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Exhibit
10.60
TRADEMARK LICENSE
AGREEMENT
This Agreement is made and entered into
on the 22nd day of October 1986 between Wizard Co., Inc., a
corporation of the State of Delaware, with its principal place of
business at 900 Old Country Road, Garden City, Long Island, New
York 11530 (hereafter referred to as “Licensor”), and
Avis Europe plc, an English company, registered number 1995619,
with its principal place of business at Avis House, Park Road,
Bracknell, Berkshire, RG12 2EW, United Kingdom (hereafter referred
to as “Licensee”).
RECITALS
WHEREAS, Licensor holds all right, title
and interest in the trademarks and service marks, and the goodwill
symbolized by such trademarks and service marks, as well as all
related registrations and applications, as listed in Appendix I
attached to this Agreement and made a part hereof;
WHEREAS, Licensee desires to use the
trademarks and service marks listed in Appendix I in connection
with the goods and services stated in Appendix II; and
WHEREAS, Licensor desires to obtain from
Licensee an initial royalty payment representing the present value
of the rights to be provided to Licensee by Licensor over the term
of this Agreement, plus certain other future royalties as provided
herein;
NOW, THEREFORE, in consideration of the
mutual agreements set forth herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows:
ARTICLE I
Whenever used in this Agreement, unless
otherwise indicated, the terms quoted below shall have the meaning
ascribed to them in this Article I.
| 1.1 |
“Alternate Products and Services” shall mean any of
the goods or services listed in Appendix II, Part II, until and
unless the same shall be deemed Licensed Products and Services.
Alternate Products and Services shall not include any goods or
services of any affiliate of Licensor offered under or in
connection with marks other than the Licensed Marks. |
| 1.2 |
“Licensed Territory” shall mean that part of the
world bounded to the west of the Greenwich Meridian by a line
running from the north pole to the south pole along 30 degrees of
Longitude (but including that part of the Azores and Greenland
which lies to the west of such line) and to the east of the
Greenwich Meridian by a line running from the north pole to the
south pole along 60 degrees of Longitude (but including that part
of the U.S.S.R. and Iran which lies to the east of such line) but
excluding the Republic of France, Madagascar and the continent of
Africa west of the Suez canal and the Red Sea. |
| 1.3 |
“Licensed Marks” shall mean all trademarks and
service marks and related registrations and applications listed in
Appendix I and, where the context so admits, additional trademarks
and service marks that the parties add thereto by mutual agreement
and the goodwill attached to such marks, but shall exclude any
trademarks and service marks and related registrations and
applications which have been assigned to Licensee pursuant to
Section 10.1 and such exclusion shall continue until such time
(if any) as they shall have been reassigned pursuant to
Section 10.5. |
| 1.4 |
“Licensed Products and Services” shall mean any of
the goods or services listed in Appendix II, Part I, and any
Alternate Products and Services deemed Licensed Products and
Services pursuant to Section 2.12. |
| 1.5 |
“Sublicensees” shall mean persons or entities who
are licensed by Licensee or by Sublicensees to use the Licensed
Marks in connection with the sale or distribution of the Licensed
Products and Services. |
ARTICLE II
| 2.1 |
Subject to the terms and conditions set forth in this
Agreement, Licensor grants to Licensee the exclusive right to use
the Licensed Marks solely in connection with the sale or
distribution of the Licensed Products and Services, and Licensee
accepts this license subject to the following terms and
conditions. |
| 2.2 |
The license hereby granted extends only to the Licensed
Territory. |
| 2.3 |
Licensee may sublicense the rights granted within the Licensed
Territory provided that each Sublicensee enters into an agreement
(a “Sublicense Agreement”) with the Licensee or its
Sublicensee incorporating terms provided for in Section 2.9
hereof. This right to sublicense is personal to Licensee and is
granted hereunder only to the named Licensee and to Sublicensees
licensed directly by Licensee. Licensee shall promptly notify
Licensor in writing of the name and address of all Sublicensees and
shall promptly provide Licensor with copies of all Sublicense
Agreements between Licensee or any Sublicensee and such
Sublicensees. |
| 2.4 |
Licensee recognizes the value of the goodwill associated with
the Licensed Marks and acknowledges that the Licensed Marks and all
rights in them and the goodwill pertaining to them throughout the
world belong exclusively to Licensor, and that the Licensed Marks
have secondary meaning in the trade and to customers and purchasers
and prospective customers and purchasers of the Licensed Products
and Services. |
| 2.5 |
Licensee agrees that it will not, and will use its best efforts
so that its Sublicensees will not, during the term of this
Agreement (a) do anything either by an act of omission or
commission which might impair, jeopardise, violate or infringe the
Licensed Marks; (b) claim adversely to Licensor or anyone
claiming through Licensor any right, title or interest in and to
