ASSIGNMENT OF TRADEMARK
AGREEMENT, made as of July 29, 1997, between D&D Design and Details,
Limited, a corporation organized under the laws of United Kingdom with an
address at ▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ("Assignor"), and
Cable & Co. Worldwide, Inc., a Delaware corporation, with an address at ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ("Assignee").
WHEREAS, Assignor has adopted, used and is using certain marks in
connection with the design, manufacture, sales and licensing of men's footwear;
and
WHEREAS, Assignee wishes to acquire all of Assignor's rights in and to
such marks and any corresponding registrations and applications for registration
as provided herein.
NOW THEREFORE, in consideration of the premises and the mutual
agreements contained herein and other good and valuable consideration, receipt
of which is hereby acknowledged, the parties hereto, intending to be legally
bound, hereby agree as follows:
1. Assignment
The Assignor sells, assigns, grants, transfers, sets over, and delivers
to the Assignee, its successors and assigns, all of Assignor's right, title and
interest in and to the trademarks and trade names set forth on Exhibit 1 hereto
(the "Trademarks"), in and throughout the jurisdictions set forth on Exhibit 2
hereto (the "Territory"), to have and to hold such trademark and all rights of
whatsoever nature thereunder in perpetuity.
2. Assignor's Warranties
The Assignor represents and warrants that
(a) the Trademarks are its sole and exclusive property;
(b) it has the full right and power to make this Agreement;
(c) it has not pledged, mortgaged, assigned, or otherwise granted
any rights in the Trademarks or any part thereof or any interest therein in any
part of the Territory, and there exists no adverse claim thereupon or thereto,
except as noted on Exhibit 3 hereto;
(d) trademark registrations have been secured therein by the
Assignee in each jurisdiction in the Territory listed on Exhibit 4 hereto, or
application has been made therefor and such applications and registrations are
current, valid and (as to registrations) enforceable, except as noted on Exhibit
4,
(e) to the best of Assignor's knowledge, including constructive
knowledge of any state of affairs that would be disclosed by the reasonable
exercise of ordinary care by an owner and licensor of the Trademarks, neither
the Trademarks nor any part thereof infringe upon the title, trademark, trade
name or property rights of any person, firm or corporation anywhere in the
world, except as noted on Exhibit 5 hereto.
3. Royalties and Payments
The Assignee shall use reasonable efforts to exploit the Trademarks, in
accordance with its business judgment, and shall pay to the Assignor, in respect
of the Trademarks, the following considerations:
(a) that number of shares of common stock of the Assignee, such
that, following the issuance of such stock and the stock to be issued
simultaneously to Cable & Co. S.R.L., Assignor together Cable & Co. S.R.L. will
hold shares equal to 25% of the outstanding common stock of the Assignee, less
404,000 shares; and
(b) $US 3,150,000, payable as in the form of an initial cash
payment in the amount of $400,000 upon execution of this Agreement; and
thereafter, six (6) installments payable in cash as follows: $350,000, on
January 9 1998, $400,000, on January 9 1999, and four installments of $500,000
each, on January 9 of the years 2000 through 2003, inclusive; and
(c) Seven percent (7%) as annual royalties ("Annual Royalties"),
of the amounts actually received by the Assignee, less returns, on all goods
sold bearing the Trademarks sold in all parts of the Territory except the
Americas (as defined below) during the following periods: In each country within
the Territory, the period of the license shall be five calendar years, beginning
in the calendar year in which Assignee first seeks to exploit the Trademarks,
provided that all such periods shall irrevocably expire on December 31, 2007,
without regard to whether or when Assignee has sought to exploit or employ the
Trademarks prior to that time. For purposes of this Paragraph 3, "the Americas"
shall mean North America, South America, Central America Greenland, Iceland and
the Carribbean.
Except as specifically provided in this Paragraph 3, no other royalties
or payments of any kind shall be due from the Assignee to the Assignor.
