Exhibit 10.8
Exhibit G
TRADEMARK LICENSE
AGREEMENT
BETWEEN
APOLO TUBOS E EQUIPAMENTOS
S.A.
AND
APOLO MECÂNICA E ESTRUTURAS
S.A.
DATED AS OF [ · ]
TRADEMARK LICENSE
AGREEMENT
BETWEEN
APOLO TUBOS E EQUIPAMENTOS S.A.
AND APOLO MECÂNICA E ESTRUTURAS S.A.
This Trademark License Agreement
(this “ Agreement ”) is entered into effective
[ · ], 2006 by and between:
I.
ON THE ONE SIDE :
(a)
APOLO TUBOS E EQUIPAMENTOS
S.A. , a corporation
(sociedade anônima / stock corporation), organized under the
laws of the Federative Republic of Brazil, with offices in the city
of Rio de Janeiro, State of Rio de Janeiro, at Av. Chrisótomo
Pimentel de Oliveira, No. 2651, Pavuna, CEP 21650-000, herein
represented by its undersigned legal representatives as they solely
declare, hereinafter referred to as “ Tubos ”;
and
II.
ON THE OTHER SIDE
:
(b)
APOLO MECÂNICA E ESTRUTURAS
S.A. , a corporation
(sociedade anônima / stock corporation), organized under the
laws of the Federative Republic of Brazil, with offices in the city
of Lorena, State of São Paulo, at Av. Dr. Léo de
Affonseca Netto, 750, CEP 12600-000, herein represented by its
undersigned legal representatives as they solely declare,
hereinafter referred to as the “ Company
”.
Tubos and the Company hereinafter
jointly referred to as “ PARTIES ”, and each of
them, individually and indistinctly referred to as a “
PARTY ”.
WITNESSETH
:
WHEREAS :
I.
Tubos, Lone Star Brazil Holdings 2
Ltda., a limited liability company (sociedade empresária
limitada) organized under the laws of the Federative Republic of
Brazil, (“ LSB 2 ”), the Company, Lone Star
Technologies, Inc., a Delaware
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corporation, GPC Participacoes S.A.,
a corporation (sociedade anônima / stock corporation),
organized under the laws of the Federative Republic of Brazil, and
Cirrus Participacoes Ltda., a limited liability company (sociedade
empresária limitada) organized under the laws of the
Federative Republic of Brazil are entering into that certain
Contribution Agreement (the “ Contribution Agreement
”), pursuant to which LSB 2 will acquire 50% of the common
shares of the Company in accordance with the provisions of the
Contribution Agreement, to carry out the development, construction,
operation and management of a plant for processing of carbon steel
and alloy tubing and the operation and management of other related
business activities, and the Company and Lone Star Steel Company,
L.P., a limited partnership organized under the laws of the state
of Delaware (“ LSS ”), are entering into a
Sales, Marketing and Supply Agreement (together with the
Contribution Agreement the “ JV Agreements
”);
II.
LSS intends to purchase products
from the Company and the Company intends to supply such products
under a separate agreement or agreements, and the Company intends
to purchase products from LSS and LSS intends to supply such
products under a separate agreement or agreements. In connection
with the supply of such products, LSS and the Company have entered
into that certain Trademark Cross-License Agreement (the “
Cross-License Agreement ”), dated on or about the
Effective Date, pursuant to which LSS agrees to license the Company
to use certain trademarks set forth in the Cross-License Agreement,
and further pursuant to which the Company agrees to sublicense LSS
to use certain trademarks owned by Tubos and listed on Schedule
A to this Agreement (the “ Marks ”);
and
III.
In connection with the Cross-License
Agreement, Tubos desires to license the Company to use the Tubos
Marks, with a right to sublicense to LSS, pursuant to the terms and
conditions set forth under this Agreement.
Now, therefore, in consideration of
the representations, warranties, and covenants herein contained,
the PARTIES agree to enter into this Agreement, which shall be
governed by the following clauses and conditions:
SECTION
I.
DEFINITIONS
AND INTERPRETATION
SECTION 1.
DEFINITIONS
1.1.
