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Exhibit 10.8
DISTRIBUTED PRODUCT LICENSE AGREEMENT
This Agreement is made as of February 29, 1996, by and between Unifrax
Corporation (formerly named The Carborundum Company), a Delaware corporation
having offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
(hereinafter known as the "Licensor"), and Societe Europeenne des Produits
Refractaires, a French company having offices at "Les Miroirs", 18 Avenue
d'Alsace, 92400 Courbevoie (hereinafter known as "Licensee", collectively
"parties").
WHEREAS The British Petroleum Company p.l.c. ("BP") is the indirect owner
of The Carborundum Group and the Licensor which includes the North American
Ceramic Fibers Division ("NAF") and the patents, trademarks and other
intellectual property relating to the world-wide ceramic fibers business
presently conducted by The Carborundum Group and NAF; and
WHEREAS SEPR is in the process of acquiring The Carborundum Group from
indirect wholly-owned subsidiaries of BP and has entered into a stock purchase
agreement (the "Stock Purchase Agreement") to that effect, under the condition,
inter alia, that the parties hereto enter into this Agreement.
WHEREAS, Licensor and Licensee have entered into a Product Distribution
Agreement, which terms include the granting of a License to Licensee to
manufacture certain products.
NOW THEREFORE, in consideration of the mutual covenants herein contained,
and other good and valuable considerations, it is mutually agreed as follows:
ARTICLE 1 - DEFINITIONS
1.01 In this Agreement, unless the context otherwise requires, the
following terms shall have the following meanings:
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a) "Effective Date" means the Effective Date of the Product
Distribution Agreement.
b) "Territory" means the world, excluding the United States (and its
territories), Canada and Mexico.
c) "Licensed Distributed Products" means the products as defined in
Article 1.06 of the Product Distribution Agreement.
d) "Licensor's Patents" means those patents and patent applications
in existence as of the License Grant Date under Article 2.01, on
a product by product basis, and any future patents or patent
applications claiming priority from such patents or patent
applications which are owned or controlled by the Licensor in the
sense of having the right to grant licenses thereunder without
accounting to others, which patents would be infringed by the
manufacture, use or sale of the Licensed Distributed Products.
e) "Confidential Know How" means that technical information and
trade secrets of a party, such as data, formulae, sketches,
operating data, drawings, reports, techniques and other
information that is not, as of the License Grant Date under
Article 2.01, on a product by product basis, generally known or
easily accessible to third parties, provides a commercial
advantage in its use in relation to the Licensed Distributed
Product, and is necessary for the manufacture, use or sale of the
Licensed Distributed Products, which such party has the right to
disclose without accounting therefor to others.
f) "Licensed Technology" means the Licensor's Patents, the
Confidential Know How and all non-confidential technical
information as of the License Grant Date under Article 2.01, on a
product by product basis, necessary for the manufacture, use or
sale of the Licensed Distributed Products.
g) "Affiliate" means any company of which a party hereto now or
hereafter owns or controls, directly or indirectly, at least 50%
of the stock having the right to vote for directors thereof. For
the purpose of this definition, the
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stock owned or controlled by a particular company shall be deemed
to include all stock owned or controlled directly or indirectly
by any other company of which that particular company owns or
controls, directly or indirectly, at least 50% numerically of the
stock having the right to vote for directors thereof. When used
in connection with Licensor, the term "Affiliate" shall also
include any company while it directly or indirectly controls the
Licensor, including The British Petroleum Company p.l.c., a
corporation of England, and all affiliates of that company. When
used in connection with Licensee, Affiliate shall also include
any company while it directly or indirectly controls Licensee,
including Compagnie de Saint-Gobain, and all affiliates of that
company.
h) "Net Sales Price" means the gross invoiced price of the Licensed
Distributed Products as invoiced by Licensee or its Affiliate,
less trade discounts, prepaid shipping, installation and packing
charges, agents' commissions if paid by the Licensee, sales,
excise and use taxes applicable to the sale if paid by the
Licensee, returns and allowances to other than an Affiliate. In
the case of a Licensed Distributed Product manufactured by the
Licensee and used by the Licensee, an Affiliate or a third party,
but not sold, the Net Sales Price shall be Licensee's applicable
sales list price of such Licensed Distributed Product or, if
there is no applicable list price, the fair market value of such
Licensed Distributed Product taking into consideration the sales
list price of similar Licensed Distributed Products, less
deductions as in the case of Licensed Distributed Products which
are sold.
