CONTRACT RELATED TO THE ASSIGNMENT OF TRADEMARKS
Exhibit
2.4.1
CONTRACT
RELATED TO THE ASSIGNMENT OF TRADEMARKS
BY
AND BETWEEN THE UNDERSIGNED:
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▇▇▇▇▇▇
▇▇▇▇▇▇,
corporation with its head office at ▇▇, ▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇, registered in the RCS de Paris under number 612 048
629, and
represented by its Chair and Chief Executive Officer, ▇▇. ▇▇▇▇
▇▇▇
▇▇▇-▇▇▇▇, hereafter referred to as “LANVIN”,
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Of
the first part,
AND
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INTER
PARFUMS,
corporation with its head office at ▇, ▇▇▇▇-▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇, registered in the RCS de Paris under number 350 219
382, and
represented by its Chair and Chief Executive Officer, ▇▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, hereafter referred to as “INTER
PARFUMS”,
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Of
the second part,
IT
IS FIRST AND FOREMOST UNDERSTOOD THAT:
The
ASSIGNOR and the ASSIGNEE have entered into a license agreement involving the
use of trademarks and formulas, effective on July 1, 2004, and expiring on
June
30, 2019, for a total period of 15 years (hereafter referred to as the
“License
Agreement”).
In
accordance with the License Agreement, the ASSIGNEE markets and distributes,
as
of the date of this contract, perfume lines by using trademarks granted by
the
License Agreement. These lines are listed in Appendix
A
of this
contract (hereafter referred to as “Trademarks”).
The
ASSIGNOR wishes to assign the Trademarks, under Class 3, international trademark
deposit, for the perfumes, toiletries and makeup listed in Appendix
B
(hereafter referred to as the “Products”) as well as all intellectual property
rights, including rights to designs and models of the listed Products (hereafter
referred to as “Intellectual Property Rights”) listed in Appendix D, to the
ASSIGNEE who wishes to acquire them, as well as the formulas necessary for
the
manufacture of PRODUCTS owned by the ASSIGNOR on the day of the
agreement.
The
ASSIGNOR remains the owner of the Trademarks under all other international
classes of trademark deposit as well as for products and services other than
the
Products.
The
ASSIGNOR and ASSIGNEE are signing on this day (i) a contract related to the
co-existence of trademarks (the “Contract
Related to the Co-existence of Trademarks”),
in
which they specify the conditions under which each party will make use of the
Trademarks for different products, and (ii) a technical assistance
agreement.
The
purpose of this contract is to provide a framework for the assignment of
Intellectual Property Rights and Trademarks for which deposits are associated
with this contract (Appendix
C)
and of
which the ASSIGNOR is the owner, to on behalf of the ASSIGNEE.
AS
A RESULT, IT HAS BEEN AGREED AND DECIDED THAT:
Article
1 - SUBJECT
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1.
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The
ASSIGNOR hereby assigns, transfers and sells to the ASSIGNEE which
accepts, without restriction or reservation, full and complete property
rights to the deposited and/or registered Trademarks (as listed in
Appendix A), including previous rights acquired from previous deposits
of
Trademarks, solely in Class 3, international trademark deposit, and
only
for the Products, for the entire World, with no restrictions or
reservations other than those appearing in the contract. The registration
certificates for the registered Trademarks are attached to Appendix
C.
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2.
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With
respect to Trademarks deposited but still in the process of being
registered in Class 3, international trademark deposit on the day
of the
contract, notwithstanding opposing
legislative provisions, the assignment will take place on the date
the
contract is signed. In the event that this assignment cannot be carried
out due to legislative provisions, it will be carried out as early
as
possible. For that purpose, the ASSIGNOR agrees to inform the ASSIGNEE
of
the deposit procedure in place so that the ASSIGNEE may take necessary
measures with respect to the registration of the transfer, in accordance
with the provisions of Article 8
hereafter.
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3.
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The
ASSIGNEE thus becomes the owner and exclusive holder of Trademarks
in
Class 3, international trademark deposit for the Products, according
to
the deposits and registration numbers as shown in Appendix
C.
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4.
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The
ASSIGNEE thus becomes the owner and holder of Intellectual Property
Rights
under this contract. If the assignment of certain rights, particularly
copyright, must be formalized by a separate contract at a future
date, the
ASSIGNOR agrees to do what is necessary to establish this agreement
so
that the ASSIGNEE can fully exercise its above-mentioned rights and
defend
them against third parties.
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5.
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For
the express purpose of interpreting this contract, the expression
“Trademarks” is used in a restrictive sense to designate only those
trademarks that meet the following cumulative
criteria:
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trademarks
listed in
Appendix A
and registered trademarks whose certificates appear in
Appendix C and
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in
Class 3, international trademark deposit
and
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for
Products listed in Appendix
B
(at the exclusion of any other product or
service).
