IR TRADEMARK LICENSE AGREEMENTTrademark License Agreement |
|
|
|
You are currently viewing: This Trademark License Agreement involves
International Rectifier Corporation | IR's Power Control Systems | Vishay Intertechnology, Inc. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
|
|
|
Search Trademark License Agreement by:
Exhibit 99.4
IR TRADEMARK LICENSE AGREEMENT
This IR Trademark License Agreement (this “IR Trademark Agreement”) is entered into and effective as of the 1 st day of April, 2007 (the “Effective Date”), by and between International Rectifier Corporation, a company organized under the laws of the State of Delaware (“IR”), and Vishay Intertechnology, Inc., a company organized under the laws of Delaware (“Purchaser”). IR and Purchaser each may be referred to herein as a “Party” and collectively as the “Parties.”
WHEREAS, the Parties have entered into that certain Master Purchase Agreement, dated as of November 8, 2006, pursuant to which IR has agreed to sell to Purchaser and Purchaser has agreed to purchase from IR the capital stock or other equity interests of certain subsidiary corporations of IR and certain assets of IR and certain of its subsidiaries used in IR’s Power Control Systems business unit (as amended, the “MPA”);
WHEREAS, IR owns and makes commercial use of the Licensed Marks (as hereinafter defined) and has registrations for certain Licensed Marks in certain countries;
WHEREAS, Purchaser desires to use the Licensed Marks in connection with Licensed Products (as hereinafter defined); and
WHEREAS, IR is willing to grant a license to Purchaser to use, and permit Purchaser’s use of, the Licensed Marks in connection with Licensed Products, under the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth in this IR Trademark Agreement, and for other good and valuable consideration, including, without limitation the valuable consideration set forth in the MPA, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
Article 1— Definitions
1.1 “Affiliate” means any person that, directly or indirectly through one or more intermediaries, controls or is controlled by or is under common control with the person specified. For purposes of this definition, control of a person means the power, direct or indirect,
1
to direct or cause the direction of the management and policies of such person, whether by contract or otherwise.
1.2 “Licensed Marks” means the marks listed on Schedule A , attached hereto and made a part hereof.
1.3 “Licensed Products” means all products sold in connection with the Licensed Marks and (i) identified on Schedule B , attached hereto and made a part hereof, or (ii) constituting subsequent versions of the products identified on Schedule B that do not include any additional or different form or functionality.
1.4 “Standards of Quality” means the general standards of design, material and workmanship heretofore observed by IR in its manufacture and sale of products identical or similar to the Licensed Products.
1.5 All other capitalized terms not defined herein shall be defined as set forth in the MPA.
Article 2 — License Grant
2.1 IR hereby grants to Purchaser a world-wide, non-transferable (subject to Section 8.6 hereof), non-sublicensable, except for the right to sublicense to its Affiliates, non-exclusive limited license, to use the Licensed Marks on and in connection with the Licensed Products during the term hereof, for the following purposes only: (i) to market and sell Licensed Products manufactured by Purchaser and/or IR; and (ii) to distribute documents for or relating to the Licensed Products (e.g., packaging, labeling, instruction books, and product literature. The aforementioned limited license is granted, provided that the Licensed Products are manufactured and sold in accordance with the Standards of Quality. Nothing in this IR Trademark Agreement shall be construed to grant Purchaser the right to use the Licensed Marks on or in connection with any products other than the Licensed Products as set forth herein.
2.2 IR covenants not to sue Purchaser or its sublicensees for use of the Licensed Marks to show the legacy of the Licensed Products (e.g. “formerly sold as IR part No. IRF1234”).
2
Article 3 — Examination of Products
3.1 IR has the right to conduct a reasonable review of Purchaser’s use of the Licensed Marks with respect to the nature and quality of the Licensed Products sold pursuant to this IR Trademark Agreement.
