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Exhibit
10.8
Execution
Copy
Trademark License
Agreement
This Trademark License
Agreement (“Agreement”) is made and entered into this 6
day of October, 2004, by and among MagnaChip Semiconductor, Ltd., a
company organized and existing under the Laws of the Republic of
Korea (“Korea”), with offices at 1, Hyangjeong-dong,
Heungduk-gu, Cheongju-si, Chungcheongbuk-do, Korea
(“Purchaser”), and Hynix Semiconductor Inc., a
corporation organized under the Laws of the Republic of Korea, with
offices at San 136-1, Ami-Ri, Bubal-Eub, Ichon-Si. Kyoungki-Do,
Korea (“Hynix”). Either Purchaser or Hynix may be
referred to herein as a “Party” or together as the
“Parties,” as the case may require.
RECITALS
WHEREAS, Purchaser and Hynix
have entered into a certain Business Transfer Agreement, dated as
of June 12, 2004, as amended (the “Business Transfer
Agreement”) pursuant to which Purchaser will acquire all of
the Acquired Assets and assume all of the Assumed Liabilities upon
the terms and conditions set forth in the Business Transfer
Agreement;
WHEREAS, pursuant to the
Business Transfer Agreement, Hynix has agreed to grant to Purchaser
a license for the use of the Hynix Trademarks; and
WHEREAS, the execution and
delivery of this Agreement is required by the Business Transfer
Agreement and is a condition to the closing of the transactions
contemplated thereunder.
NOW, THEREFORE, in
consideration of the promises and the mutual covenants and
undertakings contained herein and for other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties, intending to be legally bound hereby, do
agree as follows:
Capitalized terms used herein
shall have the meanings ascribed to such terms in the Business
Transfer Agreement unless otherwise defined herein or as set forth
below.
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1.1. |
“Business Products” means Solution Products,
Specialty Products and/or derivatives of the foregoing. |
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1.2. |
“Business Product Codes” means those of the product
or part identification codes adopted by Hynix for any Business
Product, Die, and/or Device, as applicable, as of the Closing Date
prior to giving effect to the transactions contemplated under the
Business Transfer Agreement, the ownership of which were not
transferred to Purchaser pursuant to the terms of the Business
Transfer Agreement. |
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1.3. |
“Device” means one or more Dies that are either (i)
incorporated into a Package or (ii) packaged together but not
placed into a Package. |
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1.4. |
“Die” means a Business Product prior to its
incorporation into a Package or Device. |
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1.5. |
“Hynix Trademark” means any trademarks, service
marks, trade names, logotypes, slogans, and trade dress associated
therewith, and applications for the foregoing, owned or controlled
by Hynix, a Subsidiary of Hynix and/or any third party (to the
extent permitted under the license from such third party) and used
with or embedded on Masks, Business Products, Dies, Devices,
Packages, Printed Materials, and/or Packaging, as of the Closing
Date, including without limitation, “Hynix”,
“HEI”, and “Hyundai”. |
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1.6. |
“Masks” means the masks used by the Business in the
manufacture of Dies which include Hynix Trademarks. The Masks, when
used to manufacture Dies, will form an image of Hynix Trademarks in
various layers that form the semiconductor circuits in
Dies. |
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1.7. |
“Package” means a specific type of an enclosure for
encompassing one or more Die(s), including electrical contacts
thereto. |
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1.8. |
“Packaging” means containers, boxes, tubes, and the
like used to ship the Business Products. |
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1.9. |
“Printed Material” means brochures, manuals, data
books and other sales and marketing information used in the sale or
for marketing of the Business Products. |
Subject to the terms and
conditions of this Agreement:
As of the Closing Date and
subject to the terms of this Agreement, Hynix hereby grants to
Purchaser a worldwide, paid-up, royalty-free, non-exclusive,
non-transferable (except as permitted under Section 7.11 of this
Agreement) right and personal license under and to the Hynix
Trademarks to use the Hynix Trademarks (a) to manufacture Business
Products, Dies and/or Devices by using the Masks and/or Packages
existing as of the Closing Date; and/or (b) to the extent Hynix
Trademarks are used or embedded in any Business Products, Dies,
Devices, Packages, Printed Materials and/or Packaging, and with
respect to any inventory of the Business as of the Closing Date
using the Hynix Trademarks, to market and sell Business Products,
Dies and/or Devices manufactured pursuant to subitem (a) of this
sentence or in the inventory of the Business as of the Closing
Date, with such right and license to continue for a period of three
years from the Closing Date (the “License Term”);
provided that Hynix will permit
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Purchaser to continue to use
the Hynix Trademarks used or embedded in any Business Products,
Dies, Devices, Packages, Printed Materials and/or Packaging that
were manufactured by using the Masks and/or Packages existing as of
the Closing Date or were in the inventory of the Business as of the
Closing Date if and during such time as Purchaser can demonstrate a
need for such extension of the License Term. The license above
shall also apply to the use of replacement Masks so long as (i)
Purchaser demonstrates with documentary evidence that it is
required to requalify the applicable Business Product, Die and/or
Device with any customer who previously qualified such Business
Product, Die and/or Device if such license did not apply to
replacement Masks and (ii) Purchaser uses commercially reasonable
efforts to avoid requalification of the applicable Business
Product, Die and/or Device with any customer who previously
qualified such Business Product, Die and/or Device if such license
did not apply to replacement Masks; provided, further, that
Purchaser agrees to discontinue the use of Hynix Trademarks on the
Masks and to replace them with Purchaser’s own trademarks
and/or identification thereon with respect to any Business Product,
Die and/or Device, at such time as the applicable Business Product,
Die and/or Device has been requalified with all customers who
previously qualified such Business Product, Die and/or
Device.