i) "Agreement" shall mean this Distributed Product License
Agreement.
j) "Product Distribution Agreement" means the Product Distribution
Agreement entered into between Licensee and Licensor dated the
date hereof.
k) "Company" means Unifrax Corporation, a Delaware corporation and
an indirect wholly owned subsidiary of The British Petroleum
Company p.l.c. ("BP").
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l) "The Carborundum Group" means "NewCo", as defined in the Stock
Purchase Agreement, and Carborundum Ventures Inc. ("CVI"),
Carborundum Resistant Materials Ltd., Carborundum Realty Pty.
Ltd., The Carborundum Company Limited, Carborundum Belgium, S.A.,
Carborundum Holdings Ltda., Carborundum do Brasil Ltda.,
Carborundum Caribbean, Inc., Carborundum Textil Ltda.,
Carborundum Deutschland GmbH., and Carborundum Technical Ceramics
GmbH., and their subsidiaries, excluding in each case all assets,
employees, activities, liabilities or obligations relating to
NAF, and excluding the assets and liabilities of (but not CVI's
equity investment in) Toshiba-Monofrax Co., Ltd.
m) "NAF" means the ceramic fibers business of the Company, located
in the United States (and its territories), Canada and Mexico.
n) "Non-Compete Agreement" means the non-compete agreement entered
into between SEPR, BP and NAF and effective the date hereof.
o) "License Grant Date" means the date the license grant under
Article 2.01 becomes effective, on a product by product basis, as
follows:
1.) For products under Article 9.02(a) of the Product
Distribution Agreement, 12 months after Licensor's receipt of
Licensee's notice to manufacture a Distributed Product;
2.) For products under Article 9.02(b) of the Product
Distribution Agreement, the date a Distributed Product is
terminated from the Product Distribution Agreement;
3.) For products under Article 9.02(c) of the Product
Distribution Agreement, the date the Product Distribution
Agreement terminates.
ARTICLE 2 - GRANT
2.01 Licensor grants, subject to the outstanding exclusive license grants
in Japan and South Africa, if any, a royalty-bearing license under the
Licensor's Licensed Technology to make, use and sell the Licensed Distributed
Products in the Territory. This license shall become effective on a Licensed
Distributed Product by Licensed Distributed Product basis, upon the License
Grant Date. Subject to the Non-
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Compete Agreement and the Product Distribution Agreement between the parties,
Licensor is free to make, use or sell Licensed Distributed Products in the
Territory.
2.02 Licensor grants Licensee the right to receive and use Licensed
Technology, on a product by product basis to prepare and test manufacturing of
the Licensed Distributed Product, during the period of 12 months prior to the
License Grant Date.
2.03 The License granted in this Article 2 shall include the right to grant
sublicenses within the Territory, providing that, for a period of [ * ] from the
Effective Date, the party receiving such sublicense [ * ], said sublicense to be
effective only for so long as [ * ]. No other sublicense rights are granted
herein. This Article does not preclude partial assignment as allowed under
Article 11.
2.04 The Royalty for each Licensed Distributed Product, for the period from
the License Grant Date, and ending five (5) years from the Effective Date shall
be, on a yearly basis (pro-rated to the actual number of months elapsed for
royalty payment periods of less than one year), [ * ] of the total Net Sales
Price of all sales of such Distributed Product in the Territory during the
period beginning on the thirteenth (13th) month through and including the
twenty-fourth (24th) month preceding the License Grant Date. Payment shall be as
set forth in Article 8.
2.05 For a period starting five (5) years from the Effective Date and
ending ten (10) years from the Effective Date, Licensee shall pay a yearly
royalty (pro-rated to the actual number of months elapsed for royalty payment
periods of less than one year) of [ * ] of the Net Sales Price of the Licensed
Distributed Products manufactured under this license and sold during a calendar
year. Payment shall be as set forth in Article 8.
