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EXHIBIT 10.13
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TRADEMARK LICENSE AGREEMENT
BY AND BETWEEN
LUCENT TECHNOLOGIES INC.
AND
AVAYA INC.
Dated as of October 1, 2000
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TRADEMARK LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I. DEFINITIONS
1.1 AFFILIATE
1.2 AUTHORIZED DEALERS
1.3 COMPOUND MARKS
1.4 CONTROL SPECIFICATIONS
1.5 CORPORATE IDENTIFICATION ▇▇▇▇
1.6 AVAYA COMPANIES
1.7 AVAYA PRODUCTS
1.8 AVAYA PRODUCT MARKS
1.9 GOVERNMENTAL AUTHORITY
1.10 LICENSED MARKS
1.11 LICENSEE
1.12 LICENSOR
1.13 ▇▇▇▇
1.14 PERSON
1.15 SUBSIDIARY
1.16 TRANSITION LOGOS
ARTICLE II. LICENSE GRANT
2.1 AVAYA PRODUCTS
2.2 COMPOUND MARKS
2.3 LIMITATIONS ON GRANT
2.4 NO USE IN LICENSEE'S NAME
2.5 NO OTHER MARKS TO BE USED
2.6 MODIFICATION OF LICENSED MARKS
ARTICLE III. AGREEMENT PERSONAL
3.1 PERSONAL NATURE OF AGREEMENT
3.2 SUBLICENSING/ASSIGNMENT
3.3 AUTHORIZED DEALERS
3.4 BUSINESS PARTNERS
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ARTICLE IV. LICENSES TO OTHERS AND OWNERSHIP
4.1 EXCLUSIVE LICENSE
4.2 RETENTION OF RIGHTS BY LICENSOR
4.3 RETENTION OF RIGHTS BY LICENSEE
ARTICLE V. LICENSED TERRITORY
ARTICLE VI. QUALITY CONTROL
6.1 GENERAL
6.2 CONTROL AND TRADEMARK USE SPECIFICATIONS
6.3 CUSTOMER CARE PROVISIONS
6.4 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION
6.5 SPONSORSHIP
6.6 DISCONTINUATION
6.7 REFURBISHED PRODUCT
6.8 COSTS
ARTICLE VII. REMEDIES FOR NONCOMPLIANCE WITH
CONTROL AND TRADEMARK USE SPECIFICATIONS
7.1 CURE PERIOD
7.2 FAILURE TO CURE
ARTICLE VIII. PROTECTION OF LICENSED SERVICE MARKS
AND THE TRANSITION LOGOS
8.1 OWNERSHIP AND RIGHTS
8.2 SIMILAR MARKS
8.3 INFRINGEMENT
8.4 COMPLIANCE WITH LAWS
ARTICLE IX. TERMINATION
9.1 BREACH BY LICENSEE
9.2 TERMINATION OBLIGATIONS
ARTICLE X. INDEMNITIES
10.1 LICENSEE'S INDEMNIFICATION
10.2 NOTICE
ARTICLE XI. NOTICES
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ARTICLE XII. COMPLIANCE WITH LAW
12.1 GENERAL
12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS
ARTICLE XIII. MEDIATION AND DISPUTE RESOLUTION
13.1 DISPUTES
13.2 ESCALATION; MEDIATION
13.3 COURT ACTIONS
ARTICLE XIV. MISCELLANEOUS
14.1 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER
14.2 GOVERNING LAW
14.3 ASSIGNABILITY; SUCCESSORS
14.4 RELATIONSHIP OF THE PARTIES; THIRD PARTY BENEFICIARIES
14.5 SEVERABILITY
14.6 FORCE MAJEURE
14.7 PUBLICITY
14.8 HEADINGS
14.9 WAIVERS OF DEFAULT
14.10 INJUNCTIVE RELIEF
14.11 AMENDMENTS
14.12 INTERPRETATION
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TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement"), dated as
of October 1, 2000 (the "Effective Date"), is by and between Lucent Technologies
Inc., a Delaware corporation, with offices at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ("Lucent"), and Avaya Inc., a Delaware corporation, with
offices at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ("Avaya").
RECITALS
WHEREAS, the Board of Directors of Lucent has determined that
it is in the best interests of Lucent and its stockholders to separate Lucent's
existing businesses into two independent businesses.
WHEREAS, in order to effectuate the foregoing, Lucent and Avaya
have entered into a Contribution and Distribution Agreement, which provides,
among other things, subject to the terms and conditions thereof for the
contribution by Lucent of the former Enterprise Networks Group of Lucent ("EN")
assets to Avaya and the assumption by Avaya of the EN liabilities and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing; and
WHEREAS, this Agreement is to allow Avaya's business units to
create consumer awareness that they are the successors to Lucent's former
business units and to minimize customer confusion that might otherwise arise as
a result of the foregoing transactions and the immediate loss of use of the
Lucent name, marks, logos and trade dress.
NOW, THEREFORE, in consideration of the premises and for other
good and valid consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement, in addition to the words and phrases
that are defined throughout the body of this Agreement, the following words and
phrases shall have the following meanings:
1.1 AFFILIATE of any Person means a Person that controls, is
controlled by, or is under common control with such Person. As used herein,
"control" means the possession, directly or indirectly, or the power to direct
or cause the direction of the management and policies of such entity, whether
through ownership of voting securities or other interests, by contract or
otherwise.
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1.2 AUTHORIZED DEALERS means EN's existing dealers, distributors,
agents, resellers and Business Partners that are authorized to use any Lucent
marks pursuant to existing agreements.
1.3 COMPOUND MARKS means any ▇▇▇▇ that consists of the ▇▇▇▇ Lucent
immediately followed by another ▇▇▇▇ which is in use or applied for on the date
of this Agreement; the entire set of Compound Marks is set forth in Schedule E
hereto.
