EXHIBIT 10.12
KNOW-HOW LICENSE AGREEMENT
This KNOW-HOW LICENSE AGREEMENT (this "Agreement"), dated December 5,
2003, (the "Effective Date") is made and entered into by and between N.V.
Nutricia, a company organized under the laws of The Netherlands (hereinafter the
"Licensor"), and General Nutrition Corporation, a Pennsylvania corporation
(hereinafter the "Licensee").
WHEREAS, Licensor possesses certain valuable confidential and
proprietary technical know-how, expertise and other information useful in the
manufacture of certain product compositions set forth on Exhibit A, attached
hereto and incorporated herein.
WHEREAS, Licensee desires to obtain, and Licensor desires to grant, a
limited right and license, under the terms of this Agreement, to use certain
Technical Information (as hereinafter defined) only to manufacture Products (as
hereinafter defined) solely within the Protected Business (as defined in that
certain Purchase Agreement, dated as of October 16, 2003, among Royal Numico
N.V., Numico USA, Inc. and Apollo GNC Holding, Inc., as amended (the "Purchase
Agreement")).
WHEREAS, this Agreement is made pursuant to and is subject to the terms
and conditions of the Purchase Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto, intending to be
legally bound, hereby agree as follows:
1. DEFINITIONS
1.1 As used in this Agreement, the capitalized terms set forth
herein shall have the following meanings:
(a) "PRODUCTS" means those certain products to be
manufactured by Licensee pursuant to certain separate patent rights
obtained from Licensor as of the date hereof.
(b) "TECHNICAL INFORMATION" means all of Licensor's
proprietary and confidential information , including without limitation
engineering, scientific and practical information and formulas,
manufacturing procedures, know-how, expertise and specifications, used
in or related to the product compositions on Exhibit A manufactured
pursuant to certain separate patent rights obtained from Licensor as of
the date hereof, as such product compositions currently exist on the
Effective Date.
(c) "TERM" means the term of this Agreement as further
defined in Article 6 below.
1.2 Capitalized terms used but not defined herein shall have the
meanings assigned thereto in the Purchase Agreement.
2. LICENSE GRANT
2.1 Licensor hereby grants to Licensee, subject to the terms and
conditions of this Agreement, a limited, personal, non-exclusive, royalty-free
right and license, without the right to sublicense, except as specifically set
forth in Section 2.2 and 2.4, to use the Technical Information only to
manufacture Products solely within the Protected Business.
2.2 The right and license granted to Licensee is personal to
Licensee. Licensee shall not at any time: (a) sublicense such right, or assign
or transfer such right and license granted herein to any Person, except an
Affiliate of Licensee, without the prior written consent of Licensor; nor (b)
permit any Lien upon such right and license. Notwithstanding the foregoing, this
Agreement shall be assignable as of right with any transfer of substantially all
the assets and the entire business associated therewith of the Licensee provided
that: (i) Licensee is in full compliance with all of the terms and conditions of
this Agreement; (ii) the acquiror of such assets and business agrees in writing
to assume all obligations of Licensee under this Agreement pursuant to an
instrument in form and substance reasonably satisfactory to Licensor; and (iii)
Licensee gives Licensor prior written notice of such transfer and the identity
of such acquiror. Any attempted assignment or other transfer in contravention of
this Section 2.2 shall be void and ineffective.
2.3 Licensee shall restrict its use of the Technical Information
for Products within the Protected Business only and covenants not to use the
Technical Information for Products or any other purpose outside the Protected
Business.
2.4 Notwithstanding anything to the contrary in this Agreement,
Licensee agrees to accept the right and license granted in this Article 2
subject to any licenses or other rights of third parties under agreements
executed by Licensor prior or subsequent to the date of this Agreement.
2.5 In the event Licensee desires to contract with a third party
to manufacture the Products using the licensed Technical Information, Licensee
shall immediately notify Licensor and identify such third party. The third party
shall execute a written agreement, including terms no less restrictive than the
terms of this Agreement. Such written agreement shall be subject to Licensor's
approval prior to: its execution by such third party; any disclosure of
Technical Information to such third party; and manufacturing of any Products by
such third party.
