Exhibit 10.3
Exhibit B
TRADEMARK CROSS-LICENSE AGREEMENT
BETWEEN
LONE STAR STEEL COMPANY, L.P.
AND
APOLO MECÂNICA E ESTRUTURAS S.A.
DATED AS OF [ · ]
TRADEMARK CROSS-LICENSE
AGREEMENT
BETWEEN
LONE STAR STEEL COMPANY, L.P. AND APOLO MECÂNICA E ESTRUTURAS
S.A.
This Trademark Cross-License
Agreement (this “ Agreement ”) is entered into
effective [•], 2006 by and between:
I.
ON THE ONE SIDE
:
(a)
LONE STAR STEEL COMPANY,
L.P. , a Delaware limited
partnership, organized under the laws of the State of Delaware in
the United States of America, with offices at 5660 N. Dallas
Parkway, Suite 500, Dallas, TX 75248, herein represented by its
undersigned legal representatives as they solely declare,
hereinafter referred to as “ LSS ”;
and
II.
ON THE OTHER SIDE
:
(b)
APOLO MECÂNICA E ESTRUTURAS
S.A. , a corporation
(sociedade anônima / stock corporation), organized under the
laws of the Federative Republic of Brazil, with offices at in the
city of Lorena, State of São Paulo, at Av. Dr. Léo de
Affonseca Netto, 750, CEP 12600-000, herein represented by its
undersigned legal representatives as they solely declare,
hereinafter referred to as the “ Company
”.
LSS and the Company hereinafter
jointly referred to as “ PARTIES ”, and each of
them, individually and indistinctly referred to as a “
PARTY ”.
WITNESSETH
:
WHEREAS :
I.
Apolo Tubos e Equipamentos S.A.
(“ Tubos ”), a corporation (sociedade
anônima / stock corporation), duly organized and existing
under the laws of the Federative Republic of Brazil, Lone Star
Brazil Holdings 2 Ltda., a limited liability company (sociedade
empresária limitada) organized under the laws of the
Federative
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Republic of Brazil (“ LSB
2 ”), the Company, Lone Star Technologies, Inc., a
Delaware corporation, GPC Participacoes S.A., a corporation
(sociedade anônima / stock corporation), organized under the
laws of the Federative Republic of Brazil, and Cirrus Participacoes
Ltda., a limited liability company (sociedade empresária
limitada) organized under the laws of the Federative Republic of
Brazil are entering into that certain Contribution Agreement (the
“ Contribution Agreement ”), pursuant to which
LSB 2 will acquire 50% of the common shares of the Company in
accordance with the provisions of the Contribution Agreement, to
carry out the development, construction, operation and management
of a plant for processing of carbon steel and alloy tubing and the
operation and management of other related business activities, and
the Company and LSS are entering into a Sales, Marketing and Supply
Agreement (together with the Contribution Agreement the “
JV Agreements ”);
II.
LSS intends to purchase products
from the Company and the Company intends to supply such products
under a separate agreement or agreements. In connection with the
supply of such products, LSS desires to license the Company to use
certain trademarks listed on Schedule A to this Agreement
(the “ LSS Marks ”), pursuant to the terms and
conditions set forth under this Agreement; and
III.
The Company intends to purchase
products from LSS and LSS intends to supply such products under a
separate agreement or agreements. In connection with the supply of
such products, the Company desires to sublicense LSS to use certain
trademarks listed on Schedule B to this Agreement (the
“ Company Marks ”), pursuant to the terms and
conditions set forth under this Agreement.
Now, therefore, in consideration of
the representations, warranties, and covenants herein contained,
the PARTIES agree to enter into this Agreement, which shall be
governed by the following clauses and conditions:
SECTION
I.
DEFINITIONS
AND INTERPRETATION
SECTION 1.
DEFINITIONS
1.1.
The following words, expressions,
abbreviations with capital letters, not defined in other sections
of this Agreement, shall have the meaning ascribed to them in this
Section 1.1, except if otherwise herein expressly indicated or if
the context is not compatible with any significance herein
indicated:
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Affiliate
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of a specified person (the “ Specified
Person ”) means any Person a) who, directly or
indirectly, controls, is controlled by, or is under common control
with the Specified Person, b) who, directly or indirectly, owns or
controls fifty percent (50%) or more of the Specified
Person’s outstanding voting securities or equity interests,
c) of whom the Specified Person, directly or indirectly, owns or
controls fifty percent (50%) or more of the outstanding voting
securities or equity interests or d) who has the right, directly or
indirectly, to appoint or elect fifty percent (50%) or more of the
Specified Person’s board of directors or equivalent managing
body.
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Agreement
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means this Trademark Cross-License
Agreement.
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Company
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has the meaning set forth in the Preamble of
this Agreement.
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Company Marks
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has the meaning set forth in Recital III to this
Agreement.
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Conflict
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has the meaning set forth in Section 24.1 of
this Agreement.
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Contribution Agreement
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has the meaning set forth in Recital I to this
Agreement.
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Effective Date
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has the meaning set forth in Section 11.1 of
this Agreement.
