TERRITORY NUMBER MARK CLASS
EXHIBIT
10.5
Agreement
by and between CAPITOL BANCORP LTD., a Michigan corporation (“Licensor”)
and MICHIGAN COMMERCE BANCORP LIMITED, a Michigan corporation (“Licensee”)
made this day of ______________, 2009 (the “License”)
(collectively, the “Parties”,
individually, a “Party”).
ARTICLE
1
DEFINITIONS
The
following terms shall have the following definitions when used in this
License:
1.1 “Change of
Control” shall mean (i) the direct or indirect acquisition (by merger,
consolidation, business combination or otherwise) by any Person or group of
Persons of beneficial ownership (as defined in Rule 13d-1 and Rule 13d-5 under
the Securities Exchange Act of 1934) of 50% or more of the Total Voting Power of
Licensee, (ii) any merger, consolidation or other business combination of
Licensee or an affiliate of Licensee with any Person after giving effect to
which (x) the shareholders of Licensee immediately prior to such transaction do
not own at least 50% of the Total Voting Power of the ultimate parent entity of
the parties to such transaction or (y) individuals who were directors of
Licensee immediately prior to such transaction (or their designees) do not
constitute a majority of the board of directors of such ultimate parent entity,
and (iii) the direct or indirect acquisition by any Person or group of Persons
of all or substantially all of the assets of Licensee.
1.2 “Effective
Date” shall mean
the date written hereinabove.
1.3 “▇▇▇▇”
shall mean the marks and Design, and the registrations therefor in the United
States, as shown on Exhibit 1 to this License.
1.4 “Marketing
Partner” shall mean any third party to whom Licensee has previously
granted the right to use the ▇▇▇▇ solely in connection with the Services and any
third party to whom Licensee grants the right to use the ▇▇▇▇ during the Term
solely in connection with the Services.
1.5 “Person”
shall mean any means individual, corporation, limited liability company,
partnership, association, trust or other entity or organization, including a
governmental or political subdivision or an agency or instrumentality
thereof.
1.6 “Related
Company” shall mean any company which is wholly owned, either directly or
indirectly, by Licensor (with respect to Licensor Related Companies) or Licensee
(with respect to Licensee Related Companies). For the avoidance of doubt, the
companies listed in Exhibit 2 shall be Licensee’s Related Companies at the time
of this License.
1.7 “Services”
shall mean services relating to Licensee’s, or Related Companies’ banking
business and such services as related and ancillary thereto.
1.8 “Standards of
Quality” shall mean substantially the same standards of quality, service
and other standards that have been observed as of the Effective Date by Licensee
and/or
1
Related
Companies and/or Marketing Partners in the development, marketing, advertising,
performance and sale of any Services offered under the ▇▇▇▇ in the
Territory.
1.9 “Territory”
shall mean the United States and the Internet (solely for purposes of promoting
the Services to residents of the United States and providing the Services to
existing customers).
1.10
“Total Voting
Power” shall mean, with respect to any Person, the total combined voting
power of all securities of such Person entitled to vote generally in the
election of directors of such Person.
ARTICLE
2
GRANT
Subject
to the terms and condition of this License and pursuant to the Parent License
Agreement:
2.1 Licensor
hereby grants to Licensee a limited, non-transferable, royalty-free License to
use the ▇▇▇▇ in the Territory in connection with the Services as described in
this License, including in connection with the advertising and promotion of the
Services (“Advertising”),
with the right to sublicense such right, but only to Related Companies and/or
Marketing Partners (collectively, “Sublicensees”)
in connection with the Services, provided that Licensee shall procure that such
Sublicensees are likewise subject to all the terms and conditions of this
License. Licensee shall cause its Sublicensees to comply with all the terms and
conditions of the License and shall be responsible to Licensor for ensuring
compliance by the Sublicensees with the terms and conditions of this
License.