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6.
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The
ASSIGNOR will assign to the ASSIGNEE all documents concerning Trademarks
and, if applicable, all documents related to Intellectual Property
Rights,
as expeditiously as possible.
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7.
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The
ASSIGNOR assigns to the ASSIGNEE the right of priority associated
with the
Trademarks, as recognized by Article 4 of the International Convention
for
the Protection of Industrial
Property.
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8.
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The
ASSIGNOR also assigns to the ASSIGNEE which accepts all rights of
judicial
proceeding for previous occurrences of infringement not stipulated
on the
date of this assignment, and such rights are accepted by the
ASSIGNEE.
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9.
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The
occurrences, risks or benefits resulting from these proceedings are
exclusively borne by the ASSIGNEE and benefit the ASSIGNEE. Consequently,
the ASSIGNEE is from this point forward the only party subrogated
in all
the rights, acts and privileges of the ASSIGNOR with respect to the
Trademarks and acquires the entire property and enjoyment of the
Trademarks, which it may freely enjoy for the
future.
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10.
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This
assignment is agreed upon and accepted with no guarantees other than
the
material existence of the Trademarks and those stipulated in Article
2
below.
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Article
2 - GUARANTEES
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1.
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The
ASSIGNOR declares that it has knowledge of and has used the Trademarks,
within the limits of the ASSIGNOR’s distribution network which exists to
this day, in application of the provisions of the License Agreement.
The
Trademarks were registered, in accordance with the instruments of
filing
attached to this contract (Appendix
C)
and were regularly renewed by the stipulated
deadlines.
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2.
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The
ASSIGNOR guarantees that it has full ownership of the assigned registered
Trademarks and certifies that, with the exception of the License
Agreement, these trademarks have not been assigned, licensed, used
as a
pledge or security or been subject to any agreement or act (namely,
agreements related to co-existence of trademarks), which would hinder
the
undisrupted use of Trademarks by the ASSIGNEE. With regard to the
Trademarks currently being registered, the ASSIGNOR provides no guarantee
other than the material existence of the deposits made in consideration
of
the result of these deposits.
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3.
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The
ASSIGNOR guarantees that to its knowledge, the Trademarks are not
the
subject of current proceedings involving infringement or forfeiture
and
that it is free to assign them.
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4.
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The
ASSIGNOR is not providing the ASSIGNEE with any guarantee other than
its
personal affirmation and the material existence of the registration
of the
registered Trademarks. The file concerning the registration is attached
to
Appendix
C
of
this contract.
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5.
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The
possible total or partial invalidation of the Trademark registrations
or
refusal to register Trademarks in the process of being deposited
will not
take away from any innovation or resolution of this contract, and
the
ASSIGNEE expressly recognizes that it is entering this assignment
at its
own risk and peril.
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6.
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The
parties agree that the name “▇▇▇▇▇▇ ▇▇▇▇▇▇” in high-end ready-made
clothing and in perfume is an important element of the Trademarks
and
their reputation. In this context, each of the parties considers
essential
that in all areas, the image of elegance, originality and quality
associated with the LANVIN trademark be consistently maintained and
respected. With this in mind, the parties are signing, on this day,
the
Contract Related to the Co-existence of
Trademarks.
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Article
3 - ASSIGNMENT PRICE
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1.
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This
assignment is agreed upon and accepted at an overall and final price
of
Twenty-Two million (22,000,000) euros (the “Price”). The Price will be
broken down by the parties between the trademarks that are used and
those
that are not used (in accordance with the breakdown appearing in
Appendix
A), in France or abroad, for requirements concerning “frais
d’enregistrement”.
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2.
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The
price is paid in full by the ASSIGNEE to the ASSIGNOR, by check delivered
on this day, and a remittance and valid acquittance is given by the
ASSIGNOR to the ASSIGNEE.
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Article
4 - CONSEQUENCES OF THE ASSIGNMENT
As
a
consequence of the said assignment, the ASSIGNEE becomes the owner and holder
of
exclusive rights with respect to the Trademarks, with the result that on and
after the signing of this document and provided that payment has been received,
it will have full ownership and enjoyment of the Trademarks and may use them
as
it wishes, subject to the provisions in this contract and in the Contract
Related to the Co-existence of Trademarks.
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1.
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The
ASSIGNEE will pay, as of the day this document is signed, all taxes
related to the renewal of Trademarks, for which the deadlines follow
the
signature of this contract.
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The
contract takes effect as of the signing of this assignment
contract.
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3.
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By
mutual agreement, the signing of this contract results in the
cancellation, effective immediately, of the Licensing Agreement,
as it is
specified that the ASSIGNEE agrees to pay the ASSIGNOR the license
fees
due for the use of the Trademarks up to the day of this contract,
in
accordance with the provisions in Article 9.2 of the License
Agreement.
