ninety five percent) or more derived from
sales of Professional Products; or (c) whose sales (by value) are
95% (ninety five percent) or more derived from sales to
Professional End Users; and |
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(B)
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any
“cash and carry” outlet or similar reseller (i) who
purchases (or who becomes a purchaser of) Products exclusively for
the purpose of resale, either directly or indirectly, to
Professional End Users and (a) whose shelf space across all its
outlets is 95% (ninety five percent) or more devoted to
Professional Products; or (b) whose sales (by value) are 95%
(ninety five percent) or more derived from sales of Professional
Products. |
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| “Replacement Agreement” |
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Has the meaning given to it in Clause 16.9. |
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| “Restricted Sales” |
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Means any sale of any Product by JohnsonDiversey or any member
of the JohnsonDiversey Group which is prohibited by or which would
otherwise violate the Brand Licence Agreement dated 3 rd May 2002 between JohnsonDiversey and
S.C. Johnson & Sons, Inc (as amended from time to time) because
it would involve the sale of certain restricted products to certain
restricted customers under such agreement. |
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| “Royalty” |
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Has the meaning given to it in Clause 6.1. |
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| “Service Document” |
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Means any writ, summons, order, judgement or other document
relating to or in connection with any Proceedings. |
6
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| “Shared Customer” |
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Means any wholesaler, distributor, “cash and carry
outlet”, retailer or similar reseller (i) who purchases
Products exclusively for the purpose of resale, either directly or
indirectly, to Professional End Users; but (ii) who also offers
consumer products for sale in the same facilities or outlets to
consumers, and (a) whose shelf space across all its outlets is 5%
(five per cent) or more devoted to Professional Products; or (b)
whose sales (by value) are 5% (five per cent.) or more derived from
sales of Professional Products; or (c) whose sales (by value) are
5% (five per cent.) or more derived from sales to Professional End
Users. For the avoidance of doubt, the Customers listed in Schedule
8 to this Agreement are agreed by the parties hereto to be Shared
Customers as at the Commencement Date. |
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| “Shared Customer Product” |
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Means those Products identified as such in Schedule
1. |
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| “Standard Financial Information
Report” |
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Means the standard report format for reporting financial
information as set out in Schedule 5. |
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| “Technical Specifications” |
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Means the formulae, specifications, manufacturing processes and
other requirements of (i) the Licensor Group in relation to
Products (other than Non-Follow Products), as provided to
JohnsonDiversey by or on behalf of Licensor and as amended from
time to time by Licensor pursuant to Clause 3.2, and (ii) of the
JohnsonDiversey Group in relation to Non-Follow Products, as
approved by Licensor pursuant to Clause 3.1. |
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| “Term” |
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Means the period beginning on the Commencement Date and ending
on the tenth (10 th )
anniversary of the Commencement Date, unless terminated earlier in
accordance with Clause 16. |
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| “Territories” |
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Means the countries listed in Schedule 1 (and “
Territory ” means any one of them). |
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| “Trade Marks” |
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Means the Product Trade Marks and the Corporate Trade Marks and
“ Trade Mark ” means any one of
them. |
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| “Trade Mark Rights” |
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Means trademarks, service marks, proprietary rights in trade
names, trade dress, domain names, labels, logos, slogans and all
other devices used to identify any product, service, business or
company whether registered, unregistered or at common law, and any
applications for registration or registrations thereof and all
forms of protection of a similar nature or having equivalent or
similar effect to any of these that may subsist anywhere in the
world. |
|
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| “Umbrella Agreement” |
|
Means the Umbrella Agreement of even date herewith between the
Parties in relation to the arrangements throughout the world for
the sale by members of the JohnsonDiversey Group of products under
trade marks of the Licensor’s Group to Customers, whether as
licensees pursuant to this Agreement or as agents or distributors
under any other agreement between the Parties. |
|