any of the Licensed Marks in the Licensed Territory, or anywhere
else in the world; (c) misuse or harm or bring into dispute
the Licensed Marks; (d) register or apply for registration in
the United States, any state thereof, or anywhere else in the
world, of any of the Licensed Marks or any other mark which is, in
Licensor’s reasonable opinion, the same as or confusingly
similar to any of the Licensed Marks. Licensee further agrees that
it will not, and will use its reasonable efforts so that its
Sublicensees will not, after this Agreement has terminated, perform
any of the actions set forth in (a) through
(d) above. |
| 2.6 |
Licensee agrees that its use and the use by its Sublicensees of
the Licensed Marks shall inure to the benefit of Licensor, and
neither Licensee nor its Sublicensees shall at any time acquire any
rights in the Licensed Marks. Any application to register the
Licensed Marks or any mark confusingly similar to any of the
Licensed Marks, |
| 2.7 |
Licensee shall execute, and shall use its best efforts to cause
any Sublicensee to execute, any documents deemed reasonably
necessary by Licensor to obtain protection for the Licensed Marks
or to maintain their continued validity and enforceability based
upon the use thereof by the Licensee or any
Sublicensee. |
| 2.8 |
Licensee agrees that it and, to its best efforts, its
Sublicensees shall use the Avis name and related trademarks in
connection with such Licensed Products and Services as are provided
by it, and shall not use any other trademark or service mark in
combination with the Licensed Marks without the prior written
consent of Licensor, which consent shall not be unreasonably
withheld. |
| 2.9 |
Each Sublicense Agreement shall provide that (a) the
License granted thereby does not extend beyond the Licensed
Territory or some part thereof, (b) the Licensed Marks covered
thereby may be used solely in connection with the sale or
distribution of Licensed Products and Services, (c) the
Sublicensee agrees to maintain the quality standards established by
Licensor and described in Article V of this Agreement, to preserve
and protect the Licensed Marks and to provide information and
assistance to Licensee with respect to matters as to which Licensee
must inform and assist Licensor under this Agreement, (d) the.
Sublicense Agreement shall terminate not later than the expiry of
this Agreement, and (e) the Sublicensee shall observe terms
having the same effect as those contained in Sections 2.5, 2.6,
2.7, 2.8 and 8.10 hereof. The Sublicense Agreement shall also
provide for the grant of rights to use the Avis System pursuant to
the License Agreement of even date herewith (the “System
License Agreement”) between Avis Rent A Car System, Inc.
(“ARACS”) and Licensee, and for other related rights,
but shall not grant to the Sublicensee any rights with respect to
the Licensed Marks which exceed the rights granted by Licensor to
Licensee by this Agreement. At the request of Licensor, the
Sublicense Agreement or an additional appropriate agreement between
the Licensor or the sublicensor and the Sublicensee shall be
entered into in form suitable for recording as a registered user or
similar agreement. Licensee is free to determine all other terms of
the Sublicense Agreement provided that the same are not in conflict
herewith and with the System License Agreement. |
| 2.10 |
Licensor shall take all necessary action, as requested by
Licensee, to obtain protection for the Licensed Marks by
registration thereof, shall maintain all the Licensed Marks in
force, throughout the Licensed Territory, and shall execute any
documents deemed reasonably necessary for such purpose by Licensee.
All such action shall be taken at the sole cost and expense of
Licensee, except to the extent that the Licensed Marks are being
used by Licensor in the Licensed Territory with respect to
Alternate Products and Services. Licensee’s obligation
hereunder to reimburse costs and expenses of Licensor shall be
limited to obligations, evidence of which is provided to Licensee,
incurred by Licensor to third parties, and shall not include direct
staff costs and overhead of Licensor. |
| 2.11 |
Nothing in this Agreement shall prevent either party, its
licensees or sublicensees from using the Licensed Marks in
activities conducted pursuant to the Joint Promotion Agreement
dated the date hereof between Licensee and ARACS outside their
respective territories for the purpose of identifying, advertising
or promoting their activities as conducted within their respective
territories. |
| 2.12 |
If there
shall be proposed at any time the distribution or sale by Licensee
of any of the Alternate Products and Services in the Licensed
Territory using the Licensed Marks, such Alternate Products and
Services shall be deemed Licensed Products and Services, provided
that at such time the parties shall agree upon (a) a royalty
in an amount equal to that then being customarily paid for similar
newly-issued licenses in connection with similar products and
services to be paid by Licensee to Licensor in connection with such
uses of the Licensed Marks, and (b) standards and systems for
the distribution and sale of
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such Alternate Products
and Services appropriate to and consistent with the Licensed Marks
and their protection and enhancement as provided in the Guidelines.
