Exhibit 10.5
TRADEMARK LICENSE
AGREEMENT
This Trademark License Agreement
(“ Agreement ”) is entered into as of December
20, 2006 (“ Effective Date ”) by and between
Welspun Pipes, Inc., a Delaware corporation (“
Licensor ”) and Welspun-Lone Star Tubulars LLC, a
limited liability company (“ JV ”).
WHEREAS, Licensor is a licensee of
the Licensed Mark (as defined below) and has the power to
sublicense the Licensed Mark to JV;
WHEREAS, pursuant to that certain
Limited Liability Company Agreement dated December 20, 2006
between Licensor and Lone Star Technologies, Inc. (“
LST ”) (“ JV Agreement ”), Licensor
and LST will form the JV to, among other things, engage in the
manufacture and sale of spiral weld pipe;
WHEREAS, pursuant to the JV
Agreement, Lone Star Steel Company, L.P. (“ LSS,
” and collectively with LST, “ Lone Star
”) and JV have entered into that certain Trademark License
Agreement (“ Lone Star License Agreement ”)
dated on or about the date hereof, whereby LSS has agreed to grant
JV a non-exclusive license to use certain Marks (the “
Lone Star Marks ”) in connection JV’s business
and products on the terms and conditions set forth in the Lone Star
License Agreement; and
WHEREAS, in accordance with the JV
Agreement and in partial consideration of the amounts paid by the
parties pursuant to the JV Agreement, Licensor agrees to grant JV,
and JV desires to receive from Licensor, a non-exclusive sublicense
to use the Licensed Mark in connection with JV’s business and
products on the terms and conditions set forth in this
Agreement.
NOW THEREFORE, in consideration of
the mutual covenants and promises contained herein, the parties
hereto agree as follows:
1.
Definitions.
1.1
“ Affiliate ” 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 more than
fifty percent (50%) of the Specified Person’s outstanding
voting securities or equity interests, (c) of whom the Specified
Person, directly or indirectly, owns or controls more than fifty
percent (50%) of the outstanding voting securities or equity
interests or (d) who has the right, directly or indirectly, to
appoint or elect more than fifty percent (50%) of the Specified
Person’s board of directors or equivalent managing
body.
1.2
“ Business Day ”
means a day on which banks are open for general banking business in
Dallas, Texas, the United States of America (excluding Saturdays,
Sundays and public holidays).
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1.3
“ Licensed Mark ”
means the mark the set forth in Exhibit A attached hereto
and all trademark and service mark applications and registrations
for such mark worldwide. The parties acknowledge and agree
that Exhibit A may be amended as agreed upon by both parties
in writing from time to time during the term of this
Agreement.
1.4
“ Person ” means
any individual, partnership, limited liability company,
corporation, cooperative, joint venture, trust, estate or other
entity.
1.5
“ Territory ”
means worldwide.
2.
License Grant.
2.1
License Grant
. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to JV a
limited, non-exclusive, non-transferable, non-sublicensable,
royalty-free, fully-paid up, perpetual (subject to Section
5.2 ) sublicense to use the Licensed Mark in connection with
JV’s business and products (including, without limitation, as
JV’s corporate name, tradename, trademarks, service marks and
logos, or any part of any of the foregoing) solely in the
Territory; provided that the Licensed Mark are used only: (a) in
combination with the Lone Star Marks to identify JV as the source
of products manufactured and sold by JV (any such combination shall
be referred to in this Agreement as a “ JV Mark
”); and (b) in connection with the manufacture and sale of
helical submerged arc welded steel line pipe (including such line
pipe used for water lines) manufactured at JV facilities located in
North America.
2.2
Licensor’s Right to
Sublicense .
Licensor hereby represents, warrants and covenants that:
(a)
one or more of its Affiliates are
the full and absolute owners of the Licensed Mark;
(b)
it has, and for the duration of this
Agreement will maintain, licenses from each of the owners of the
Licensed Mark, wherein all such licenses cumulatively permit
Licensor to grant the rights and sublicenses granted under this
Agreement according to the terms and conditions set forth in this
Agreement; and
(c)
it is in possession of documentation
evidencing to the reasonable satisfaction of Lone Star that
Licensor has been granted licenses permitting Licensor to
sublicense the Licensed Mark in accordance with subsection (b), and
will reasonably provide all such evidence to Lone Star upon
request.
3.
Ownership.
3.1
Licensor acknowledges that (a) as
between Licensor and JV, JV owns all rights, title and interest in
and to the JV Marks, (b) except as set forth herein, JV has
no
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rights, title or interest in or to
the JV Marks and (c) all use of the JV Marks by JV shall inure to
the benefit of JV.
3.2
JV acknowledges that (a) as between
Licensor and JV, Licensor (and/or its Affiliates) owns all rights,
title and interest in and to the Licensed Mark, (b) except as set
forth herein, JV has no rights, title or interest in or to the
Licensed Mark and (c) all use of the Licensed Mark by JV shall
inure to the benefit of Licensor (and/or its
Affiliates).
3.3
JV agrees not to (and agrees not to
permit or assist any third party to): (a) challenge, contest or
make any claim adverse to ownership of any Licensed Mark by
Licensor and/or its Affiliates or the validity of any Licensed Mark
or the sublicense granted to JV in Section 2 above; (b) except as
expressly permitted by the terms of this Agreement, attempt to
register any Licensed Mark or any mark confusingly similar thereto;
or (c) take any action that might harm or tarnish the reputation or
goodwill of any Licensed Mark or Licensor. If, at any time,
JV acquires any rights, title or interest in, or registrations or
applications for, the Licensed Mark, JV agrees to immediately, upon
Licensor’s request and at no expense to Licensor, assign all
such rights, title, interest, registrations and applications to
Licensor (or, as applicable, its Affiliates), along with any and
all associated goodwill.
3.4
Licensor agrees to cooperate with
Lone Star and JV to file applications for, prosecute, and maintain
the registration of JV Marks in each North American country and
other countries as approved from time to time by both of Licensor
and Lone Star. Upon any termination of this Agreement
pursuant to Section 5.2: (a) JV shall abandon any and all JV Marks
incorporating the Licensed Mark and any rights therein (including,
without limitation, all contractual, statutory and common law
rights); and (b) Licensor and JV will cooperate with Lone Star to
withdraw any pending applications for the registration of any JV
Marks, cancel any JV Marks registered pursuant to this Section, and
otherwise take any and all actions reasonably necessary to
effectuate JV’s abandonment of any and all JV Marks
incorporating the Licensed Mark.
4.
Quality Control Standards;
Compliance with Laws.
4.1
For Licensor’s trademark
quality control purposes, upon Licensor’s prior written
request, JV shall furnish to Licensor a sample of products and
materials bearing the Licensed Mark that JV then currently
distributes or intends to distribute. If Licensor reasonably
and in good faith believes the samples bearing the Licensed Mark do
not meet the Minimum Quality Threshold (as defined below), Licensor
shall notify JV in writing, and JV shall have a reasonable period
of time (but in no event more than 30 days from the date of receipt
of notice) to make the changes and/or corrections that the parties
mutually agree are necessary to protect the Licensed Mark.
For purposes of this Agreement, “ Minimum Quality
Threshold ” shall mean, with respect to each product
bearing the Licensed Mark, the level of quality necessary to
comply: (a) in all material respects, with the respective
specifications and technical requirements of JV’s customers
applicable to such product