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| “Unilever Affiliate” |
|
Means, for any Territory, the member of the Licensor’s
Group specified in relation to such Territory in Schedule 6 or any
successor in business to such member of the Licensor’s
Group; |
7
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| “Use Guidelines” |
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Means any guidelines to regulate the use of the Trade Marks as
may be provided in writing to JohnsonDiversey by Licensor from time
to time. |
|
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| “VAT” |
|
Means in relation to any jurisdiction within the European
Community, the tax imposed by the Sixth Council Directive of the
European Communities and any national legislation implementing that
directive together with legislation supplemental thereto and, in
relation to any other jurisdiction, the equivalent tax (if any) in
that jurisdiction. |
| 1.2 |
In construing this Agreement, unless otherwise
specified: |
| |
(A) |
references to Clauses and Schedules are to clauses of, and
schedules to, this Agreement; |
| |
(B) |
use of any gender includes the other gender; |
| |
(C) |
references to a “ person ” shall be
construed so as to include any individual, firm, company or other
body corporate, government, state or agency of a state, local or
municipal authority or government body or any joint venture,
association or partnership (whether or not having separate legal
personality); |
| |
(D) |
a reference to any statute or statutory provision shall be
construed as a reference to the same as it may have been, or may
from time to time be, amended, modified or re-enacted; |
| |
(E) |
any reference to a “ day ” (including within
the phrase “ Business Day ”) shall mean a period
of 24 hours running from midnight to midnight and to a “
Business Day ” shall be to any day (other than a
Saturday or Sunday) on which banks are generally open for business
in any relevant Territory; |
| |
(F) |
references to times are to London times; |
| |
(G) |
references to “indemnifying” any person against any
circumstance include indemnifying and keeping him harmless, on an
after tax basis, from all actions, claims and proceedings from time
to time made against him and all loss, damage, payments, costs or
expenses suffered made or incurred by him as a consequence of that
circumstance that are properly recoverable under English
law; |
| |
(H) |
a reference to any other document referred to in this Agreement
is a reference to that other document as amended, varied, novated
or supplemented (other than in breach of the provisions of this
Agreement) at any time; |
| |
(I) |
headings and titles are for convenience only and do not affect
the interpretation of this Agreement; |
| |
(J) |
a reference to any English legal term for any action, remedy,
method of judicial proceeding, legal document, legal status, court,
official or any legal concept or thing shall in respect of any
jurisdiction other than England be treated as a reference to any
analogous term in that jurisdiction; |
8
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(K) |
the rule known as the ejusdem generis rule shall not
apply and accordingly general words introduced by the word
“other” shall not be given a restrictive meaning by
reason of the fact that they are preceded by words indicating a
particular class of acts, matters or things; |
| |
(L) |
general words shall not be given a restrictive meaning by
reason of the fact that they are followed by particular examples
intended to be embraced by the general words; and |
| |
(M) |
references to currencies means the legal currency in its
respective jurisdiction and, in particular, “ Dollars
” means United States dollars, “ Euro ”
means euros issued by any of the participating member states of the
European Union, and “ Sterling ” means pounds
sterling issued by the United Kingdom. |
| 1.3 |
The Schedules form part of this Agreement and shall have the
same force and effect as if expressly set out in the body of this
Agreement, and any reference to this Agreement shall include the
Schedules. |
| 1.4 |
Licensor is entering into this Agreement for itself and as
agent for each Unilever Affiliate and JohnsonDiversey is entering
into this Agreement for itself and as agent for each JD
Affiliate. |
| 1.5 |
Where in this Agreement a Unilever Affiliate or a JD Affiliate
is expressed to have an obligation or is given a right, the
expression of that obligation or that right shall be construed as
the Licensor or JohnsonDiversey (as the case may be) agreeing on
behalf of the relevant Unilever Affiliate or JD Affiliate to assume
such obligation or receive or exercise such right. |
| 1.6 |
Where in this Agreement Licensor or JohnsonDiversey assumes an
obligation or is given a right, the expression of that obligation
or that right shall be construed as Licensor or JohnsonDiversey (as
the case may be) agreeing on behalf of itself and each member of
its Group to assume such obligation or receive or exercise such
right. |
| 1.7 |
Notwithstanding any other provisions of this
Agreement: |
| |
(A) |
the Licensor shall procure, as regards any Unilever Affiliate
and its Territory, that such Unilever Affiliate enters into an
Inter-Affiliate Licence and complies with its obligations under
this Agreement; and |
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(B) |
JohnsonDiversey shall procure, as regards any JD Affiliate and
its Territory, that such JD Affiliate enters into an
Inter-Affiliate Licence and complies with its obligations under
this Agreement; |
| |
(C) |