2.06 Notwithstanding Article 2.04, if the Product Distribution Agreement is
terminated due to default of the Licensor, then the yearly royalty (pro-rated to
the actual number of months elapsed for royalty payment periods of less than one
year) for the period from the termination date and ending five (5) years from
the Effective Date shall be [ * ] of the Net Sales Price of the Licensed
Distributed Products manufactured under this license and sold during a calendar
year. Thereafter,
* Brackets indicate confidential material omitted and filed separately with the
S.E.C.
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royalties shall be due as set forth in Article 2.05. Payment shall be as set
forth in Article 8.
2.07 If Licensee has paid yearly royalties when due for the 10 year period
from the Effective Date, and has not breached any obligations of this Agreement,
then, upon such events, the License granted in Article 2.01 shall thereafter be
royalty free.
ARTICLE 3 - TECHNICAL AND ENGINEERING SERVICE
3.01 For the implementation of the Licensed Technology, it is understood
that Licensee will require certain technical services from Licensor, such as the
receipt of certain technical information and data, the benefit of the services
of certain technical personnel, and general technical assistance. For a period
of six (6) years from the Effective Date, Licensor shall provide such technical
services and the services of technical personnel as are mutually agreed by the
parties to be necessary. Costs shall be at a per diem rate of U.S. $890 per
man-day. Both parties recognize that the services of such personnel shall
consist principally of consultation and technical advice in connection with the
manufacture of the Licensed Distributed Products or the sending of available
written technical information upon Licensee's request. If such services are
required at Licensee's site, such services shall be limited to no more than two
man-weeks total in any one calendar year. Licensee shall reimburse Licensor per
Article 3.03 for such site visit travel costs. In addition to this technical
service, Licensor shall deliver, free of charge to Licensee, ten (10) months
prior to the License Grant Date for each License Distributed Product, or product
family, a know-how book enabling Licensee to manufacture such products. This
know-how book shall consist of (i) a compilation of operation manuals and
written standard operating procedures that are in existence as of the License
Grant Date and, (ii) if necessary, additional written documents for those areas
where such documents do not exist, in order to enable Licensee to manufacture
such products. One month prior to the License Grant Date, Licensor shall deliver
free of charge to Licensee, if relevant, any further such manuals or written
procedures that have been modified or newly created for the Licensed Technology.
This requirement of providing a know-how book is not to be construed as
requiring Licensor to furnish information in the form of specific services such
as preparation of engineering design specifications, detailed design packages,
or other services such as required for construction.
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3.02 For a period of six (6) years from the Effective Date, Licensor agrees
to provide engineering service to Licensee or its Affiliates for specific
projects such as plant designs or engineering services outside of the scope of
routine technical assistance. Such engineering service shall be at the
reasonable convenience of Licensor. The manpower cost shall be a per diem rate
of U.S. $890 per man-day.
3.03 If the services provided by Licensor requires Licensor's personnel to
travel to Licensee's or Affiliate's locations, then the party receiving such
services shall pay Licensor's reasonable out-of-pocket travel costs. Such
reasonable costs shall be business class air travel and reasonable business
hotel accommodations.
3.04 For a period of six (6) years from the Effective Date, Licensee and
its Affiliates shall have the right to visit Licensor's manufacturing facilities
producing Licensed Distributed Products, provided that such visit(s) shall be
limited to no more than two employees of the Licensee or its Affiliates, for a
maximum of two weeks in any calendar year. The parties shall agree on the length
and the timing of such visit(s).
3.05 Licensor agrees that the Licensed Technology disclosed to Licensee
under this Agreement shall be that Licensed Technology that is currently used by
Licensor as of the License Grant Date.
3.06 Upon Licensee's request, Licensor agrees to provide technical and
engineering service under the terms of this Article 3, on a product by product
basis to prepare and test manufacturing of the Licensed Distributed Product,
during the 12 months prior to the License Grant Date.