If Licensee shall not wish to license the Licensed Marks for use in
connection with such Alternate Products and Services, Licensor
shall thereafter be free to license the Licensed Marks to others
for such use. If Licensor and Licensee shall be unable to agree to
the ~terms of the use of the Licensed Marks for Alternate Products
and Services after good faith bargaining within a reasonable period
of time, the matter shall be referred to review and arbitration
under the terms of the Review and Arbitration Agreement between the
parties and others dated [ ] (the ‘Review Agreement. “)
Licensor does not warrant by any provision of this Agreement that
it has the power to grant the right to use the Licensed Marks in
connection with any of the Alternate Products and
Services.
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| 2.13 |
Notwithstanding Section 2.12, if Licensor or any of its
affiliates which are otherwise entitled to use the Avis name are at
the time of a proposal under Section 2.12 engaged in the
distribution and sale of such Alternate Products and Services
anywhere in the world, and intend to engage in the same directly in
the Licensed Territory and Licensee neither is then engaged in nor
has carried out a detailed feasibility study or other substantial
action sufficient to demonstrate that it has a firm present
intention to engage in, such distribution and sale, Licensor shall
not be obligated to license the Licensed Marks to Licensee for use
in connection with such Alternate Products and Services, and
Licensor or its affiliates can distribute and sell such Alternate
Products and Services using the Licensed Marks. Licensor will give
reasonable notice to Licensee of the intention of it or its
affiliates to so use the Licensed Marks. If Licensor shall
thereafter decide to license the Licensed Marks for use in
connection with Alternate Products and Services to which the
preceding sentence is applicable, other than Licensed Marks which
Licensor is free to license to others pursuant to
Section 2.12, prior to entering into any license agreement
with another person, Licensor shall offer to Licensee for a period
of ninety (90) days the opportunity to enter into such an
agreement on substantially the same terms. Any dispute arising
under this Section 2.13 shall be referred to review and
arbitration under the terms of the Review Agreement. |
| 2.14 |
Licensee shall not use the Licensed Marks in connection with
the sale or distribution of any products or services other than the
Licensed Products or Services, but nothing in this Agreement shall
prevent Licensee from engaging in the sale or distribution of any
such other products or services in such a manner as not to use or
adversely affect the Licensed Marks. |
| 2.15 |
Until the expiration of a period of six (6) months from
the date of execution of this Agreement, neither Licensor nor any
of its affiliates otherwise entitled to use the Avis name shall
engage in or license the distribution and sale of any products or
services in the Licensed Territories, other than (a) products
or services listed on Appendix III, Part I, (b) products or
services listed on Appendix III, Part II with respect to which
Licensor and Licensee have bargained in good faith to reach an
agreement under which Licensee participates with Licensor on a
reasonable basis in the costs and benefits of such distribution and
sale, and (c) other products or services mutually agreed to by
Licensor and Licensee. |
| 2.16 |
Nothing in this Agreement shall prevent Licensee from accepting
from ARACS the assignment of certain license Agreements with
sublicensees predating this Agreement or acting thereunder in
accordance with the existing terms of such agreements and the
related assignment and assumption agreements between Licensee and
ARACS. |
| 2.17 |
Nothing in this Agreement shall prevent Licensor, its licensees
or sublicensees from engaging in the distribution and sale of
Alternate Products and Services without using any of the Licensed
Marks in connection therewith. |
ARTICLE III
| 3. |
GENERAL INDEMNIFICATION PROVISIONS |
| 3.1 |
All claims for indemnification under this Agreement in respect
of any third party claim shall be asserted and resolved as provided
in this Section 3. |
| 3.2 |
In the event that any third party claim or demand (a
“Claim”) for which either party
(“Indemnitor”) may be liable under this Agreement to
indemnify the other party (“Indemnitee”) is asserted
against or sought to be collected from Indemnitee, Indemnitee shall
as promptly as practicable inform Indemnitor in writing of the
Claim, and shall provide such details of the Claim (including