1.4 CONTROL SPECIFICATIONS means standards of quality (including
performance parameters) applicable to the fabrication, performance, design, use,
provision, and support of an Avaya Product under the Licensed Marks, as set
forth or referenced in Schedule B, and the standards applicable to the
marketing, advertising, and promotion of an Avaya Product under the Licensed
Marks as set forth or referenced in Schedule C.
1.5 CORPORATE IDENTIFICATION ▇▇▇▇ means the Licensee's house ▇▇▇▇
and related trade dress used to identify and distinguish Licensee from other
Persons, as identified in Schedule D hereto.
1.6 AVAYA COMPANIES means EN, Mosaix Inc., Octel Communications
Inc., Lannet Ltd., SDX Business Systems plc., Agile Networks Inc., Cursor
Computers Inc., dba CCOM Information Systems, Prominet Corporation and each of
their respective Subsidiaries in existence prior to the Effective Date. Avaya
may add additional companies to the definition of "Avaya's Companies" subject to
Lucent's prior written consent which will not be unreasonably withheld.
1.7 AVAYA PRODUCTS means products created, manufactured or
marketed by Avaya's Companies but not products newly designed or created by them
after the Effective Date.
1.8 AVAYA PRODUCT MARKS means those trademarks, servicemarks and
trade dress to be assigned from Lucent to Avaya on or before the Effective Date.
1.9 GOVERNMENTAL AUTHORITY means any federal, state, local,
foreign or international court, government, department, commission, board,
bureau, agency, official or other regulatory, administrative or governmental
authority.
1.10 LICENSED MARKS means the marks LUCENT, LUCENT TECHNOLOGIES and
the INNOVATION RING LOGO as identified in Schedule A hereto (and as such marks
may be modified or supplemented as contemplated by Article II hereof).
1.11 LICENSEE means Avaya, the Avaya Companies, each Subsidiary of
Avaya, and each other Person that is an Affiliate of Avaya, but only for so long
as such Person is an Affiliate or Subsidiary of Avaya.
1.12 LICENSOR means Lucent.
1.13 ▇▇▇▇ means any word, name, symbol or device, or any
combination thereof, used or intended to be used by a Person to identify and
distinguish the products or services of that
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Person from the products or services of others and to indicate the source of
such goods or services even if that source is unknown.
1.14 PERSON means an individual, a general or limited partnership,
a corporation, a trust, a joint venture, an unincorporated organization, a
limited liability entity, any other entity and any Governmental Authority.
1.15 SUBSIDIARY means a company, corporation or other legal entity
(i) the majority of whose shares or other securities entitled to vote for
election of directors (or other managing authority) is now or hereafter
controlled by such company either directly or indirectly; or (ii) which does not
have outstanding shares or securities but the majority of whose ownership
interest representing the right to manage such corporation or other legal entity
is now or hereafter owned and controlled by such company either directly or
indirectly; but any such corporation or other legal entity shall be deemed to be
a Subsidiary of such company only as long as such control or ownership and
control exists.
1.16 TRANSITION LOGOS means the Licensed Marks used in combination
with Licensee's Corporate Identification ▇▇▇▇ as identified on Schedule F hereto
(and as such Transition Logos may be modified in accordance with this
Agreement).
ARTICLE II
LICENSE GRANT
2.1 AVAYA PRODUCTS
(a) INITIAL PERIOD. (i) Subject to the terms and
conditions of this Agreement, Licensor grants Licensee a royalty free, personal,
non-transferable, non-sublicensable, non-exclusive license to use the Licensed
Marks in connection with the manufacture, marketing, promotion, distribution and
sale of Avaya Products which have been manufactured prior to, or are being
manufactured as of, the Effective Date, and continuing until April 1, 2001.
(ii) Licensee may not affix the Licensed Marks to
Avaya Products, or to any packaging, instructions, or marketing materials
manufactured after April 1, 2001; provided, however, that Avaya Products,
packaging, instructions and promotional materials with the Licensed Marks in
inventory as of April 1, 2001, may be marketed, distributed, promoted and sold
after that date and until the inventory of such Avaya Products packaging or
other materials is depleted.
(iii) When Licensee travels to a customer's premises
or takes possession of a previously installed product to make a repair or
perform a service, Licensee agrees to make reasonable efforts with regard to
labels for large equipment that are visible to either replace the product
housing to remove any reference to the Licensed Marks or affix labels with the
Corporate Identification ▇▇▇▇ to the product in a manner that obscures the
Licensed Marks.
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(iv) Licensee may not affix the Licensed Marks to
products other than Avaya Products.
(v) No right is granted to Licensee to use the
Licensed Marks alone on any new stationery, new business cards, new building
signage, new building flags, new employee badges, or new vehicle markings after
the Effective Date.
(vi) Licensee will cease to use the Licensed Marks
alone on stationery, business cards, building flags, and employee badges on or
before December 31, 2000.
(vii) Licensee will make reasonable efforts to cease
use of the Licensed Marks on vehicle markings and on building signage on or
before December 31, 2000, however, under no circumstances may such use continue
later than June 1, 2001, unless required sooner by applicable State or Federal
laws.
(b) TRANSITION PERIOD. (i) Subject to the terms and
conditions of this Agreement, and to the guidelines governing use of the
Transition Logos attached as Schedule F hereto, Licensor grants Licensee a
royalty free, personal, non-transferable, non-sublicensable, exclusive license
to use the Transition Logos in connection with the manufacture, marketing,
promotion, distribution and sale of any Avaya Products commencing on the
Effective Date, as follows:
Transition Logo A - includes Avaya name and the
descriptive phrase "The former Enterprise Networks Group of Lucent Technologies"
but will not include the Innovation Ring Logo, as set forth in Schedule F. This
may only be used as follows:
- On new products, packaging and labeling - until
September 30, 2001.
- On stationery, business cards and website - for
one (1) year from Effective Date.
- On advertising and promotional materials - for
twelve (12) months in the US and eighteen (18)
months outside the US, from Effective Date.