ARTICLE 4 - CONFIDENTIALITY
4.01 Licensee agrees:
a) To keep confidential and not disclose to any third party, all
Confidential Know How received under this License Agreement from
Licensor, whether received before or after this Agreement,
except:
1) such of said information as now is or hereafter becomes
published or otherwise generally available to the public
through no act or failure to act of the Licensee, or
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2) such of said information the Licensee can show by written
record was in its possession prior to receipt hereunder,
3) such of said information which is disclosed to the Licensee
by a third party who did not obtain such information
directly or indirectly from the Licensor under an obligation
of secrecy.
4) such of said information that Licensee can show, by clear
and convincing written evidence, was independently developed
by Licensee without access to the Confidential Know How.
b) Even after such information becomes generally available to the
public, not to disclose the fact that such information was
furnished to the Licensee by the Licensor unless written approval
is obtained from the other party.
c) Not to put to any use, except as expressly licensed herein, any
information either party is obligated to keep in confidence under
this Article 4.
4.02 This obligation of confidentiality for Licensor and Licensee shall
extend for a period of 20 years from the date of this Agreement and shall
survive the expiration or termination of this Agreement.
4.03 Any affiliate of Licensee that is sublicensed under this Agreement
shall be required to agree in writing to be bound by confidential provisions at
least as strict as contained in this Agreement.
4.04 The Licensor agrees:
a) To keep confidential and not disclose to any third party, all
confidential information received under this License Agreement
from the Licensee, whether received before or after the Effective
Date, except:
1) such of said information as now is or hereafter becomes
published or otherwise generally available to the public
through no act or failure to act of the Licensor, or
2) such of said information the Licensor can show by written
record was in its possession prior to receipt hereunder,
3) such of said information which is disclosed to the Licensor
by a third party who did not obtain such information
directly or indirectly from Licensee under an obligation of
secrecy,
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4) such of said information that Licensor can show, by clear
and convincing written evidence, was independently developed
by Licensor without access to the confidential information.
b) Even after such information becomes generally available to the
public, not to disclose the fact that such information was
furnished to the Licensor by the Licensee unless written approval
is obtained from the Licensee.
c) Not to put to any use, except as expressly licensed herein, any
information Licensor is obligated to keep in confidence under
this Article 4.
ARTICLE 5 - WARRANTIES AND PATENT INFRINGEMENT
5.01 Nothing in this Agreement shall be construed as a warranty or
representation by Licensor as to the validity or scope of any Licensor's Patent
or trade secret, or the confidentiality of any Confidential Know How.
5.02 To Licensor's knowledge, the current use of the Licensed Technology,
in the Territory, does not infringe any valid patent. No claim by any third
party contesting the validity, enforceability, use or ownership of the Licensed
Technology has been made, is currently outstanding or, to Licensor's knowledge,
is threatened.
5.03 OTHER THAN IN THIS ARTICLE 5, LICENSOR MAKES NO REPRESENTATION OR
WARRANTIES OF ANY KIND WHETHER EXPRESSED OR IMPLIED, BY STATUTORY LAW OR
OTHERWISE WITH RESPECT TO ITS DEVELOPMENT, MANUFACTURE, USE, SALE OR DISPOSITION
OF THE LICENSED TECHNOLOGY PROVIDED BY LICENSOR UNDER THIS AGREEMENT, AND ANY
SUCH WARRANTIES ARE HEREBY DISCLAIMED, INCLUDING ANY WARRANTABILITY OF VALUE,
USE, MERCHANTABILITY OR FITNESS FOR PARTICULAR PURPOSE.
5.04 If during the term of this Agreement, Licensee shall discern that one
or more third parties are infringing Licensor's Patents in the Territory, then
Licensee shall promptly report such activity to Licensor, providing in such
report all details concerning the kind and character of the infringement, and
other pertinent information that Licensee may have.
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5.05 Upon receipt of such notice, the parties shall meet and confer to
review the matter as soon as reasonably possible. Upon completion of such
review, the parties shall mutually determine that there exists or there does not
exist reasonable likelihood of infringement. If the parties mutually determine
that reasonable likelihood of infringement does exist, and the parties agree on
a course of action to be taken, then all third party costs associated therewith
shall be shared equally, it being understood that each party shall absorb its
own costs. If the parties cannot mutually decide on the likelihood of
infringement or the course of action, the following options shall be available:
1) The Licensor may take complete charge of the matter in which event
Licensor shall be responsible for all costs associated therewith. Any
recoveries which may be gained in action commenced by Licensor shall
be entirely the property of Licensor.
