IP Matters. (a) As soon as reasonably practicable but in no event more than thirty (30) days after the Closing Date, Buyer shall, at its sole cost and expense, make any and all filings with any office, agency or body necessary to effect the elimination of any use of the Seller Marks from the company names of any Company Entities and, subject to the penultimate sentence of this Section 6.16(a), in no event more than nine (9) months after the Closing Date, remove, cover or conceal from all of the assets and properties of the Company Entities and the Transferred Assets any and all Seller Marks. The Seller Parent (on behalf of itself and its Affiliates) hereby grants to Buyer, the Company Entities and their respective Affiliates a worldwide, fully paid-up, royalty free, non-exclusive license, to use any Trademarks that are owned by Seller Parent or any of its Affiliates (including the Seller Marks) and that were used in the Business as of the Closing, (1) for nine (9) months following the Closing, in connection with any existing, pre-printed literature and packaging materials and (2) with respect to all other uses, for six (6) months following the Closing; provided, that such Trademarks are used solely for the Business and in substantially the same manner as such Trademarks were used in the Business as of the Closing; provided further, that Buyer shall ensure that any products of the Business bearing the Seller Marks or otherwise distributed or sold under the Seller Marks are of at least the same level of quality as the same applicable products manufactured and sold by Sellers or their applicable Affiliates prior to the Closing Date. Such use of the Seller Marks shall be subject to all generally applicable style and other usage guidelines in effect and used in the Business, for the Seller Marks immediately prior to the Closing Date (which guidelines have been made available to Buyer or are known by the Transferred Employees). All goodwill associated with such use of the Seller Marks shall inure solely to the benefit of Seller or its applicable Affiliates. Notwithstanding anything to the contrary contained herein, nothing in this Section 6.16(a) shall prohibit the Buyer, the Company Entities or their respective Affiliates from using such Trademarks (and shall not be considered to be in breach of this Section 6.16(a) as a result of the use of such Trademarks) for internal purposes (provided that Buyer, the Company Entities and their respective Affiliates reasonably endeavor to remove such appearances of the Seller Marks in the ordinary course of the operation of the Business) or in a manner that does not constitute trademark infringement, including for purposes of regulatory filings, describing the past ownership or affiliation of the Business, or for fair use. As of the Closing, subject to Section 6.16(b), Seller Parent shall cease using, and shall cause its Affiliates to cease using, all Trademarks owned by the Company Entities. (b) Subject to the following provisions of this Section 6.16(b), Sellers and their Affiliates shall, within nine (9) months after the Closing Date, remove, cover or conceal from all of the assets and properties of Sellers and their Affiliates the m▇▇▇ “PHOS-CHEK”. Buyer (on behalf of itself and its Affiliates, including, following the Closing, the Company Entities) hereby grants to Sellers and their Affiliates a worldwide, fully paid-up, royalty free, non-exclusive license, to use the m▇▇▇ “PHOS-CHEK” for nine (9) months following the Closing, in connection with any existing, pre-printed literature and packaging materials of Sellers and their Affiliates for the Phos-Chek P▇▇, ▇▇▇▇-▇▇▇▇ ▇▇▇▇, ▇▇▇▇-▇▇▇▇ P42 and Phos-Chek 720 products; provided, that such m▇▇▇ is used solely for Sellers’ and their Affiliates’ respective businesses related to such products and in substantially the same manner as such m▇▇▇ was used in such businesses as of the Closing; provided further, that Sellers shall ensure that any products of Sellers’ and their Affiliates’ respective businesses bearing the m▇▇▇ “PHOS-CHEK” or otherwise distributed or sold under such m▇▇▇ are of at least the same level of quality as such products manufactured and sold by Sellers or their applicable Affiliates prior to the Closing Date. Such use of the m▇▇▇ “PHOS-CHEK” shall be subject to all generally applicable style and other usage guidelines in effect for such m▇▇▇ immediately prior to the Closing Date. All goodwill associated with such use of the m▇▇▇ “PHOS-CHEK” shall inure solely to the benefit of Buyer or the Company Entities or their applicable Affiliates. Notwithstanding anything to the contrary contained herein, nothing in this Section 6.16(b) shall prohibit Sellers and their Affiliates from using the m▇▇▇ “PHOS-CHEK” (and shall not be considered to be in breach of this Section 6.16(b) as a result of the use of such m▇▇▇) for internal purposes (provided that Sellers and their Affiliates reasonably endeavor to remove such appearances of the m▇▇▇ in the ordinary course of the operation of their businesses) or in a manner that does not constitute trademark infringement, including for purposes of regulatory filings, describing the past ownership or affiliation of the Business or for fair use. For the avoidance of doubt, nothing in this Agreement shall limit or restrict Sellers or their respective Affiliates from use of any PHOS-formative marks other than “PHOS-CHEK” or marks constituting an abbreviation or extension thereof or that are likely to cause confusion therewith (other than confusion solely due to the use of the word “PHOS”). (c) Each of the Sellers and the Seller Parent (on behalf of each of itself and its Affiliates) hereby grants (and hereby causes their respective Affiliates to grant) to the Licensed Buyer Entities, effective as of the Closing, a worldwide, fully paid-up, royalty-free, irrevocable, non-terminable, perpetual, non-exclusive license under and to any Intellectual Property (other than Trademarks) owned as of the Closing Date by Sellers or any of their Affiliates and used or held for use in, or necessary for, the conduct of the Business (the “Seller Retained Licensed IP”), including to make, have made, use, sell, offer to sell, and import any product or service, to reproduce, make derivative works of, distribute, display and perform any work, and to use the Seller Retained Licensed IP, in each case, solely in the conduct of the Licensed Business. “Licensed Buyer