4. Accounting for Annual Royalties
The Assignee shall render statements of the Annual Royalties payable
under paragraph 3(c) and make payments of such Annual Royalties to the Assignor
within 90 days after the end of its fiscal year, but no statement need be
rendered or payment made with respect to any fiscal year for which less than the
sum of $1,000.00 shall be due to the Assignor.
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5. Assignments of Trademark Registrations
(a) The Assignor shall deliver to the Assignee an assignment of
trademark registration or other instrument of authorization relating to each of
the Trademarks with respect to each jurisdiction within the Territory in form
reasonably satisfactory to Assignee and legally sufficient under the laws of
each such jurisdiction to effect the registration of each of the Trademarks by
Assignee in such jurisdictions. The Assignee shall have the right to expend such
sums as may be necessary to obtain such instruments and register such assignment
of trademark registrations in any jurisdiction within the Territory. In the
event any registrations assigned by Assignor prove legally insufficient, all
sums by reasonably expended by Assignee in perfecting such registrations shall
be for the account of the Assignor and shall be charged to the Assignor and may
be deducted by the Assignee from any moneys due to the Assignor under this or
any other agreement between the parties.
(b) Simultaneously with the execution hereof, the Assignor shall
execute the short-form assignment of the Trademarks which is attached hereto as
Exhibit 6.
6. Assignability
Nothing contained in this Agreement shall prevent the Assignee from
authorizing its licensees, agents, and representatives, in any jurisdiction
within the Territory, to exercise exclusive rights in the Trademark in the
Territory or any jurisdiction therein on at least the royalty basis set forth in
paragraph 3(c). Nothing in this Agreement shall prevent the Assignee from
granting a license to exercise exclusive rights to the Trademark in any or all
jurisdictions within the Territory, provided that the Assignee shall pay to the
Assignor the royalties herein stipulated.
7. Inspection of books
The Assignor may, through an independent certified public accountant
acceptable to the Assignee, at any time during normal business hours, have
access to all pertinent records and books of account of the Assignee relating to
the Trademarks, for the purpose of verifying royalties to be paid hereunder.
8. Further Assurances
Assignor agrees, upon the reasonable request of Assignee, to execute,
acknowledge and deliver to the other any and all instruments or documents, and
to do any and all such acts which may be reasonably necessary to give full force
and effect to the purpose and intentions of the terms set forth in this
Agreement, and in particular, to effect the transfer or registration of the
Trademarks in any jurisdiction within the Territory.
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9. Notices
Written demands and notices provided for herein shall be sent by
registered mail or reputable international overnight courier to the addresses
set forth at the beginning of this Agreement.
10. Infringements
(a) Any legal action brought by the Assignee against any alleged
infringer of the Trademark shall be initiated and prosecuted at Assignee's sole
expense, and any recovery made as a result thereof shall be the sole property of
the Assignee.
(b) If a claim is made against the Assignee alleging that any of
the Trademarks is an infringement of the rights of third parties, the Assignee
shall thereupon serve written notice upon the Assignor containing full details
of such claim, and thereafter, until such claim has been adjudicated or settled,
the Assignee may withhold any moneys due or becoming due to the Assignor pending
the outcome of such claim, up to the reasonablly established amount of the
claim; provided, however, that if no suit shall be filed within one year after
written notice of such claim is given to the Assignor by the Assignee, any
moneys so withheld and not previously paid to Assignor shall then be paid to the
Assignor.
(c) From and after the date of service of a summons in a suit for
infringement filed against the Assignee by a third party for infringement by the
Trademark of the proprietary rights of such third party, any and all payments
thereafter coming due to the Assignor shall be retained by the Assignee until
the suit has been finally adjudicated and then paid in accordance with such
adjudication.