amount, if known) and any documents relating thereto as are then
available to it (the “Claim Notice”). The failure on
the part of Indemnitee to give a Claim Notice promptly shall not
relieve the Indemnitor of any indemnification obligations hereunder
unless, and then only to the extent that, the Indemnitor is
materially prejudiced thereby. |
| 3.3 |
The Indemnitor shall have 15 days from delivery of the Claim
Notice (the “Notice Period”) to inform Indemnitee
whether or not it desires to conduct the defence of the Claim, in
which case Indemnitor shall, at its sole cost and expense, have the
right to defend Indemnitee by appropriate proceedings and by
counsel reasonably acceptable to Indemnitee and shall have the sole
power to direct and control such defence; provided that
Indemnitee may participate in such defence at its sole cost and
expense. |
| 3.4 |
Indemnitee shall not settle a Claim for which it is indemnified
by Indemnitor unless Indemnitor does not defend Indemnitee against
such Claim, except that Indemnitee shall have the sole right to
defend, settle or compromise a Claim with respect to which it has
waived its right to indemnification pursuant to this
Agreement. |
| 3.5 |
If Indemnitor does not serve notice under Section 3.3
during the Claim Period, Indemnitee may take such steps as are
reasonable to defend itself against a Claim and to settle or
compromise such Claim. |
| 3.6 |
Unless Indemnitee agrees (such agreement not to be unreasonably
withheld) Indemnitor may settle or compromise actions and consent
to entry of judgments only on terms providing for the delivery of
the claimant or plaintiff of a duly executed written unconditional
release of Indemnitee from all liability in respect of such
action. |
| 3.7 |
During the Notice Period, Indemnitee may, without prejudicing
its right to indemnification, take reasonable actions to preserve
all and any rights with respect to the subject matter of a Claim
notified to Indemnitor. |
| 3.8 |
Indemnitee will provide all assistance and access to all
documents and personnel reasonably required by Indemnitor in
connection with the Defence of any Claim. |
ARTICLE IV
| 4. |
INDEMNIFICATION BY LICENSEE |
| 4.1 |
Licensee shall indemnify and hold Licensor harmless from and
against any and all damages, claims, losses, costs and expenses
(including reasonable attorneys’ fees) arising out of, caused
by or connected directly or indirectly with any breach or
non-performance by Licensee of any of its obligations hereunder.
The foregoing shall not limit or negate any rights of indemnity
Licensor may have from Licensee under any other agreement between
them. |
| 4.2 |
Subject to Article III, the indemnifications set forth in this
Article IV shall survive the termination of this
Agreement. |
ARTICLE IV
| 5.1 |
Licensee agrees that all artwork, designs, labels, tags,
brochures and other advertisements and promotional material
employing the Licensed Marks, whether used in radio, television, or
print media, and measures taken by Licensee and the Sublicensees to
identify themselves as licensees of Licensor, shall be in
accordance with written guidelines (“Guidelines”)
furnished from time to time by Licensor to Licensee, which
Guidelines may be updated or modified at any time by Licensor
during the term, including renewals, of this Agreement. The style
and manner in which the Licensed Marks are used in advertisements
or other promotional materials used by Licensor and Licensee or any
subsidiary with the approval of Licensor prior to the date of this
Agreement are deemed Acceptable Uses of the Licensed Marks.
Licensee and any Sublicensee shall have the right to use the
Licensed Marks in advertisements or other promotional materials in
a manner consistent in all material respects with such Acceptable
Uses and the Guidelines so as to give the Licensed Marks full and
favourable prominence and publicity. Any changes in the Acceptable
Uses or in the Guidelines may only be made by Licensor on prior
notice to Licensee, providing for transition periods and rules for
phase out of obsolete materials which shall be reasonable in light
of the cost and effort required of Licensee and the Sublicensees to
effect such changes. Licensee and all Sublicensees shall submit to
Licensor for Licensor’s written approval any advertisement or
promotional material which uses the Licensed Marks in a style or
manner that is significantly different from the Acceptable Uses or
the Guidelines. Licensee further agrees that representative samples
of other uses of the Licensed Marks by Licensee or any
Sublicense |
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