EXHIBIT 10.3
TRADEMARK LICENSE
AGREEMENT
This TRADEMARK LICENSE AGREEMENT
(this “ Agreement ”), dated as of
February 15, 2007 (the “ Effective Date ”),
is made by and between Inspire Pharmaceuticals, Inc., a Delaware
corporation having its principal office at 4222 Emperor Blvd.,
Suite 200, Durham, NC 27703 (“ Inspire ”), and
InSite Vision Incorporated, a Delaware corporation having its
principal office at 965 Atlantic Ave., Alameda, CA 94501 (“
InSite ”). Inspire and InSite are each sometimes
referred to individually as a “ Party ” and
together as the “ Parties .”
RECITALS
WHEREAS, InSite and Inspire are
entering into a license agreement (the “ License
Agreement ”) contemporaneously with this Agreement, under
which InSite is granting to Inspire the exclusive rights in the
Territory to certain patents, know-how and regulatory filings for
the commercialization of Subject Products;
WHEREAS, InSite owns and has the
right to grant a license to the InSite Trademarks and the Domain
Names described on Schedule 1 attached hereto;
and
WHEREAS, Inspire desires to obtain
from InSite, and InSite desires to grant to Inspire, rights and
licenses to use the InSite Trademarks and the Domain Names in
connection with the marketing, commercialization and sale of
Subject Products in the Territory under the License
Agreement.
NOW, THEREFORE, in consideration of
the foregoing premises, the rights and benefits that they will each
receive in connection with the License Agreement, and the mutual
representations, covenants and agreements contained herein, Inspire
and InSite, intending to be legally bound, hereby agree as
follows:
ARTICLE 1
DEFINITIONS
1.1 Incorporated Definitions
. Capitalized terms that are used in this Agreement but are not
otherwise defined in this Agreement will have the respective
meaning ascribed to such terms in the License Agreement.
1.2 Additional Definitions .
When used in this Agreement, whether in the singular or plural,
each of the following capitalized terms shall have the meanings set
forth in this Section 1.2.
(a) “ AzaSite Trademark
” means the trademark AzaSite™.
(b) “ Domain Names
” means the internet domain names set forth in Schedule
1 , such domain names being owned and registered by
InSite.
(c) “ Independent
Sublicensee ” has the meaning set forth in
Section 4.4.
(d) “ InSite Trademarks
” means the trademarks set forth in Schedule 1 , such
marks being owned and registered by InSite. From and after the
effective date of the assignment of the AzaSite Trademark by InSite
to Inspire pursuant to Section 2.3(b) of
the License Agreement, the term
“InSite Trademarks” shall not include the AzaSite
Trademark for any purpose under this Agreement.
(e) “ Term ” has
the meaning set forth in Section 4.1.
ARTICLE 2
LICENSES AND
EXCLUSIVITY
2.1 Licenses .
(a) Subject to the terms and
conditions of this Agreement, InSite hereby grants to Inspire a
royalty-free, exclusive (even as to InSite and its Affiliates)
right and license, with the right to grant sublicenses, to use the
AzaSite Trademark and the Domain Names in connection with the
marketing, commercialization and sale of Subject Products in the
Field in the Territory under the License Agreement. In connection
with such license, InSite agrees immediately to cease any and all
use of the Domain Names and to execute and deliver such further and
other documents and to perform such actions as may be necessary to
enable Inspire to access and use the Domain Names under such
license.
(b) Subject to the terms and
conditions of this Agreement, InSite hereby grants to Inspire a
royalty-free, non-exclusive right and license, with the right to
grant sublicenses, to use the InSite Trademarks (other than the
AzaSite Trademark) in connection with the marketing,
commercialization and sale of Subject Products in the Field in the
Territory under the License Agreement. Notwithstanding the
non-exclusive nature of the foregoing grant, InSite hereby
expressly covenants that it shall not, and shall cause its
Affiliates and licensees not to, directly or indirectly:
(x) use the InSite Trademarks in connection with the
marketing, commercialization or sale of Subject Products in the
Field in the Territory; or (y) grant to any Third Party any
right or license under the InSite Trademarks to conduct any of the
activities set forth in the foregoing clause (x).
2.2 Sublicenses . Inspire may
sublicense the rights granted under Section 2.1 only to
sublicensees who will use the InSite Trademarks and the Domain
Names in connection with the marketing, commercialization and sale
of Subject Products in the Field in the Territory under the License
Agreement. All sublicenses granted hereunder must be in writing and
must contain provisions that are not inconsistent with the terms
and conditions of this Agreement. All sublicenses shall include
quality control standards at least as protective as those
referenced under Section 3.1.
2.3 Use of Affiliates and Third
Party Contractors . The licenses granted under Section 2.1
include the right of Inspire to engage its Affiliates and Third
Party contractors in exercising such rights and in carrying out its
activities and obligations under this Agreement, provided that
(i) all such agreements with Third Party contractors must be
in writing and must contain provisions that are not inconsistent
with the terms and conditions of this Agreement and
(ii) Inspire remains responsible for the compliance with this
Agreement by such Affiliates or Third Party contractors.
2.4 No Implied Grants .
Except as expressly licensed hereunder, neither Party grants any
rights to the other Party under this Agreement, by implication or
estoppel, under any of its intellectual property rights.
2
2.5 Registration of License .
Notwithstanding anything to the contrary in Section 5.1,
Inspire, at its expense, may register the licenses granted under
this Agreement in any country of the Territory. Upon request by
Inspire, InSite agrees promptly to execute any “short
form” licenses consistent with the terms and conditions of
this Agreement submitted to it by Inspire reasonably necessary to
effect the foregoing registration in such country.
2.6 Notice . In connection
with the use of the InSite Trademarks, Licensee will mark the first
prominent use of the InSite Trademark with the appropriate
trademark symbol (“TM” or “®”, as set
forth in Schedule 1 or as otherwise reasonably instructed by
InSite in writing) and will include the following legend in
connection with such use: “[InSite Trademark] is the
trademark of InSite Vision Incorporated and is being used by
permission.”
ARTICLE 3
QUALITY CONTROL AND RELATED
MATTERS
3.1 Quality Control and
Standards . Inspire shall adhere to such reasonable quality
control standards that InSite may from time to time promulgate and
communicate to Inspire in writing with respect to the InSite
Trademarks, and shall comply materially with all federal, state and
local laws and regulations governing the use of the InSite
Trademarks in connection with the provision of Inspire Licensed
Products. In order to confirm that Inspire’s use of the
InSite Trademarks complies with this Section 3.1, InSite shall
have the right upon written notice to require that Inspire submit
to InSite a reasonable number of representative samples of any
Inspire Licensed Products or related materials bearing the InSite
Trademarks.
3.2 Protection of the InSite
Trademarks . Inspire hereby acknowledges InSite’s rights
in the InSite Trademarks and shall not at any time do or authorize
to be done any action that would prejudice the validity or
registration of the InSite Trademarks or the good will associated
therewith, including filing for, using or authorizing the use of
any trademark (i) likely to cause consumer confusion with
respect to the InSite Trademarks or (ii) containing
“SITE” as a part. It is understood that neither Inspire
nor any of its Affiliates shall acquire or claim any independent
right, title or interest in or to the InSite Trademarks by virtue
of Inspire’s use of the InSite Trademarks as provided in this
Agreement, it being the intention of the Parties that all use of
the InSite Trademarks by Inspire, and all goodwill associated
therewith, shall at all times inure to the exclusive benefit of
InSite.
ARTICLE 4
TERM AND
TERMINATION
4.1 Term . Excep