Transition Logo B - includes Avaya name and logo plus
the Lucent name and the Innovation Ring Logo with the descriptive phrase "The
former Enterprise Networks Group of Lucent Technologies", as set forth in
Schedule F. This may only be used as follows:
- On new products, packaging and labeling - until
December 31, 2000.
- On stationery, business cards and website - for
one (1) year from the Effective Date.
- On advertising and promotional materials - for
six (6) months in the US and one (1) year outside
the US, from Effective Date.
(ii) Avaya Products, packaging, instructions and
promotional material with the Transition Logos in inventory after the Effective
Date may be marketed, distributed, promoted and sold after that date and until
the inventory of such Avaya Products and materials is depleted, subject to other
applicable terms and conditions of this Agreement.
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2.2 COMPOUND MARKS. (i) To the extent that Licensee is using a
Compound ▇▇▇▇ as of the date of this Agreement, it may continue to use the
Licensed Marks in the Compound ▇▇▇▇ during the Initial Period hereunder
applicable to the Avaya Products with respect to which such Compound ▇▇▇▇ is
used. After the Initial Period, Licensee shall, if it desires to continue to use
the Compound ▇▇▇▇, use the Corporate Identification ▇▇▇▇ in lieu of the Licensed
Marks to create a new Compound ▇▇▇▇, ownership of which shall belong exclusively
to Avaya and Lucent will have no rights therein. At the end of the Initial
Period hereunder, Licensee shall cease all use of the Licensed Marks in the
Compound ▇▇▇▇, subject to the inventory depletion rules set forth herein.
(ii) Lucent shall maintain the registrations or pending applications
for the Compound Marks until Avaya has filed for the new Compound Marks, but,
following written notification from Avaya, shall allow the respective
registrations or pending applications to lapse or be abandoned after Avaya has
filed for the new Compound ▇▇▇▇. Lucent shall grant to Avaya any consents to
registration for the new Compound Marks, which may be needed. Lucent shall not
continue to use the Compound Marks after September 30, 2000.
2.3 LIMITATIONS ON GRANT. The Licensed Marks and the Transition Logos
may not be used by Licensee in connection with any product or service except as
expressly set forth in this Agreement.
2.4 NO USE IN LICENSEE'S NAME. Except as set forth herein, Licensee
shall cease using the Licensed Marks in Licensee's corporate, partnership, doing
business as, or fictitious name as of the Effective Date.
2.5 NO OTHER MARKS TO BE USED. Except for the Avaya Product Marks,
Licensee shall not use any other name, ▇▇▇▇, indication of origin, trade dress
or logo of Licensor in connection with the manufacture, marketing, promotion,
distribution, sale or lease of any product or service without Licensor's express
prior written consent.
2.6 MODIFICATION OF LICENSED MARKS. If, as a result of governmental
regulation or court order, Licensor must modify or replace the Licensed Marks as
used in any substantial portion of Licensor's business, Licensee shall within
sixty (60) days adopt and use such modified or replaced Licensed Marks or this
Agreement will terminate. If Licensor voluntarily modifies or replaces the
Licensed Marks, Licensee shall not be obligated to adopt such modified or
replaced Licensed Marks and Licensor will honor the terms of this Agreement.
ARTICLE III
AGREEMENT PERSONAL
3.1 PERSONAL NATURE OF AGREEMENT. In recognition of the goodwill
contributed to the Licensed Marks and the Transition Logos by Licensee prior to
the Separation, and the unique nature of Licensee (including without limitation
the quality of the products and services that it provides, its reputation, and
its goodwill among its customers), the parties agree that the rights,
obligations and benefits of this Agreement shall be personal to Licensee, and
Licensor shall not
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be required to accept performance from, or render performance to an entity other
than Licensee. Pursuant to 11 U.S.C. Section 365 (c) (1) (A) (as it may be
amended from time to time, and including any successor to such provision), in
the event of the bankruptcy of Licensee, this Agreement may not be assigned or
assumed by any successor of Licensee, and Licensor shall be excused from
rendering performance to, or accepting performance from any such successor.
3.2 SUBLICENSING/ASSIGNMENT. Except as expressly provided herein with
respect to Authorized Dealers, Licensee may not sublicense or assign the rights
and obligations of this Agreement without Licensor's express written consent.
3.3 AUTHORIZED DEALERS. (a) Subject to the terms and conditions of
this Agreement, including all applicable Control and Trademark Use
Specifications, Authorized Dealers may use the Licensed Marks or the Transition
Logos on any Lucent or Avaya products, packaging. Marketing or other materials
supplied by Lucent or Avaya. Other than as set forth hereinabove, Authorized
Dealers may only use the relevant Lucent or Avaya BusinessPartner Logo in
accordance with the terms of this Agreement. Licensee shall take all appropriate
steps to restrain any Authorized Dealer from violating the terms and conditions
of this Agreement, including but not limited to termination of Licensee's
agreement with any such Authorized Dealer, or commencement of legal action
against any such Authorized Dealer. Licensee shall provide a list of all
existing Authorized Dealers to Licensor by October 1, 2000.
(b) Licensee may submit a written request, at any time (in
accordance with the notice provisions of Article XI below), for Licensor's
consent to add an Existing Authorized Dealer that was inadvertently omitted from
the list provided pursuant to Section 3.3(a) or to add a New Authorized Dealer
to such list. Licensor shall have thirty (30) days to approve or disapprove of
the proposed Authorized Dealer or New Authorized Dealer. If Licensor does not
respond to Licensee within such thirty (30) days, the New Authorized Dealer
shall be deemed approved by Licensor. A New Authorized Dealer shall satisfy the
guidelines attached as Schedule H hereto, and is subject to the terms and
conditions of this Agreement.