the only members of the Licensor’s Group (including any
Unilever Affiliate) which may take steps to enforce any or all
rights under this Agreement or any Inter-Affiliate Licence are PLC
and NV, either or both of which (in their discretion) are hereby
appointed as agents of the relevant member of the Licensor’s
Group to have sole control of all Proceedings involving that member
of the Licensor’s Group; |
| |
(D) |
the only member of the JohnsonDiversey Group (including any JD
Affiliate) which may take steps to enforce any or all rights under
this Agreement or any Inter-Affiliate Licence is JohnsonDiversey,
which is hereby appointed as agent of the relevant member of the
JohnsonDiversey Group to have sole control of all Proceedings
involving that member of the JohnsonDiversey Group; |
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(E) |
the Licensor undertakes that it shall not bring Proceedings or
any proceedings, suit or action arising out of or in connection
with any Inter-Affiliate Licence against any member of the
JohnsonDiversey Group (including any JD Affiliate) other than
JohnsonDiversey and shall procure that no other member of the
Licensor’s Group brings Proceedings against any member of the
JohnsonDiversey Group; |
| |
(F) |
JohnsonDiversey undertakes that it shall not bring Proceedings
or any proceedings, suit or action arising out of or in connection
with any Inter-Affiliate Licence against any member of the
Licensor’s Group (including any Unilever Affiliate) other
than the Licensor and shall procure that no other member of the
JohnsonDiversey Group brings Proceedings against any member of the
Licensor’s Group; and |
| |
(G) |
when bringing a claim, or enforcing any rights under this
Agreement or any Inter-Affiliate Licence, the Losses of each member
of the Licensor’s Group including any Unilever Affiliate (in
respect of the Licensor) or the Losses of each member of the
JohnsonDiversey Group including any JD Affiliate (in respect of
JohnsonDiversey) incurred in connection with or in relation to this
Agreement shall be deemed to be the Losses of Licensor or
JohnsonDiversey as applicable. |
| 2.1 |
In consideration of JohnsonDiversey’s and the JD
Affiliates’ obligations under this Agreement, Licensor shall
procure that the Unilever Affiliate in each Territory shall grant
on the terms of the agreed form Inter-Affiliate Licence set out in
Schedule 10 to the respective JD Affiliate in such Territory for
its benefit and the benefit of its permitted
sub-licensees: |
| |
(A) |
an exclusive licence to use the relevant Product Trade Marks
(in accordance with the Use Guidelines) in relation to each
corresponding Product (manufactured and packed in accordance with
the corresponding Technical Specifications) in the corresponding
Territory for sale to Professional Customers in such
Territory; |
| |
(B) |
a non-exclusive licence to use the relevant Product Trade Marks
(in accordance with the Use Guidelines) in relation to each
corresponding Shared Customer Product (manufactured and packed in
accordance with the corresponding Technical Specifications) in the
corresponding Territory for sale to Shared Customers in such
Territory; |
| |
(C) |
a non-exclusive licence of the relevant Formulation Rights and
Packaging Rights in the corresponding Territory (i) to use,
keep, make, produce for sale, offer and import for sale and sell,
and (ii) subject to Clause 2.2. to have produced for sale, and
have made, (in each case) the corresponding Products, manufactured
and packed in accordance with the corresponding Technical
Specifications and under the corresponding Product Trade Marks, in
the corresponding Territory, for sale to Customers in such
Territory; and |
| |
(D) |
a non-exclusive licence to use the Corporate Trade Marks (in
accordance with the Use Guidelines) on the packaging of Products
(manufactured and packed in accordance with the corresponding
Technical Specifications) and Materials for sale to Customers in
such Territory. |
| 2.2 |
To the extent that it is necessary to facilitate or allow JD
Affiliates to procure the manufacture or co-packing of Products by
third parties (other than members of the JohnsonDiversey Group) but
for no other purpose, each JD Affiliate shall be entitled to
sub-license its rights under this Agreement to, and (for the
avoidance of doubt) have made or co-packed, any Products by, any
such third party provided it obtains the express prior written
consent of the Licensor to that sub-licence to that third party for
that activity (which consent shall not be unreasonably withheld or
delayed); provided further that JD Affiliates shall procure that
each such third party sub-licensee shall agree to maintain
information received in connection with such arrangements in
confidence to the same extent JohnsonDiversey and the JD Affiliates
are required under this Agreement and to comply with each and every
other relevant term of this Agreement as if it were a Party (in
JohnsonDiversey’s place). |
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Licensor shall be deemed
to have consented to a JD Affiliate having a Product made or
co-packed by a third party supplier (and to any sub-licensing of
its rights under this Agreement by such JD Affiliate for such
purpose) where as of the Commencement Date that supplier
(a) makes an equivalent product for Licensor or any member of
Licensor’s Group to the same Technical Specification and
under the same Formulation Rights as that Product, or
(b) makes the same Product (ignoring for these purposes only
the pack size of the Product) for such JD Affiliate.