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Article
5 - BUYBACK OPTION
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1.
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The
ASSIGNOR benefits from a buyback option with respect to the Trademarks
which are the subject of this contract (hereafter referred to as
the
“Option”), which the ASSIGNOR accepts, under the conditions stipulated
hereafter. The Option also includes all the trademarks that the ASSIGNEE
will be depositing and/or registering prior to the exercise of the
Option
and which will be associated with one or several Trademarks for the
distribution and marketing of the Products (hereafter referred to
as
“Future Trademarks”). The ASSIGNEE agrees to provide, once a year, upon
request of the ASSIGNOR, a statement of deposit and registration
of Future
Trademarks. In the case of Future Trademarks that have been deposited
but
not yet registered on July 1, 2025, the ASSIGNEE agrees to make its
best
effort to allow the registration of the assignment for the benefit
and at
the cost of the ASSIGNOR, once the Option has been exercised and
the
deposits carried out.
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2.
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The
Option may be exercised by the ASSIGNOR effective July 1, 2025. The
ASSIGNOR must inform the ASSIGNEE of its decision to exercise the
Option
by notifying the ASSIGNEE by registered mail with acknowledgment
of
receipt sent to the ASSIGNEE's head office to the attention of its
legal
representative, on December 31, 2024, at the latest. Once the Option
is
served, the parties will take the necessary measures and sign the
appropriate assignment document so that the assignment of the Trademarks
and Future Trademarks takes effect on July 1, 2025, in application
of the
exercise of the Option.
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3.
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Depending
on the ASSIGNEE’S preference, the price for exercising the Option will be
equal to one of the following
amounts:
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Seventy
Million (70,000,000)
euros
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The
average of the amounts of the Net Global Sales (as defined hereafter)
realized in the calendar year ending on December 31, 2023, and in
the
calendar year ending on December 31,
2024.
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The
expression “Net Global Sales” refers to the consolidated global sales from the
sale of Products sold under one or more Trademarks and/or Future Trademarks,
as
it is calculated based on ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ accounting principles applied in a
consistent manner by the ASSIGNEE (and in accordance with to the IFRS standard
when applicable), with a deduction from POS, provided that it applies to the
amount of sales before taxes invoiced by the ASSIGNEE to all its “retailers”
(all points of sale or sales areas authorized to sell products bearing the
“▇▇▇▇▇▇ ▇▇▇▇▇▇” trademark to the final consumer) and “independent distributors”
(all independent businesses authorized to re-sell Products bearing the ▇▇▇▇▇▇
▇▇▇▇▇▇ Trademark under a written contract or agreements with the ASSIGNEE,
to
retailers in one or more countries. An independent distributor is understood
to
be any entity not controlled by the ASSIGNEE within the meaning of the
provisions of Article 233-3 of the Commercial Code. Furthermore, the Net Global
Sales may not be lower than the portion related to the total net sales of the
ASSIGNEE’s Products, as published in its annual financial statements, with a
deduction made from POS. It is expressly understood between the parties that
the
deduction of the sales from POS is conditional upon the ASSIGNEE not realizing
a
margin of over 30% on its POS.
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4.
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In
the event that the exercise price the Option chosen by the ASSIGNEE
is
based on the Net Global Sales, the ASSIGNOR will have the right to
audit,
through a an independent expert of its choice, the ASSIGNEE’s returns,
particularly the detailed statement of annual sales of Products for
the
years 2023 and 2024.
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5.
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The
exercise price of the Option will be paid on the day the Trademarks
and
Future Trademarks are assigned, in application of the exercise of
the
Option.
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6.
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The
ASSIGNEE agrees, on behalf of the ASSIGNOR, to take any necessary
measures
to respect and ensure continued respect, in all its actions and
initiatives, for the image of quality, elegance and originality associated
with the Trademarks and Future Trademarks, particularly with respect
to
the quality of products distributed which use these trademarks as
well as
the esthetic appearance, publicity, promotion and distribution of
the
Products until July 1, 2025. These obligations are also outlined
and
detailed in the Contract Related to the Co-existence of
Trademarks.
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7.
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The
ASSIGNEE agrees not to assign the Trademarks and Future Trademarks
to a
third party between now and July 1, 2025, and agrees to allow licenses
of
rights to third parties on Trademarks and Future Trademarks for a
period
lasting beyond July 1, 2025.
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8.
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The
ASSIGNEE agrees to take any necessary measures to guarantee that
protection of the Trademarks and Future Trademarks is maintained
until
July 1, 2025, in all the territories in which the Trademarks and
Future
Trademarks are and will be used (for example, measures to pay off
all
taxes for trademark renewal or to initiate appropriate judicial
proceedings in the case of
infringement).
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9.