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Governmental Authority
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means any Brazilian or foreign federal, state,
municipal, similar government, governmental or non- or
quasi-governmental regulatory or administrative authority,
political subdivision, agency or commission or any court, tribunal,
judicial or arbitration body, or any other Person authorized to act
on behalf of any of the foregoing, with jurisdiction in relation to
the subject, Person or asset in question.
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ICC Rules
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has the meaning set forth in Section 24
hereof.
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INPI
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has the meaning set forth in Section 13.3 of
this Agreement.
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JV Agreements
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has the meaning set forth in Recital I to this
Agreement.
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Law
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means any statute, law, treaty, ordinance, rule,
regulation, instrument, directive, decree, permit, agreement, Order
or
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injunction of or with any Government Authority,
and includes, without limitation, rules or regulations of any
regulatory or self-regulatory authority compliance with which is
required by law.
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LIENS
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means any lien, mortgage, pledge, guaranty,
encumbrance, option, right of first refusal and/or any other claim
or right of any nature.
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LSB 2
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has the meaning set forth in Recital II to this
Agreement.
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LSS
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has the meaning set forth in the Preamble of
this Agreement.
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LSS Marks
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has the meaning set forth in Recital II to this
Agreement.
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Marks
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means LSS Marks as set forth in Recital II to
this Agreement and Company Marks as set forth in Recital III to
this Agreement.
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Notice of Conflict
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has the meaning set forth in Section 24.1 of
this Agreement.
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Party/Parties
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has the meaning set forth in the Preamble of
this Agreement.
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Person
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means any natural person, partnership, joint
venture, limited liability company, corporation, or any other
entity or organization.
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Term
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has the meaning set forth in Section 11.1 of
this Agreement.
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Tubos
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has the meaning set forth in Recital I to this
Agreement.
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Tubular Products
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has the meaning ascribed to such term in the
Contribution Agreement.
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SECTION
2.
INTERPRETATION
2.1.
In this Agreement and in its
respective schedules, except when specifically otherwise
provided:
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(i)
the table of contents and article
and section headings are for convenience only and shall not affect
the interpretation of this Agreement;
(ii)
references to any document,
instrument or agreement, including this Agreement shall include (a)
all schedules to this Agreement; and (b) all documents, instruments
or agreements issued or executed in replacement hereof or thereof,
if existing;
(iii)
references to a document or
agreement, including this Agreement, shall be deemed to include any
amendment, restatement, modification or supplement thereto entered
into in accordance with the terms thereof;
(iv)
the words “include”,
“includes” and “including” are not
limiting;
(v)
references to any Person shall
include such Person’s successors and permitted assigns, heirs
and representatives;
(vi)
the words “hereof”,
“herein”, “hereunder” and words of similar
import shall refer to this Agreement as a whole and not to any
particular provision of this Agreement;
(vii)
references to “days”
shall mean calendar days;
(viii)
the singular includes the plural and
the plural includes the singular;
(ix)
references to any laws, generally,
shall means laws in effect on the date of execution of this
Agreement, and references to any specific law shall mean such
specific law in effect on the date of execution of this Agreement;
and
(x)
any reference to an article,
section, clause or exhibit is to the article, section, clause of,
or to a schedule or exhibit to this Agreement unless otherwise
indicated.
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SECTION
II.
TRADEMARK
LICENSE
SECTION 3.
GRANT OF LICENSES
3.1.
LSS grants to the Company a
nonexclusive, nontransferable, revocable, limited, royalty free
license during the Term to use the LSS Marks in connection with
Tubular Products and the sale of goods and services covered by the
registrations referred to in Schedule A to this Agreement
anywhere in the world, provided that such use is limited to
Tubular Products manufactured at the locations in Brazil where the
Company operates steel fabrication and/or Tubular Products
finishing facilities that are identified in the JV Agreements or as
otherwise mutually agreed. The license granted under this
Section 3.1 is subject to the terms and conditions of the JV
Agreements. The Company has no right to permit or sublicense any
third party to use the LSS Marks, including, without limitation, by
way of sub-license, and/or assignment or otherwise, unless with the
prior written approval of LSS. All rights not expressly granted
herein are reserved by LSS.
3.2.
Within 30 days of the Effective
Date, LSS will file applications for the registration of the LSS
Marks in Brazil. Any such application filed pursuant to this
Section 3.2 and any trademark registration issuing therefrom shall
be considered LSS Marks, as such term is defined in this
Agreement.
3.3.
The Company grants to LSS a
nonexclusive, nontransferable, revocable, limited, royalty free
sublicense during the Term to use the Company Marks in connection
with Tubular Products purchased by the Company from LSS and the
sale of goods and services covered by the registrations referred to
in Schedule B to this Agreement at the locations in the
United States, provided that such use is limited to only
Tubular Goods purchased by the Company in accordance with the JV
Agreements or as otherwise mutually agreed. The sublicense granted
under this Section 3.3 is subject to the terms and conditions of
the JV Agreements. LSS has no right to permit or license any third
party to use the Company Marks, including, without limitation, by
way of sub-license, and/or assignment or otherwise, unless the
prior written approval of the Company is obtained. All rights not
expressly granted herein are reserved by the Company.
