[ROADHOUSE GRILL LOGO]
EXHIBIT 10.19
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ROADHOUSE GRILL TRADEMARK LICENSE AGREEMENT
BETWEEN
ROADHOUSE GRILL, INC
A FLORIDA CORPORATION
(LICENSOR)
AND
ROADHOUSE GRILL ITALIA S.R.L.,
AN ITALIAN CORPORATION
(LICENSEE)
THIS AGREEMENT IS VALID FROM JANUARY 1, 2004
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TABLE OF CONTENTS PAGE
PREMISES.............................................................. 1
1. INTERPRETATION............................................ 2
2. LICENSE................................................... 2
3. ROYALTIES................................................. 3
4. DEVELOPMENT SCHEDULE...................................... 4
5. QUALITY STANDARDS......................................... 5
6. USE OF THE TRADEMARKS..................................... 6
7. OWNERSHIP OF THE TRADEMARKS............................... 6
8. INFRINGEMENTS............................................. 7
9. INDEMNITY................................................. 7
10. TERMINATION............................................... 8
11. ASSIGNMENT AND SUB-LICENSE................................ 9
12. FORCE MAJEURE............................................. 9
13. NON-COMPETITION........................................... 10
14. SEVERABILITY.............................................. 10
15. WAIVER.................................................... 10
16. NOTICES................................................... 10
17. GENERAL................................................... 11
18. GOVERNING LAW, JURISDICION AND ARBITRATION................ 11
19. CONFIDENTIALITY........................................... 11
SCHEDULE A..................................................... 13
SCHEDULE B..................................................... 14
SCHEDULE C..................................................... 15
SCHEDULE D..................................................... 17
II
THIS AGREEMENT (the "AGREEMENT") is made this day of March 3, 2004 and is valid
from date January 1, 2004 ("DATE OF THE AGREEMENT");
BETWEEN
- ROADHOUSE GRILL, INC, a Florida corporation, with its principal office at
▇▇▇▇-▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇, (hereinafter referred to as
the "LICENSOR"); and
- ROADHOUSE GRILL ITALIA S.R.L., a company duly formed and organized under
the laws of Italy with its registered office located at ▇▇▇ ▇▇▇▇▇▇ ▇▇,
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ (hereinafter referred to as the "LICENSEE").
(A) WHEREAS, The LICENSOR is the registered owner, in the United States of
America and in the European Community which includes Italy, of ROADHOUSE
GRILL(R)Trademark and associated logo, service marks and trade dress
(hereinafter collectively the "TRADEMARKS") used for the operation, by the
LICENSOR, of Roadhouse Grill Restaurants throughout United States of America;
(B) WHEREAS, LICENSOR is a company, within the United States of America, in
the business of steak-house grill restaurants due to (i) its high quality
standards on food and beverage products and their appealing presentation, and to
(ii) the services provided, the infrastructure and the good reputation and
goodwill of the Trademark, of the restaurants and of the LICENSOR itself.
(C) WHEREAS, The LICENSEE desires to obtain the exclusive license to use the
TRADEMARKS in Italy excluding all U.S. military establishments (hereinafter the
"TERRITORY") and, eventually, in various European countries the parties may from
time to time specify, in connection with the operation of Roadhouse Grill
restaurants (hereinafter the "RESTAURANTS") which feature steaks, vegetables,
salads and certain other food products for consumer consumption;
(D) WHEREAS, The TRADEMARKS are defined and specified in SCHEDULE A attached
hereto;
(E) WHEREAS, The LICENSEE shall open and operate the Restaurants in accordance
with the development schedule indicated herein below (hereinafter the
"DEVELOPMENT SCHEDULE");
(F) WHEREAS, The LICENSOR, CREMONINI S.P.A. AND ROADHOUSE GRILL EUROPE B.V.
(HEREINAFTER THE "DISSOLUTION PARTIES") has dissolved by means of the Global
Dissolution and Settlement Agreement entered into by the Dissolution Parties as
of this date, the following agreements executed on September 28, 2000: (i) Joint
Venture Agreement, (ii) Shareholders Agreement, (iii) Master Development
Agreement and (iv) Master Franchise Agreement;
(G) WHEREAS, The LICENSEE acknowledges that it understands and accepts the
provisions of this Agreement as being reasonably necessary to maintain the
LICENSOR's high standards of quality and service and the uniformity of those
standards at Restaurants in order to protect and preserve the goodwill of the
Trademarks. LICENSEE acknowledges that he has conducted an independent
investigation of the restaurant business in connection with this Agreement and
recognizes that the nature of the business may change over time, that an
investment in Restaurants involve business risks and that the success of the
venture is largely dependent upon LICENSEE's business abilities and efforts. The
LICENSOR expressly disclaims the making of, and the LICENSEE acknowledges that
he has not received or relied upon any representations of revenue, profits or
success of the business contemplated by this Agreement. The LICENSEE further
acknowledges that he has not received or relied
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upon the representations by the LICENSOR or its officers, directors, employees
or agents that are contrary to the statements contained in the terms of this
Agreement. LICENSEE has had full and adequate opportunity to be thoroughly
advised of the terms and conditions of this Agreement by financial and legal
counsel of LICENSEE'S choosing prior to execution of this Agreement.
