EXHIBIT 10.15
DATED JANUARY 22, 1998
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(1) ▇▇▇▇▇ INDUSTRIES PLC
(2) PRESTOLITE ELECTRIC LIMITED
________________________________
ACTON TRADE ▇▇▇▇ LICENCE
________________________________
THIS AGREEMENT is made the 22nd day of January 1998
BETWEEN:
(1) ▇▇▇▇▇ INDUSTRIES PLC, an English Company whose registered office is at
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▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ (Registered No 54802) ("the Grantor")
(2) PRESTOLITE ELECTRIC LIMITED whose registered office is at ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
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▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ ("the Licensee")
WHEREAS:
A. The Grantor owns certain registered trade marks in the Territory (as
defined below).
B. The Licensee wishes to use such registered trade marks in connection with
the business which it intends to carry on in succession to the Activity (as
defined in the Sale and Purchase Agreement (as defined below)).
NOW IT IS HEREBY AGREED as follows:
1. GENERAL
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1.1 Punctuation and headings used in this Agreement are for the purpose
of easy reference or reading only and shall not affect its
interpretation.
1.2 The Schedules form part of this Agreement and shall have the same
force and effect as if expressly set out in the body of this
Agreement.
1.3 Words used herein importing the singular number shall, where the
context so admits or requires, be deemed to include the plural and
vice versa.
1.4 References to "persons" shall include any person, firm, company,
association or body whether corporate or unincorporate.
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2. DEFINITIONS
-----------
In this Agreement the following words and phrases shall have the following
meanings unless the context clearly requires otherwise:
2.1 Aftermarket
-----------
"Aftermarket" shall mean the market for (a) spare and replacement
parts for components and sub-assemblies comprised within the
products of Original Equipment Manufacturers and (b) automotive
accessories, but excludes Original Equipment Service;
2.2 Agreement Year
--------------
"Agreement Year" shall mean:
2.2.1 the period from the Effective Date until 31st December 1998;
2.2.2 a period of twelve (12) months beginning on 1st January 1999
or on any 1st January in any year thereafter during the life
of this Agreement,
EXCEPT THAT should this Agreement terminate or expire on a day other
than 31st December in any year, the final 'Agreement Year' shall be
the period from the 1st January last preceding the day of
termination or expiry to the day of termination or expiry;
2.3 Associated Companies
--------------------
"Associated Company" shall mean any person which is either a direct
or indirect holding company or subsidiary of the relevant party or a
subsidiary of any such holding company or is otherwise directly or
indirectly controlled by, or is under the same control, direct or
indirect, as the relevant party from time to time and at the time
that
2
the relevant clause in which such expression appears has
application, which where a claim is to be made under the relevant
clause shall mean when the cause of action accrued under such
clause; "holding company" and "subsidiary" shall have the meanings
given to those expressions in Section 736 of the Companies ▇▇▇ ▇▇▇▇;
2.4 Calendar Quarter
----------------
"Calendar Quarter" shall mean a three monthly period commencing on
the first day of any of the months of January April July and October
in any calendar year;
2.5 Cast
----
"Cast" shall mean cast, emboss, etch or otherwise permanently
incorporate and any cognate word shall be construed accordingly;
2.6 Control
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"Control" shall mean in relation to any person the power of any
other person or persons to secure by law or by corporate structure
that the affairs of the first person are conducted in accordance
with the wishes of that other person or persons, and any cognate
word shall be construed accordingly;
2.7 Country
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"Country" shall mean any country, state or principality and includes
any area or part of any of the same;
2.8 Effective Date
--------------
"Effective Date" shall mean the date hereof;
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2.9 Electrical Products
-------------------
"Electrical Products" shall mean those electrical products set out
in Part 1 of Schedule 1 and to the extent not included in Part 1 of
Schedule 1 those electrical products which fall within the type
numbers listed in Part 2 of Schedule 1 together with any Improvement
to the same and together with any electrical product hereafter
introduced by the Licensee with the prior written consent of the
Grantor (such consent not to be unreasonably withheld) as an infill
to any range of products of which an electrical product in Part 1
and Part 2 of Schedule 1 forms part;
2.10 Get Up
------
"Get-Up" shall mean the appearance of goods and/or their packaging,
including inter alia the size and shape of such packaging, the
materials, colour and decoration of the goods and their wrappers,
instructions for fitment and use and arrangement of their labels;
2.11 Grantor's Standards of Quality
------------------------------
"Grantor's Standards of Quality" shall mean the standards of quality
applying as at the date hereof to the manufacture of Products and
any reasonable standards specified or approved by the Grantor at any
time hereafter in connection with the quality of Marked Products;
2.12 Half-Year
---------
"Half-Year" shall mean a six month period commencing on 1st January
and 1st July in each calendar year;
2.13 Improvements
------------
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"Improvement" shall mean any invention, discovery or design
comprised within any change made at any time during the life of this
Agreement to any Product or its method of manufacture or use which
makes it of better quality or more efficient or adaptable or enables
it to be manufactured more cheaply or more efficiently;
2.14 In-Line Diesel Pumps
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"In-Line Diesel Pumps" shall mean those in-line diesel pumps set out
in Schedule 2 and to the extent not included in Schedule 2 those in-
line diesel known as Majormec, Maximec and Minimec together with any
Improvement to the same;
2.15 LND
---
"LND" shall mean a national distributor of ▇▇▇▇▇ Group products in a
Restricted Country.