2.2 During
the Term, Licensee and its Related Companies, but not its Marketing Partners,
may use the ▇▇▇▇ as part of their corporate names, trading names and/or assumed
names.
2.3 Licensee
agrees that as marketing and promotional material inventories are replenished
during the Term, Licensee shall make commercially reasonable efforts to replace
reference to any domain names with a domain name not containing or incorporating
the Marks.
2.4 During
the Term, in relation to search keyterms regarding the Services that include the
▇▇▇▇ or such other similar terms as has been approved in writing by Licensor,
Licensee may procure such keyterms on ▇▇▇.▇▇▇▇▇▇.▇▇▇ and
other search engines where the searcher is from a United States IP address.
2.5 Notwithstanding
any rights granted herein, Licensee and its Sublicensee shall make commercially
reasonable efforts to minimize the use of the ▇▇▇▇ “_____________ ” and shall
have no right to use such ▇▇▇▇ on any advertising or promotional
materials.
2.6 Subject
to Section 2.6, Licensee and its Sublicensees shall only use the ▇▇▇▇ in
connection with any products and services offered or provided in relation to the
Services, immediately prior to the Effective Date, by Licensee and/or its
Sublicensees in the Territory (“Existing
Products”).
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2.7 If
Licensee desires to use (or desires that a Sublicensee may use) the ▇▇▇▇ in
conjunction with any products and services which are not Existing
Products:
(a) it shall
make such request to Licensor in writing;
(b) Licensor
shall, in its reasonable discretion, determine whether it will allow such use,
and shall notify Licensee of such decision in writing within a reasonable time;
and
(c) if
Licensor decides to allow such use, the parties shall negotiate a separate,
royalty-bearing license which shall also require that Licensee pay reasonable
expenses for any additional trademark or service ▇▇▇▇ registrations required if
the ▇▇▇▇ is not registered for use in the appropriate class of goods or services
relating to such product or service;
2.8 For the
avoidance of doubt and notwithstanding any other provision of this License, the
Licensee shall determine the specification, features, pricing and other terms
and conditions of any and all Services in its sole discretion, provided that (i)
any specifications, features, pricing or other terms and conditions of the
Services does not bring Licensor or its affiliates into disrepute, and (ii)
Licensee shall use its best endeavors to ensure that any marketing material
containing the ▇▇▇▇ is accurate and not false or misleading or deceptive or
contain any statements which are derogatory or defamatory of any person or
likely to bring the Licensor and its affiliates into disrepute.
ARTICLE
3
TERM AND
TERMINATION
3.1 The
purpose of this License is to allow for the smooth transition of the business of
the Services conducted under the ▇▇▇▇ in the Territory to a new trademark (the
“New
▇▇▇▇”). Therefore, the term of this License shall be for a maximum of
three (3) years from the date of this License (the “Term”),
provided however, that Licensee uses reasonable commercial endeavors to select,
develop and begin using the New ▇▇▇▇, as soon as practical, which New ▇▇▇▇ shall
not contain either the term “______” or “______” or any similar
terms.
3.2 With
regard to a sublicense to a Related Company, such sublicense shall immediately
terminate without notice if such company ceases to be a Related Company. With
regard to a sublicense to a Marketing Partner, such sublicense shall immediately
terminate without notice if such company ceases to be a Marketing
Partner.
3.3 At any
time following announcement of a transaction involving a Change of Control of
Licensee, Licensor may elect, by delivery of notice in writing to Licensee, to
terminate the License, such termination to take effect on the date specified in
the notice; provided
that without the written consent of Licensee, no such termination shall
occur prior to thirty (30) days after the closing of such Change of Control
transaction.
3.4 Either
party may elect, by delivery of notice in writing to the other party, to
terminate the License, such termination to take effect ninety (90) days from the
date specified in the notice.
