APPENDIX 9 - TRADEMARK(S) LICENSE AGREEMENT TRADEMARK LICENSE AGREEMENTTrademark License Agreement |
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EXHIBIT 10.2
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS
EXHIBIT. THE
CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY A
TRIPLE ASTERISK
(***). THE CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED WITH
THE SECURITIES
AND EXCHANGE COMMISSION.
APPENDIX 9 - TRADEMARK(S) LICENSE AGREEMENT
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (this "Agreement") is made and
entered into as
of the 17th day of March, 2006 (the "EFFECTIVE DATE") by and
between Aesthetica
Ltd., a Bermuda corporation and subsidiary of Medicis Corporation,
a Delaware
corporation ("LICENSOR") and Ipsen Ltd., a company organized and
existing under
the laws of England ("LICENSEE").
RECITALS
1.
Licensor is the owner of certain trademarks and applications to
register the trademarks in various jurisdictions ("Licensed Marks,"
as defined
below), and
2.
Licensee wishes to obtain a license from Licensor to use the
Licensed
Marks in connection with the manufacture, promotion, and
distribution of
formulations of botulinum toxins as set forth in the parties'
Development and
Distribution Agreement (as defined below) and this Agreement,
and
4.
Licensor has agreed to license to Licensee the Licensed Marks for
such
purposes, subject to certain restrictions and quality control
standards set
forth herein.
AGREEMENT
In
consideration of the mutual representations, warranties, covenants
and
conditions contained herein, and other good and valuable
consideration, the
sufficiency of which is hereby acknowledged, the parties hereby
agree as
follows:
1.
DEFINITIONS.
For
purposes of this Agreement, the terms defined in this Article
shall
have the meanings specified below. All capitalized terms not
defined in this
Article shall have the meanings set forth in the parties'
Development and
Distribution Agreement whether the Development and Distribution
Agreement is in
force, terminated or expired.
1.1
DEVELOPMENT AND DISTRIBUTION AGREEMENT shall mean the parties'
development and distribution agreement for Licensee's current and
future
formulations of botulinum toxins of even date.
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1.2
LICENSED MARKS shall mean the trademarks, service marks,
stylized
marks, and logos as listed on Exhibit A attached hereto, as amended
by the
parties from time to time, and any and all applications and
registrations
related thereto.
1.3 RESERVED
TERRITORY shall mean Canada, Japan, and the United States of
America, including Puerto Rico and including the territories,
possessions or
commonwealths of Canada, Japan and the United States as of the date
of signature
of the Development and Distribution Agreement.
1.4
LICENSED TERRITORY shall mean all countries in the world except
the
Reserved Territory.
1.5
EXTENDED LICENSED TERRITORY shall mean both the Licensed Territory
and
the Reserved Territory.
1.6
REDUCED LICENSED TERRITORY shall mean solely those countries of
the
Licensed Territory where a Regulatory Approval has been applied for
or is issued
using a Licensed Mark, as on the relevant date indicated in this
Agreement in
connection with the Reduced Licensed Territory.
1.7
REGULATORY APPROVAL shall mean all approvals and decisions from
the
relevant regulatory authorities in a country (or such
supra-national authorities
that may have jurisdiction in such country) necessary to lawfully
import,
distribute, promote, and administer to humans, the Product(s).