Entities” means, together with their respective successors and permitted assigns, (i) Buyer and the Company Entities, and (ii) their respective Affiliates. “Licensed Business” means (a) the fire safety field, including the research, design, development, manufacture, production, marketing, or sale of, or application science or logistics services with respect to, fire retardants, class A foam or gel, class B foam, or fuel gelling agent (including the Phos-Chek, Fire-Trol and Auxquimia products and including for wildland, municipal, industrial or residential applications, but excluding, for the avoidance of doubt, brominated, phosphorous and magnesium fire retardants for various plastic, textile and polyurethane applications), or the supply of such products or related equipment or services and (b) the research, design, development, manufacture, production, marketing, or sale of, or application science or logistics services with respect to, phosphorus pentasulfide or the supply thereof or related equipment or services, and, in each case, with respect to the foregoing clauses (a) and (b), including as engaged in by Seller Parent or any of its Subsidiaries as of, or in the six (6) months preceding, the date hereof or the Closing Date.
Appears in 1 contract
IP Matters. 17.1 On or before the Separation Effective Time, the Seller and the Company shall (and shall procure that the RemainCo Group and the DivestCo Group respectively shall), execute and deliver the IP Cross-Licences substantially in the agreed terms in relation to the Shared IPR.
17.2 From and after the date hereof, the Seller and the Company shall (and shall procure that the RemainCo Group and the DivestCo Group respectively shall), use reasonable endeavours to re-engineer the applicable production lines at the Rothenkirchen facility such that, as of the Separation Effective Time, such production lines no longer use the technology known as “GSS” and “Tandem”, with the Seller to bear all relevant costs and expenses incurred by any party (or any member of their respective Groups) in connection with such actions.
17.3 From and after the date hereof, the Seller and the Company shall (and shall procure that the RemainCo Group and the DivestCo Group respectively shall), use reasonable endeavours (a) As soon as reasonably practicable but in no event more than thirty (30) days after the Closing Date, Buyer shall, at its sole cost and expense, make any and all filings with any office, agency or body necessary to effect the elimination of any use of the Seller Marks from the company names of any Company Entities and, subject to the penultimate sentence of this Section 6.16(a), in no event more than nine (9) months after the Closing Date, remove, cover or conceal from all of the assets and properties of the Company Entities and the Transferred Assets any and all Seller Marks. The Seller Parent (on behalf of itself and its Affiliates) hereby grants to Buyer, the Company Entities and their respective Affiliates a worldwide, fully paid-up, royalty free, non-exclusive license, to use any Trademarks that are owned by Seller Parent or any of its Affiliates (including the Seller Marks) and that were used reformulate certain products in the Business System Professional product line such that, as of the ClosingSeparation Effective Time, no products in the System Professional product line incorporate the technology known as the “Diamond 3-ingredient cocktail,” (1b) to submit to the appropriate regulatory authorities such documentation as is necessary to register the change of ingredients in such products with such authorities and (c) to update the packaging and marketing materials for nine such products to reflect such change in ingredients, with the Seller to bear all relevant costs and expenses incurred by any party (9or any member of their respective Groups) months following the Closing, in connection with any existingsuch actions.
17.4 The Separation Committee may, pre-printed literature and packaging materials and (2) with respect from time to all other uses, for six (6) months following the Closing; provided, that such Trademarks are used solely for the Business and in substantially the same manner as such Trademarks were used in the Business as of the Closing; provided further, that Buyer shall ensure that any products of the Business bearing the Seller Marks or otherwise distributed or sold under the Seller Marks are of at least the same level of quality as the same applicable products manufactured and sold by Sellers or their applicable Affiliates time prior to the Closing Date. Such use of Separation Effective Time, update the IPR Allocation Matrix by written notice to the parties to the extent it reasonably considers that the IPR Allocation Matrix does not correctly allocate Business IP Assets to the correct Business, provided that the Seller Marks shall be subject permitted to all generally applicable style and other usage guidelines in effect and used in update the Business, for the Seller Marks immediately prior IPR Allocation Matrix by written notice to the Closing Date (which guidelines have been made available to Buyer or are known by the Transferred Employees). All goodwill associated with such use of the Seller Marks shall inure Separation Committee solely to the benefit of Seller or its extent any Intellectual Property Rights included in the IPR Allocation Matrix have expired under applicable Affiliates. Notwithstanding anything to the contrary contained herein, nothing in this Section 6.16(a) shall prohibit the Buyer, the Company Entities or their respective Affiliates from using such Trademarks law (and shall not no renewal is applicable), or have been allowed to lapse or be considered to be in breach of this Section 6.16(a) as a result of the use of such Trademarks) for internal purposes (provided that Buyer, the Company Entities and their respective Affiliates reasonably endeavor to remove such appearances of the Seller Marks marked cancelled or abandoned in the ordinary course of the operation of the a DivestCo Business) or in a manner that does not constitute trademark infringement, including for purposes of regulatory filings, describing the ’s operations consistent with past ownership or affiliation of the Business, or for fair use. As of the Closing, subject to Section 6.16(b), Seller Parent shall cease using, and shall cause its Affiliates to cease using, all Trademarks owned by the Company Entitiespractice.