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3.5 I, if
Licensee shall have failed to perform any of its material obligations under this
License, Licensor has notified Licensee in writing of such failure and such
failure shall have continued for a period of sixty (60) days after receipt by
Licensee of written notice of such failure.
3.6 Upon
termination of this License, Licensee shall (and shall ensure that its
Sublicensees shall) cease any and all use of the ▇▇▇▇.
ARTICLE
4
QUALITY
CONTROL
4.1 All use
of the ▇▇▇▇ by Licensee and the Sublicensees shall be in compliance with the
Standards of Quality. Licensee shall (and shall ensure that its Sublicensees
shall) not use nor permit the ▇▇▇▇ to be used in any manner which, as a direct
result of such use of the ▇▇▇▇, is likely to (i) subject Licensor to unfavorable
regulatory action; (ii) violate any law; (iii) violate the rights of any person
or entity (other than rights directly relating to the ▇▇▇▇); or (iv) subject
Licensor to liability for any reason (other than as directly relating to the
▇▇▇▇). Any and all uses of the ▇▇▇▇ shall be in accordance with all applicable
federal, state, local or other laws and regulations.
4.2 In order
to promote adherence to the Standards of Quality and for the purpose of
protecting and maintaining the goodwill associated with the ▇▇▇▇ and the
reputation of the Licensor, Licensor shall have the right to:
(a) Obtain
from Licensee reasonable information as to the nature and quality of the
Services and the Advertising and the manner in which the ▇▇▇▇ is used in
connection with the Services and the Advertising; and
(b) Itself or
through an authorized representative, at any reasonable time or times during
regular business hours on reasonable advanced written notice, visit the offices
and facilities of Licensee where the Services are developed, designed, marketed,
promoted, sold, serviced or rendered (i) up to two (2) times per calendar year;
and (ii) additionally, if Licensor notifies Licensee in writing that it believes
that the Services are not conforming to the Standards of Quality or other
requirements of this License, which notice shall provide a description of the
nonconformity that is reasonable under the circumstances and, if appropriate and
available to Licensor, include copies of any documentation relating to such
nonconformity. Licensee shall use all reasonable efforts to procure that its
Sublicensees shall also provide such access to Licensor on the terms set out in
this Section clause 4.2(b). Licensor may conduct a reasonable inspection and
examination of such offices and facilities in order to satisfy itself that the
Services are conforming to the Standards of Quality and the other requirements
of this License provided that Licensor or its authorized representative shall
comply with all codes of conduct and similar policies notified to Licensor by
Licensee at all times while visiting the offices and facilities of Licensee and
its Sublicensees.
(c) In
conducting any such inspection or examination, Licensor shall take all steps
reasonably required by Licensee or its Sublicensees to minimize disruption to
Licensee’s or Sublicensees’ business and to avoid disclosure of any confidential
and proprietary information
4
and
materials, including, but not limited to, executing nondisclosure agreements,
provided that such steps and agreements shall not prevent Licensor from pursuing
any claims that it may have in connection with this License.
(d) Licensee
agrees to furnish Licensor, from time to time as reasonably requested by
Licensor but in any event no more than quarterly, representative samples of
advertising and promotional materials to which the ▇▇▇▇ is affixed and
representative samples showing other uses of the ▇▇▇▇, as well as any other
particular uses of the ▇▇▇▇ reasonably requested by Licensor.
4.3 If at any
time the Services rendered or its Advertising fail, in the reasonable judgment
of Licensor, to conform to the Standard of Quality in any material respect,
Licensor shall notify Licensee of such failure in writing (which notice shall
provide a description of the nonconformity that is reasonable under the
circumstances and, if appropriate and available to Licensor, include samples of
any nonconforming Advertising and copies of any documentation relating to such
nonconformity). Licensee shall take all necessary steps to bring the Services
and Advertising into conformity within thirty (30) days (or such other time
period mutually agreed upon by the parties) after Licensee’s receipt of written
notice of the nonconformity. Notwithstanding the foregoing, in the event
Licensor and Licensee do not agree as to (i) whether a nonconformity exists,
(ii) a remedy for the nonconformity, or (iii) the date by which the
nonconformity will be corrected, the parties shall engage senior management of
each party’s parent company to resolve such dispute.