3.4 BUSINESSPARTNERS. Subject to the contractual obligations under
the existing agreements with BusinessPartners, neither Licensee nor any of its
BusinessPartners may continue to use the Lucent BusinessPartner logo set forth
in Schedule I after July 1, 2001. Thereafter, only the Avaya BusinessPartner
Logo may be used.
ARTICLE IV
LICENSES TO OTHERS AND OWNERSHIP
4.1 EXCLUSIVE LICENSE. Licensor agrees that it will not license the
Lucent Marks or the Transition Logos to third parties.
4.2 RETENTION OF RIGHTS BY LICENSOR. Except as otherwise expressly
provided in this Agreement, Licensor shall retain all rights in and to the
Licensed Marks, alone and as used in the Transition Logos, including without
limitation:
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(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of Licensor's
Affiliates and Subsidiaries to use) the Licensed Marks, either alone or in
combination with other marks, in connection with the marketing, offer or
provision of any product or service, including any product or service which
competes with Avaya Products; and
(c) The right to license others to use the Licensed Marks.
4.3 RETENTION OF RIGHTS BY LICENSEE. Except as otherwise expressly
provided in this Agreement, Licensee shall retain all rights in and to the
Corporate Identification ▇▇▇▇, alone and as used in the Transition Logos,
including without limitation:
(a) All rights of ownership in and to the Corporate
Identification ▇▇▇▇;
(b) The right to use (including the right of Licensee's
Affiliates to use) the Corporate Identification ▇▇▇▇, either alone or in
combination with other marks, in connection with the marketing, offer or
provision of any product or service, including any product or service which
competes with Lucent products; and
(c) The right to license others to use the Corporate
Identification ▇▇▇▇.
ARTICLE V
LICENSED TERRITORY
5.1 The Licensed Territory for the licenses granted in Article II of
this Agreement shall include the world, but such licenses do not authorize the
marketing, offering or sale of Avaya Products under the Licensed Marks or the
Transition Logos in any country in which no Avaya Products were being marketed,
offered or sold as of the Effective Date, except:
(a) If a contract with an Existing Authorized Dealer grants
rights to commence marketing an Avaya Product in a new country, then that new
country shall be included in the Licensed Territory with respect to that
particular Avaya Product; and
(b) Licensee may use the Licensed Marks or the Transition Logos
subject to the terms and conditions of this Agreement, in countries where, as of
the date hereof, it had developed bona-fide, good faith plans to commence
marketing an Avaya Product, which countries are identified in Schedule K hereto.
Schedule K shall in all events be completed to the mutual satisfaction of
Licensor and Licensee no later than December 31, 2000.
ARTICLE VI
QUALITY CONTROL
6.1 GENERAL. Licensee acknowledges that the Avaya Products covered by
this
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Agreement must continue to be of sufficiently high quality as to provide maximum
enhancement to and protection of the Licensed Marks and the Transition Logos and
the goodwill they symbolize. Licensee further acknowledges that the maintenance
of high quality Avaya Products is of the essence of this Agreement and that it
will utilize only marketing materials which do not disparage Licensor or place
in disrepute, its businesses or its business reputation, or adversely affect or
detract from Licensor's goodwill.
6.2 CONTROL AND TRADEMARK USE SPECIFICATIONS. (a) Licensee shall use
the Licensed Marks and the Transition Logos only in connection with the
manufacture, marketing, distribution, promotion, and sale of Avaya Products that
meet the Control and Trademark Use Specifications. The Control and Trademark Use
Specifications shall consist of Technical Performance, Customer Service, and
Customer Satisfaction Specifications attached or referenced in Schedule B hereto
and the Trademark Use Specifications referenced in Schedule C hereto. The
Control and Trademark Use Specifications shall be treated as proprietary
information and shall be subject to the confidentiality provisions of Article I
of the Contribution and Distribution Agreement.
(b) Licensee shall not offer any Avaya Product under the
Licensed Marks or the Transition Logos unless it meets each of the relevant
Control and Trademark Use Specifications. Licensee shall not provide to any
third party any product which does not meet the Control and Trademark Use
Specifications without first obliterating the Licensed Marks or the Transition
Logos.
6.3 CUSTOMER CARE PROVISIONS. If Licensor receives a customer
complaint regarding an Avaya Product branded under this Agreement, it will
promptly notify Licensee and Licensee will use reasonable commercial efforts to
resolve any such complaints or any other complaints received for products
branded under this Agreement as it would for complaints received for products
branded under the Avaya ▇▇▇▇.
6.4 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION. Licensor shall have
the right to designate from time to time, one or more Quality Control
Representatives, who shall have the right from time to time, but no more than
once per calendar quarter, upon ten (10) days' notice to Licensee, to conduct
during regular business hours an inspection, test, survey and review of
Licensee's facilities and the facilities of Licensee's Authorized Dealers, if
any, and otherwise to determine compliance with the applicable Control and
Trademark Use Specifications. At Licensor's request, Licensee agrees to furnish
or make available for inspection to the Quality Control Representatives: (i)
samples of any Avaya Product that is marketed or provided under the Licensed
Marks or the Transition Logos for inspections, surveys, tests and reviews to
assure conformance with the applicable Control and Trademark Use Specifications;
(ii) performance data in its control relating to the conformance of Avaya
Products with the applicable Control and Trademark Use Specifications, and (iii)
samples of marketing materials, product packaging labels, instruction and
warranty materials that use the Licensed Marks or the Transition Logos. Any such
data provided to Licensor shall be treated as proprietary information subject to
the confidentiality provisions of Article I of the Contribution and Distribution
Agreement. Licensor may independently, and at its own expense, conduct
continuous customer satisfaction surveys to determine if Licensee and its
Authorized Dealers are meeting the Control and Trademark Use
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Specifications. Licensee shall cooperate with Licensor fully in the distribution
of such surveys. Licensor shall, at the request of Licensee, provide Licensee
with copies of customer surveys used by Licensor to determine if Licensee is
meeting the Control and Trademark Use Specifications. If Licensee learns that it
or any of its Authorized Dealers is not complying with any Control and Trademark
Use Specifications, it shall notify Licensor and the provisions of Article VII
(and of Section 3.3(a) in the case of Authorized Dealers) shall apply to such
noncompliance.