NOW, THEREFORE, the Parties, in consideration of the undertakings and
commitments of each Party to the other Party hereby agree as follows:
1. INTERPRETATION
1.1 In this Agreement, these terms shall have the following meanings unless
the context otherwise requires:
"AFFILIATE": any entity which is controlled, directly or
indirectly, by the first-mentioned entity, any
entity that controls, directly or indirectly, the
first-mentioned entity, and any entity under
common control with the first-mentioned entity;
"PARTIES": the parties to this Agreement and the "PARTY" may
refer to either of them;
"PRODUCTS" any food product provided by the LICENSEE under
the Trademarks in the Restaurants;
"ROI" the ratio of EBITDA (earnings before interest,
tax, depreciation, amortization) in the numerator,
over the investment cost of the LICENSEE in the
denominator.
"SERVICES" any kind of services related to the Restaurants
provided by the LICENSEE under the Trademarks;
"TERMINATION DATE": the date on which this Agreement is terminated by
either Party pursuant to Section 10 of this
Agreement;
"TERRITORY": Italy (excluding all U.S. military establishments)
and other countries included in the future in the
Agreement as per Section 4.8;
"TRADEMARKS": the Roadhouse Grill Trademarks as defined in the
Schedule A attached hereto, and any additional
trademarks, service marks and trade dress
hereafter authorized for use by and licensed to
LICENSEE by the LICENSOR;
"$" OR "U.S. DOLLARS": the lawful currency for the time being of United
States of America.
1.2 The headings in this Agreement are inserted only for convenience and shall
not affect the interpretation of this Agreement.
1.3 A reference to any statute or statutory provision includes a reference to
the statute or statutory provision as from time to time amended, extended,
or re-enacted.
1.4 A reference to a Clause or Schedule, unless the context otherwise
requires, is a reference to a clause or schedule to this Agreement.
2. LICENSE
2.1 In consideration of the mutual promises contained within this Agreement
the LICENSOR hereby grants to the LICENSEE, and the LICENSEE hereby
accepts, an exclusive license to use the Trademark in the Territory or in
relation to the Products, from the date of this Agreement, on the terms
and conditions and subject to the restrictions contained within this
Agreement.
2.2 Outside the Territory, the LICENSEE shall not:
(i) use the Trademarks in connection with Restaurants;
(ii) place the products on the market and/or provide the Services.
2.3 The term of this Agreement is fifty (50) years, commencing on the date
hereof, unless sooner terminated by any Party in accordance with the terms
and conditions of this Agreement. At least one (1) year prior to
termination of the fifty (50) year period, the Parties may agree to extend
the term of this Agreement for at least an additional twenty (20) year
period. The Parties shall use their best efforts to agree to terms and
conditions of the so extended agreement which shall correspond to the
economic values and laws applicable
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at that time. It is expressly understood that the fifty (50) year period
is only applicable to the Restaurants specified under Section 4.
2.4 During the term of this Agreement, the LICENSOR shall not grant any rights
pertaining to the Trademarks to any other person within the Territory
provided that LICENSEE is not in default of its obligations set forth in
this Agreement, being agreed between the Parties that, if such Licensee's
default is a consequence of a breach of this Agreement by Licensor, beyond
a reasonable cure period, Licensor's breach of its obligations arising
under this Agreement, the exception provided herein shall not apply.
2.5 LICENSOR will retain all rights not expressly granted to the LICENSEE
within this Agreement. Upon termination, for any reasons within this
Agreement, the LICENSEE, and any sub-licensee, shall immediately
discontinue any and all use of the Trademark.
