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,
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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”).
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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.
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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
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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