(b) Subject to the following provisions of this Section 6.16(b), Sellers and their Affiliates shall, within nine (9) months after the Closing Date, remove, cover or conceal from all of the assets and properties of Sellers and their Affiliates the m▇▇▇ “PHOS-CHEK”. Buyer (on behalf of itself and its Affiliates, including, following the Closing, the Company Entities) hereby grants to Sellers and their Affiliates a worldwide, fully paid-up, royalty free, non-exclusive license, to use the m▇▇▇ “PHOS-CHEK” for nine (9) months following the Closing, in connection with any existing, pre-printed literature and packaging materials of Sellers and their Affiliates for the Phos-Chek P▇▇, ▇▇▇▇-▇▇▇▇ ▇▇▇▇, ▇▇▇▇-▇▇▇▇ P42 and Phos-Chek 720 products; provided, that such m▇▇▇ is used solely for Sellers’ and their Affiliates’ respective businesses related to such products and in substantially the same manner as such m▇▇▇ was used in such businesses as of the Closing; provided further, that Sellers shall ensure that any products of Sellers’ and their Affiliates’ respective businesses bearing the m▇▇▇ “PHOS-CHEK” or otherwise distributed or sold under such m▇▇▇ are of at least the same level of quality as such products manufactured and sold by Sellers or their applicable Affiliates prior to the Closing Date. Such use of the m▇▇▇ “PHOS-CHEK” shall be subject to all generally applicable style and other usage guidelines in effect for such m▇▇▇ immediately prior to the Closing Date. All goodwill associated with such use of the m▇▇▇ “PHOS-CHEK” shall inure solely to the benefit of Buyer or the Company Entities or their applicable Affiliates. Notwithstanding anything to the contrary contained herein, nothing in this Section 6.16(b) shall prohibit Sellers and their Affiliates from using the m▇▇▇ “PHOS-CHEK” (and shall not be considered to be in breach of this Section 6.16(b) as a result of the use of such m▇▇▇) for internal purposes (provided that Sellers and their Affiliates reasonably endeavor to remove such appearances of the m▇▇▇ in the ordinary course of the operation of their businesses) or in a manner that does not constitute trademark infringement, including for purposes of regulatory filings, describing the past ownership or affiliation of the Business or for fair use. For the avoidance of doubt, nothing in this Agreement shall limit or restrict Sellers or their respective Affiliates from use of any PHOS-formative marks other than “PHOS-CHEK” or marks constituting an abbreviation or extension thereof or that are likely to cause confusion therewith (other than confusion solely due to the use of the word “PHOS”).
(c) Each of the Sellers and the Seller Parent (on behalf of each of itself and its Affiliates) hereby grants (and hereby causes their respective Affiliates to grant) to the Licensed Buyer Entities, effective as of the Closing, a worldwide, fully paid-up, royalty-free, irrevocable, non-terminable, perpetual, non-exclusive license under and to any Intellectual Property (other than Trademarks) owned as of the Closing Date by Sellers or any of their Affiliates and used or held for use in, or necessary for, the conduct of the Business (the “Seller Retained Licensed IP”), including to make, have made, use, sell, offer to sell, and import any product or service, to reproduce, make derivative works of, distribute, display and perform any work, and to use the Seller Retained Licensed IP, in each case, solely in the conduct of the Licensed Business. “Licensed Buyer Entities” means, together with their respective successors and permitted assigns, (i) Buyer and the Company Entities, and (ii) their respective Affiliates. “Licensed Business” means (a) the fire safety field, including the research, design, development, manufacture, production, marketing, or sale of, or application science or logistics services with respect to, fire retardants, class A foam or gel, class B foam, or fuel gelling agent (including the Phos-Chek, Fire-Trol and Auxquimia products and including for wildland, municipal, industrial or residential applications, but excluding, for the avoidance of doubt, brominated, phosphorous and magnesium fire retardants for various plastic, textile and polyurethane applications), or the supply of such products or related equipment or services and (b) the research, design, development, manufacture, production, marketing, or sale of, or application science or logistics services with respect to, phosphorus pentasulfide or the supply thereof or related equipment or services, and, in each case, with respect to the foregoing clauses (a) and (b), including as engaged in by Seller Parent or any of its Subsidiaries as of, or in the six (6) months preceding, the date hereof or the Closing Date.
Appears in 1 contract
Sources: Separation Agreement (Coty Inc.)