ARTICLE
5
INTELLECTUAL
PROPERTY
5.1 Licensee
acknowledges that Licensor is the owner of the ▇▇▇▇, any marks which contain the
▇▇▇▇. It is understood and agreed that nothing in this agreement will be deemed
in any way to constitute an assignment by Licensor of the ▇▇▇▇ or of any rights
therein, or to give Licensee or its Sublicensees any right, title or interest in
and to the ▇▇▇▇ (except the right to make use thereof as provided for in this
License).
5.2 Licensor
shall maintain registrations for the ▇▇▇▇ in the United States during the Term
which protect the right of the Licensee to use the ▇▇▇▇ as set out in this
License.
5.3 Licensee
shall (and shall ensure that its Sublicensees shall) not register or apply to
register in any trademark office in any jurisdiction the ▇▇▇▇ or any ▇▇▇▇ which
contains the ▇▇▇▇. Licensee shall (and shall procure that its Sublicensees
shall) also not register any domain name which contains the ▇▇▇▇ or which is
confusingly similar to the ▇▇▇▇. If Licensee or such Sublicensee registers or
applies to register any such marks or domain names, Licensee shall (or Licensee
shall ensure that Sublicensee shall) assign such registration or application or
domain name to Licensor.
5.4 Licensee
shall (and Licensee shall ensure that any Related Company which uses the ▇▇▇▇ as
part of its corporate, trading or assumed name shall) change such corporate,
trading and/or assumed name prior to the end of the Term or earlier if the
License is terminated hereunder.
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5.5 Licensee
shall (and shall ensure that its Sublicensees shall) cooperate with Licensor
with regard to the prosecution and maintenance of any applications, registration
and registered user agreements with regard to the ▇▇▇▇ and similar activities in
relation to the application and registration of the ▇▇▇▇, including the
supplying of specimens of use and executing any documents requested by Licensor
for such purposes.
5.6 Licensee
shall (and shall ensure that its Sublicensees shall) promptly notify Licensor of
any infringement of the ▇▇▇▇ in relation to the Services or any matter which
Licensee reasonably believes does or is likely to adversely affect the goodwill
of the ▇▇▇▇ in relation to the Services and which comes to the attention of
Licensee, provided that failure to so notify (other than due to willful default)
shall not constitute a breach of this License.
5.7 Subject
to Section 5.8, Licensor shall retain all rights to bring all actions and
proceedings in connection with infringement or misuse of the ▇▇▇▇ at its sole
discretion, provided that should Licensor not take action and proceedings
against any person whom Licensee believes is committing an infringement or
misuse of the ▇▇▇▇ in relation to the Services, Licensee may escalate such
decision to senior management at Licensor and Licensee for
resolution.
5.8 Licensee
shall be entitled to require Licensor to take action and proceedings against any
person whom Licensee believes is committing an infringement of the Marks in a
domain name solely through a UDRP arbitration proceeding or similar proceeding,
in which event all costs so incurred (including without limitation any costs
associated with Licensor’s involvement in such action) and recoveries made shall
be for the account of Licensee.
5.9 Licensee
shall (and shall ensure that its Sublicensees shall) fully cooperate with
Licensor in any action in relation to the Services which Licensor may take
against an infringer of the ▇▇▇▇ in the Territory or in any other
dispute.