3. ROYALTIES
3.1 As consideration for the LICENSE granted to the LICENSEE by the LICENSOR
hereunder, the LICENSEE shall pay to the LICENSOR as royalties (taking
also in considerations the minimum performance as per the Development
Schedule indicated herein), the following fees (hereinafter collectively
the "ROYALTIES"):
(i) DEVELOPMENT FEE: Fifty Seven Thousand and Five Hundred Dollars
($57,500) at the opening of each Restaurant owned or majority owned
by LICENSEE or its Affiliates and/or any "sub-licensee", in
accordance with the Development Schedule indicated herein, provided
however that, at the end of each development year, the LICENSEE will
have also to pay the Development Fee relating to Restaurants not yet
opened but required as minimum in accordance with the Development
Schedule as per Section 4.3;
(ii) Two Hundred and Thirty Thousand Dollars ($230,000) at the signing
hereof, as full payment of Development Fee for four (4) Restaurants
which are opened at the date of this Agreement;
(iii) OPERATIONAL FEE: Four Thousand Dollars ($4,000) each year with
respect to each Restaurant owned or majority owned by LICENSEE or
its Affiliates and/or any "sub-licensee". Such amount shall be due
and payable in full at the beginning of each development year for
Restaurants which are opened and for Restaurants to be developed in
the relevant development year, with a minimum total number at the
end of each development year in accordance with the Development
Schedule as per Section 4.3;
(iv) In respect of the two (2) Restaurants opened prior to January 1,
2003 and LICENSOR giving up its rights in the capital stock in
Roadhouse Grill Europe B.V., LICENSEE shall pay as Operational Fees
and compensation fee the lump sum of Nine Thousand Dollars ($9,000)
for the period to December 31, 2002;
(v) In respect of the four (4) Restaurants opened at the date of this
Agreement, LICENSEE shall pay Operation Fees the sum of Thirteen
Thousand Dollars ($13,000) for the period up to December 31, 2003;
(vi) Further, the Parties agree that, for the two (2) Restaurants to be
developed in period January 1 to December 31, 2004 as per Section
4.3, the Development Fee of One Hundred and Fifteen Thousand Dollars
($115,000) shall be paid upon signing of this Agreement;
(vii) Therefore, at the signing hereof, the Licensee shall pay to the
Licensor in full the sum of Three Hundred Ninety One Thousand
Dollars ($391,000) so divided:
-Two Hundred Thirty Thousand Dollars ($230,000), see Section
3.1(ii);
-Twenty Four Thousand Dollars ($24,000), see Section 3.1(iii)
Operational Fee for development year 2004 for four (4) Restaurants
opened and two (2) to be opened in 2004 as minimum requirement as
per Section 4.3;
-Nine Thousand Dollars ($9,000), see Section 3.1(iv);
-Thirteen Thousand Dollars (13,000) see Section 3.1(v);
-One Hundred Fifteen Thousand Dollars ($115,000), see Section
3.1(vi)
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As from January 1, 2005 all Royalties' payments shall be due as described
herein above.
It is expressly understood that all Royalties paid in accordance to the
above prescribed basis, are deemed to be fully earned upon payment as
consideration of LICENSOR'S agreement not to grant a license of the
Trademarks in the Territory to others, notwithstanding that payment of
portions of such deposit is deferred, and notwithstanding that such
Restaurants may not be actually developed or opened in a development year
by the LICENSEE.
3.2 LICENSEE is required to have a guaranty for the development schedule and
other monetary obligations under this Agreement as specified in Schedule C
3.3 All payments made by the LICENSEE to the LICENSOR under this Agreement
shall, unless otherwise agreed, be paid in U.S. Dollars to the following
bank account:
Bank: Wachovia Bank, Jacksonville, Florida
ABA # ▇▇▇▇▇▇▇▇▇
Beneficiary: Roadhouse Grill, Inc, ▇▇▇▇-▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Account # 2090003135689
If any amount due and payable to the LICENSOR pursuant to this Agreement
is not paid when due, the unpaid sum shall bear default interest at the
rate per annum seven percent (7%). It will be in further default if the
above amount due and payable remains unpaid and is not cured for a period
of sixty (60) days and shall be cause for termination under Section 10.
4. DEVELOPMENT SCHEDULE
4.1 The LICENSOR hereby grants to the LICENSEE the exclusive right to develop
a minimum thirty six (36) Restaurants within the Territory according to
the Development Schedule set forth below.
4.2 No provision of this Agreement creates a partnership between the Parties
or any of them or makes a Party the agent of another Party for any
purpose. Subject to any express provisions of this Agreement, a Party has
no authority or power to bind, to contract in the name of, or to create a
liability for any other Party in any way or for any purpose.
4.3 As further consideration for the execution of this Agreement, the LICENSEE
agrees to open and maintain, as a minimum requirement, an overall rate of
development of the Restaurants in the Territory set forth above, in
accordance with the following Development Schedule:
Total Number of New
Period Specified Restaurants to be Opened
---------------- ------------------------
Already opened four (4) Restaurants
January 1, 2004 to December 31, 2004 two (2) Restaurants
January 1, 2005 to December 31, 2005 two (2) Restaurants
January 1, 2006 to December 31, 2006 three (3) Restaurants
January 1, 2007 to December 31, 2007 three (3) Restaurants
January 1, 2008 to December 31, 2008 three (3) Restaurants
January 1, 2009 to December 31, 2009 three (3) Restaurants
January 1, 2010 to December 31, 2010 four (4) Restaurants
January 1, 2011 to December 31, 2011 four (4) Restaurants
January 1, 2012 to December 31, 2012 four (4) Restaurants
January 1, 2013 to December 31, 2013 four (4) Restaurants
Total thirty six (36) Restaurants
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4.4 The LICENSEE shall select a site or sites for the performance of the
Development Schedule. The LICENSEE shall notify the LICENSOR the selected
site. It shall be LICENSEE'S responsibility, at its own cost, to prepare
all required construction plans and specifications, in accordance with
applicable laws, in order to obtain relevant Italian authorities
approval/s. LICENSEE agrees to place or display at the Restaurants
(interior and exterior) such signs, emblems, lettering, logos and display
materials of the Restaurant in the manner and in such locations that meets
the approval of the approving authority in Italy and is consistent with
the Trademarks.