11. Indemnities
The Assignor shall indemnify, save and hold harmless the Assignee and
its successors, agents, licensees, and assigns, and their respective officers,
directors and employees, from and against all claims, demands, actions,
proceedings, liabilities, cost, and expenses, including attorneys' fees, which
may be asserted against or incurred by any of them, arising out of or connected
with any claim by a third party which is inconsistent with any of the
representations, warranties, covenants or agreements made by the Assignor in
this Agreement, or by reason of the exercise of any of the rights granted or
purported to be granted by the Assignor in this Agreement; provided, however,
that (i) Assignee promptly notifies Assignor in writing of such claim, (ii)
Assignee gives Assignor sole control of the defense and all related settlement
negotiations, (iii) Assignee provides Assignor with the assistance, information,
and authority reasonably necessary to perform the above and (iv) that in the
event of a third party claim, such third party claim is made within three years
of the date hereof. Expenses incurred by Assignee in providing such assistance
shall be reimbursed by Assignor. Assignee may also participate in the defense of
a claim at its option and its own expense. Assignor shall not, without the prior
written consent of Assignee, effect any settlement or compromise of a claim in
which Assignee
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is a party, unless such settlement or compromise includes an unconditional
release of Assignee from all such liability. Assignor authorizes the Assignee to
withhold any and all sums which become due to the Assignor under this or any
other agreement between the parties until such claim, action, or proceeding
shall have been disposed of or the breach of any of the Assignor's
representations, warranties, covenants or agreements hereunder shall have been
cured.
12. Non-Waiver
The failure of either party, at any time, to require the strict
performance by the other of any agreement, term, provision, covenant or
condition hereof shall in no way affect its right to enforce the same, nor shall
the failure of either party to act with respect to any breach of any agreement,
term, provision, covenant or condition hereof by the other party be taken or
held to be a waiver of any succeeding breach thereof, or as a waiver of the
agreement, term, provisions, covenant or condition itself.
13. Arbitration
Any controversy or claim relating to or arising out of this Agreement or
the breach thereof shall be settled by arbitration by three arbitrators in New
York City, one to be selected by Assignor, one to be selected by Assignee and
one to be selected the two arbitrators so named, in accordance with the United
States Arbitration Act (Title 9, U. S. Code) and under the auspices and rules of
the American Arbitration Association then in effect. Each party may serve no
more than three requests for production of documents. If disputes arise
concerning these requests, the arbitrators shall have sole and complete
discretion to determine such disputes. The arbitrators shall give effect to
statutes of limitation in determining any claim, and any controversy concerning
whether an issue is arbitrable shall be determined by the arbitrators. The
arbitrators shall deliver a written opinion setting forth findings of fact,
conclusions of law and the rationale for the decision. The arbitrators shall
reconsider the decision once upon motion and at the expense of a party. Judgment
upon the decision rendered by the arbitrators may be entered in any court having
jurisdiction. The institution and maintenance of an action for judicial relief
or pursuit of a provisional or ancillary remedy shall not constitute a waiver of
the right of any party, including the plaintiff, to submit the controversy or
claim to arbitration if the other party contests such action for judicial
relief. No provision of this Paragraph shall limit the right of a party to
obtain provisional or ancillary remedies from a court of competent jurisdiction
before, after, or during the pendency of any arbitration.
14. Assignees's Default
Should the Assignee fail or refuse, within 30 days after written demand,
to furnish or cause to be furnished royalty statements as required in Paragraph
4 hereof, or to give the Assignor access to its books and records as required in
Paragraph 7 hereof; or in the event that the Assignee shall fail to make payment
of any royalty due, within 30 days after written demand therefor, then,
notwithstanding the provisions of paragraph 13, Assignee may bring suit in
federal or state court in New York City for legal or equitable relief to protect
or enforce its
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rights herein.
15. Severability
Any provision of this Agreement that is prohibited or unenforceable in
any jurisdiction shall, as to such jurisdiction, be ineffective to the extent of
such prohibition or unenforceability without invalidating the remaining
provisions hereof, and any such prohibition or unenforceability in any
jurisdiction shall not invalidate or render unenforceable such provision in any
other jurisdiction.
16. Binding Effect
This Agreement shall be binding upon the parties hereto and their
respective successors and assigns, but this Agreement and any rights hereunder
may not be assigned by the Assignor without the prior written consent of the
Assignee.
17. Construction
This Agreement contains the entire agreement and understanding between
the parties with respect to the subject matter hereof. This Agreement may not be
changed or discharged orally. This Agreement shall be construed and interpreted
in accordance with the internal laws of the State of New York.