3.2 IR, or its authorized representative, shall have the right at any reasonable time during regular business hours, on reasonable notice, to visit the plants and facilities of Purchaser and its suppliers where Licensed Products are manufactured, assembled, packaged, marketed, promoted, sold or serviced. IR may conduct an inspection and examination of such portions of such plants and facilities as pertain to the manufacturing, assembly, packaging, marketing, promoting, sale or service of Licensed Products. Purchaser agrees to furnish IR, from time to time as reasonably requested by IR and at IR’s expense, representative samples of all Licensed Products, and representative samples showing all other uses of the Licensed Marks by Purchaser in connection with the Licensed Products. If, at any time, Licensed Products sold in connection with the Licensed Marks fail to meet the Standards Of Quality or any requirement expressly set forth in this IR Trademark Agreement and IR notifies Purchaser of such failure in writing explaining the particular standard not met, Purchaser shall immediately take appropriate steps to bring the Licensed Products into conformance or obtain consent from IR to continue such non-conformance. If Purchaser fails to cure such defects or obtain such consent within fifteen (15) days of receiving IR’s written notice of nonconformity, then Purchaser shall promptly cease the manufacturing, assembly, packaging, marketing, promoting, and sale of non-conforming Licensed Products bearing the Licensed Marks until conformance is achieved.
Article 4 — Use of the Licensed Marks
4.1 In no event shall Purchaser use the Licensed Marks as part of a trade name or authorize another Person to do so.
4.2 Purchaser shall comply with reasonable rules and practices for trademark usage set forth from time to time by IR with respect to the appearance and manner of use of the Licensed Marks that IR is then using , including such rules and practices set forth in any existing IR trademark usage manuals or policy statements as identified in Schedule C . In using the Licensed Marks, Purchaser shall indicate that the Licensed Marks are trademarks of IR.
3
4.3 Purchaser shall comply with all applicable laws and regulations pertaining to the use of the Licensed Marks, including those pertaining to the proper use and designation of trademarks, corporate names and trade names.
4.4 Purchaser agrees to comply with all guidelines set forth in Schedule C , and all reasonable revisions thereto from time to time, for the purpose of distinguishing the Licensed Marks and preventing confusion of itself with any third Person.
4.5 If, in the discretion of IR, it is required or advisable for the purpose of implementing or enforcing this IR Trademark Agreement, or for the purpose of maintaining, enhancing, or protecting IR’s rights in the Licensed Marks, to record or enter this IR Trademark Agreement with a Governmental Authority, IR will attend to such recording or entry at its own expense. At IR’s expense, Purchaser will execute and deliver to IR such additional instruments or documentation as IR may reasonably request to effectuate such recording or entry, including without limitation execution and delivery of substitute or short-form license agreements, with terms consistent with this IR Trademark Agreement, for recordation or registration in specified countries in the event that this IR Trademark Agreement shall be deemed to be unsuitable for recordation or entry in such countries. The terms and conditions of this IR Trademark Agreement (and not the terms and conditions of such substitute or short-form license agreements entered into for recording or entry purposes) shall be binding between the Parties throughout the world and shall govern and control any controversy that may arise with respect to each Party’s rights and obligations hereunder.
4.6 Purchaser shall supply IR with such information concerning Licensed Products as IR may reasonably request at IR’s expense to aid IR in the acquisition, maintenance, and renewal of registrations of the Licensed Marks, to record this IR Trademark Agreement and to enter Purchaser as a registered or authorized user of the Licensed Marks with a Governmental Authority.
Article 5 — Ownership and Validity of Licensed Marks
5.1 Purchaser acknowledges IR’s ownership of the Licensed Marks, and agrees that any and all rights in the Licensed Marks that might be acquired by the use of the Licensed Marks by Purchaser shall inure to the sole benefit of IR. If Purchaser obtains rights in
4
or to the Licensed Marks, Purchaser shall transfer those rights back to IR upon its request at no charge. For purposes of this IR Trademark Agreement only, IR agrees that Purchaser’s use of the IR part numbers without the IR or IRF preface (e.g. use of 1234 for an existing IR part number IR1234) does not requires a trademark license from IR.
5.2 Purchaser further agrees not to use or register in any country any trademarks, trade names or internet domain names confusingly similar to the Licensed Marks. Whenever the attention of Purchaser is called by IR to an