4.5 The LICENSEE shall notify the LICENSOR the opening of each new Restaurant
in accordance with the Development Schedule and provide a copy of details
of the location of the Restaurant as specified in Schedule D.
4.6 The LICENSEE shall not be in default under this Agreement in the event of
delay to meet the Development Schedule, provided that the LICENSEE
complies with Section 3 above and it is not in further default under
Section 3.3.
4.7 LICENSOR grants the LICENSEE an option to discontinue the development of
the Restaurants pursuant to the Development Schedule under this Agreement
on January 1, 2009 provided that LICENSEE submits evidence to LICENSOR'S
reasonable satisfaction that LICENSEE'S business of operating Restaurants
is not up to its expectations. It shall be sufficient evidence for the
LICENSOR the fact that the average ROI of the LICENSEE, calculated on a
four (4) calendar years period from the date hereof, is equal or below
twenty percent (20%). LICENSEE shall give the LICENSOR written notice of
its election to discontinue development of Restaurants pursuant to the
Development Schedule sixty (60) days prior January 1, 2009. LICENSOR
agrees to give LICENSEE its written acknowledgment, not more than thirty
(30) days after receipt of LICENSEE's notice and all requested documents,
including but not limited to audited financial statements providing
evidence of LICENSEE's claim that its business of operating Restaurants is
not up to its expectations As part of its continuing assessment of the
quality of operations and business of the Restaurants, LICENSEE is
required to furnish monthly sales reports of each Restaurant to LICENSOR
by the last day of the following month.
4.8 LICENSOR hereby grants LICENSEE a right of first refusal, to include
within the Territory agreed upon in this Agreement, the countries of (or
part of) France, Germany, Spain, Switzerland and Benelux (Belgium, Holland
and Luxemburg). Upon notice by LICENSOR to LICENSEE of a written offer by
another prospective licensee for any of the above mentioned countries (or
part of), along with any details and data related to such offer as
available to LICENSOR, LICENSEE shall exercise its right of first refusal
within fourteen (14) days from receipt of the aforementioned notice by the
LICENSOR. If LICENSEE exercises its right of first refusal, it shall,
within 7 days execute a binding term sheet specifying the terms and
conditions for the territory to be included within the Territory. If
LICENSEE fails to exercise such right of first refusal with respect to a
certain country (or part of), within the above time period, or if Licensee
has exercised its right of first refusal but fails to execute a binding
term sheet within the above time period, LICENSOR shall be entitled to
grant the Trademark's license to a third party with respect the sole said
country (or part of), while the LICENSEE's right of first refusal shall
remain effective with respect to the other countries above mentioned.
5 QUALITY STANDARDS
5.1 The LICENSEE shall use the Trademarks in accordance with such quality
standards observed by the LICENSOR in the operation of restaurants within
the U.S.
5.2 The LICENSEE shall use the Trademarks as identification of the Restaurant.
The LICENSEE may, however, use any Trademark as part of its corporate or
trade name, provided the said use is in connection with the performance of
this Agreement or the sale of any Services or Products or in any other
manner related to the Trademarks during the execution of this Agreement.
LICENSEE agrees to prominently display the Trademarks at the Restaurant,
or on supplies or materials designed by the LICENSOR or itself, and in
connection with packaging materials, forms, labels and advertising and
marketing materials. LICENSEE
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agrees to fully cooperate and render such assistance and perform such acts
as may be necessary or advisable to protect the Trademarks.
5.3 The LICENSOR may, at its own expense and upon giving reasonable prior
written notice to the LICENSEE, dispatch personnel to the premises of the
LICENSEE in order to ensure compliance of the Products and/or the Services
with the quality standards provided for in this Agreement.
5.4 LICENSEE shall spend annually at least zero and one half percent (0.5%) of
sales revenue of each Restaurant for advertising and promotion in order to
enhance the goodwill, image and Trademarks of the Restaurants.
5.5 LICENSEE shall endeavor to maintain the high standards of quality and
service at all Restaurants it operates and licenses. LICENSEE agrees to
cooperate with the LICENSOR by maintaining such high standards in the
operation of the Restaurant. LICENSEE further agrees to comply to the best
of its efforts to maintain specifications, standards and operating
procedures suggested by LICENSOR relating to the appearance, function,
cleanliness and operation of the Restaurants.
6. USE OF THE TRADEMARKS
The LICENSEE shall comply with all applicable laws regarding the use of
the Trademarks on all labels, packages, package inserts, advertisements,
and other media issued or employed by the LICENSEE upon or in connection
with the use of the Trademarks.
7. OWNERSHIP OF THE TRADEMARKS
7.1 The LICENSOR warrants that it is the holder of the rights of the
Trademarks and that it is unaware any use of the Trademarks within the
Territory which would infringe upon the rights of the LICENSEE as provided
herein.