2) In the event the Licensor decides not to commence and pursue an action
to enjoin such infringement, Licensee shall be entitled, at its
expense, to commence the action in its name and shall be entitled to
name Licensor as a party plaintiff in the event that the rules then
pertaining shall require the naming of the owner of the Licensed
Patents for purpose of such infringement action. Any recoveries which
shall be gained in any such action commenced by Licensee shall be the
property of Licensee. Licensee shall not be free to settle the same
without the consent of Licensor to the extent such settlement lessens
the rights of Licensor.
ARTICLE 6 - INDEMNIFICATION
6.01 Licensee agrees to indemnify, defend and hold harmless Licensor and
its officers, employees and agents from any and all losses arising as a result
of or relating to:
a) Licensee's performance of the Agreement;
b) Licensee's provision of services, marketing, developing,
manufacturing, or any related activities of any nature whatsoever
arising out of Licensee's or its Affiliates manufacture, use or
sale of the Distributed Products or Licensed Technology; or;
c) any third party and/or Affiliates use of the Distributed Products
or Licensed Technology supplied by Licensee;
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except, in each case, to the extent indemnification or defense of Licensor for
such losses is prohibited by applicable law or is otherwise covered by Article
6.02. Licensee shall in any event be obligated to defend Licensor against any
proceeding or causes of action arising out of the foregoing activities, and to
the extent Licensor has incurred any reasonable attorney fees or defense cost,
Licensee will promptly reimburse Licensor for such fees and costs provided,
however, in the event that it is determined in a final and nonappealable
judgment by a court of competent jurisdiction that such obligation of defense
was prohibited by applicable law, Licensor shall reimburse Licensee for such
defense costs.
6.02 Licensor will indemnify Licensee to the extent arising from or
attributable to any breach or failure by Licensor or its Affiliates to perform
any provision, representation, warranty, covenant or agreement in this
Agreement.
6.03 IN THE EVENT OF BREACH OF THIS LICENSE, NEITHER LICENSEE NOR LICENSOR
SHALL BE LIABLE FOR ANY INCIDENTAL, INDIRECT, CONSEQUENTIAL OR PUNITIVE DAMAGES
INCLUDING LOSS OF USE, REVENUE OR PROFIT, REGARDLESS OF THE FORESEEABLITY OF OR
NOTICE TO LICENSOR OF THE POSSIBILITY OF SUCH DAMAGES.
ARTICLE 7 - TERM
7.01 The term of the license granted in Article 2.0 shall be for a)
Licensed Patents, the duration of the patent in the relevant Territory, and for
b) Confidential Know How, for as long as the Know How does not reach the public
domain.
7.02 Unless terminated under Article 7.03, the term of the Agreement shall
be the longest of the term for the grant of licenses under this Agreement. The
party believing the Agreement has terminated due to termination of the grants
hereunder shall provide evidence to the other party supporting such belief prior
to any such termination coming into effect.
7.03 Should Licensee or its Affiliates breach the third party sub-license
restriction contained in the license grants, as determined by arbitration under
Article 13, Licensor shall give written notification to Licensee. If in less
than thirty (30) days of such notification Licensee has not remedied the defect
according to the arbitration
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award, Licensor may give further written notice immediately terminating the
Agreement. Upon termination under this Article 7.03, Licensee shall have no
further rights in the Licensed Technology except that [ * ]. Such right shall be
non-exclusive. Such termination and continuing license shall be without
prejudice to all other rights and remedies available to Licensor. If Licensee's
breach is for [ * ], then upon termination [ * ].
ARTICLE 8 - BOOKS, RECORDS AND PAYMENT
8.01 Licensee shall keep and maintain and require its Affiliate
sublicensees to keep and maintain, true and accurate accounts and records to
show the quantity, sales price and manufacturing costs of those Distributed
Products subject to a royalty under Article 2. At any and all reasonable times,
taking into account the impact on the party's current operations, the licensing
party's authorized representative shall have the right to inspect or copy any
and all such accounts and records and to make copies or extracts therefrom for
the purpose of verifying the correctness of the royalties payable hereunder.