|
| 2.3 |
Except as expressly provided in Clause 2.1, nothing in this
Agreement shall operate to grant JohnsonDiversey or any JD
Affiliate or any other person, and neither JohnsonDiversey any JD
Affiliate nor any other person shall obtain, any rights in or in
relation to any of the Trade Marks or the Formulation Rights or the
Packaging Rights or (other than in respect of the Non-Follow
Products) the Technical Specifications. |
| 2.4 |
The Parties, the JD Affiliates and the Unilever Affiliates
shall each comply in all material respects with the Operational
Protocol in the performance of its obligations under this
Agreement, provided that if there is any inconsistency between the
terms of this Agreement and the Operational Protocol, the terms of
this Agreement shall prevail. |
| 2.5 |
Any use of any of the Trade Marks by any member of
JohnsonDiversey’s Group (or any other sub-licensee of
JohnsonDiversey) shall be deemed use by the JD Affiliates for the
purposes of this Agreement (and, for the avoidance of doubt, any
action or omission which would be, or would contribute to, a breach
if committed or omitted by any JD Affiliate shall be treated as if
so committed or omitted by such JD Affiliate). |
| 2.6 |
JohnsonDiversey shall procure that each JD Affiliate, each
sub-licensed member of the JohnsonDiversey Group and each third
party sub-licensee from time to time complies with each and all of
the terms of this Agreement as if it were a party. |
| 2.7 |
For the avoidance of doubt but subject to Clauses 2.8 and 2.9,
the exclusivity of the licence granted in Clause 2.1(A) shall not
affect the right of Licensor (and any other member of the
Licensor’s Group, including any Unilever Affiliate) to use
and license the Product Trade Marks in the Territories for any
product (other than a Professional Product) including, without
limitation, a product (other than a Professional Product) that is
equivalent to any Product (irrespective of the pack size of such
equivalent product). |
| 2.8 |
Subject as provided below, neither Licensor nor any member of
Licensor’s Group (including any Unilever Affiliate) shall
sell or offer for sale: |
| |
(A) |
to any Shared Customer in any Territory, (i) any
Professional Product (irrespective of pack size) that is
(a) under any Product Trade Mark that is used in relation to
any Product in such Territory and (b) equivalent to any
Product (irrespective of pack size) in such Territory, or
(ii) any product under any Product Trade Mark in a pack size
that is different (excluding multi-packs) to those sold or offered
for sale to customers other than Shared Customers in the same
Territory; or |
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(B) |
to any Professional Customer in any Territory, any Professional
Product (irrespective of pack size) that is (a) under any
Product Trade Mark that is used in relation to any Product in such
Territory and (b) is equivalent to any Product (irrespective
of pack size) in such Territory. |
Notwithstanding the
foregoing, nothing in this Agreement or in any Inter-Affiliate
Licence shall prevent or restrict Unilever or any Unilever
Affiliate from manufacturing, distributing, marketing, promoting or
selling, whether directly or indirectly, a Product to a Customer if
and to the extent that the sale of such Product to such Customer by
any member of the JohnsonDiversey Group would constitute a
Restricted Sale.