7.2 The LICENSOR shall pay all renewal fees necessary to maintain the
registration of the Trademarks during the term of this Agreement.
7.3 The Parties warrants to each other as follows;
7.3.1 LICENSOR represents and warrants to be fully solvent and in
good standing and that the bankruptcy procedure opened before
the Bankruptcy Court of the Southern District of Florida is
terminated for all intent and purposes. LICENSOR acknowledges
(i) that LICENSEE and its parent company, by entering into
this Agreement will invest substantial financial resources and
its image, goodwill and reputation in the relationship with
LICENSOR and the Trademarks and (ii) that LICENSEE and its
parent company would suffer substantial damage in the event
that LICENSOR makes an assignment for the benefit of
creditors; files a petition in bankruptcy; admits to
insolvency; or if a bankruptcy petition is filed against such
Party and it is not opposed; or if such Party is adjudicated
bankrupt or insolvent; or if a ▇▇▇▇ in equity or other
proceeding for the appointment of a receiver for such Party or
custodian for such Party's business or assets is filed and
consented to by such Party, save any other remedy of
applicable law and damages as due.
7.3.2 LICENSEE represents and warrants that it is fully solvent and
in good standing; and it has the financial and non-financial
resources to carry out the development of Restaurants as
required under the Development Schedule. LICENSEE acknowledges
(i) that LICENSOR and its parent company, by entering into
this Agreement will provide the Trademarks, its image,
goodwill and reputation in the relationship with LICENSEE (ii)
that LICENSOR and its parent company would suffer substantial
damage in the event that LICENSEE makes an assignment for the
benefit of creditors; files a petition in bankruptcy; admits
to insolvency; or if a bankruptcy petition is filed against
such Party and it is not opposed; or if such Party is
adjudicated bankrupt or insolvent; or if a ▇▇▇▇ in equity or
other proceeding for the appointment of a receiver for such
Party or custodian for such Party's business or assets is
filed and consented to by such Party, save any other remedy of
applicable law and damages as due.
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7.4 The LICENSEE undertakes not to partake or permit any activity, which may
jeopardize or invalidate the registration of the Trademarks from a
register or which may prejudice the right, title, or interest of the
LICENSOR in any of the Trademarks.
7.5 The LICENSEE shall not challenge the ownership, validity, or
enforceability of the Trademarks licensed pursuant to this Agreement.
7.6 The LICENSEE will, upon written request, give to the LICENSOR or its
authorized representative(s) any information pertaining to the Licensee's
use of the Trademarks which the LICENSOR may reasonably require in order
to defend any trademark infringement from third parties. The LICENSEE will
render any assistance reasonably required by the LICENSOR in maintaining
the registrations of the Trademarks in the Territory.
7.7 The LICENSEE will not make any representation or perform any act which may
indicate that it has the right, title, or interest in or to the ownership
or use of the Trademarks except under the terms of this Agreement. The
LICENSEE shall acknowledge that this Agreement shall not grant the
LICENSEE any right, title, or interest in the Trademarks as granted
hereunder.
7.8 The use of the Trademarks by the LICENSEE shall at all times be in
accordance with this Agreement.
7.9 The LICENSEE shall assist the LICENSOR, including by executing any
necessary documents, in registering the LICENSEE as a registered user of
the Trademarks. The LICENSEE hereby agrees that such registration may be
cancelled by the LICENSOR on termination of this Agreement, and the
LICENSEE shall assist the LICENSOR to achieve such cancellation, including
by executing any necessary documents, without the LICENSEE being
compensated.
8. INFRINGEMENTS
8.1 The LICENSEE shall, as soon as it becomes aware, provide written notice
explaining with particularity to the LICENSOR any use or proposed use by
any person, firm, or company of a trade name, trademark, mode of
promotion, or advertising which may infringe or threatens infringement of
the LICENSOR's rights in relation to the Trademarks in the Territory.
8.2 In the event LICENSEE becomes aware of any person, firm, or company
alleging that the Trademarks in the Territory are invalid or that use of
the Trademarks in the Territory infringes the rights of another party, the
LICENSEE shall immediately provide written notice, explaining with
particularity, to the LICENSOR and shall have no communication, written or
otherwise or make any admission to a third Party regarding the above.
8.3 The LICENSOR shall decide on the action to defend any legal proceeding
regarding any infringement or alleged infringement of Trademarks in the
Territory.
8.4 At the reasonable written request of the LICENSOR, the LICENSEE shall
cooperate with the LICENSOR in defending any actions, claims, or
proceedings, brought or threatened, regarding the Trademarks in the
Territory, and the LICENSOR shall bear any reasonable expenses incurred by
the LICENSEE.
8.5 The LICENSOR shall take all necessary action and the LICENSOR shall bear
all expenses incurred in maintaining the validity and enforceability of
the Trademarks in the Territory.
