TRADEMARK AND TRADE NAME SUBLICENSE AGREEMENTTrademark License Agreement |
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ALLSCRIPTS-MISYS HEALTHCARE SOLUTIONS, INC. | Allscripts Healthcare Solutions, Inc | Licensee, Sublicensee and Patriot Merger Company, LLC | Misys Healthcare Systems, LLC. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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Exhibit 10.3
EXECUTION COPY
TRADEMARK AND TRADE NAME SUBLICENSE AGREEMENT
This TRADEMARK AND TRADE NAME SUBLICENSE AGREEMENT is dated as of October 10, 2008 (the “Sublicense Agreement”), between Misys Healthcare Systems, LLC, a North Carolina limited liability company, having its principal place of business at 8529 Six Forks Road, Raleigh, North Carolina 27615 (“Licensee”), and Allscripts Healthcare Solutions, Inc., a Delaware corporation, having its principal place of business at 222 Merchandise Mart Plaza, Suite 2024, Chicago, Illinois 60654 (“Sublicensee” or “Allscripts”). Licensee and Sublicensee are referred to herein collectively as “Parties” and each individually as a “Party”. All capitalized terms used herein and not otherwise defined have the respective meanings given to them in the License Agreement (as defined below) or the Merger Agreement (as defined below).
W I T N E S S E T H :
WHEREAS, Misys plc, a public limited company organized under the laws of England (“Licensor”), is the owner of the trade name “MISYS” (the “Licensed Name”) and certain trademarks and service marks consisting of or incorporating the designation “MISYS,” identified in the schedule attached hereto as Schedule A, and has applied for and registered such trademarks and service marks in the United States (the “Territory”) (such trademarks and service marks and such registrations and applications, together with any and all common law rights pertaining thereto, are referred to collectively as the “Licensed Marks”) for use in Licensor’s business;
WHEREAS, Licensor is the owner of the domain names listed on Schedule B hereto (the “Licensed Domain Names” and together with the Licensed Name and the Licensed Marks, the “Licensed Property”);
WHEREAS, at the Closing (as defined in the Agreement and Plan of Merger, dated as of March 17, 2008, by and among Licensor, Licensee, Sublicensee and Patriot Merger Company, LLC a North Carolina limited liability company (the “Merger Agreement”), Licensor will own, directly or indirectly, 54.5% of the equity interests in Allscripts on a fully diluted basis (as determined pursuant to the Merger Agreement).
WHEREAS, as a condition to effecting the Merger, Licensor and Licensee entered into a Trademark and Trade Name License Agreement of even date herewith (the “License Agreement”), pursuant to which Licensor granted Licensee use of the Licensed Marks, the Licensed Name and the Licensed Domain Names;
WHEREAS, pursuant to Section 1.6 of the License Agreement, Licensee may grant a sublicense of its rights under the License Agreement to any Affiliate of Licensee;
WHEREAS, Sublicensee is an Affiliate of Licensee and wishes to use the Licensed Name, Licensed Marks and Licensed Domain Names under the terms and conditions set forth herein; and
WHEREAS, in accordance with the License Agreement, Sublicensee has executed a Sublicensee Acknowledgement and Licensor has reviewed and approved this Sublicense Agreement prior to the Parties’ execution hereof;
NOW, THEREFORE, for good and valuable consideration, the receipt and adequacy of which are hereby acknowledged, the Parties agree as follows:
1. Grant of License .
1.1. Grant of Trademark License . Subject to the terms and conditions contained herein, Licensee hereby grants to Sublicensee, and Sublicensee hereby accepts, a nonexclusive, nonassignable, nonsublicenseable, royalty-free license to use the Licensed Marks in connection with the marketing, promotion, advertisement, distribution and sale of Sublicensee’s healthcare information technology products and services in the Territory (the “Sublicensee Products and Services”).