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3. DISCLOSURE OF TECHNICAL INFORMATION
3.1 Licensor will make a single disclosure of all written
Technical Information to Licensee within forty-five (45) days after the
Effective Date.
3.2 Licensor will make its representatives with knowledge of the
Technical Information available for an in-person meeting or teleconference with
designated representatives of Licensee in order to disclose Technical
Information not in written form within three (3) months of the Effective Date;
provided that such meeting takes place at a mutually agreeable date and time and
if in-person in a location designated by Licensor in Wageningen, Holland.
4. CONFIDENTIALITY
4.1 Licensee shall treat and maintain all Technical Information as
confidential and proprietary, regardless if such Technical Information has been
marked or otherwise identified as confidential. All such Technical Information
is and shall remain the exclusive property of Licensor. Licensee shall not
disclose such Technical Information to any third party other than as expressly
permitted in this Agreement.
4.2 Upon receiving Technical Information, Licensee shall keep such
Technical Information in strict confidence using measures equal to those
utilized by Licensee for safeguarding its own confidential and proprietary
information, but in no event, less than commercially reasonable methods for
protecting confidentiality, and shall use the Technical Information only for
purposes expressly granted in this Agreement.
4.3 Licensee shall be permitted to disclose the Technical
Information to Licensee's employees, on a need to know basis and subject to the
terms of this Agreement in order to exploit the right and license granted in
this Agreement; provided that, Licensee's employees are aware of and expressly
agree in a separate written instrument to comply with the terms of this
Agreement. Licensee shall be responsible for its employees holding the Technical
Information in trust and confidence.
4.4 Within thirty (30) days after termination of this Agreement,
Licensee shall surrender to Licensor, all Technical Information in any written,
recorded or other tangible form, including without limitation, all notes,
memoranda, software (in any version or form), notebooks, drawings, prototypes or
models (including all copies thereof) related to or associated with the
Technical Information, that are then in the possession or control of Licensee or
any Affiliate of Licensee.
4.5 Technical Information disclosed hereunder is not or will no
longer be deemed to be confidential information for purposes of this Agreement
if: (a) Licensee can demonstrate by written records prepared prior to the
receipt of
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such Technical Information that Licensee was in possession of such Technical
Information before disclosure; (b) the Technical Information is or becomes
publicly available through no fault of Licensee; (c) the Technical Information
is lawfully obtained by Licensee from a third party under no obligation of
confidentiality regarding such Technical Information; or (d) the Technical
Information is designated in writing by Licensor as non-confidential.
4.6 In the event that Licensee is or may be required by law or
court order to disclose any Technical Information, Licensee shall: (a) provide
to Licensor immediate written notice of the same; and (b) cooperate with
Licensor to take all reasonable actions to prevent such disclosure, to limit the
scope of same and to obtain protective orders to protect the confidentiality of
such Technical Information, including, without limitation, filing motions and
otherwise making appearances before the court.
4.7 The obligations of confidentiality and use with respect to
Technical Information under this Agreement shall survive termination of this
Agreement.
5. COSTS; EXPENSES AND TAXES
5.1 Except as otherwise provided herein, each party shall bear its
own costs and expenses incurred by it in performing its obligations hereunder.
5.2 Each party shall be responsible for payment of any applicable
sales, use and income taxes, including any privilege or excise taxes in the
nature of sales or use taxes, and other similar charges imposed upon it by any
jurisdiction arising from the performance of its obligations under this
Agreement.
6. TERM AND TERMINATION
6.1 The Term of this Agreement shall run from the Effective Date
of this Agreement and continue in full force and effect thereafter until
terminated, as set forth herein below:
(a) Licensor shall have the right to terminate this
Agreement without judicial resolution upon written notice to the other
party of a material breach of any provision of this Agreement by such
other party that is not cured within thirty (30) days after such
notice.
(b) This Agreement shall be terminated immediately upon
Licensor and Licensee reaching mutual agreement to so terminate this
Agreement.
(c) Licensee may terminate this Agreement without cause
upon thirty (30) days notice to Licensor.