The following words, expressions,
abbreviations with capital letters, not defined in other sections
of this Agreement, shall have the meaning ascribed to them in this
Section 1.1, except if otherwise herein expressly indicated or if
the context is not compatible with any significance herein
indicated:
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Affiliate
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of a specified person (the “ Specified
Person ”) means any Person a) who, directly or
indirectly, controls, is controlled by, or is under common control
with the Specified Person, b) who, directly or indirectly, owns or
controls fifty percent (50%) or more of the Specified
Person’s outstanding voting securities or equity interests,
c) of whom the Specified Person, directly or indirectly, owns or
controls fifty percent (50%) or more of the outstanding voting
securities or equity interests or d) who has the right, directly or
indirectly, to appoint or elect fifty percent (50%) or more of the
Specified Person’s board of directors or equivalent managing
body.
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Agreement
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means this Trademark Cross-License
Agreement.
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Company
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has the meaning set forth in the Preamble of
this Agreement.
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Conflict
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has the meaning set forth in Section 24.1 of
this Agreement.
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Contribution Agreement
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has the meaning set forth in Recital I to this
Agreement.
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Cross-License Agreement
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has the meaning set forth in Recital II to this
Agreement.
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Effective Date
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has the meaning set forth in Section 11.1 of
this Agreement.
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Governmental Authority
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means any Brazilian or foreign federal, state,
municipal, similar government, governmental or non- or
quasi-governmental regulatory or administrative authority,
political subdivision, agency or commission or any court, tribunal,
judicial or arbitration body, or any other Person authorized to act
on behalf of any of the foregoing, with jurisdiction in relation to
the subject, Person or asset in question.
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ICC Rules
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has the meaning set forth in Section 24
hereof.
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INPI
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has the meaning set forth in Section 13.3 of
this Agreement.
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JV Agreements
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has the meaning set forth in Recital I to this
Agreement.
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Law
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means any statute, law, treaty, ordinance, rule,
regulation,
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instrument, directive, decree, permit,
agreement, Order or injunction of or with any Government Authority,
and includes, without limitation, rules or regulations of any
regulatory or self-regulatory authority compliance with which is
required by law.
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LIENS
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means any lien, mortgage, pledge, guaranty,
encumbrance, option, right of first refusal and/or any other claim
or right of any nature.
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LSB 2
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has the meaning set forth in Recital I to this
Agreement.
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LSS
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has the meaning set forth in the Preamble of
this Agreement.
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Marks
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has the meaning set forth in Recital II to this
Agreement.
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Notice of Conflict
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has the meaning set forth in Section 24.1 of
this Agreement.
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Party/Parties
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has the meaning set forth in the Preamble of
this Agreement.
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Person
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means any natural person, partnership, joint
venture, limited liability company, corporation, or any other
entity or organization.
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Term
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has the meaning set forth in Section 11.1 of
this Agreement.
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Tubos
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has the meaning set forth in Recital I to this
Agreement.
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Tubular Products
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has the meaning ascribed to such term in the
Contribution Agreement.
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SECTION
2.
INTERPRETATION
2.1.
In this Agreement and in its
respective schedules, except when specifically otherwise
provided:
(i)
the table of contents and article
and section headings are for convenience only and shall not affect
the interpretation of this Agreement;
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(ii)
references to any document,
instrument or agreement, including this Agreement shall include (a)
all schedules to this Agreement; and (b) all documents, instruments
or agreements issued or executed in replacement hereof or thereof,
if existing;
(iii)
references to a document or
agreement, including this Agreement, shall be deemed to include any
amendment, restatement, modification or supplement thereto entered
into in accordance with the terms thereof;
(iv)
the words “include”,
“includes” and “including” are not
limiting;
(v)
references to any Person shall
include such Person’s successors and permitted assigns, heirs
and representatives;
(vi)
the words “hereof”,
“herein”, “hereunder” and words of similar
import shall refer to this Agreement as a whole and not to any
particular provision of this Agreement;
(vii)
references to “days”
shall mean calendar days;
(viii)
the singular includes the plural and
the plural includes the singular;
(ix)
references to any laws, generally,
shall means laws in effect on the date of execution of this
Agreement, and references to any specific law shall mean such
specific law in effect on the date of execution of this Agreement;
and
(x)
any reference to an article,
section, clause or exhibit is to the article, section, clause of,
or to a schedule or exhibit to this Agreement unless otherwise
indicated.
SECTION
II.
TRADEMARK
LICENSE
SECTION 3.
GRANT OF LICENSES
3.1.