1.2. Grant of Trade Name License . Subject to the terms and conditions contained herein, Licensee hereby grants to Sublicensee, and Sublicensee hereby accepts, a nonexclusive, nonassignable, nonsublicensable, royalty-free license to use the Licensed Name in its corporate name and trade name solely in the form of “Allscripts-Misys Healthcare Solutions, Inc.” and solely in connection with the operation of such Sublicensee’s healthcare information technology products and services business in the Territory (the “Sublicensee Business”).
1.3. Grant of License to Domain Names . Subject to the terms and conditions contained herein, Licensee hereby grants to Sublicensee a nonexclusive, nonassignable, nonsublicensable, royalty-free license to use the Licensed Domain Names in connection with the operation of the Sublicensee Business in the Territory. The Parties agree that the ability of a third party to access the websites operated under the Licensed Domain Names from outside of the Territory shall not be deemed a breach of this Sublicense Agreement, provided such websites are not targeted to persons or entities outside of the Territory and to the extent that a person or entity is identified as being outside of the Territory, Sublicensee does not provide Sublicensee Products or Services outside of the Territory. In the event of any doubt as to where such person or entity is located, Sublicensee shall obtain written confirmation from such person or entity that it is located and operating in the Territory. Licensee shall designate a person specified by Sublicensee as the “technical contact” for each Licensed Domain Name to the extent necessary to permit access to the associated website.
1.4. Restrictions on Use .
(a) Except for use of Sublicensee’s color scheme of red, black and grey, which may be used for the Licensed Marks other than “Misys” used alone, “Misys” in combination with the “M” logo and the “M” logo, Sublicensee shall not change or
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modify the Licensed Property, or create any design variation of the Licensed Property, without the prior written consent of Licensee.
(b) Except for the word “Allscripts”, Sublicensee shall not join any name, mark or logo with the Licensed Property so as to form a composite trade name or mark, without obtaining the prior written consent of Licensee.
(c) Sublicensee shall not use any other name or mark that is confusingly similar to the Licensed Property, provided , however , that use of the word “Allscripts” with the secondary words in the Licensed Marks (e.g., Tiger), with or without the word “Misys”, will not be considered confusingly similar.
1.5. Changes in Licensed Marks or Licensed Domain Names . Upon written notice to Sublicensee, Licensee may, from time to time in its sole discretion, elect to ( a ) discontinue any Licensed Marks or Licensed Domain Names and/or ( b ) replace any Licensed Marks or Licensed Domain Names with or use new or different trademarks or service marks or domain names (“New Marks”) with respect to the Products and Services or the Licensed Business. Upon such election, any such New Marks may be designated Licensed Property by Licensee and if designated as such shall be subject to the terms of this Sublicense Agreement, and Schedule A shall be deemed amended automatically to include such New Marks. In the event Licensee discontinues any Licensed Property or introduces a New Mark, Sublicensee shall have a reasonable period of time, not to exceed six (6) months, to cease use of such discontinued Licensed Property or begin use of such New Mark.
1.6. Resellers and Distributors of Sublicensee Products and Services . Sublicensee shall be permitted to allow any reseller or distributor of the Sublicensee Products and Services to use the Licensed Marks and Licensed Domain Names solely to the extent necessary to perform its obligations under the relevant agreement with Sublicensee. Each such agreement shall contain restrictions on the use of the Licensed Marks and Licensed Domain Names consistent with the restrictions contained herein, other than those contained in Section 9.14(ii). A copy of each such agreement shall be provided to Licensee for review and approval prior to execution.
1.7. Prohibition on Sublicensing . Neither Sublicensee nor any reseller or distributor of Sublicensee shall be permitted to sublicense to any other person or entity the rights granted to it with respect to the Licensed Property.