6.4 SPONSORSHIP. Beginning three months from the Effective Date,
Licensee shall not use the Licensed Marks to sponsor, endorse, or claim
affiliation with any event, meeting, charitable endeavor or any other
undertaking without obtaining the express written permission of Licensor. Any
breach of this provision shall be deemed a Significant Breach by Licensee.
6.5 DISCONTINUATION. If, during the term of this Agreement, Licensee
discontinues the retail provision of an Avaya Product that has been sold under
the Licensed Marks or the Transition Logos, Licensee shall comply with an "End
of Life" plan that satisfies the requirements of Schedule H hereto. Licensee
shall consult with Licensor prior to finalizing any End of Life Plan required by
this Section and submit an advance copy of such plan to Licensor.
6.6 REFURBISHED PRODUCT. Licensee shall not sell, convey, assign its
interest in or otherwise transfer to any refurbisher or reconditioner any
Product bearing the Licensed Marks without first obliterating the Licensed Marks
and any other reference to Licensor from all products, packaging, instruction
and warranty materials provided to such refurbisher or reconditioner.
6.7 COSTS. All reasonable costs associated with monitoring compliance
with and enforcing these quality control provisions, and with administering this
Agreement, shall be borne by Licensee. Licensor shall provide to Licensee a
quarterly invoice itemizing with reasonable specificity the costs incurred
during the prior quarter, which shall be due and payable by Licensee within
thirty (30) days of receipt.
ARTICLE VII
REMEDIES FOR NONCOMPLIANCE WITH CONTROL AND TRADEMARK USE SPECIFICATIONS
7.1 CURE PERIOD. If Licensor becomes aware that Licensee or any
Authorized Dealer is not complying with any provision of the Control and
Trademark Use Specifications, Licensor shall notify Licensee in writing, setting
forth in reasonable detail, a written description of the noncompliance and any
suggestions for curing such noncompliance. Licensee shall then have forty five
(45) days after receipt of such notice (the "Cure Period") to correct or submit
to Licensor a written plan, reasonably acceptable to Licensor, to correct such
noncompliance.
7.2 FAILURE TO CURE. If the noncompliance with the Control and
Trademark Use Specifications identified pursuant to Section 7.1 continues beyond
the Cure Period, Licensee shall: (i) cease offering such Avaya Products under
the Licensed Marks or the Transition Logos until it can comply with the Control
and Trademark Use Specifications; or (ii) be deemed to be
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in Significant Breach of this Agreement.
ARTICLE VIII
PROTECTION OF LICENSED SERVICE MARKS AND THE TRANSITION LOGOS
8.1 OWNERSHIP AND RIGHTS. (a) Licensee admits the validity of, and
agrees not to challenge the ownership or validity of, the Licensed Marks alone
and in the Transition Logos. Licensee shall not disparage, dilute or adversely
affect the validity of the Licensed Marks or the Transition Logos. Licensee
agrees that any and all goodwill and other rights that Licensee may acquire by
the use of the Licensed Marks alone and in the Transition Logos shall inure to
the sole benefit of Licensor. Licensee will not grant or attempt to grant a
security interest in the Licensed Marks or Transition Logos, or this Agreement,
or to record any such security interest in the United States Patent and
Trademark Office or elsewhere, against any trademark application or registration
belonging to Licensor. To the extent necessary, Licensee agrees to execute all
documents reasonably requested by Licensor to effect further registration of,
maintenance and renewal of the Licensed Marks and recordal of the license
relationship between Licensor and Licensee and recordal of Licensee as a
Registered User. For purposes of this Agreement, Licensee shall be considered a
"related company" under the U.S. Trademark Act, 15 U.S.C. Section 1051 et seq.
(b) LICENSOR admits the validity of, and agrees not to
challenge the ownership or validity of, the Corporate Identification Marks alone
and in the Transition Logos. Licensor shall not disparage, dilute or adversely
affect the validity of the Corporate Identification Marks or the Transition
Logos. Licensor agrees that any and all goodwill and other rights that Licensor
may acquire by the use of the Corporate Identification Marks alone and in the
Transition Logos shall inure to the sole benefit of Licensee. Licensor will not
grant or attempt to grant a security interest in the Corporate Identification
Marks or Transition Logos, or this Agreement, or to record any such security
interest in the United States Patent and Trademark Office or elsewhere, against
any trademark application or registration belonging to Licensee. To the extent
necessary, Licensor agrees to execute all documents reasonably requested by
Licensee to effect further registration of, maintenance and renewal of the
Corporate Identification Marks and recordal of the license relationship between
Licensee and Licensor. For purposes of this Agreement, Licensor shall be
considered a "related company" under the U.S. Trademark Act, 15 U.S.C. Section
1051 et seq.
8.2 SIMILAR MARKS. (a) Licensee further agrees not to register in any
country any ▇▇▇▇ resembling or confusingly similar to the Licensed Marks and not
to use the Licensed Marks or any part thereof as part of its corporate name
(except as otherwise expressly permitted hereunder), nor use any ▇▇▇▇
confusingly similar, deceptive or misleading with respect to the Licensed Marks
or which dilute the Licensed Marks. If any application for registration is, or
has been, filed in any country by Licensee which relates to any ▇▇▇▇ which in
the sole opinion of Licensor, is confusingly similar, deceptive or misleading
with respect to the Licensed Marks, or which dilutes the Licensed Marks,
Licensee shall, at Licensor's sole discretion, immediately abandon any such
application or registration or assign it to Licensor. If Licensee uses any ▇▇▇▇
which in the sole opinion of Licensor, is confusingly similar, deceptive or
misleading with
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respect to the Licensed Marks, or which dilutes the Licensed Marks, or if
Licensee uses the Licensed Marks in connection with any product, or in
connection with any service not specifically authorized hereunder, Licensee
shall, immediately upon receiving a written request from Licensor, permanently
cease such use.