5.10
All costs
incurred and recoveries made in relation to all actions and proceedings in
connection with infringement or misuse of the ▇▇▇▇ shall, to such
extent:
(a) be for
the account of Licensee if the actions and proceedings directly relate to a
domain name,
(b) be for
the account of Licensee if the actions and proceedings directly relate to the
Services and Licensor has not granted a license of the ▇▇▇▇ to any third
party,
(c) be
apportioned between Licensee and the relevant third party according to an agreed
upon basis of apportionment if the actions and proceedings directly relate to
the Services and Licensor has granted a license to any third party for use of
the ▇▇▇▇ in relation to the Services, and
(d) be for
the account of Licensor if the actions and proceedings are outside the scope of
the Services.
5.11
Licensor
shall indemnify, defend and hold harmless Licensee and Sublicensees and their
directors, officers, employees and agents from any third party claim, demand, or
action
6
for
infringement of a third party trademark arising out of or in connection with
Licensor’s rights to the ▇▇▇▇ and all costs, losses, damages, expenses
(including legal expenses) and liabilities arising therefrom provided Licensee’s
use (and, if applicable, the use by the affected Sublicensee) of the ▇▇▇▇ is in
compliance with this License.
5.12
Subject
to Section 5.11, Licensee shall indemnify, defend and hold harmless Licensor and
its affiliates and their directors, officers, employees and agents from any
third party claim, demand or action in relation to its use, and the use by any
of its Sublicensees, of the ▇▇▇▇ in connection with the Services.
ARTICLE
6
USE OF
▇▇▇▇
6.1 Licensee
shall (and shall ensure that its Sublicensees shall) comply with the standards
and guidelines with respect to the appearance and manner of use of the ▇▇▇▇ set
out in Exhibit 3.
ARTICLE
7
MISCELLANEOUS
7.1 Governing
Law; CONSENT
TO JURISDICTION. This Agreement shall be construed in
accordance with, and governed by, the laws of the State of Michigan, without
regard to the conflicts of law rules of such state. Each of the parties hereto
(a) consents to submit itself to the personal jurisdiction of the courts of
the State of Michigan or any federal court with subject matter jurisdiction
located in the Western District of Michigan (and any appeals court therefrom) in
the event any dispute arises out of this Agreement or any transaction
contemplated hereby, (b) agrees that it will not attempt to deny or defeat
such personal jurisdiction by motion or other request for leave from any such
court, and (c) agrees that it will not bring any action relating to this
Agreement or any transaction contemplated hereby in any court other than such
courts.
7.2 Dispute
Resolution. The Separation Agreement with respect to Dispute Resolution,
effective as of the Effective Time, among the Parties and other parties thereto
shall govern all disputes, controversies or claims (whether arising in contract,
delict, tort or otherwise) between the Parties that may arise out of, or relate
to, or arise under or in connection with, this Agreement or the transactions
contemplated hereby (including all actions taken in furtherance of the
transactions contemplated hereby), or the commercial or economic relationship of
the Parties relating hereto or thereto.
7.3 Relief.
Each party acknowledges that a breach of its obligations under this Agreement
may, as determined by a court of competent jurisdiction, result in irreparable
and continuing damage to the other party for which monetary damages would not be
sufficient, and agrees that the other party will be entitled to seek, in
addition to its other rights and remedies hereunder or at law, injunctive and/or
other equitable relief, and such further relief as may be proper from a court of
competent jurisdiction.
7.4 Assignment.
This License shall not be assigned or transferred in whole or in part by
Licensee without the prior written consent of Licensor, and any attempted
assignment or
7
transfer
without such consent shall be null and void. Except as otherwise provided herein
with respect to successors, this License is for the sole benefit of the parties
to this License and their permitted successors and assigns and nothing in this
License, express or implied, is intended to nor shall confer upon any other
person or entity any legal or equitable right, benefit or remedy of any nature
whatsoever under or by reason of this License.
7.5 Cooperation.
The parties agree to implement this License by executing or causing to be
executed such additional and subsidiary agreements and other documents, and
taking such other actions, as may be necessary or desirable fully to protect the
▇▇▇▇ and effectively to carry out the terms of this License in accordance with
applicable laws and regulations.