8.6 LICENSOR commits to carry on any and all reasonable and possible actions,
claims, or proceedings deemed useful in order to defend the goodwill
and/or the reputation of the Restaurants, or of the LICENSOR or of the
Trademarks within the United States of America and the Territory, and to
provide, within a reasonable period, written notice to the LICENSEE of the
infringement caused, the action, claim and/or proceeding that the LICENSOR
intends to pursue or ▇▇▇.
9. INDEMNITY
9.1 Any Party (the "INDEMNIFYING PARTY") shall be liable for and will
indemnify the other Party (the "INDEMNIFIED PARTY") against any and all
liability, loss, damages, reasonable and documented expenses incurred by
the INDEMNIFIED PARTY (excluding indirect, special, incidental,
consequential damages and tax consequences, if any, arising from the
indemnification payments) (the "LOSSES") arising out of any material
breach of the INDEMNIFYING PARTY's obligations hereunder, or other claim
or proceedings brought against the INDEMNIFIED PARTY by a third Party
claiming relief against the INDEMNIFIED PARTY by reason of the use
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by the INDEMNIFYING PARTY of the Trademarks, provided, however, that the
INDEMNIFYING PARTY will not be liable for any such Loss arising from: (a)
any breach of this Agreement by the INDEMNIFIED PARTY; (b) any invalidity
or defect in the title of the Trademarks in the Territory beyond
LICENSOR'S control as set forth herein under Section 12; (c) instructions
given to the INDEMNIFYING PARTY by the INDEMNIFIED PARTY, provided such
instructions have been properly carried out by the INDEMNIFYING PARTY; and
(d) INDEMNIFIED PARTY'S gross negligence, wilful misconduct or breach of
any applicable law or regulation.
Upon receipt by the INDEMNIFIED PARTY of a notice of any action, the
INDEMNIFIED PARTY shall promptly notify the INDEMNIFYING PARTY in writing.
The INDEMNIFYING PARTY shall, in any jurisdiction, be entitled to assume
the defence of any action with legal counsel of reputable standard
reasonably satisfactory to the INDEMNIFIED PARTY. The INDEMNIFIED PARTY
shall not have the right to assume its own defence by appointing its own
legal counsel at its own cost and expense unless (i) the employment of
such counsel has been authorized in writing by the INDEMNIFYING PARTY;
(ii) the Parties have jointly concluded that there may be one or more
legal defences available to the INDEMNIFIED PARTY which are different from
or additional to those available to the INDEMNIFYING PARTY; provided that
the INDEMNIFYING PARTY shall only be liable for reasonable and documented
costs and expenses of the services of not more than one law firm, in
connection with any one action. An INDEMNIFYING PARTY shall not be liable
more than once for the same loss. No settlement may be executed by the
INDEMNIFIED PARTY without the prior written consent of the INDEMNIFYING
PARTY.
9.2 The LICENSOR acknowledges that the LICENSEE maintains in force a general
coverage insurance for liabilities in which the LICENSEE may incur, as
provided for in Schedule B of this Agreement. Further LICENSEE shall
provide LICENSOR a renewal certificate for the above general coverage
insurance as specified in Schedule B each year, upon renewal.
9.3 The LICENSOR shall have no liability for any sales, use, service,
occupation, excise, gross receipts, income, property or other taxes,
whether levied upon LICENSEE, the Restaurant, LICENSEE'S property or upon
LICENSOR, in connection with the sales made, or business conducted by the
LICENSEE (except any taxes LICENSOR is required by law to collect from
LICENSEE with respect to purchases from LICENSOR). Payment of all such
taxes shall be LICENSEE'S responsibility
10. TERMINATION
10.1 The Parties agree and acknowledge that this Agreement, unless otherwise
agreed by the Parties in writing, may be terminated by the non-breaching
party for any of the following material reasons:
10.1.1 The LICENSEE or its Guarantor fails to pay any Royalties due
to the LICENSOR under this Agreement, provided that:
(i) such failure is not due to a delay by the LICENSOR in
registering the Trademarks in the Territory pursuant to
this Agreement nor to events beyond LICENSEE's control,
as set forth herein under Section 12, nor to LICENSOR's
breach of its obligations under the Agreement; and
(ii) such failure is not cured within a period of sixty (60)
days after the LICENSEE receives written notice from the
Licensor.
10.1.2 The LICENSEE shall be in material breach of any of its
obligations hereunder, provided that:
(i) such failure is not due to a delay by the LICENSOR in
registering the Trademarks in the Territory pursuant to
this Agreement nor to events beyond LICENSEE's control,
as set forth herein under Section 12, nor to a
LICENSOR's breach of its obligations under the
Agreement; and
(ii) such failure is not remedied within a period of sixty
(60) days after the LICENSEE receives written notice
from a competent judicial court in London, United
Kingdom.
10.1.3 LICENSOR fails to maintain validity of the Trademarks in the
Territory and such failure is not remedied within a period of
sixty (60) days after the LICENSOR receives written notice
from a competent judicial court in London, United Kingdom.
