TRADEMARK LICENSE
AGREEMENT
This
Trademark License Agreement (this “Agreement” ),
effective as of the 31st day of December, 2002 (the
“Effective Date” ), is made and entered into by
and between Veraz Networks, Inc. (formerly NexVerse Networks,
Inc.), a Delaware corporation ( “Company” ) and
ECI Telecom Ltd., an Israeli corporation ( “ECI”
).
WHEREAS,
Company, ECI and ECI Telecom — NGTS, Inc., a Delaware
corporation and an indirect wholly owned subsidiary of ECI, are
parties to that certain Share Exchange Agreement dated as of
October 30, 2002 (the “Share Exchange
Agreement” ); and
WHEREAS,
in furtherance of the Share Exchange Agreement, ECI desires to
grant a license to Company under the trademarks and service marks
identified in Schedule A (the “Licensed
Marks” ) and the “ECI” trade name as
specified in Schedule A (the “Licensed
Name” ), and Company desires to receive such rights from
ECI.
NOW,
THEREFORE, in consideration of the foregoing premises and the
agreements and covenants set forth herein, and for other good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties do hereby agree as
follows:
1.1 Licensed
Marks and Name . Subject to all of the terms and conditions of
this Agreement, ECI hereby grants to Company a limited,
nonexclusive, royalty-free, non-transferable (except as
specifically set forth in Section 7), non-sublicensable
(except as specifically set forth below) right and license during
the Term to use the Licensed Marks and the Licensed Name anywhere
in the world solely in connection with the Company Business and in
the form and for the purpose specified in Schedule A
(the “License Purpose”), and solely in accordance with
trademark usage guidelines attached hereto as
Schedule B , as may be amended and provided to Company
by ECI in ECI’s reasonable discretion from time to time.
Company shall have the limited right to sublicense the rights above
to the Licensed Marks and the Licensed Name for the License Purpose
to a wholly owned subsidiary of Company (a
“Subsidiary”); provided, however, that (i) each
Subsidiary be bound by the terms and conditions of this Agreement
(including, without limitation, the license restrictions and
indemnification obligations), (ii) Company shall remain liable
for the actions or inactions of each Subsidiary with respect to the
Licensed Marks and the Licensed Name, and (iii) each such
sublicense shall automatically terminate if the Subsidiary at any
time ceases to be a wholly-owned subsidiary of Company. As used in
this Agreement, the term “Company Business”
shall mean the marketing, sales, distribution and service of the
DCME product line, VoIP media gateway, and end-to-end IP
telephony.
1.2
Ownership and Restrictions .
1.2.1
Ownership . The Licensed Marks and the Licensed Name, and
all goodwill pertaining thereto, are owned and shall be retained
solely and exclusively by ECI. Except for the limited license
expressly set forth in Section 1.1, Company shall have no
right, title or interest in or to the Licensed Marks or Licensed
Name and all rights not specifically granted to Company
in
1.
Section 1.1 are expressly reserved to ECI.
All use of the Licensed Marks and Licensed Name by Company shall
inure to the benefit of ECI for all purposes, including, without
limitation, for purposes of trademark registration and domain name
registration, and nothing herein shall confer any such rights to
Company. Nothing in this Agreement shall in any way limit or
restrict ECI’s right, either by itself of through third
parties, to use, promote, license or otherwise exploit the Licensed
Marks, the Licensed Name, or any portion thereof.
1.2.2 General
Restrictions . Company will not use the Licensed Marks in any
manner which is not specifically authorized by this Agreement.
