TRADEMARK LICENSE AGREEMENTTrademark License Agreement |
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LONE STAR TECHNOLOGIES INC | APOLO TUBOS E EQUIPAMENTOS S.A. | APOLO MECĀNICA E ESTRUTURAS S.A.. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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Search Trademark License Agreement by:
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. |
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