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2.2. |
BUSINESS PRODUCT CODES |
As of the Closing Date and
subject to the terms of this Agreement, Hynix hereby grants to
Purchaser a perpetual, worldwide, paid-up, royalty-free,
non-exclusive, non-transferable (except as permitted under Section
7.11 of this Agreement) right and personal license under and to the
Business Product Codes to use such Business Product Codes (a) in
relation to the manufacture, marketing and sale of the Masks,
Business Products, Dies, Devices and/or Packages and/or (b) to
create Masks, Packages and/or Packaging for the Business Products,
Dies and/or Devices.
It is understood that in the
event the Hynix Trademarks and/or Business Product Codes are
included on finished Business Products, Dies, Devices, Packages
and/or Packaging in the inventory of the Business as of the Closing
Date, such completed Business Products, Dies and/or Devices may be
resold by Purchaser (and such Packages and Packaging used in
connection with Business Products, Dies and/or Devices) with such
Hynix Trademarks and/or Business Product Codes, as applicable,
thereon for the License Term.
It is understood that, as of
the Closing Date and subject to the terms of this Agreement, as to
Printed Materials which exist as of the Closing Date, in the event
the Hynix Trademarks and/or Business Product Codes are included on
such Printed Materials, Hynix hereby grants to Purchaser a
worldwide, paid-up, royalty-free, non-transferable (except as
permitted under Section 7.11 of this Agreement), right and personal
license to use such
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Hynix Trademarks and/or
Business Product Codes in connection with the depletion of such
Printed Materials, with the Hynix Trademarks and/or Business
Product Codes on them, in connection with Purchaser’s
marketing and sales activities for the Business Products, Dies
and/or Devices in the inventory of the Business as of the Closing
Date, for the License Term. As soon as commercially reasonable, but
in any event within twelve months after the Closing Date, Purchaser
shall cease using the Hynix Trademarks on any and all Printed
Materials that are used for such marketing and sales activities of
Purchaser.
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2.5. |
MANUFACTURER IDENTIFICATION |
Notwithstanding anything to
the contrary in this Agreement, Purchaser shall take reasonable
measures to assure and implement, through date coding or some other
methods mutually agreed by the Parties, identification on the
Business Products, Dies, Devices, Packages, Packaging and Printed
Materials to avoid confusion by any third parties in determining
whether such Business Products, Dies and/or Devices, as applicable,
were made by Purchaser or Hynix when using Hynix Trademarks. As
soon as commercially reasonable, but in any event within twelve
months after the Closing Date, Purchaser shall cause the
Purchaser’s name as manufacturer or supplier to appear on the
Printed Materials and the Packaging of all Business Products, Dies
and/or Devices in a manner that clearly identifies Purchaser as
such.
Notwithstanding any provision
to the contrary, subject to Section 6.4 of the Business Transfer
Agreement, Purchaser shall have the right to sublicense the license
and other rights of use granted under this Agreement for the sole
purpose of having Warrant Issuer’s Subsidiaries, and/or
Purchaser’s agents and/or contractors, exercise its rights
hereunder solely on its behalf to make, manufacture, design,
develop or package any semiconductor products (other than Memory
Products) for Purchaser or any Memory Products for Hynix and/or any
Subsidiary(ies) of Hynix. In no event shall Warrant Issuer’s
Subsidiaries, or Purchaser’s agents or contractors, make,
manufacture, design, develop or package any products under this
sublicense for, and/or sell any products made under this sublicense
to, any party other than Purchaser and/or any Subsidiary(ies) of
Warrant Issuer.
Except for the license for
the use of, and other rights of use of, the Hynix Trademarks and
Business Product Codes expressly granted in Sections 2.1, 2.2, 2.3,
2.4 and 2.6 above, no license right whatsoever is granted to
Purchaser or any of its Subsidiaries directly or indirectly
pursuant to this Agreement, including any license to use the trade
name of Hynix.
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2.8. |
REGISTERED USER REQUIREMENTS |
Hynix may, on behalf of both
Parties and at its expense, take such action, in its sole
discretion, that it deems necessary or desirable with respect to
compliance with registered user or similar filing requirements of,
or to otherwise cause the license and other rights of use granted
under this Agreement to be registered with, the appropriate
authorities of the government of any jurisdiction. In addition,
Hynix shall, on behalf of both Parties, take such other requested
action with respect to compliance with registered user or similar
filing requirements of, or to otherwise cause the licens
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