1.8
LICENSEE'S NET SALES shall mean the actual amount invoiced by
Licensee
or its sub-licensees to a third party other than a sub-licensee,
for the sale of
a Product bearing a Licensed Mark for final sale in a country where
a Licensed
Mark is registered and enforceable, after deducting the following,
to the extent
actually incurred or allowed with respect to such sale: (i) normal
and customary
trade, cash and/or quantity discounts, including any volume,
formulary or other
positioning discounts paid or credited to the third party; (ii)
import, export,
sales, use, excise and other consumption taxes and custom duties or
tariffs, to
the extent and up to the amount mentioned in that respect on the
invoice, and
any other governmental charges imposed upon the importation, use or
sale of a
Product; (iii) actual freight, insurance and other transportation
charges; (iv)
compulsory discounts, rebates, or payments (including retroactive
price
reductions or statutorily required reimbursement) mandated by,
granted,
credited, accrued, or paid for compliance with local, state,
provincial or
federal law or regulation; (v) allowances or credits to customers
on account of
recalls, rejection or return of Product (including for spoiled,
damaged and/or
outmoded goods) in the ordinary course of business; and (vi) the
bad debts
actually incurred by Licensee in respect of the resale of the
Products, computed
in accordance with accounting regulations in force in the United
Kingdom. Net
Sales will not include any Product supplied free of charge as
commercial samples
or used free of charge for testing or clinical or marketing
studies. Any other
Product sold or otherwise transferred other than in an arm's-length
transaction
or in exchange for other property (e.g., barter), and any Bundled
Product, shall
be deemed invoiced at the Product market price established by
Licensee or its
sub-licensees in its applicable general conditions of sales or
failing such
general conditions, at the arm's length price that the Licensee or
its
sublicensees would generally or in the average invoice for such
Product alone.
In the event discounts or rebates to the gross invoiced or charged
price are
given in connection with the sale of goods or services other than
the Products,
or for consideration or purposes other than the sale, transfer or
delivery of
the Products, the gross sales price invoiced for the concerned
Products shall be
deemed to be increased to an amount equal to the concerned
Product's market
price or arm's length price as described above.
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2.
LICENSE.
2.1
License Grant. Subject to the terms and conditions of this
Agreement,
Licensor hereby grants to Licensee : (A) In the Licensed Territory:
a
royalty-free, exclusive, nontransferable (except as provided for in
Section 7.1
herein), license to use the Licensed Marks in the Licensed
Territory for the
manufacture, registration, promotion and/or distribution of
Products under the
Licensed Marks; provided that in case the Development and
Distribution Agreement
is terminated due to IPSEN being in breach under the Development
and
Distribution Agreement and as from the date the Development and
Distribution
Agreement is terminated for said reason, the license granted under
this Section
2.1(A) will be limited to the Reduced Licensed Territory as
constituted on the
date of termination of the Development and Distribution Agreement,
and will be
granted in consideration for payment by Licensee to Licensor of a
royalty of
***% (*** percent) of Licensee's Net Sales achieved in the Reduced
Licensed
Territory, and,
(B) In the Reserved Territory: in case the Development and
Distribution
Agreement is terminated due to MEDICIS being in breach under the
Development and
Distribution Agreement and as from the date the Development and
Distribution
Agreement is terminated for said reason, an exclusive,
nontransferable (except
as provided for in Section 7.1 herein), license to use the Licensed
Marks in the
Reserved Territory for the manufacture, registration, promotion
and/or
distribution of Products under the Licensed Marks in consideration
for payment
by Licensee to Licensor of a royalty of ***% (*** percent) of
Licensee's Net
Sales achieved in the Reserved Territory.
Licensor
undertakes to sign any amendment to this Agreement promptly
upon
Licensee's request so as to include :
(a) in Exhibit A attached hereto, any trademark added to Appendix 5
of the
Development and Distribution Agreement,
(b) in Exhibit B attached hereto, any Product Extension and/or New
Product which
is either included in MEDICIS's scope of appointment under Article
2 of the
Development and Distribution Agreement in accordance with the
provisions of
Article 7.1 of the Development and Distribution Agreement, or which
is the
subject of an agreement between IPSEN and MEDICIS for its
development and/or
distribution in accordance with the provisions of Article 7.2 of
the Development
and Distribution Agreement.
Subject to Licensor's prior written approval (which shall not be
unreasonably
withheld), Licensee may sublicense the foregoing rights only to
sublicensees who
will use the Licensed Marks to manufacture, promote and distribute
the Products,
except that Licensee shall be free to grant any sublicenses,
without the
necessity of Licensor's prior approval, (i) to Licensee's or
Licensee's
Affiliates' third-party licensees or distributors for Licensee's or
Licensee's
Affiliates' products in the Licensed Territory, as appointed on the
date of
signature of this Agreement, and (ii) to Licensee's Affiliates.
Licensee shall
cause any sub-licensees under the Licensed Marks to comply with the
terms and
conditions of this Agreement as applicable.