Such inspection shall be at the sole expense of the Licensor unless it is
determined that annual royalties were understated by more than twenty (20%)
percent, in which case the Licensee shall reimburse the Licensor for all costs
of such inspection.
8.02 Within thirty (30) days after the end of each calendar year, Licensee
shall furnish to Licensor a statement certified by a responsible officer of
Licensee showing in detail the Net Sales of those Licensed Distributed Products
having a royalty sold by Licensee and its Affiliates during the applicable year,
the basis for Licensee's calculation of the amount due, and the payment owed.
Payment shall be due at the time of the statement to Licensor.
8.03 Payment shall be by wire transfer, in United States Dollars, to
Licensor's account as notified in writing to Licensee from time to time.
8.04 Licensee shall pay any sales, use or similar taxes applicable, if any,
to any payment to Licensor. Licensee shall provide proof of such tax payment to
Licensor
* Brackets indicate confidential material omitted and filed separately with the
S.E.C.
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sufficient for Licensor to take any tax credits allowed by its governmental
authority. Upon such tax credit being allowed to Licensor, Licensor shall refund
the amount of such allowed credit to Licensee.
8.05 Payments received by Licensor thirty (30) days after a first written
request stating that such payment was due to Licensor shall accrue interest
pro-rated from the due date to the time of payment, at an annual rate of one and
one-half (1 1/2) percent above the rate quoted from time to time as its price
rate as announced in New York City, New York, by Chase Manhattan Bank.
ARTICLE 9 - EXPORT OF TECHNOLOGY
9.01 Licensee hereby acknowledges and accepts that the Licensed Technology
includes U.S. technical information and therefore it is subject to the Export
Administration Regulations (15 CFR, Part 730-799) of the United States
Department of Commerce and the Arms Export Control Act (22 USC 2778) as
implemented by the International Traffic in Arms Regulations (22 CFR Part 120 et
al) and other U.S. government regulations relating to export or re-export of
U.S. technical data and equipment and products produced therefrom. Licensee
expressly agrees to comply fully with all such U.S. government regulations to
the extent they apply to any Licensed Technology or technical information made
available to Licensee under this Agreement.
9.02 Licensor shall be responsible for any license required under 9.01
necessary to transfer the Licensed Technology from the Licensor to the Licensee.
ARTICLE 10 - NOTICE
10.01 All notices, requests, demands and other communications required or
permitted to be given under this Agreement shall be deemed to have been duly
given if in writing and delivered personally, or five (5) business days after
being mailed first class, postage prepaid, registered or certified mail, or if
telecopied and confirmed by one of the preceding methods, as follows:
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If to Licensee:
Societe Europeenne des Produits Refractaires
Les Miroirs
18 Avenue d'Alsace
92400 Courbevoie
Attention: Legal Affairs Department
Fax: ▇▇-▇-▇▇-▇▇-▇▇-▇▇
If to Licensor:
Unifrax Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: Vice President, Sales & Marketing
Fax: ▇▇▇-▇▇▇-▇▇▇▇
Any party may change the address to which such communications are to be directed
to it by giving written notice to the other in the manner specified in this
SECTION 10.01.
ARTICLE 11 - ASSIGNMENT
11.01 Licensee shall not have the right to assign the Agreement unless
Licensor approves of such assignment in writing, except Licensee may assign the
Agreement to a wholly owned Affiliate of Licensee. Licensee may also assign this
Agreement to a third party that has acquired substantially all of Licensee's
assets acquired under the Stock Purchase Agreement and related to the ceramics
fibers business. Licensee may assign this Agreement to a more than 50% owned
Affiliate with Licensor's written approval, which approval will not be
unreasonably withheld.
11.02 Licensee may partially assign this Agreement on a country by country
basis to a third party that has acquired in each of the United Kingdom, Germany,
Australia or Brazil, substantially all of Licensee's assets that are acquired
under the Stock Purchase Agreement and relates to the ceramics fibers business.
This partial assignment is subject to Licensee giving Licensor the right to
match any bonafide bid received by Licensee for Australia, Brazil, or Europe
(Europe as a whole, including Licensees' existing ceramic fibers businesses).