2.16 ▇▇▇▇▇ Group
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"▇▇▇▇▇ Group" shall mean the Grantor and/or LucasVarity plc and/or
any company or person which is under the Control of LucasVarity plc
from time to time and at the time that the relevant clause in which
such expression appears has application, which where a claim is to
be made under the relevant clause shall mean when the cause of
action accrued under such clause;
2.17 ▇▇▇▇▇ Trade Marks
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"▇▇▇▇▇ Trade Marks" shall mean (a) in relation to Products any one
or more of those trade marks details of which are set out in
Schedule 3 which are registered in the name of the Grantor and such
other registrations by the Grantor of the ▇▇▇▇▇ ▇▇▇▇▇ and/or the
DIAGONAL DEVICE and/or CAV and/or the CAV device as are
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granted in the Territory during the Term which cover the Products or
some of them and which the Grantor shall stipulate in writing to the
Licensee shall become the subject of this Agreement and (b) in
relation to In-Line Diesel Pumps shall also include the trade ▇▇▇▇
"▇▇▇▇▇";
2.18 Marked Diesel Pump Products
---------------------------
"Marked Diesel Pump Products" shall mean In-Line Diesel Pumps
manufactured, assembled or sourced by the Licensee to which, or to
the packaging of which, the ▇▇▇▇▇ Trade Marks have been or are to be
applied;
2.19 Marked Electrical Products
--------------------------
"Marked Electrical Products" shall mean Electrical Products
manufactured, assembled or sourced by the Licensee to which, or to
the packaging of which, the ▇▇▇▇▇ Trade Marks have been or are to be
applied;
2.20 Marked Products
---------------
"Marked Products" shall mean Marked Diesel Pump Products and/or
Marked Electrical Products;
2.21 Market
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"Market" shall mean the Aftermarket, the OES Market and the OE
Market;
2.22 Non-Exclusive Right
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"Non-Exclusive Right" shall mean a right and licence enjoyed by the
Licensee in common with the Grantor and all other persons to
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whom the Grantor has granted or the Grantor shall hereafter grant
the like right;
2.23 OE Market
---------
"OE Market" shall mean Original Equipment Manufacturers in their
capacity as buyers of Products for fitting as original equipment;
2.24 Original Equipment Manufacturer
-------------------------------
"Original Equipment Manufacturer" shall mean any manufacturer or
assembler of transport vehicles, engines or similar equipment
including, but not limited to, a manufacturer or assembler of motor
cars, vans, buses, coaches, forklifts, industrial vehicles, trucks,
tractors or marine, motive power or stationary engines or a
manufacturer of components or sub-assemblies to be fitted as
original equipment to such vehicles, engines or similar equipment;
2.25 Original Equipment Service or OES Market
----------------------------------------
"Original Equipment Service" or "OES Market" shall mean the market
for supplies of spare and replacement parts to any Original
Equipment Manufacturer other than for fitting as original equipment
or to any dealer of any Original Equipment Manufacturer in its
capacity as a dealer of such Original Equipment Manufacturer;
2.26 Other Applications
------------------
"Other Applications" shall mean any use of the ▇▇▇▇▇ Trade Marks in
relation to the Activity immediately prior to completion of the Sale
and Purchase Agreement in respect of any application whatsoever
other than on Products and Promotional Material;
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2.27 Products
--------
"Products" shall mean Electrical Products and/or In-Line Diesel
Pumps;
2.28 Promotional Material
--------------------
"Promotional Material" shall mean packaging, wrappers, leaflets,
brochures and other advertising material and instructions for
fitment and use relating to Marked Products;
2.29 Restricted Countries
--------------------
"Restricted Countries" shall mean any Country in the world other
than the UK;
2.30 Sale
----
"Sale" shall mean a sale or any other transaction by which the owner
of goods parts with the property in them or possession of them and
"Sell" and "Sold" shall have cognate meanings;
2.31 Sale and Purchase Agreement
---------------------------
"Sale and Purchase Agreement" shall mean the sale and purchase
agreement entered into between (1) ▇▇▇▇▇ Limited (2) the Licensee
and (3) the Grantor for the sale and purchase of the Activity and
Assets (as therein defined) dated with the same date as this
Agreement;
2.32 Supply Agreement
----------------
"Supply Agreement" shall mean an agreement between ▇▇▇▇▇ Limited and