| 2.9 |
The provisions of this Clause 2.9 shall only apply with respect
to (i) any Territory in which the JD Affiliate has not also
been appointed as a distributor of Unilever consumer products
pursuant to the Umbrella Agreement as at the Commencement Date (and
with respect to any such Territory, such provisions shall apply as
from the Commencement Date) and (ii) any Territory in which
the JD Affiliate subsequently ceases to be a distributor of
Unilever consumer products pursuant to the Umbrella Agreement
whilst this Agreement continues in effect (and with respect to any
such Territory, such provisions shall apply only from the date of
such cessation) (any such Territory as is referred to in
(i) and (ii) above being a “Non-Distribution
Territory”). The date on which the provisions of this Clause
2.9 first become applicable with respect to any Non-Distribution
Territory shall be the “Trigger Date” for such
Non-Distribution Territory. |
| |
(A) |
With respect to each such Non-Distribution Territory from and
after the relevant Trigger Date, until this Agreement terminates in
its entirety or, until this Agreement terminates with respect to
such Non-Distribution Territory or a particular Product in that
Non-Distribution Territory, whichever is earlier, |
| |
(i) |
Licensor will not, and will procure that no member of the
Licensor’s Group (including any Unilever Affiliate) shall
appoint or engage any person in such Non-Distribution Territory as
its licensee, distributor, wholesaler or other reseller of or agent
for the promotion or sale of Equivalent Consumer Products
(regardless of pack size) to Professional Customers in such
Non-Distribution Territory, other than the relevant JDI Affiliate
pursuant to or as otherwise permitted by this
Agreement; |
| |
(ii) |
Licensor confirms that neither it nor any member of the
Licensor’s Group (including any Unilever Affiliate) shall
specifically target or actively seek Professional Customers for the
sale of Equivalent Consumer Products (regardless of pack size) in
such Non-Distribution Territory. |
| |
(iii) |
Subject always as provided in Clauses 2.9 (A) (i) and
(ii), neither Licensor nor any member of the Licensor’s Group
(including any Unilever Affiliate) shall otherwise be prevented or
restricted in any way by this Agreement from promoting or selling
Equivalent Consumer Products to: |
| |
(a) |
Professional Customers in any Non-Distribution
Territory; |
| |
(b) |
Professional Customers in any territory other than a
Non-Distribution Territory. |
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(B) |
Notwithstanding anything in this Agreement but subject to the
Umbrella Agreement, neither Licensor nor any member of the
Licensor’s Group (including any Unilever Affiliate) shall
have any liability to JohnsonDiversey or any of the JD Affiliates
for the promotion or sale of Equivalent Consumer Products to
Professional Customers in any such Non-Distribution
Territory: |
| |
(i) |
by any third party over which neither Licensor nor any of the
Unilever Affiliates has any control; |
| |
(ii) |
by any licensee, agent, distributor, wholesaler or other
reseller, other than, in each case, any such person that is either
a Professional Reseller or a licensee or agent appointed or engaged
by any member of the Licensor’s Group (including any Unilever
Affiliate) after the Trigger Date for the promotion or sale of
Equivalent Consumer Products regardless of pack size) in breach of
Clause 2.9 (A) (i); |
| |
(iii) |
by any licensee, agent, distributor, wholesaler or other
reseller of any member of the Licensor’s Group, or by any
member of the Licensor’s Group, (including in each case any
Unilever Affiliate) where any such sale was not solicited by it or
where it has used reasonable endeavours to procure that such person
should not so promote or sell Equivalent Consumer Products to
Professional Customers in such Non-Distribution
Territory; |
| |
(iv) |
by any licensee, agent, distributor, wholesaler or other
reseller of Licensor or any member of the Licensor’s Group
(including any Unilever Affiliate) to whom Licensor or any member
of the Licensor’s Group (including any Unilever Affiliate)
was selling such Equivalent Consumer Products at any time during
the 12 month period prior to the Trigger Date. |
| 3.1 |
Each JD Affiliate undertakes only to use the Technical
Specifications for the manufacture of the corresponding Products
and shall ensure that the Products conform to Technical
Specifications at all times. The manufacture and/or sale of any
Non-Follow Product in any Territory, and the Technical
Specifications relating thereto, shall require and be subject to
the prior written approval of the Licensor. Licensor shall be
deemed to have approved the Non-Follow Products (and Technical
Specifications relating thereto) listed in Schedule 9 for sale in