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11.03 Licensor shall not assign this Agreement to a third party without the
written permission of Licensee, which permission will not be unreasonably
withheld, except to a third party that acquires substantially all the assets of
NAF, in which case Licensor shall be obligated to assign this Agreement to that
third party.
11.04 Any purported assignment by Licensee in violations of the provisions
of this Article 11 shall be void.
ARTICLE 12 - FORCE MAJEURE
12.01 The parties hereto shall not be held liable or responsible for delay
or failure to take any actions called for under this Agreement occasioned by
acts of God, force majeure or any cause beyond the control of the parties,
including but not limited to war; civil disturbances; fire; flood; earthquake;
windstorm; unusually severe weather; acts or defaults of common carriers;
accidents; strike or other labor trouble; lack of or inability to obtain raw
materials, transportation, labor, fuel or supplies; governmental laws, acts,
regulations, embargoes, or orders (whether or not such later prove to be
invalid); any of which shall release the parties form the performance of this
Agreement.
ARTICLE 13 - ARBITRATION
13.01 In the event of any dispute, claim, question, or disagreement arising
out of or relating to this Agreement or the breach thereof, the parties hereto
shall use their best efforts to settle such disputes, claims, questions, or
disagreements. To this effect, they shall consult and negotiate with each other
in good faith and, recognizing their mutual interests, attempt to reach a just
and equitable solution satisfactory to both parties. If they do not reach such
solution within a period of thirty (30) days, either party may submit the
dispute to binding arbitration administered by the American Arbitration
Association under its International Arbitration Rules. The place of arbitration
shall be New York City, New York, and the language shall be English. The number
of arbitrators shall be three, unless the parties agree otherwise. Both parties
agree that time is of the essence in any arbitration. Each party shall submit
their choice of an arbitrator to the Association within five (5) business days
after receiving notice from the Association of an arbitration proceeding. The
arbitrators so selected shall have five (5) business days to select a third
arbitrator. If the arbitrators
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selected by the parties cannot agree on a third arbitrator within this time
period, then a third arbitrator shall be selected by the Association to complete
the panel. The parties agree that the arbitrators may grant a party's request
for a preliminary injunction to minimize damages. As an aid to arbitration,
either party may also seek assistance from judicial authorities to provide
interim relief, such as an injunction, if necessary.
ARTICLE 14 - APPLICABLE LAW
14.01 This Agreement shall be governed by and construed and enforced in
accordance with the laws of the State of Ohio without regard to rules on choice
of law and Licensee hereby consents to submit to the jurisdiction of the
American Arbitration Association located in New York, New York, and to the
jurisdiction of applicable courts in the United States or elsewhere, to enforce
any award of said American Arbitration Association, or to grant interim relief.
ARTICLE 15 - MISCELLANEOUS
15.01 This Agreement may be amended, modified, superseded or canceled, and
any of the terms, covenants, representations, warranties or conditions hereof
may be waived, only by a written instrument executed by the parties hereto, or,
in the case of a waiver, by or on behalf of the party waiving compliance. The
failure of any party at any time or times to require performance of any
provision hereof shall in no manner affect the right at a later time to enforce
the same. No waiver by any party of any condition, or of any breach of any term,
covenant, representation or warranty contained in this Agreement, in any one or
more instances, shall be deemed to be or construed as a further or continuing
waiver of any such condition or breach or waiver of any other condition or of
any breach of any other term, covenant, representation or warranty.
15.02 This Agreement shall comply with and its obligations performed in
accordance with the laws, whether national or supranational of all jurisdictions
in which the Agreement is to be performed (including the United States). If any
provision of this Agreement constitutes a breach of any applicable law or is
considered to be or will be void or unenforceable, such provision shall be
deemed to be deleted and the remaining provisions shall continue in full force
and effect.
17
15.03 The article or section headings contained in this Agreement are for
convenient reference only, and shall not in any way affect the meaning or
interpretation of this Agreement. This Agreement may be executed simultaneously
in two or more counterparts, each of which shall be deemed an original, but all
of which shall constitute but one.