(b) The parties agree that neither will apply to register the
Transition Logos, and that Licensee will have the sole and exclusive right to
use and register the Corporate Identification ▇▇▇▇.
8.3 INFRINGEMENT. In the event that Licensee learns of any
infringement or threatened infringement of the Licensed Marks, either alone or
as contained in Compound Marks or the Transition Logos, or any unfair
competition, passing-off or dilution with respect to the same, or any third
party alleges or claims that said Licensed Marks are liable to cause deception
or confusion to the public, or is liable to dilute or infringe any right of such
third party, Licensee shall immediately notify Licensor or its authorized
representative giving particulars thereof and Licensee shall provide necessary
information and assistance to Licensor or its authorized representatives in the
event that Licensor decides that proceedings should be commenced or defended.
Licensee's reasonable expenses in providing such assistance shall be borne by
Licensor. Licensor shall have exclusive control of any litigation, opposition,
cancellation or related legal proceedings. The decision whether to bring,
defend, maintain or settle any such proceedings shall be at the exclusive option
and expense of Licensor, and all recoveries shall belong exclusively to
Licensor. Licensee will not initiate any such litigation, opposition,
cancellation or related legal proceedings in its own name. Nothing in this
Agreement shall require or be deemed to require Licensor to enforce the Licensed
Marks or the Transition Logos against others. Nothing herein will limit
Licensee's ability to initiate any litigation, opposition, cancellation or
related legal proceedings in its own name with regard to those elements of the
Compound Marks and Transition Logos owned exclusively by Licensee.
8.4 COMPLIANCE WITH LAWS. In the performance of this Agreement,
Licensee shall comply with all applicable laws and regulations, including those
laws and regulations particularly pertaining to the proper use and designation
of Marks. Should Licensee be or become aware of any applicable laws or
regulations which are inconsistent with the provisions of this Agreement,
Licensee shall promptly notify Licensor of such inconsistency. In such event,
Licensor may, at its option, either waive the performance of such inconsistent
provisions, or negotiate with Licensee to make changes in such provisions to
comply with applicable laws and regulations.
ARTICLE IX
TERMINATION
9.1 BREACH BY LICENSEE. Licensor may terminate this Agreement at any
time in the event of a Significant Breach by Licensee. A "Significant Breach by
Licensee" shall mean any event expressly specified in this Agreement to be a
"Significant Breach," and any of the following (after exhaustion of any Cure
Periods set forth in Article VII hereof to the extent such Cure Periods are
applicable):
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(a) Licensee's or any Authorized Dealer's use of the Licensed
Marks or the Transition Logos contrary to the provisions of this Agreement,
provided, however, that such use contrary to this Agreement by a particular
Authorized Dealer shall be grounds for termination only as to that particular
Authorized Dealer; further provided that a pattern of violations without cure of
any provision of this Agreement, including Section 2.5, by a number of
Licensee's Authorized Dealers shall be grounds for termination as to those
Authorized Dealers, or all Authorized Dealers, at the sole discretion of
Licensor.
(b) Licensee's or any Authorized Dealer's use of a Licensed
▇▇▇▇ or the Transition Logos in connection with any marketing materials, or the
offering, marketing or provision of any Avaya Product, which fail to meet the
standards set forth in the Control and Trademark Use Specifications; provided,
however, that (i) the failure of a particular product to comply with the Control
and Trademark Use Specifications shall be grounds for termination only as to
that product; further provided that continued use of the Licensed Marks or the
Transition Logos by Licensee in connection with such product shall be grounds
for termination of the Agreement as to all Avaya Products, and (ii) except as
otherwise provided in Paragraph (a) above, the failure of an Authorized Dealer
to satisfy the standards set forth in the Control and Trademark Use
Specifications shall be grounds for termination only as to that particular
Authorized Dealer;
(c) Licensee's refusing or neglecting a request by Licensor
for access to Licensee's facilities, products or marketing materials;
(d) Unless otherwise permitted herein, Licensee's licensing,
assigning, transferring, disposing of or relinquishing (or purporting to
license, assign, transfer, dispose of or relinquish) any of the rights granted
in this Agreement to others;
(e) Licensee's failure to take appropriate steps to restrain
any Authorized Dealer from violating the terms and conditions of this Agreement;
(f) Licensee's receipt of any license, right or permission to
market, or the marketing by Licensee of, any product or service under any name,
▇▇▇▇, indication of origin or trade dress or the logo of any Person that
competes with Licensor in the provision of products or services; provided,
however, that Licensee may contract manufacture products for any Person
including any Person that competes with Licensor in the provision of Lucent
Products which do not bear the Licensed Marks or the Transition Logos, so long
as such Person makes no reference in any promotional, marketing information or
other material to Licensor or Licensee's relationship to Licensor;
(g) The bankruptcy or insolvency of Licensee; provided,
however, that the bankruptcy or insolvency of an Affiliate or Subsidiary of
Licensee shall be grounds for termination of this Agreement only as to that
Affiliate or Subsidiary;
(h) Licensee's failure to obtain Licensor's permission to
sponsor any undertaking as provided in Section 6.4 of this Agreement;
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(i) Licensee's failure to develop, provide to Licensor an
advance copy of or comply with an End of Life Plan, as required by Section 6.5
of this Agreement.
9.2 TERMINATION OBLIGATIONS. In the event Licensor terminates this
Agreement pursuant to this Article:
(a) Licensee and all Authorized Dealers (or such of the foregoing as
to which this Agreement is terminated) shall immediately cease all use of the
Licensed Marks or the Transition Logos upon notice of termination; provided,
however, that nothing herein shall be construed to prohibit Licensee from making
truthful statements of fact regarding its past affiliation with Licensor, so
long as such statements are not likely to cause confusion, mistake or deception.