the Licensee entered into on the same date as this Agreement for the
supply by the Licensee to ▇▇▇▇▇ Limited of In-
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Line Diesel Pumps;
2.33 Supply Agreement Term
---------------------
"Supply Agreement Term" shall mean the Term of the Supply Agreement
as defined therein;
2.34 Territory
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"Territory shall mean the UK and the Restricted Countries;
2.35 Transition Agreement
--------------------
"Transition Agreement" shall mean the agreement entered into on the
same date as this Agreement between ▇▇▇▇▇ Limited and the Licensee
entitled "LAO Sale and Transition Agreement";
2.36 Turnover
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"Turnover" shall mean the gross amount invoiced by the Licensee or
its Associated Companies in respect of Sales of Marked Products in
the Territory reduced only by (a) VAT and any other taxes and duties
for which the Licensee or any such Associated Company acts only as a
collecting agency and which are levied by the Government or other
competent taxing authorities in the Territory on the amount of such
Marked Products invoiced (b) carriage and freight charges shown
separately on such invoices and (c) discounts shown on such invoices
other than discounts for prompt payment;
2.37 UK
--
"UK" shall mean the United Kingdom of Great Britain and Northern
Ireland.
2.38 Umbrella Agreement
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"Umbrella Agreement" shall mean the agreement entered into between
(1) ▇▇▇▇▇ Limited (2) ▇▇▇▇▇ Industries plc (3) ▇▇▇▇▇ Diesel Do
Brasil Ltda (4) Prestolite Electric Limited (5) Prestolite Electric
Incorporated (6) PEI Holding Incorporated (7) ▇▇▇▇▇ Indiel Argentina
S.A. (8) ▇▇▇▇▇ Automotive (Pty) Limited and (9) Prestolite Newco
Incorporated having the same date as this Agreement.
3. GRANT AND DURATION
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3.1 The Grantor with effect from the Effective Date grants to the
Licensee a Non-Exclusive Right to use the ▇▇▇▇▇ Trade Marks only on
Products manufactured and assembled in or, to the extent done at the
Commencement Date by the Activity, sourced from the UK for sale only
to (i) the OE Market in the Territory (ii) LNDs for the OES Market
and the Aftermarket in all Restricted Countries, or (iii) any
customer in the Market in the UK but limited to the respective
Products, markets and purposes set out in column 1 below for the
respective periods set opposite such respective Products, markets
and purposes in column 2 below:
Column 1 Column 2
(a) On labelling, Castings and From the Effective Date
Promotional Material for to 31st December
Electrical Products for the 1998
OE Market
(b) On labelling, Castings and From the Effective Date
Promotional Material for to 31st December
Electrical Products for the 1999
OES Market and the
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Aftermarket
(c) On In-Line Diesel Pumps During the Supply
for the OE Market and for Agreement Term, and,
supply to ▇▇▇▇▇ Limited in respect of any
pursuant to the Supply In-Line Diesel Pump
Agreement continued to be
manufactured by or on
behalf of the Licensee
and supplied to ▇▇▇▇▇
Limited after the end
of the Supply Agreement
Term pursuant to the
Supply Agreement, for
the period of such
manufacture and supply
(d) In respect of Other 6 months from the
Applications Effective Date
The Grantor shall not derogate from the grant of the rights to the
Licensee under this clause 3.1 by exercising its trade ▇▇▇▇ rights
in any Country in the world.
3.2 The Licensee shall forthwith (1) on 31st December 1998 cease using
the ▇▇▇▇▇ Trade Marks on labelling, Castings and Promotional
Material for Electrical Products for the OE Market, (2) on 31st
December 1999 cease using the ▇▇▇▇▇ Trade Marks on labelling,
Castings and Promotional Material for Electrical Products for the
OES Market and the Aftermarket, (3) when the Licensee has ceased
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to supply ▇▇▇▇▇ Limited with In-Line Diesel Pumps pursuant to the
Supply Agreement, cease using the ▇▇▇▇▇ Trade Marks for In-Line
Diesel Pumps if so required by the Grantor and (4) on the expiration
of six months from the Effective Date cease using the ▇▇▇▇▇ Trade
Marks for Other Applications. The Licensee shall ensure that on the
respective date(s) or on the expiration of the respective periods
the ▇▇▇▇▇ Trade Marks are removed or obliterated in relation to the
relevant part of the Market from the Products and Promotional
Material and in the case of Other Applications from all buildings,
vehicles and other things (other than Products and Promotional
Material). The provisions of clause 11.2 shall apply when all rights
granted to the Licensee under this Agreement are exhausted.