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The
ASSIGNEE agrees not to discontinue a registration of one of the Trademarks
or Future Trademarks, without the previous written consent of the
ASSIGNOR, prior to July 1, 2025, with it being understood that this
agreement would not prejudice the ASSIGNEE’s decision to stop distribution
of the Products under the Trademark or Future Trademark in a given
territory. If the ASSIGNOR wishes to maintain the registration of
the
concerned Trademark in this territory, the ASSIGNOR will renew the
Trademark in question at its own
cost.
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10.
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In
the event that the Option is exercised by the ASSIGNOR, the ASSIGNEE
will
have the right to sell its inventory of Products and promotional
items at
standard market prices until December 31, 2005. Beyond this date,
the
ASSIGNEE must completely cease using the Assigned Trademarks and
Products.
Beyond the above-mentioned time period, the ASSIGNEE may no longer
enjoy
any of the Intellectual Property Rights with respect to Assigned
Trademarks; the ASSIGNEE must inform the ASSIGNOR of all current
contracts
made with third parties, and the ASSIGNOR reserves the option of
renewing
the contracts or requiring the ASSIGNEE to terminate the contracts
at its
own expense.
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11.
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The
ASSIGNOR may oppose the ASSIGNEE’s exercise of the above-mentioned right,
on the condition that it (a) buys back the ASSIGNEE's inventory of
Products and promotional items, as well as raw materials that make
up the
products and the sales supports, which are in the ASSIGNEE’s possession or
which were ordered on the date the Option came into effect, at the
industry cost price (as is reflected in the ASSIGNEE’s accounts) and (b)
delivers any outstanding orders when the contract
expires.
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12.
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In
the event that the Option is exercised, and given that the transfer
of
personnel is related to the use of the Products, the ASSIGNOR will
take
the necessary measures to ensure that the ASSIGNEE's personnel are
transferred to the new user of the Assigned
Trademarks.
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Article
6 - LANGUAGE OF THE CONTRACT
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1.
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This
contract consists of six copies written in French. There is one copy
for
each party, one copy for the tax authority and one copy for each
organization registering
trademarks.
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2.
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If
this contract is translated into one or more languages, only the
French
text will be considered as authoritative in the event of a dispute
between
the parties.
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Article
7 - APPLICABLE LAW - DISPUTES
1. This
contract is subject to French law.
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2.
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Any
unresolved dispute arising between the parties from its interpretation
and/or execution shall be submitted to the Tribunal de Grande Instance
de
Paris, unless an amiable resolution is
reached.
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Article
8 - REGISTRATION IN THE TRADEMARK REGISTER
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1.
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This
assignment will be registered in the appropriate national registers
(notably the National Intellectual Property Institute) by the ASSIGNEE
as
expeditiously as possible.
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2.
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The
administrative costs of registering this assignment (including all
registration fees) will be borne by the ASSIGNEE which enters into
this
obligation, taking into account the breakdown of the Price between
the
trademarks used and those not used, in France or abroad.
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3.
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In
the event of technical, administrative or legal difficulty or
impossibility (particularly related to the specifics of certain national
trademark rights) in registering this assignment with the appropriate
national registers in accordance with the provisions of this contract,
the
parties agree to work together to arrive at the best possible technical
solution, on a case-by-case basis, in respect of the interests of
each of
the parties and of the spirit of this contract and to sign, if necessary,
the supplementary agreements required for this
purpose.
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Article
9 - AUTHORITY
All
authority to register or complete the said assignment at the register of
trademarks is granted to the bearer of the original of this
contract.
Article
10 - CONFIDENTIALITY
The
parties will first consult together on the terms of the release that they will
jointly publish regarding the signature of this contract.
With
the
exception of disclosure of information strictly required to carry out the
formalities described in Article 8 and disclosure of information in respect
of
the ASSIGNEE’s obligations to disclose information under French and U.S.
regulations applicable to listed companies, each party agrees to not disclose
the terms and conditions of this contract of assignment without the prior
consent of the other party. In the event that the ASSIGNEE needs to communicate
publicly with respect to this contract in application of the above-mentioned
regulations, the ASSIGNEE agrees to inform the assignor beforehand.
Signed
in
Paris
July
30,
2007
In
six
originals
| /s/ ▇▇▇▇ ▇▇▇ ▇▇▇-▇▇▇▇ | /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ | ||
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THE ASSIGNOR
▇▇. ▇▇▇▇ ▇▇▇ ▇▇▇-▇▇▇▇
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THE ASSIGNEE
▇▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇
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LIST
OF APPENDICES
Appendix
A
- Detail
of Trademarks
Appendix
B
- List
of Products
Appendix
C
-
Certificates of Trademark deposit
Appendix
D
- List
of designs and models
[SCHEDULES
AND ANNEXES ARE OMITTED, BUT WILL BE FILED SUPPLEMENTALLY
WITH THE COMMISSION UPON REQUEST]