Without limiting the generality of the foregoing, (a) Company
shall not use any marks, trade names or Internet domain names
confusingly similar to the Licensed Marks and Licensed Name,
(b) Company shall not use any Licensed Mark, the Licensed
Name, or portion thereof in conjunction with any Company trademark,
trade name or logo in a manner that suggests that such marks are a
composite or singular mark, and (c) Company shall use the
Licensed Marks and Licensed Name in compliance with all applicable
laws and regulations (including, without limitation, all laws and
regulations relating to the maintenance of the validity and
enforceability of a Licensed Mark or Licensed Name), and shall at
all times conduct its activities under this Agreement in a lawful
manner. Company agrees that it shall cooperate to avoid confusion
or conflict arising out of Company’s and ECI’s
(including any licensees of ECI) use of the Licensed Marks and
Licensed Name, and to resolve any such conflicts to the
satisfaction of ECI. Company shall not challenge the validity of
the Licensed Marks or the Licensed Name, any registrations or
applications for registration thereof or ECI’s ownership
thereof, or register or attempt to register any Licensed Mark or
the Licensed Name or any confusingly similar intellectual property,
including, without limitation, Internet domain names and any phrase
in which a Licensed Mark or the Licensed Name is used.
1.2.3
Conflicting Uses . Company understands and agrees that it
does not have the right to use any of the Licensed Marks or the
Licensed Name in any manner that might conflict with the rights of
any third party or tarnish, disparage, weaken or otherwise be
reasonably expected to adversely affect ECI’s rights in any
of the Licensed Marks or the Licensed Name. If ECI determines in
its discretion that Company’s use of a Licensed Mark or the
Licensed Name may or does infringe the rights of any third party or
adversely affect ECI’s rights in such Licensed Mark or
Licensed Name, Company will terminate or modify such use
immediately in accordance with ECI’s instructions. If Company
fails to terminate or modify such use as reasonably directed by
ECI, ECI shall have the right to terminate this Agreement for
breach as set forth in Section 4.2. If ECI identifies
conflicting uses requiring treatment under this Section, ECI agrees
to work with Company in good faith to identify alternatives under
this Section permitting modification of conflicting uses, prior to
exercising its right of termination under this Section. Company
shall notify ECI promptly of any infringement or adverse affect
which comes to Company’s attention, and ECI shall have the
sole right and authority to take action in any such
case.
1.2.4 Further
Assurances . Company shall cooperate and assist ECI in
securing, perfecting, preserving and enforcing ECI’s rights
in the Licensed Marks and the Licensed Name. Without limitation,
Company shall, at ECI’s sole expense, (a) execute and
deliver to ECI, upon ECI’s request, all documents which are
necessary or desirable to secure, prefect or preserve ECI’s
rights in and to the Licensed Marks and the Licensed Name, to
record Company as a registered user of the Licensed Marks and the
Licensed Name or to cancel such registered user
2.
recordation
when appropriate and (b) cooperate and assist ECI in
registering, and prosecuting claims against infringers of, the
Licensed Marks and the Licensed Name.
1.3 No
Warranty . The grant of rights hereunder by ECI to the Licensed
Marks and the Licensed Name is made only to the extent of the
rights actually held by ECI in such Licensed Marks and Licensed
Name. ECI makes no warranty, express or implied, and hereby
disclaims all warranties, with respect thereto or with respect to
the rights of any third parties that may conflict with the rights
granted hereunder.
2.1 Quality
Standards . ECI shall have the right to exercise quality
control over Company’s use of the Licensed Marks and the
Licensed Name, including over the materials, products and services
which are actually or planned to be offered, sold, marketed,
distributed or provided (“Offered”) by Company under or
in connection with any of the Licensed Marks or the Licensed Name,
and to the degree deemed necessary by ECI to maintain the validity
and enforceability of the Licensed Marks and the Licensed Name and
to protect the goodwill associated therewith. ECI acknowledges that
the quality of the materials, products and services Offered by ECI
through ECI’s business as of the Effective Date is adequate
for this purpose. Accordingly, Company acknowledges and is familiar
with the high standards, quality, style and image of ECI, and
Company shall at all times during the Term use the Licensed Marks
and the Licensed Name in a manner that is consistent therewith; and
Company shall ensure that the materials, products and services
Offered by it under or in connection with the Licensed Marks or the
Licensed Name adhere to at least this level of quality and shall
not reflect adversely upon ECI, the Licensed Marks or the Licensed
Name. Company shall not use or display the
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