TRADEMARK CROSS-LICENSE AGREEMENTTrademark Concurrent Use Agreement |
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LONE STAR TECHNOLOGIES INC | LONE STAR STEEL COMPANY, L.P. | APOLO MECĀNICA E ESTRUTURAS S.A.. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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Search Trademark Concurrent Use Agreement by:
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. |
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