7.6 Notices.
All notices, requests, claims, demands and other communications under this
License shall be in writing and shall be given or made (and shall be deemed to
have been duly given or made upon receipt) by delivery in person, by overnight
courier service, or by registered or certified mail (postage prepaid, return
receipt requested) to the respective parties at the following address (or at
such other address for a party as shall be specified in a notice given in
accordance with this subparagraph):
LICENSOR:
Capitol Bancorp Ltd.
Capitol Bancorp Center
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: General Counsel
Fax: (517) [_________]
With
copies to:
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ and ▇▇▇▇
▇▇
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇,
Esq.
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE:
Michigan Commerce Bancorp
Limited
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: ___________
Fax: (517) [_________]
With
copies to:
____________________
____________________
8
____________________
Attention: ____________
Fax: _________________
7.7 Severability.
If any term or other provision of this License is held to be invalid, illegal or
incapable of being enforced under any law or regulation, all other conditions
and provisions of this License shall nevertheless remain in full force and
effect. Upon such determination that any term or other provision is invalid,
illegal or incapable of being enforced, the parties shall negotiate in good
faith to modify this License so as to effect the original intent of the parties
as closely as possible in a mutually acceptable manner in order that the
transactions contemplated by this License be consummated as originally
contemplated to the greatest extent possible.
7.8 Entire
Agreement. This License constitutes the entire agreement between the
parties with respect to the subject matter of this License and supersedes all
prior agreements and undertakings, both written and oral, between or on behalf
of the parties with respect to the subject matter of this License.
7.9 Amendment
and Waiver. No provision of this License may be amended or modified
except by a written instrument signed by an authorized representative of each
party. Failure by either party at any time to enforce or require strict
compliance with any provision of this License shall not affect nor impair that
provision in any way or the rights of that party to avail itself of the remedies
it may have in respect of any subsequent breach of that or any other provision.
The waiver of any term, condition or provision of this License must be in
writing and signed by an authorized representative of the waiving party. Any
such waiver will not be construed as a waiver of any other term, condition or
provision, nor as a waiver of any subsequent breach of the same term, condition
or provision, except as provided in a signed writing.
7.10
Rules
of Construction. Interpretation of this License shall be governed by the
following rules of construction: (i) words in the singular shall be held to
include the plural and vice versa and words of one gender shall be held to
include the other gender as the context requires, (ii) references to a paragraph
are references to the paragraph to this License unless otherwise specified,
(iii) the word “including” and words of similar import shall mean “including,
without limitation,” (iv) provisions shall apply, when appropriate, to
successive events and transactions, (v) this License shall be construed without
regard to any presumption or rule requiring construction or interpretation
against the party drafting or causing any instrument to be drafted.
7.11
Headings.
All headings used in this License are for convenience of reference only. They
will not limit or extend the meaning of any provision of this License and will
not be relevant in interpreting any term or provision of this
License.
7.12
Survival.
Any provision of this License which, by its nature, would survive termination or
expiration of this License will survive any such termination or expiration of
this License.
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7.13
Third
Party Rights. Any party which is not a party to this License shall not be
entitled to any benefit from or to enforce any benefit under this License under
the Contracts (Rights of Third Parties) ▇▇▇ ▇▇▇▇.
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IN WITNESS WHEREOF, Licensor
and Licensee have caused this instrument to be executed in duplicate by their
duly authorized representatives as of the date first written above.
LICENSOR
LICENSEE
CAPITOL
BANCORP
LTD. MICHIGAN COMMERCE
BANCORP
LIMITED
By:______________________________ By:________________________________
Title:_____________________________ Title:_______________________________
Date:_________________ Date:__________________
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NUMBER
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CLASS
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Exhibit
1
EXHIBIT
2
RELATED
COMPANIES
Exhibit
2
EXHIBIT
3
BRAND
GUIDELINES
Exhibit
3