(b) Licensee and all Authorized Dealers (or such of the foregoing as
to which this Agreement is terminated) shall have no further rights under this
Agreement.
ARTICLE X
INDEMNITIES
10.1 LICENSEE'S INDEMNIFICATION. Except as provided in Section 10.2
below, Licensee shall defend, indemnify and hold Licensor, its Affiliates and
authorized representatives, and each other Lucent Indemnitee, harmless against
all claims, suits, proceedings, costs, damages and judgments incurred, claimed
or sustained by third parties, whether for personal injury or otherwise, arising
from or in connection with Licensee's or any Authorized Dealer's, manufacture,
marketing, sale, or use of Avaya Products bearing the Licensed Marks or the
Transition Logos after the date of this Agreement, and shall indemnify Licensor
and each Lucent Indemnitee for all damages, losses, costs and expenses
(including reasonable attorneys' fees) due to such use, sale, lease or marketing
and also for any improper or unauthorized use of the Licensed Marks or the
Transition Logos by Licensee or its Authorized Dealers.
10.2 NOTICE. Licensee shall notify Licensor, in writing, in the event
that any third party claims, by suit, proceeding, action or otherwise, that
Licensee's use of the Licensed Marks, alone or as used in the Transition Logos
in connection with Avaya Products as provided in this Agreement constitutes or
amounts to a trademark or service ▇▇▇▇ infringement, unfair competition or
dilution, and, at Licensor's option, Licensee may be directed to surrender
control of the defense of such claims to Licensor.
ARTICLE XI
NOTICES
All notices or other communications under this Agreement shall
be in writing and shall be deemed to be duly given when (a) delivered in person,
or (b) sent by telecopy, telegram or facsimile, or (c) deposited in the United
States mail or private express mail, postage prepaid, addressed as follows:
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(i) If to Licensor:
Lucent Technologies Inc.
Attn: Senior Vice President and General Counsel
▇▇▇▇ ▇▇-▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Tel: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
with a copy to:
Lucent Technologies Inc.
Attn: Managing Corporate Counsel, Trademarks and Copyrights
▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Tel: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
(ii) If to Licensee:
Avaya Inc.
Attn: Vice President, General Counsel and Corporate Secretary
211 Mount Airy Road, Room 3E-202
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Tel: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
with a copy to:
Avaya Inc.
Attn: Trademark and Copyright Counsel
▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Tel: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
Either party may, by notice to the other party, change the address to which such
notices are to be given.
ARTICLE XII
COMPLIANCE WITH LAW
12.1 GENERAL. Nothing in this Agreement shall be construed to prevent
Licensor or Licensee from complying fully with all applicable laws and
regulations, whether now or hereafter in effect.
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12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS. Licensee, at its
expense, shall be responsible for obtaining and maintaining all licenses,
permits and approvals which are required by all Governmental Authorities with
respect to this Agreement, and to comply with any requirements of such
Governmental Authorities for the registration or recording of this Agreement.
Licensee shall furnish to Licensor written evidence from such Governmental
Authorities of any such licenses, permits, clearances, authorizations,
approvals, registration or recording.
ARTICLE XIII
MEDIATION AND DISPUTE RESOLUTION
13.1 DISPUTES. The provisions set forth in this Article shall apply to
all disputes, controversies or claims (whether arising in contract, tort or
otherwise) that may arise out of or relate to, or arise under or in connection
with this Agreement.
13.2 ESCALATION; MEDIATION.
(a) It is the intent of the parties to use their respective
reasonable best efforts to resolve expeditiously and on a mutually acceptable
negotiated basis any dispute, controversy or claim between them with respect to
the matters covered hereby that may arise from time to time. In furtherance of
the foregoing, any party involved in a dispute, controversy or claim may deliver
a notice (an "Escalation Notice") demanding an in-person meeting involving
representatives of the parties at a senior level of management of the parties
(or if the parties agree, of the appropriate strategic business unit or division
within such entity). A copy of any such Escalation Notice shall be given to the
General Counsel, or like officer or official, of each party involved in the
dispute, controversy or claim (which copy shall state that it is an Escalation
Notice pursuant to this Agreement). Any agenda, location or procedures for such
discussions or negotiations between the parties may be established by the
parties from time to time; provided, however, that the parties shall use their
reasonable best efforts to meet within thirty (30) days of the Escalation
Notice.
(b) If the parties are not able to resolve the dispute,
controversy or claim through the escalation process referred to above, then the
matter shall be referred to mediation. The parties shall retain a mediator to
aid in their discussions and negotiations by informally providing advice to the
parties. Any opinion expressed by the mediator shall be strictly advisory and
shall not be binding on the parties, nor shall any opinion expressed by the
mediator be admissible in any other proceeding. The mediator may be chosen from
a list of mediators previously selected by the parties or by other agreement of
the parties. Costs of the mediation shall be borne equally by the parties
involved in the matter, except that each party shall be responsible for its own
expenses. Mediation shall be a prerequisite to the commencement of any action by
either party.
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13.3 COURT ACTIONS.
(a) In the event that any party, after complying with the
provisions set forth in Section 13.2 above, desires to commence an action, such
party may submit the dispute, controversy or claim (or series of related
disputes, controversies or claims) giving rise thereto to a court of competent
jurisdiction.
(b) Unless otherwise agreed in writing, the parties will
continue to provide service and honor all other commitments under this Agreement
during the course of dispute resolution pursuant to the provisions of this
Article with respect to all matters not subject to such dispute, controversy or
claim.
ARTICLE XIV
MISCELLANEOUS
14.1 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER.
(a) This Agreement may be executed in one or more
counterparts, all of which shall be considered one and the same agreement.
(b) This Agreement and any exhibits, schedules and appendices
hereto contain the entire agreement between the parties with respect to the
subject matter hereof, supersede all previous agreements, negotiations,
discussions, writings, understandings, commitments and conversations with
respect to such subject matter and there are no agreements or understandings
between the parties other than those set forth or referred to herein.