3.3 Subject to compliance by the Licensee with the terms of this
Agreement the Grantor shall not hereafter grant to a third party any
right in relation to the ▇▇▇▇▇ Trade Marks:
3.3.1 during the Supply Agreement Term for In-Line Diesel Pumps
save as may be required to source In-Line Diesel Pumps from
a third party as permitted by the Supply Agreement;
3.3.2 during the period from the Effective Date until 31st
December 1999 for Electrical Products
in either case that corresponds with a right granted to the Licensee
hereunder provided that notwithstanding the foregoing provisions of
this clause 3.3 the Grantor shall for the purpose of this Agreement
but not so as to vary in any way any provision of the Umbrella
Agreement be entitled to grant the Non-Exclusive Right to the use of
the Trade Marks on goods equivalent to Products and/or Promotional
Material therefor (a) to a purchaser hereafter of any
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business within the ▇▇▇▇▇ Group in respect of which business such
Trade Marks are currently so used or (b) for the purposes of
sourcing any new or remanufactured starter motors and alternators
from any third party to the extent to which ▇▇▇▇▇ and any company in
the ▇▇▇▇▇ Group are not prohibited from selling such starter motors
and alternators under the terms of the Umbrella Agreement.
3.4 Notwithstanding the rights granted to the Licensee under clause 3.1
the Licensee shall if it requires to produce or have produced
Promotional Material additional to that acquired by the Licensee
under the Sale and Purchase Agreement or the Transition Agreement
obtain the Grantor's prior written consent to the manner of
depiction of the ▇▇▇▇▇ Trade Marks thereon (such consent not to be
unreasonably withheld).
4. LICENSEE'S COVENANTS
--------------------
The Licensee covenants with the Grantor as provided in the following sub-
clauses of this clause 4:
4.1 Use of Marks
------------
4.1.1 The Licensee shall not use any of the ▇▇▇▇▇ Trade Marks for
any purpose or for any period beyond the scope of the
licence granted by clause 3 and in particular but without
limiting the generality of the foregoing shall not use any
of the ▇▇▇▇▇ Trade Marks as the whole or part of a corporate
or other business name or in relation to Products which do
not comply with the Grantor's Standards of Quality;
4.1.2 Without prejudice to clause 3.1, the Licensee shall not save
in relation to sales to the OE Market (i) actively
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seek to sell Marked Products to a customer other than an LND
in, or for delivery in those Restricted Countries which are
in the European Union or EFTA or (ii) sell Marked Products
in any other Restricted Country other than to an LND,
otherwise than in either case with the prior written consent
of the Grantor;
4.1.3 the Licensee shall not apply any trade ▇▇▇▇, whether
registered or unregistered belonging or licensed to the
Licensee or any Associated Company of the Licensee, to In-
Line Diesel Pumps otherwise than with the prior written
consent of the Grantor provided that the provisions of this
clause 4.1.3 shall cease to apply:
4.1.3.1 if and to the extent that the Licensee becomes
entitled pursuant to clause 3.2.2 or 3.2.3 of the
Supply Agreement to access the Market (as therein
defined); or
4.1.3.2 where the benefit of the Supply Agreement is
assigned to a third party (not being a 100%
subsidiary of the Licensee or a holding company
holding 100% of the shares in the Licensee or
another 100% subsidiary of such holding company) in
accordance with the terms of the Supply Agreement.
4.2 Observe Laws and Quality Standard
---------------------------------
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The Licensee shall observe any laws and regulations affecting
Products in the Territory and shall comply with the Grantor's
Standards of Quality and in particular:
4.2.1 shall use the ▇▇▇▇▇ Trade Marks only in the form and manner
directed or approved in writing by the Grantor and shall
ensure that all Get-Up and Promotional Material in respect
of Marked Products shall only be in forms approved in
writing by the Grantor and in connection therewith shall
permit inspection by the Grantor's authorised
representatives at any reasonable time by prior arrangement
of the operations, manufacture, storage, and transport of
the Products of or by the Licensee or any sub-contractor of
the Licensee;
4.2.2 in order to enable the Grantor to approve standards of
quality of Marked Products, shall deposit with the Grantor
at the Licensee's own expense and at the Grantor's request a
few samples of the Marked Products as the Grantor may
reasonably require from time to time;
4.2.3 in the event that there is any change in the characteristics
or quality of the Marked Products, shall, before commencing
commercial production of the changed Marked Products,
deposit with the Grantor at the Licensee's own expense and
at the Grantor's request a few samples of the changed Marked
Products as the Grantor may reasonably require from time to
time.