2. Quality Standards and Control .
2.1. Quality Control .
(a) At all times, Sublicensee shall use the Licensed Property only in accordance with such quality standards and specifications as may be established by Licensor and communicated to Sublicensee in writing from time to time (the “Quality Standards”), including but not limited to the Licensor Trademark Guidelines attached hereto as Exhibit A. Without limiting the foregoing, the Sublicensee Products and Services shall always be manufactured or performed in a manner that reflects favorably
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on the Licensed Property and does not tarnish the Licensed Property or the reputation of Licensee or Licensor. With respect to the name and mark “Misys” and the “M” logo, Licensor may establish additional Quality Standards that shall be communicated to Sublicensee in writing from time to time.
(b) Licensee shall ( A ) notify Licensor promptly in writing upon becoming aware that Sublicensee’s use of the Licensed Property deviates from the Quality Standards in any material respect, and ( B ) promptly undertake commercially reasonable efforts to cause such defective or nonconforming use to be cured or, if not curable, discontinued.
2.2. Use of the Licensed Marks . All use of the Licensed Marks made hereunder shall faithfully reproduce the design and appearance of the Licensed Marks as reflected on Schedule A.
2.3. Inspection and Approval . Licensee or its designated representative shall have the right at any time during normal business hours to inspect and approve, which approval shall not be unreasonably withheld, any and all uses of the Licensed Marks to confirm that such use is in conformance with the terms of this Sublicense Agreement. From time to time, upon Licensee’s reasonable request in writing, Sublicensee shall, at Sublicensee’s expense, ( a ) provide Licensee with representative samples of the ways in which the Licensed Marks are then being used (or photographs depicting the same), and ( b ) permit Licensee or Licensor to inspect Sublicensee’s places of business where the Licensed Marks are used, in each case for Licensee’s or Licensor’s inspection and approval of such uses.
2.4. Deficiencies . If Licensee reasonably believes that the Sublicensee Business or the business of a reseller or distributor using the Licensed Marks or Licensed Domain Names is not being conducted in compliance with the Quality Standards or if an inspection of the Sublicensee Products and Services reveals that they do not comply with the Quality Standards, then Licensee shall promptly provide Sublicensee with written notice of such defects or violations, and shall allow Sublicensee thirty (30) days from the date of such notice in which to cure such defects or violations. Should the defects or violations not be remedied within such thirty (30) day period, Licensee may, in its reasonable discretion, terminate this Sublicense Agreement in accordance with Section 8.2 or bring an action to require specific performance. If such an action is brought and is successful, then Sublicensee shall have thirty (30) days within which to comply with the order. If, at the end of such thirty (30) days Sublicensee has not complied, this Sublicense Agreement will terminate automatically.
3. Compliance with Law . Sublicensee shall use the Licensed Property only in such manner as will comply with the provisions of applicable laws and regulations relating to the Licensed Property. Sublicensee shall affix to all materials that bear a Licensed Mark, including, but not limited to, all stationery, labels, packaging, advertising and promotional materials, manuals, invoices and all other printed materials, ( a ) notices in compliance with applicable trademark laws and ( b ) such legend as Licensee may reasonably designate by written notice and is required or otherwise reasonably
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necessary to allow adequate protection of the Licensed Marks and the benefits thereof under applicable trademark laws from time to time. In connection herewith, Sublicensee may use the following legend:
“MISYS” is a registered trademark owned by Misys plc and is used under license.”
4. Ownership and Maintenance .
4.1. Ownership . (a) Sublicensee acknowledges and admits the validity of the Licensed Property and agrees that it will not, directly or indirectly, challenge the validity of the Licensed Property, or any registrations thereof and/or applications therefor in any jurisdiction, or the right, title and interest of Licensor therein and thereto, nor will it claim any ownership or other interest in the Licensed Property in any jurisdiction, other than the rights expressly granted hereunder.
(b) Sublicensee acknowledges that ( i ) the Licensed Property and the goodwill associated therewith are and will remain the exclusive property of Licensor, ( ii ) all uses of the Licensed Property shall inure solely to the benefit of Licensor, and ( iii ) S






