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Exhibit 10.5
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. License Provisions .
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. Quality Control .
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 Li
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