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10.1.4 If either Party makes an assignment for the benefit of
creditors; or files a petition in bankruptcy; or admits to
insolvency; or if a bankruptcy petition is filed against such
party and it is not opposed; or if such party is adjudicated
bankrupt or insolvent; or if a ▇▇▇▇ in equity or other
proceeding for the appointment of a receiver for such Party;
or custodian for such Party's business or assets is filed and
consented to by such Party.
10.2 Upon termination of this Agreement whether for expiration of the term or
for infringement of one of the Parties as per Section 10.1, the License
herein granted and all rights, obligations and duties of the Parties under
the Agreement shall cease and terminate immediately except as otherwise
provided herein. Upon such termination, the LICENSEE shall, within a
reasonable period, discontinue and abandon the use of the Trademarks and
shall cease immediately to represent or advertise that it is in any way
connected to the LICENSOR.
If the termination is due to an infringement of the License, the LICENSEE
shall:
(a) immediately pay to the LICENSOR any Royalties accrued up to December
31, 2008 or if Section 4.7 is not exercised pay up to December 31,
2013 including all default interest under Section 3.3;
(b) use the Trademarks and/or exercise any rights granted to the
LICENSEE pursuant to this Agreement only in order to discontinue the
use of the Trademarks granted by this Agreement within a reasonable
period.
10.3 Upon termination of this Agreement, the obligations contained in Section
19 of this Agreement shall survive termination for a period of five (5)
years.
11. ASSIGNMENT AND SUB-LICENSE.
11.1 Except as provided in Section 11.2 below, the Parties agree that LICENSEE
may assign, transfer, or subcontract, in whole or in part, this Agreement
or the respective rights, duties, obligations, and responsibilities, only
with the expressed written consent by Licensor, such consent not to be
unreasonably withheld, and provided that the assignee is not a direct
competitor of the LICENSOR in the United States of America in the steak
house business or its franchisees in the steak house business.
11.2 The LICENSEE shall have the right under this Agreement to "sub-license"
the use of the Trademarks for the operation of the Restaurants in the
Territory, provided always that the amount of the sub-licensees shall not
exceed fifty percent (50%) of the total units owned and operated by the
LICENSEE at any time in connection with this Agreement. It is additionally
agreed by the parties hereto, that in no event may the "sub-license" be
granted to a competitor of the LICENSOR in the United States of America in
the steak house business or its franchisees in the steak house business.
11.3 For the purposes of this Section, "sub-licensee" is defined as the direct
holder of the business as a going concern of operating Restaurant, who is,
in the meanwhile, (a) the owner or the lessee - as the case may be - of
the premises where the operating Restaurant is located, (b) the holder of
the administrative authorizations required for the carry on of the
business concerning the Restaurant, and (c) is the subject who mostly
sustained the financing required for the setting up of the business
concerning the Restaurant.
12. FORCE MAJEURE
Neither Party to this Agreement shall be in breach or default of any
provisions hereunder by reason of delay or failure in the performance of
its duties and obligations due to natural calamity, war, civil disorder,
fire, or any other cause beyond the reasonable control of the Party.
Should either Party be unable to perform its duties and obligations under
this Agreement as a direct result of one or more of such causes, such
Party shall give written notice explaining the reasons for its non
performance to the other Party. The operation of this Agreement shall be
suspended during such period. Once the cause ceases to have effect, the
Party relying upon such cause shall give written notice thereof to the
other Party. Should the cause continue to have effect for a period of more
than three (3) months, the Party not claiming relief under this clause
shall have the right to terminate this Agreement upon giving thirty (30)
days written notice of such termination to
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the other Party, but such notice shall not take effect should the other
Party give notice within that period that the cause has ceased to prevent
the operation of this Agreement.
13. NON-COMPETITION
Each of the Party hereto, shall not compete in the Territory with the
other Party. LICENSEE'S default of this provision shall be cause for
termination upon which the full amount of royalties under the development
schedule shall be due and payable immediately per Section 10.2(a).
LICENSEE'S acquisition or operation of another steak-house chain in the
Territory, having at least forty restaurants therein, shall not be
considered a violation of the non-compete obligation set forth herein,
however, LICENSEE'S option to discontinue development of Restaurants under
Section 4.7 shall terminate immediately. Under such circumstances,
Licensee shall provide an additional perfected irrevocable guaranty, which
will include the development fee and operational fee for the additional
units to be developed from January 1, 2009 to December 31, 2013.
14. SEVERABILITY
In the event that any article, paragraph, sentence, or clause of this
Agreement shall be held to be indefinite, invalid, or otherwise
unenforceable, the indefinite, invalid, or unenforceable provision shall
be deemed deleted, and the remaining part of this Agreement shall continue
in full force and effect.
15. WAIVER
No failure or delay on the part of either Party to exercise any right or
remedy under this Agreement shall be construed or shall operate as a
waiver nor shall any single or partial exercise of any right or remedy
preclude the further exercise of such right or remedy as the case may be.
The rights and remedies provided in this Agreement are cumulative and are
not exclusive of any rights or remedies provided by law.