Nothing herein shall be construed as an obligation for Licensee to
use the
Licensed Marks in connection with the manufacture, registration,
promotion
and/or distribution of the Products in the Licensed Territory (or
in the
Extended Licensed Territory or Reduced Licensed Territory as
applicable).
For the avoidance of doubt, Licensee is hereby entitled to have any
Product
manufactured under the Licensed Marks in any country worldwide as
long as it is
intended for registration, promotion and/or distribution thereof
under the
Licensed Marks in the Licensed Territory or, as applicable, in
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the Extended Licensed Territory or in the Reduced Licensed
Territory in
accordance with the provisions of this Agreement.
2.2
Reservation of Rights. Licensee acknowledges that Licensor is the
sole
owner of all right, title and interest in and to the Licensed
Marks, and that
Licensee has not acquired, and shall not acquire, any right, title
or interest
in or to the Licensed Marks except the right to use such Licensed
Marks as
expressly set forth in this Agreement. All rights of Licensor in
and to the
Licensed Marks not expressly granted under this Agreement are
reserved by
Licensor. Should any right, title or other ownership in the
Licensed Marks
become vested in Licensee against Licensor's will, Licensee agrees
to assign
should Licensor so requests, and hereby assigns, all such right,
title, and
other ownership to Licensor free of additional consideration.
Licensee shall
provide and execute all documents reasonably necessary to
effectuate and record
such assignment to Licensor.
Nothing
herein shall prohibit Licensor from using the Licensed Marks
within the Reserved Territory except as expressly provided for in
Section 2.1 in
case of termination of the Development and Distribution Agreement
for Licensor's
breach under the Development and Distribution Agreement.
2.3 Option :
MEDICIS hereby grants IPSEN, during the term of this Agreement
:
- the exclusive option to acquire the Licensed Marks in the
Licensed Territory
as provided for in Article 12.3 of the Development and Distribution
Agreement,
- the exclusive option to acquire the Licensed Marks after
termination or expiry
of the Development and Distribution Agreement, in the Licensed
Territory, or as
applicable according to Section 2.1(A) or (B) of this Agreement, in
the Extended
Licensed Territory or in the Reduced Licensed Territory, in
accordance with the
following : IPSEN may exercise the option from time to time after
termination or
expiry of the Development and Distribution Agreement, to acquire
the Licensed
Marks in one or more countries of the Licensed Territory, or as
applicable
according to Section 2.1(A) or (B) of this Agreement, the Extended
Licensed
Territory or Reduced Licensed Territory, as indicated from time to
time by
IPSEN, under reasonable commercial purchase conditions to be
negotiated in good
faith between MEDICIS and IPSEN. Should MEDICIS and IPSEN be unable
to reach
agreement with respect to such purchase conditions, IPSEN's option
shall not be
extinguished and may be exercised for the same and/or other
country/ies of the
Licensed Territory (or as applicable according to Section 2.1(A) or
(B) of this
Agreement, of the Extended Licensed Territory or Reduced Licensed
Territory),
whenever IPSEN deems it appropriate during the term of this
Agreement.
2.4
Registration Rights and Expenses - Maintenance and renewal.
Licensor
shall retain the exclusive right to apply for, obtain, and
maintain
registrations for the Licensed Marks solely in Licensor's name
throughout the
world, provided however that (i) Licensor shall apply for the
Licensed Marks
registration solely in those countries of the Licensed Territory
(or as
applicable, in those countries of the Extended Licensed Territory
or Reduced
Licensed Territory) as Licensee shall indicate from time to time to
Licensor,
and (ii) should Licensor fail to apply for or maintain any such
registration
within 30 days as from any Licensee's written request thereto (or
within shorter
delay in case a Licensed Mark registration or application would
expire failing
Licensor's immediate intervention), Licensee shall be entitled to
proceed to
such applications or maintenance in the name of Licensor.
Licensor shall bear the costs and expenses for applying for and
maintaining any
such registrations in the Reserved Territory until and if Licensee
is granted
rights under the Licensed Marks in the Reserved Territory as
provided for under
Section 2.1 (B) above, in which last case Licensee shall
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bear the related expenses accrued as from the date of termi






