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Trademark License Agreement

Trademark License Agreement

Trademark License Agreement | Document Parties: Hynix Semiconductor Inc | MagnaChip Semiconductor, Ltd You are currently viewing:
This Trademark License Agreement involves

Hynix Semiconductor Inc | MagnaChip Semiconductor, Ltd

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Title: Trademark License Agreement
Date: 6/21/2005
Law Firm: Dechert;Sullivan Cromwell    

Trademark License Agreement, Parties: hynix semiconductor inc , magnachip semiconductor  ltd
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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:

 

1. DEFINITIONS

 

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.

 

  1.1. “Business Products” means Solution Products, Specialty Products and/or derivatives of the foregoing.

 

  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.

 

 

 


  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.

 

  1.4. “Die” means a Business Product prior to its incorporation into a Package or Device.

 

  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”.

 

  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.

 

  1.7. “Package” means a specific type of an enclosure for encompassing one or more Die(s), including electrical contacts thereto.

 

  1.8. “Packaging” means containers, boxes, tubes, and the like used to ship the Business Products.

 

  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.

 

2. LICENSE

 

Subject to the terms and conditions of this Agreement:

 

  2.1. HYNIX TRADEMARKS

 

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.

 

  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.

 

  2.3. INVENTORY

 

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.

 

  2.4. PRINTED MATERIALS

 

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.

 

  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.

 

  2.6. RIGHT TO SUBLICENSE

 

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.

 

  2.7. NO OTHER LICENSE

 

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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