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4.3 Remedy Defects
--------------
If at any time any Marked Products or the Get-Up or Promotional
Material do not comply insofar as is material and recognising that
from time to time Marked Products may occasionally be made which are
defective, comply with the Grantor's Standards of Quality the
Grantor may give notice in writing of its dissatisfaction and
require the Licensee to take such remedial action as the Grantor may
reasonably direct. If within a period of thirty (30) days after
receipt of such notice the Licensee has not taken such remedial
action to the Grantor's reasonable satisfaction the Grantor shall
provide to the Licensee in writing full particulars of those matters
which the Grantor reasonably considers still do not comply with the
Grantor's Standards of Quality and stating that if by the expiration
of a further 30 days the Grantor shall not have issued a letter
confirming its satisfaction with the Licensee's remedial action then
the Licensee will cease to have the right to use the ▇▇▇▇▇ Trade
Marks pursuant to this Agreement on the Products in respect of which
the Grantor's is still not so satisfied and undertakes thereupon to
discontinue the Sale or offering for Sale of such Marked Products in
the Territory.
4.4 Confusing Marks
---------------
The Licensee shall not use in its business in relation to Products
or any other products any other trade marks or devices so resembling
the ▇▇▇▇▇ Trade Marks as to be likely to cause confusion or
deception.
4.5 Royalties
---------
In respect of the use of the ▇▇▇▇▇ Trade Marks on Marked Products
Sold by the Licensee or its Associated Companies to the markets or
for the purpose set out in column 1 below a royalty of the
percentage
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rate specified in column 2 below shall be paid by the Licensee to
the Grantor in respect of Products invoiced during the period
specified in column 3 below:
Column 1 Column 2 Column 3
-------- -------- --------
Market/Purpose Royalty Period
-------------- ------- ------
Rate
----
(a) Electrical Products Nil From the Effective Date
for the OE Market, until 31st December
the OES Market 1998
and the Aftermarket
(b) Electrical Products 3% From 1st January 1999
for the OES to 31st December 1999
Market and the
Aftermarket
(c) In-Line Diesel Nil From the Effective Date
Pumps for the OE to 31st December 2002
Market
(d) In-Line Diesel 1% From 1st January 2003
Pumps for the OE until the Licensee
Market ceases to use the ▇▇▇▇▇
Trade Marks for the OE
Market
(e) Other Applications Nil Six months from the
Effective Date
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Where royalty is payable the amount to be paid will be such amounts
as after the deduction of all charges and taxes (other than
withholding tax lawfully imposed in the Territory) applicable
thereto in the Territory will leave in the hands of the Grantor the
relevant percentage of the Turnover of the relevant Products.
4.6 Records
-------
The Licensee shall keep at its usual place of business separate
records containing details of all Sales of Marked Products in each
Agreement Year and shall at the end of each Agreement Year and on
termination of this Agreement (howsoever arising) produce such
records to the duly authorised agents of the Grantor and permit them
to inspect the same and take copies thereof.
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4.7 Render Reports and Pay
----------------------
In respect of periods where no royalty is payable the Licensee shall
within 30 days of the end of each Half Year, and in respect of the
period where royalty is payable the Licensee shall within 30 days of
the end of each Calendar Quarter, deliver to the Grantor a complete
statement and account in writing of the Turnover during the
preceding Half Year or Calendar Quarter (as the case may be) and of
all royalties (where applicable) payable to the Grantor in respect
thereof and shall ensure that such statement is accompanied by
payment (if any) of the royalties shown thereon to be due.
4.8 Interest
--------
The Licensee shall pay interest to the Grantor on all overdue
amounts payable hereunder, such interest to be calculated and
compounded on a daily basis from the date when payment was due
(being the last day in the relevant month) at the annual rate of
four per centum (4%) above the base lending rate of Barclays Bank
plc until payment is made in full both before or after any
judgement.
4.9 Payment Disputes
----------------
In the event of any dispute between the Grantor and the Licensee as
to the amount of royalty due to the Grantor hereunder the Licensee
shall pay such sums as are not in dispute and shall pay the
remainder as soon as the amount has been agreed with the Grantor or
determined by judgement no longer subject to appeal together with
the interest calculated in accordance with the provisions of sub-
clause 4.8.