3.4.
Within 30 days of the Effective
Date, the Company will file applications for the registration of
the Company Marks in the United States. Any such application
filed pursuant to this Section 3.4 and any trademark registration
issuing
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therefrom shall be considered
Company Marks, as such term is defined in this
Agreement.
3.5.
From time to time each Party may
develop or acquire one or more trademarks and service marks for use
with Tubular Products manufactured or services provided in
acccordance with the JV Agreements. Any such trademarks shall be
considered the Marks for the purposes of this Agreement, and each
Party expressly agrees to grant the other Party a license to use
such trademarks and/or service marks when requested. The terms and
conditions associated with such license shall be the same as
contained in this Agreement unless the Parties mutually agree
otherwise.
SECTION 4.
OWNERSHIP OF
MARKS
4.1
The Company acknowledges the
ownership and/or right to use the LSS Marks by LSS. The Company
agrees that it will do nothing inconsistent with such ownership of
LSS. For example, neither the Company nor any company associated
with the Company will file any application for registration of a
trademark or service mark that is the same as or similar to the LSS
Marks in English, Portuguese or any other language in any country.
The Company agrees that all use of the LSS Marks by the Company
shall inure to the benefit of and be on behalf of LSS and agrees to
assist LSS in recording this Agreement with appropriate government
authorities. The Company agrees that nothing in this Agreement
shall give the Company any right, title or interest in the LSS
Marks other than the right to use the LSS Marks in accordance with
the terms herein. The Company agrees that it will not attack the
title of LSS to the LSS Marks or attack the validity of the license
granted herein. The Company further agrees to support LSS’s
efforts to register and maintain the LSS Marks in Brazil and any
other country, provided that the Company is under no obligation to
register or maintain the LSS Marks in any such country on behalf of
LSS. The Company agrees to assign any and all rights which the
Company may obtain in the LSS Marks to LSS. In the event that
the Company incurs any expenses related to the registration or
maintenance of the LSS Marks, LSS agrees to timely reimburse the
Company for any such expenses.
4.2.
LSS acknowledges the right to use
the Company Marks by the Company. LSS agrees that it will do
nothing inconsistent with such right to use of the Company. For
example, neither LSS nor any company associated with LSS will file
any application for registration of a trademark or service mark
that is the same as or similar to the Company Marks in English,
Portuguese or any other language in any country. LSS agrees that
all use of the Company Marks by LSS shall inure to the
benefit
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of and be on behalf of the Company
and agrees to assist the Company in recording this Agreement with
appropriate government authorities. LSS agrees that nothing in this
Agreement shall give LSS any right, title or interest in the
Company Marks other than the right to use the Company Marks in
accordance with the terms herein. LSS agrees that it will not
attack the title of the Company to the Company Marks or attack the
validity of the license granted herein. LSS further agrees to
support the Company’s efforts to register and maintain the
Company Marks in the USA and any other country, provided that LSS
is under no obligation to register or maintain the Company Marks in
any such country on behalf of the Company. LSS agrees to
assign any and all rights which LSS may obtain in the Company Marks
to the Company. In the event that LSS incurs any expenses
related to the registration or maintenance of the Company Marks,
the Company agrees to timely reimburse LSS for any such
expenses.
SECTION 5.
QUALITY
STANDARDS
5.1.
The Company agrees that the nature
and quality of all services rendered by the Company in connection
with the LSS Marks; all goods sold by the Company under the LSS
Marks; and all related advertising, promotional and other related
uses of the LSS Marks by the Company shall conform to or exceed
corresponding quality standards set by LSS.
5.2.
LSS agrees that the nature and
quality of all services rendered by LSS in connection with the
Company Marks; all goods sold by LSS under the Company Marks; and
all related advertising, promotional and other related uses of the
Company Marks by LSS shall conform to or exceed corresponding
quality standards set by the Company.
SECTION 6.
QUALITY
MAINTENANCE
6.1.
The Company agrees to cooperate with
LSS in facilitating LSS appropriately monitoring the quality
standards used by the Company, to permit reasonable inspection of
the Company’s operation, and to supply LSS with specimens of
all uses of the LSS Marks upon request. The Company shall comply
with all applicable laws and regulations and obtain all appropriate
government approvals pertaining to the sale, distribution and
advertising of goods and services covered by the license granted
herein. The Company agrees that the quality of any products sold
with the LSS Marks shall be at least as good as the quality of the
goods and services marketed by LSS and shall conform to any quality
standards identified by LSS from time to time.
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6.2.
LSS agrees to cooperate with the
Company in facilitating the Company’s appropriately
monitoring the quality standards used by LSS, to permit reasonable
inspection of LSS’s operation, and to supply the Company with
specimens of all uses of the Company Marks upon request. LSS shall
comply with all applicable laws and regulations and obtain all
appropriate government approvals pertaining to the sale,
distribution and advertising of goods and services covered by the
license granted herein. LSS agrees that
