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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 technica
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