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4.10 Authority to Make Payment
-------------------------
4.10.1 If the Licensee is prohibited from making any of the
payments hereunder reserved without appropriate governmental
or other similar authority then the Licensee will within the
time for making the said payments commence and diligently
pursue all necessary steps to secure from the proper
authorities permission to make the said payments including
all and any interest due thereon and will make such payments
within seven (7) days of receiving such permission.
4.10.2 If however the Grantor shall have requested the Licensee so
to make the said payments notwithstanding the said
prohibition then the Licensee shall (so far as the same may
be lawful) pay the sums due into a bank account at a bank
nominated by the Grantor until such time as the said
prohibition is removed whereupon the Licensee shall
forthwith take all steps required of it by the Grantor so as
to facilitate the remittance of all such sums including all
and any interest due thereon to the Grantor.
4.11 Independent Contractor and Risk
-------------------------------
4.11.1 All aspects of the manufacture, use and Sale of Marked
Products by the Licensee shall be at the Licensee's risk and
for the Licensee's account and the Licensee shall act as an
independent contractor and the Licensee shall indemnify and
hold the Grantor harmless against all actions, claims,
demands, costs, charges, expenses and liability arising out
of or in connection with the
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manufacture use or Sale or offer of Sale of Marked Products
other than the Sale or offer of Sale of Products to any
member of the ▇▇▇▇▇ Group but without prejudice to the
rights of such member under any other agreement with the
Licensee or at law and save that such indemnity shall not
apply to the extent that any such action, claim, demand,
cost, charge, expense or liability arises out of a defect in
a Product design made by ▇▇▇▇▇ or made by a third party at
▇▇▇▇▇' instigation.
4.11.2 The Licensee shall effect and maintain or cause another
Associated Company to effect and maintain for its and any
Associated Company's benefit full product liability
insurance relating to Marked Products with a reputable
insurer in an amount equal to not less than US$10,000,000
for each and every event and in the aggregate in any one
year of insurance under such policy and shall provide to the
Grantor on request a copy of the policy and proof of the
payment of premiums.
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5. MAINTAIN REGISTRATION
---------------------
5.1 Nothing in this Agreement shall oblige the Grantor to defend any
proceedings for the revocation of registration of any of the ▇▇▇▇▇
Trade Marks nor to bring any proceedings against an infringer of the
▇▇▇▇▇ Trade Marks, but should the Grantor decide in its absolute
discretion to defend or take any such proceedings it shall do so at
its own cost. The Licensee shall in any case execute all documents
and do all things reasonably necessary at the Grantor's expense to
enable the Grantor to pursue any such proceedings provided that the
Licensee shall not be required to be joined as a party to any such
proceedings.
5.2 The Licensee shall comply with applicable laws of the Territory as
to the registration and usage of trade marks in order to maintain
the validity of the registration of the ▇▇▇▇▇ Trade Marks in the
Territory and to make the provisions of this Agreement valid between
the parties hereto and against third parties but nothing in this
clause 5.2 shall require the Licensee to pay any renewal fees in
relation to the ▇▇▇▇▇ Trade Marks.
5.3 The Grantor and the Licensee shall, if it is necessary to do so in
order to protect the registration of the same, if the Grantor so
requires, use all reasonable endeavours to have the Licensee
recorded as the licensee of the ▇▇▇▇▇ Trade Marks at the trade marks
registries where the ▇▇▇▇▇ Trade Marks are registered and the
Licensee shall, where it is so necessary, at the request of the
Grantor execute all documents, including a short form of this
Agreement. All costs incurred under the provisions of this clause
5.3 will be shared equally by the Grantor and the Licensee.
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5.4 The Licensee or the Grantor shall be entitled to notify the
registration or other applicable authorities in the Territory of the
expiry or termination of this Agreement when this occurs.
6. OWNERSHIP OF TRADE MARKS
------------------------
6.1 The Licensee agrees that the ownership of the ▇▇▇▇▇ Trade Marks and
the goodwill relating thereto shall as between the Grantor and the
Licensee always remain vested in the Grantor both during the period
of this Agreement and thereafter and that nothing herein shall give
to the Licensee any right, title or interest in the ▇▇▇▇▇ Trade
Marks except the Non Exclusive Right to use the ▇▇▇▇▇ Trade Marks in
accordance with the terms of this Agreement.
6.2 The Licensee undertakes not knowingly to do any act in relation to
the use of the ▇▇▇▇▇ Trade Marks pursuant to this Agreement which
will invalidate or jeopardise in any way the Grantor's rights in the
▇▇▇▇▇ Trade Marks.
7. GRANTOR'S WARRANTY
------------------
The Grantor warrants that it does not know of any present or proposed
proceedings in the Territory concerning the Trade Marks but it does not
warrant that any Marked Products manufactured, used, Sold or offered for
Sale will not infringe the rights of others.