16. NOTICES
All notices and other communications under this Agreement shall, unless
otherwise stated herein, be given in writing (including where sent by
facsimile or telex transmission or hand delivered) to each Party at the
address or facsimile or telex number set forth below or at such other
address as may be designated by such Party in a written notice to the
other Party and confirmed by certified mail. All notices and
communications hand delivered or sent via certified mail shall be
effective when received, sent via telex when telexed against receipt of
answer back, and sent via facsimile when a satisfactory transmission
receipt is received by the sender and an acknowledgement of receipt is
received by the sender from the recipient.
If to the LICENSOR:
ROADHOUSE GRILL, INC
▇▇▇▇-▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇▇
Fax #:▇▇▇-▇▇▇-▇▇▇▇
Attn: ▇▇▇▇▇ ▇▇▇
With a copy to:
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇▇
Fax #: ▇▇▇-▇▇▇-▇▇▇▇
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If to the LICENSEE:
ROADHOUSE GRILL ITALIA S.R.L.
▇▇▇ ▇▇▇▇▇▇ ▇▇
▇▇▇▇▇▇▇▇▇▇▇ (▇▇▇▇▇▇)
▇▇▇▇▇
Fax #: ▇▇-▇▇▇▇▇▇▇▇
Attn: Valentino Fabbian
17. GENERAL
This Agreement constitutes the entire agreement and understanding of the
Parties and supersedes all prior oral or written agreements,
understandings or arrangements between them relating to the subject matter
of this Agreement. Neither Party shall be entitled to rely on any
agreement, understanding, or arrangement which is not expressly contained
within this Agreement and no amendment shall be made except in writing and
signed by a duly authorized representative of each Party.
18. GOVERNING LAW, JURISDICTION AND ARBITRATION
18.1 This Agreement shall be governed by the laws of United Kingdom.
18.2 Each Party waives any objection which it may at any time have to the
exclusive jurisdiction of the courts of London, United Kingdom; and agrees
not to claim that the said courts are non-convenient or inappropriate
forum.
18.3 Any dispute arising between the Parties in connection with this Agreement
which cannot be resolved by amicable settlement shall be submitted to a
competent judicial court in London, United Kingdom.
19. CONFIDENTIALITY
Each of the Party hereto, its agents, employees, and representatives agree
not to divulge any proprietary and/or confidential information to any
person or company which information has been furnished or disclosed to
him/her as a result of this Agreement. Confidential Information shall mean
information delivered by the Parties or any Subsidiary in connection with
this Agreement that is proprietary in nature and that when received was
adequately identified as being confidential information of each Party or
such Subsidiary, provided that such term does not include information that
(a) was publicly known or otherwise known to you prior to the time of such
disclosure, (b) subsequently becomes publicly known through no act or
omission by the other Party or any person acting on its behalf, (c)
otherwise becomes known to the other Party other than through disclosure
by the Party or any Subsidiary or (d) constitutes financial statements
delivered to the other Party in accordance with this Agreement that are
otherwise publicly available. The Parties will maintain the
confidentiality of such Confidential Information in accordance with
procedures adopted by itself in good faith to protect confidential
information of third parties delivered to it or them, provided that any
Party may deliver or disclose Confidential Information to (i) its
directors, officers, trustees, employees, agents, attorneys and affiliates
(only to the extent such disclosure reasonably relates to the
administration of this Agreement), (ii) its financial advisors and other
professional advisors who agree to hold confidential the Confidential
Information substantially in accordance with the terms of this section,
(iii) any other person who has agreed to be bound by confidentiality
provisions substantially similar to this section, (iv) any federal or
state regulatory authority having jurisdiction over it, or (v) effect
compliance with any law, rule, regulation or order applicable to that
Party, in response to any subpoena or other legal process, in connection
with any litigation to which it is a party, or if an Event of Default has
occurred and is continuing, to the extent the Party may reasonably
determine such delivery and disclosure to be necessary or appropriate in
the enforcement or for the protection of the rights and remedies under
this Agreement. The disclosing Party shall, as promptly as possible,
inform the other Party of the request of disclosure, so that the latter
may seek appropriate remedy or waive the terms of the confidentiality
obligations. Disclosure shall in any event be limited to that portion of
information that the Party is legally required to disclose.
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No Party shall, and each Party shall ensure that no Affiliate of it shall,
make or send a public announcement, communication or circular concerning
the transactions referred to in this Agreement unless it has first
obtained the other Party's written consent. Neither Party shall use the
name of the other Party or of any company, which belongs to its group
without having first obtained the other Party's written consent.
IN WITNESS WHEREOF, the duly authorized representatives of the Parties have
executed this Agreement as of the day and year first above written.
BY: ROADHOUSE GRILL, INC
/s/ ▇▇▇▇▇ Sabi
-------------------------
Name: ▇▇▇▇▇ Sabi
By: ROADHOUSE GRILL ITALIA S.R.L.
/s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
-------------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
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