(c) Each party represents as follows:
(i) each has the requisite corporate or other power and
authority and has taken all corporate or other
action necessary in order to execute, deliver and
perform this Agreement and to consummate the
transactions contemplated hereby; and
(ii) this Agreement has been duly executed and delivered
by it and constitutes a valid and binding agreement
of it enforceable in accordance with the terms
thereof.
14.2 GOVERNING LAW. This Agreement shall be governed by and construed
and interpreted in accordance with the laws of the State of New York applicable
to contracts to be performed solely within the State of New York, as to all
matters, including matters of validity, construction, effect, enforceability,
performance and remedies.
14.3 ASSIGNABILITY; SUCCESSORS. This Agreement shall be binding upon
and inure to the benefit of the parties hereto and their respective successors
and assigns; provided, however, that
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neither party may assign this Agreement, in whole or in part, or its respective
rights or obligations without the prior written consent of the other party.
14.4 RELATIONSHIP OF THE PARTIES; THIRD PARTY BENEFICIARIES.
(a) Nothing in this Agreement shall be deemed or construed by
the parties or any third party as creating the relationship of principal and
agent, partnership or joint venture between the parties, it being understood and
agreed that no provision contained herein, and no act of the parties, shall be
deemed to create any relationship between the parties other than the
relationship of independent contractor.
(b) The provisions of this Agreement are solely for the
benefit of the parties and are not intended to confer upon any Person except the
parties any rights or remedies hereunder, and there are no third party
beneficiaries of this Agreement, and this Agreement shall not provide any third
Person with any remedy, claim, liability, reimbursement, claim of action or
other right in addition to those existing without reference to this Agreement.
14.5 SEVERABILITY. If any provision of this Agreement or the
application thereof to any Person or circumstance is determined by a court of
competent jurisdiction to be invalid, void or unenforceable, the remaining
provisions hereof, or the application of such provision to Persons or
circumstances or in jurisdictions other than those as to which it has been held
invalid or unenforceable, shall remain in full force and effect and shall in no
way be affected, impaired or invalidated thereby, so long as the economic or
legal substance of the transactions contemplated hereby or thereby, as the case
may be, is not affected in any manner adverse to any party. Upon such
determination, the parties shall negotiate in good faith in an effort to agree
upon such a suitable and equitable provision to effect the original intent of
the parties.
14.6 FORCE MAJEURE. No party shall be deemed in default of this
Agreement to the extent that any delay or failure in the performance of its
obligations under this Agreement results from any cause beyond its reasonable
control and without its fault or negligence, such as acts of God, acts of civil
or military authority, embargoes, epidemics, war, riots, insurrections, fires,
explosions, earthquakes, floods, unusually severe weather conditions, labor
problems or unavailability of parts or raw materials, or, in the case of
computer systems, any failure in electrical or air conditioning equipment. In
the event of any such excused delay, the time for performance shall be extended
for a period equal to the time lost by reason of the delay.
14.7 PUBLICITY. The parties agree to consult and cooperate with each
other prior to issuing any press releases, articles, advertising, or publicity
materials relating to Products under this Agreement or this Agreement which use
the trademarks, logos, trade name, service ▇▇▇▇ or other company identification
of the other party, with the exception of the Transition Logos or factual
references and except as may be required by governmental regulation or court
order, or any of its Affiliates or any of its personnel.
14.8 HEADINGS. The article, section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement.
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14.9 WAIVERS OF DEFAULT. Waiver by any party of any default by the
other party of any provision of this Agreement shall not be deemed a waiver by
the waiving party of any subsequent or other default, nor shall it prejudice the
rights of the other party.
14.10 INJUNCTIVE RELIEF. In the event of any actual or threatened
default in, or breach of, any of the terms, conditions and provisions of this
Agreement, the party or parties who are or are to be thereby aggrieved shall
have the right to injunctive or other equitable relief of its rights under this
Agreement, in addition to any and all other rights and remedies at law or in
equity, and all such rights and remedies shall be cumulative. The parties agree
that the remedies at law for any breach or threatened breach, including monetary
damages, are inadequate compensation for any loss and that any defense in any
action for injunctive relief that a remedy at law would be adequate is waived.
Any requirements for the securing or posting of any bond with such remedy are
waived.
14.11 AMENDMENTS. No provision of this Agreement shall be deemed
waived, amended, supplemented or modified by any party, unless such waiver,
amendment, supplement or modification is in writing and signed by the authorized
representative of the party against whom it is sought to enforce such waiver,
amendment, supplement or modification.
14.12 INTERPRETATION. Words in the singular shall be held to include
the plural and vice versa and words of one gender shall be held to include the
other genders as the context requires. The terms "hereof", "herein", and
"herewith" and words of similar import shall, unless otherwise stated, be
construed to refer to this Agreement as a whole (including all of the schedules,
exhibits and appendices hereto) and not to any particular provision of this
Agreement. Article, section, exhibit, schedule and appendix references are to
the articles, sections, exhibits, schedules and appendices to this Agreement
unless otherwise specified. The word "including" and words of similar import
when used in this Agreement shall mean "including, without limitation," unless
the context otherwise requires or unless otherwise specified. The word "or"
shall not be exclusive. Unless expressly stated to the contrary in this
Agreement, all references to "the date hereof," "the date of this Agreement,"
"hereby" and "hereupon" and words of similar import shall all be references to
the Effective Date, regardless of any amendment or restatement hereof.
IN WITNESS WHEREOF, the parties have caused this Trademark License
Agreement to be executed by their duly authorized representatives as of the
Effective Date.
LUCENT TECHNOLOGIES INC. AVAYA INC.
By: By:
-------------------------- --------------------------
Name: Name:
------------------------ ------------------------
Title: Title:
----------------------- -----------------------
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