8. ASSIGNMENT
----------
8.1 The Licensee shall not have the power at any time to assign this
Agreement or to grant any sub-licence hereunder or in any way charge
mortgage or deal with all or any of the rights hereby granted.
8.2 The Grantor shall have power to perform its covenants, to exercise
its rights and to accept benefits accruing to it under this
Agreement
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through the agency of any other company in the ▇▇▇▇▇ Group.
References in this Agreement to the "Grantor" include its successors
and assigns.
9. SUPERVENING LAWS AND FORCE MAJEURE
----------------------------------
9.1 The rights and obligations of the parties under this Agreement shall
be subject to all applicable laws orders regulations directions
restrictions and limitations of governments or other bodies having
jurisdiction over the parties hereto.
9.2 If any such other law order regulation direction restriction or
limitation as aforesaid or any treaty or other international
agreement or the judicial construction of any of them shall after
the date of the execution hereof substantially alter the
relationship between the parties or the advantages derived from such
relationship then the parties shall on request from the adversely
affected party enter into bona fide negotiations directed towards
agreeing a modification to this Agreement to restore the situation
if practicable or to compensate for such alteration.
9.3 If there is any total or partial failure of performance hereunder by
either party occasioned by strikes, lockouts, combinations of
workmen or any cause whatsoever reasonably beyond the control of the
party thereby affected then once the cause has been notified by that
party to the other such failure shall not be deemed to be a breach
of this Agreement which shall continue in suspense or part
performance for the period during which such cause exists. If such
suspension or partial performance exists for a period of more than
six (6) months and substantially affects the operation of this
Agreement then the party not claiming relief under this clause shall
be at liberty to terminate this Agreement on giving to the other no
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less than forty-five (45) days written notice of its intention to do
so and this Agreement shall terminate on expiration of such notice.
10. TERMINATION
-----------
10.1 The Grantor may terminate this Agreement summarily by written notice
to the Licensee if:
10.1.1 the Licensee passes a resolution for its winding up, or an
order is made for its winding up, or if a receiver or
administrator is appointed over its assets undertaking or
income or any part thereof, or the Licensee is otherwise
unable to pay its debts as they fall due or calls a meeting
formal or informal of its creditors or anything similar or
analogous happens to the Licensee in the Territory; or
10.1.2 the Licensee fails to pay any sum due to the Grantor under
this Agreement within 7 days of written demand being made by
the Grantor; or
10.1.3 the Licensee assigns or sub-licences this Agreement or
purports so to do; or
10.1.4 Control of the Licensee or any holding company of the
Licensee is acquired by any person, or any Associated
Company of such person, named in Schedule 4 in which event
the Grantor shall be entitled to give notice of termination
within 3 months of becoming aware of such change of Control,
the Company undertaking to notify the Grantor in writing of
such change within 7 days of the same occurring; or
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10.1.5 the Licensee commits a material breach of this Agreement
(other than failure to pay any sum due to the Grantor
hereunder) and fails to remedy it or to pay adequate
compensation if the breach cannot be remedied in either case
within thirty (30) days of being required to do so by the
Grantor; or
10.1.6 the Licensee challenges, contests or calls in question the
ownership of the ▇▇▇▇▇ Trade Marks; or
10.1.7 the Licensee ceases permanently to use the ▇▇▇▇▇ Trade Marks
on any Electrical Product and the Licensee shall be deemed
to have so ceased if during any Agreement Year (other than
by reason of clause 9.3) no Electrical Products are Sold in
any Calendar Quarter, the Licensee undertaking to notify the
Grantor in writing of such circumstance within 14 days of
the end of the Calendar Quarter in question.
11. RESIDUAL RIGHTS AND OBLIGATIONS
-------------------------------
11.1 Termination of this Agreement shall be without prejudice to any
rights of either party against the other arising out of events
occurring on or before the date of such termination.
11.2 Upon termination or expiry of this Agreement the Licensee will
forthwith return to the Grantor at the Licensee's expense all loose
labels bearing the ▇▇▇▇▇ Trade Marks and, unless the ▇▇▇▇▇ Trade
Marks have been removed or obliterated therefrom, all stencils,
casts, dies, presses, screens and other tools and equipment in its
possession used for applying the ▇▇▇▇▇ Trade Marks so far as they
have been used exclusively for that purpose and will remove or
obliterate all such labels and other references to the ▇▇▇▇▇ Trade
26
Marks already affixed to Products and shall cease to use the ▇▇▇▇▇
Trade Marks in any way including without limitation in respect of
Promotional Material.