each Territory specified therein. |
| 3.2 |
Licensor shall from time to time be entitled to change the
Technical Specifications, the Product Template and/or Product Trade
Marks applicable to each of the Products in any Territory, provided
that the Technical Specifications, the Product Template and/or
Product Trade Marks, remain consistent (allowing for the different
requirements of target customers, including without limitation with
regard to formulation) with the equivalent requirements it applies
in respect of those products sold by Licensor or any member of the
Licensor’s Group (including any Unilever Affiliate) to its
customers, unless otherwise agreed by JohnsonDiversey. |
| 3.3 |
Where
Licensor shall direct a change to the Technical Specifications, the
Product Template and/or the Product Trade Marks under Clause 3.2,
or to the pack size of any Products as a consequence of any change
in accordance with Clause 3.16 to the Professional Pack size range
specified in Schedule 1 in any Territory, any such change shall be
implemented by each JD Affiliate by the date specified by Licensor
in the notice to JohnsonDiversey directing such change, save that
any change required to the pack size of any Products as a
consequence of any change in accordance with Clause 3.16 to the
Professional Pack size range specified in Schedule 1 shall be
implemented by the relevant JD Affiliates as soon as reasonably
practicable and in any event, in relation to any Shared Customer
Products, within a period of twelve (12) months, and in
relation to any other Products, within a period of twenty four
(24) months after the date of such notice (the
“Transitional Period”).
|
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Save in relation to any
change required to the pack size of any Products as a consequence
of any change in accordance with Clause 3.16 to the Professional
Pack size range, in respect of which the relevant Transitional
Period shall apply, Licensor shall give as much notice to
JohnsonDiversey of any change as is reasonably practicable (having
regard to the nature of the change, the requirements imposed by any
applicable laws and regulations or industry guidelines or standards
and JohnsonDiversey’s and Licensor’s respective normal
development schedules for products and packaging), but in no event
will such notice be delivered less than 6 months prior to such
change being effective except to the extent required by applicable
law or regulation or industry guidelines or standards.
|
| 3.4 |
If JohnsonDiversey wishes to dispute the reason for a change
under Clauses 3.2 or 3.16 or the timing of a change by Licensor
under Clause 3.3 and the Liaison Managers of the parties have been
unable to resolve the situation within thirty (30) days, then
JohnsonDiversey may refer the matter in writing to Licensor’s
Senior Vice President, Marketing Operations, HPC Europe (or
equivalent position at the time) stating the reasons for its
objection. The Parties agree to operate this escalation procedure
in good faith. JohnsonDiversey agrees not to invoke the procedure
more frequently than is reasonably necessary. The decision of
Licensor’s Global Homecare Category Director (or equivalent
position at the time) shall be final. |
| 3.5 |
The JD Affiliates shall bear the cost of all changes, whether
or not directed by Licensor pursuant to Clause 3.2 or 3.16, to the
Technical Specifications, the Product Template, the Product Trade
Marks and/or the pack size of, or otherwise in relation to, the
Products and/or their labels or packaging, provided that such
changes are required to comply with: |
| |
(A) |
applicable law or regulation; or |
| |
(B) |
industry standards, regulations, codes of practice and
guidance; or |
| |
(C) |
decisions and recommendations of any relevant court, tribunal,
regulatory body or ombudsman from time to time relating to the
manufacturing, packaging, supply and sale of the Products;
or |
| |
(D) |
any change (including without limitation to pack size) made by
or following a request by JohnsonDiversey or any JD Affiliate in
accordance with this Agreement, including without limitation
pursuant to Clause 3.8 but excluding changes made pursuant to
Clauses 3.2 and 3.16. |
| 3.6 |
Where the
Licensor requires any JD Affiliate to make a change to the
Technical Specifications, the Product Template, the Product Trade
Marks and/or the pack size of, or otherwise in relation to, one or
more Products and/or their labels or packaging pursuant to Clause
3.2 or 3.16 and such change is not required to comply with any of
sub-paragraphs (A) to (C) (inclusive) of Clause 3.5 (or,
for the avoidance of doubt, is not a change of the kind referred to
in sub-paragraph (D) of Clause 3.5), each Unilever Affiliate
shall reimburse the corresponding JD Affiliate for all costs
reasonably and
|
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