15.04 For avoidance of doubt, nothing in this Agreement shall be construed
or interpreted as limiting any rights of Kerlane (a subsidiary of Licensee
involved in the manufacturing and selling of ceramic fibers) to practice or
develop its ceramic fibers technology, to manufacture, use and sell its ceramic
fibers products worldwide, to grant or receive licenses either to Affiliates or
to third parties, to dispose of its assets or of its intellectual property
rights unless and to the extent that:
a) Kerlane has received any Confidential Know How as defined in this
Agreement, or
b) Kerlane is a sub-licensee of the Licensed Technology, in which case Kerlane
will be bound by the obligations with respect to a Licensee contained in
this Agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to
be executed by the respective duly authorized officers.
Societe Europeenne des Unifrax Corporation
Produits Refractaires
LICENSEE LICENSOR
By:______________________ By:_____________________
Name:____________________ Name: ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title:_____________________ Title: Attorney-In-Fact
18
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
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COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Australia FIBERFRAX A205041 09/19/01
Australia INSULFRAX A586,018
19
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Benelux FIBERFRAX 053736 09/07/95
Benelux INSULFRAX 530990 03/11/03
20
TRADEMARK APPLICATIONS AND REGISTRATIONS
----------------------------------------
CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Brazil FIBERFRAX 007531788 11/23/02
Brazil FIBERFRAX 007531800 10/19/02
Brazil FIBERFRAX 606872086 11/23/02
BRAZIL MOLDAFRAX 815177500 03/24/02
BRAZIL MOLDAFRAX 815177518 03/24/02
Brazil FIBERFRAX 68759765
21
TRADEMARK APPLICATIONS AND REGISTRATIONS
----------------------------------------
CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Denmark INSULFRAX 3749/94 06/10/04
22
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Finland INSULFRAX 134417 10/05/04
23
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
France INSULFRAX 93479060 08/03/03
24
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Great Britain FIBERFRAX 708068 06/13/01
Great Britain FIBERFRAX 708070 06/13/01
Great Britain FIBERFRAX 708071 06/13/01
Great Britain FIBERFRAX 709279 07/28/01
Great Britain INSULFRAX 1529620
25
TRADEMARK APPLICATIONS AND REGISTRATIONS
----------------------------------------
CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Ireland INSULFRAX 156,959 09/23/00
Ireland INSULFRAX 156,960 09/23/00
26
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Italy FIBERFRAX 475003 05/23/06
27
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ ▇▇▇▇./▇▇▇. ▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ 07/23/05
Japan FIBERFRAX 1132630 07/17/05
28
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Norway INSULFRAX 935,848
29
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
South Africa FIBERFRAX 664255 10/19/96
30
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Sweden FIBERFRAX 115994 04/22/96
Sweden INSULFRAX 260808 09/16/04
31
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Switzerland FIBERFRAX 336779 01/08/05
32
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Turkey INSULFRAX 147848 10/04/03
33
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
-------------------------------
COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
Venezuela DURABOARD 9053/94
Venezuela DURABLANKET 9055/94
Venezuela FIBERFRAX 7586/88
Venezuela FIBERFRAX 7587/88
Venezuela FILFRAX 19071/89
Venezuela FIREPUTTY 7583/88
Venezuela FIREPUTTY 7584/88
Venezuela FIX-LOC 9060/94
Venezuela LDS MOLDABLE 905/94
Venezuela ▇▇▇▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇/▇▇
▇▇▇▇▇▇▇▇▇ POWER LOC 9058/94
Venezuela QF-180 9059/94
Venezuela ▇▇▇▇-▇▇▇ ▇▇▇▇/▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇-▇▇▇ 9062/94
34
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
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COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
West Germany FIBERFRAX 688493 08/25/04
35
TRADEMARK APPLICATIONS AND REGISTRATIONS
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CERAMIC FIBERS -- NIAGARA FALLS
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COUNTRY ▇▇▇▇ APPL./REG. NO. NEXT RENEWAL
INTERNATIONAL REGISTRATION* INSULFRAX 627567 11/28/14
* Designated countries are Allemagne, Autriche, Espagne, Italie, Liechtenstein,
Monaco, Portugal, Saint-Marin, Suisse