11.3 The obligation on the Licensee to indemnify the Grantor set out in
clause 4.11.1 shall continue indefinitely after termination or
expiry but except as set out in the preceding part of this clause
11, all rights and duties of the parties under this Agreement shall
cease on its termination unless expressly indicated to the contrary.
11.4 References in this clause 11 to "termination" mean termination
howsoever arising.
12. NOTICES
-------
All notices, reports, requests, consents and statements allowed or required
to be given hereunder must be in writing in the English language and be
delivered by hand or despatched by registered mail, or facsimile to the
addresses shown below (provided that in the case of despatch by facsimile
proof of correct transmission must be obtained at the time of despatch). A
party may change its address by giving notice in writing to the other of
such change. A notice served by hand, or by confirmed facsimile shall be
deemed to be received at the moment of transmission; a notice served by
mail shall be deemed to be received on the fifth day after it has been
despatched to the recipient party
Grantor: ▇▇▇▇▇ Industries plc
▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇
For the attention of the Company Secretary
Fax No: ▇▇▇▇ ▇▇▇ ▇▇▇▇
27
Licensee: Prestolite Electric Limited
▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇
▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇
Addressed "For the attention of Managing Director and Finance
Director"
Fax No: ▇▇▇▇ ▇▇▇ ▇▇▇▇
13. PLACE OF PAYMENT
----------------
Any sums due and payable hereunder by the Licensee shall be remitted by the
Licensee and paid in pounds sterling into the Grantor's account named ▇▇▇▇▇
Limited - ▇▇▇▇▇ Aftermarket Operations No 1 Account numbered ▇▇▇▇▇▇▇▇
at Barclays Bank plc of ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ Under Lyme,
Staffordshire, Sort Code 20-59-23 or to such other account of the Grantor
notified to the Licensee from time to time.
14. ACTIONS FOR INFRINGEMENT
------------------------
14.1 The parties shall notify each other of any infringement within the
Territory of any of the ▇▇▇▇▇ Trade Marks or any passing off coming
to their notice and shall consult with each other about what to do
to deal with such infringements or passing off.
14.2 The Grantor shall have the conduct of all proceedings relating to
the ▇▇▇▇▇ Trade Marks and the Licensee shall not be entitled to
bring any action for infringement of the ▇▇▇▇▇ Trade Marks without
the prior written consent of the Grantor.
14.3 The Licensee shall promptly report to the Grantor particulars of any
use by any other person of a trade name, trade ▇▇▇▇ or Get-Up of
28
goods or mode of advertising which could deceive or could be
calculated to deceive members of the trade or public into thinking
that such goods are or could be associated with, or could harm trade
in Marked Products Sold in the Territory.
14.4 The Grantor shall have the right (at its own expense) to bring legal
proceedings to prevent any person using any of the ▇▇▇▇▇ Trade Marks
in the Territory other than the Licensee in accordance with this
Agreement. The Licensee will at the Grantor's request, cost and
expense do all things reasonably necessary to assist the Grantor in
such proceedings. Any monies received by the Grantor in any such
legal action instituted by it whether such monies be received by way
of damages or legal costs or otherwise shall belong solely to the
Grantor and the Licensee shall otherwise have no right to share in
any part of the same.
15. MISCELLANEOUS
-------------
15.1 This Agreement shall not be varied amended or supplemented except by
instrument in writing executed by the duly authorised
representatives of the parties.
15.2 The failure of any party hereto at any time to enforce the terms
provisions or conditions of this Agreement shall not be construed as
a waiver of the same or of the right of such party to enforce the
same.
15.3 Each undertaking in this Agreement shall be construed as a separate
undertaking and if one or more of the undertakings contained in this
Agreement is found to be unenforceable or in any way an unreasonable
restraint of trade the remaining undertakings shall continue to bind
the parties.
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16. LANGUAGE AND LAW
----------------
This Agreement shall be governed English law and each party agrees to
submit to the exclusive jurisdiction of the English Courts as regards any
claim or matter arising under this Agreement.
30
SIGNED by ▇▇▇▇▇ ▇▇▇▇-LEATHER ) /s/ ▇▇▇▇▇ ▇▇▇▇-Leather
------ ------------------ ----------------------
as duly authorised attorney for and ) ▇▇▇▇▇ ▇▇▇▇-Leather as
---------------------
on behalf of ▇▇▇▇▇ INDUSTRIES PLC ) attorney of ▇▇▇▇▇ Industries plc
-------------------- --------------------
SIGNED by P. ▇▇▇ ▇▇▇▇▇▇▇ ) /s/ P. ▇▇▇ ▇▇▇▇▇▇▇
------ -------------- ------------------
duly authorised for and on behalf of) Director
--------
PRESTOLITE ELECTRIC LIMITED )
---------------------------
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