Tubos grants to the Company a
nonexclusive, nontransferable, revocable, limited, royalty free
license during the Term to use the Marks in connection with Tubular
Products and the sale of goods and services covered by the
registrations referred to in Schedule A to this Agreement
anywhere in the world,
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provided that
such use is limited to Tubular
Products manufactured at the locations in Brazil where the Company
operates steel fabrication and/or Tubular Products finishing
facilities that are identified in the JV Agreements or as otherwise
mutually agreed. The license granted under this Section 3.1
is subject to the terms and conditions of the JV Agreements.
Except as set forth in Section 3.2, the Company has no right
to permit or license any third party to use the Marks, including,
without limitation, by way of sub-license, and/or assignment or
otherwise, unless with the prior written approval of Tubos. All
rights not expressly granted herein are reserved by
Tubos.
3.2.
Notwithstanding anything set forth
in Section 3.1 to the contrary, the license granted pursuant
Section 3.1 shall include the right of the Company to grant a
sublicense to LSS to use the Marks in accordance with the terms and
conditions of the Cross-License Agreement.
3.3.
Within 30 days of the Effective
Date, Tubos will file applications for the registration of the
Marks in the United States. Any such application filed
pursuant to this Section 3.3 and any trademark registration issuing
therefrom shall be considered Marks, as such term is defined in
this Agreement.
3.4.
From time to time each Party may
develop or acquire one or more trademarks and service marks for use
with Tubular Products manufactured or services provided in
acccordance with the JV Agreements. Any such trademarks shall be
considered the Marks for the purposes of this Agreement, and each
Party expressly agrees to grant the other Party a license to use
such trademarks and/or service marks when requested. The terms and
conditions associated with such license shall be the same as
contained in this Agreement unless the Parties mutually agree
otherwise.
SECTION 4.
OWNERSHIP OF
MARKS
4.1
The Company acknowledges the
ownership and/or right to use the Marks by Tubos. The Company
agrees that it will do nothing inconsistent with such ownership of
Tubos. For example, neither the Company nor any company associated
with the Company will file any application for registration of a
trademark or service mark that is the same as or similar to the
Marks in English, Portuguese or any other language in any country.
The Company agrees that all use of the Marks by the Company shall
inure to the benefit of and be on behalf of Tubos and agrees to
assist LSS in recording this Agreement with appropriate government
authorities. The Company agrees that nothing in this Agreement
shall give the Company any right, title or interest in the Marks
other than the right to use the Marks in accordance with the terms
herein. The Company agrees that it will not attack the title of
Tubos to the Marks or attack the
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validity of the license granted
herein. The Company further agrees to support Tubos’ efforts
to register and maintain the Marks in Brazil and any other country
provided that the Company is under no obligation to register or
maintain the Marks in any such country on behalf of Tubos. The
Company agrees to assign any and all rights which the Company may
obtain in the Marks to Tubos. In the event that the Company
incurs any expenses related to the registration or maintenance of
the Marks, Tubos agrees to timely reimburse the Company for any
such expenses.
SECTION 5.
QUALITY
STANDARDS
5.1.
The Company agrees that the nature
and quality of all services rendered by the Company in connection
with the Marks; all goods sold by the Company under the Marks; and
all related advertising, promotional and other related uses of the
Marks by the Company shall conform to or exceed corresponding
quality standards set by Tubos.
SECTION 6.
QUALITY
MAINTENANCE
6.1.
The Company agrees to cooperate with
Tubos in facilitating Tubos appropriately monitoring the quality
standards used by the Company, to permit reasonable inspection of
the Company’s operation, and to supply Tubos with specimens
of all uses of the Marks upon request. The Company shall comply
with all applicable laws and regulations and obtain all appropriate
government approvals pertaining to the sale, distribution and
advertising of goods and services covered by the license granted
herein. The Company agrees that the quality of any products sold
with the Marks shall be at least as good as the quality of the
goods and services marketed by Tubos and shall conform to any
quality standards identified by Tubos from time to time.
SECTION 7.
FORM OF USE
7.1.
The Company agrees to use the Marks
only in the form and manner and with appropriate legends as are
prescribed from time to time by Tubos, and not to use any other
trademark or service mark in combination with any trademark owned
or licensed by the Company or LSS (other than the Marks) without
prior written approval of Tubos.
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SECTION 8.
INFRINGEMENT
PROCEEDINGS
8.1.
The Company agrees to promptly
notify Tubos of any unauthorized use of the Marks by others as it
comes to the Company’s attention. Tubos shall have the sole
right and discretion to bring infringement or