IN WITNESS WHEREOF, the parties have executed this Agreement the day and
year first above written.
D&D Design and Details, Limited
By:
Title:
Cable & Co. Worldwide, Inc.
By: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Secretary
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Exhibit 1
TRADEMARKS
1. Bacco ▇▇▇▇▇
Exhibit 2
TERRITORY
I. All of Europe including but not limited to:
1. Albania
2. Andorra
3. Austria
4. Belgium
5. ▇▇▇▇▇▇▇▇
▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
7. Cyprus
8. Channel Islands
9. Denmark
10. Finland
11. France
12. Germany
13. Greece
14. Ireland
15. Iceland
16. Hungary
17. Italy
18. ▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇. ▇▇▇▇▇▇▇▇▇▇
20. Malta
21. Monaco
22. ▇▇▇▇▇▇
▇▇. ▇▇▇▇▇▇▇▇▇▇▇
24. Poland
25. Portugal
26. Rumania
27. Russia (former Soviet Union)
28. San Marino
29. Spain
30. Sweden
31. Switzerland
32. Ukraine
33. United Kingdom
34. Yugoslavia (former)
II. Africa, Asia, Asia Minor, Australia, the ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇ and the Caribbean.and all other parts of the
world except Europe.
Exhibit 3
SCHEDULE OF LIMITATIONS OR ADVERSE CLAIMS
Exhibit 4
SCHEDULE OF TRADEMARK REGISTRATIONS
1. Austria
2. Belgium
3. ▇▇▇▇▇▇▇▇
▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
5. Channel Islands
6. Denmark
7. France
8. Germany
9. Hungary
10. Italy
11. ▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇. ▇▇▇▇▇▇▇▇▇▇
13. Monaco
14. Netherlands
15. Portugal
16. Rumania
17. Russia (former Soviet Union)
18. Spain
19. Sweden
20. Switzerland
21. Ukraine
22. Yugoslavia (former)
[Add other registrations]
Exhibit 5
SCHEDULE OF KNOWN INFRINGEMENTS
Exhibit 6
ASSIGNMENT OF TRADEMARK
KNOW ALL MEN BY THESE PRESENTS that the undersigned, for good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, and pursuant to a certain agreement dated 1997, between the
undersigned and Cable & Co. Worldwide, Inc., of ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇
▇▇▇▇, ▇▇▇▇▇ hereinafter called the Assignee, has granted, sold, assigned, and
delivered to, and does hereby grant, sell, assign, and deliver to, the Assignee,
its successors, and assigns all right title and interest to "Bacco ▇▇▇▇▇",
hereinafter called the Trademark, together with the trademark thereof and all
rights, title and interest therein and thereto throughout the Territory. The
undersigned represents and warrants that the Trademark is its sole and exclusive
property; that, subject to the above mentioned agreement and the limitations
disclosed on Exhibit 1 thereto, it has not heretofore pledged, mortgaged,
assigned, or otherwise granted any rights in the Trademark or any part thereof
or any interest therein in any part of the Territory, and that there exists no
adverse claim thereupon or thereto. The undersigned acknowledges that the
Assignee has full right and authority to secure trademark in the Trademark
throughout the Territory and to have and to hold such copyright for the full
terms.
In witness whereof the undersigned has caused this document to be
executed by its duly authorized officer.
D&D Design and Details, Limited
By:
Title:
.......................................................
STATE OF NEW YORK )
)
) SS.:
)
COUNTY OF NEW YORK )
.......................................................
On the ____ day of ________, 1997, before me personally came
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, to me known, who, being by me duly sworn, did depose and say
that he resides in
, Italy that he is the Chairman of D&D Design and Details,
Limited, the corporation described in and which executed the above instrument;
that he knows the seal of said corporation; that the seal affixed to said
instrument is such corporate seal; that it was so affixed by order of the Board
of Directors of said corporation; and that he signed his name thereto by like
order.
---------------------------------
Notary Public
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