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(d) This Agreement shall automatically terminate, without
requirement of notice, upon the occurrence of any of the following:
(i) any attempt by Licensee to assign or
otherwise transfer any of the rights or interests in whole or
in part, in or under this Agreement voluntarily or by
operation of law to any other third party, except as otherwise
expressly permitted herein; or
(ii) a cessation by Licensee of all or
substantially all of its business; or
(iii) a petition in bankruptcy or reorganization
is filed by Licensee under any applicable bankruptcy law now
or hereafter in force or shall be filed against Licensee and
not vacated or dismissed within sixty (60) days after such
filing; or Licensee shall make an assignment for the benefit
of its creditors, or a receiver, trustee, liquidator or
custodian shall be appointed for all or a substantial part of
Licensee's property, and the order of appointment is not
vacated or dismissed within sixty (60) days after it is made;
or all or any material portion of Licensee's property shall be
sequestered, and the order of sequestration is not vacated or
dismissed within sixty (60) days after it is entered; or
Licensee shall generally fail or admit in writing its
inability to pay its debts as such debts become due and
payable.
6.2 The following provisions of this Agreement shall survive
termination: Articles 4, 5, 6, 7, 8 and 9; Sections 6.2, 6.3 and 6.4.
6.3 The rights and remedies granted herein, and any other rights
or remedies which the parties may have, either at law or in equity, are
cumulative and not exclusive of others.
6.4 Licensee agrees that monetary damages would not be a
sufficient remedy for breach of the terms of this Agreement. In the event of any
disclosure or other misappropriation of Technical Information in violation of
this Agreement by Licensee, Licensor shall be entitled to all equitable
remedies, including immediate injunctive and other equitable relief and to
obtain an order, from a court of competent jurisdiction, restraining any further
disclosure or misappropriation of such Technical Information without the
necessity of proving damages or posting bond, and for further relief (including
obtaining monetary damages and reasonable attorney's fees incurred in enforcing
its rights hereunder) as may be appropriate under the circumstances. In
addition, Licensee acknowledges that any Technical Information received from
Licensor constitutes a "trade secret" of Licensor and, consequently, Licensor
shall be
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entitled to all remedies therewith under any applicable state, territorial or
other international law.
7. LIMITATIONS OF WARRANTIES
7.1 TECHNICAL INFORMATION IS PROVIDED "AS IS" WITH NO WARRANTIES
OR REPRESENTATIONS OF ANY KIND, AND LICENSOR EXPRESSLY DISCLAIMS ALL OTHER
WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED
TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY, TITLE, NON-INFRINGEMENT OR
FITNESS FOR A PARTICULAR PURPOSE.
8. INDEMNIFICATION
8.1 Licensee shall indemnify Licensor and its Affiliates and hold
them harmless against all damages, costs, and expenses, including reasonable
attorney's fees, arising or resulting from, Licensee using the Technical
Information to manufacture Products or distributing or selling Products.
9. LIMITATION OF LIABILITY
9.1 Neither Licensor nor its Affiliates will be responsible for
any injury to or death of persons, or damage to or destruction of materials, or
other property, or for any other loss, damage, or injury of any kind whatsoever
resulting from Licensee using the Technical Information to manufacture Products
or distributing or selling Products.
10. GENERAL PROVISIONS
10.1 Under the terms of this Agreement, Licensor and Licensee are
independent contractors. Neither party is an employee, agent, partner or
representative of the other party. Nothing contained herein shall be deemed to
create a joint venture relationship between the parties. Each party specifically
acknowledges that it does not have authority to incur any obligations or
responsibilities on behalf of the other party.
10.2 All notices required or permitted to be given by one party to
the other under this Agreement shall be sufficient if sent by certified mail,
return receipt requested, by a nationally recognized courier or by hand delivery
to the parties at the respective addresses set forth below or to such other
address as the party to receive the notice has designated by notice to the other
party:
Licensor: Licensee:
N.V. Nutricia General Nutrition Corporation
▇▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
6704 PH Wageningen ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Netherlands Fax No.______________________________
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Fax No._____________________________ Attn: _______________________________
Attn: ______________________________
All notices shall be effective upon receipt or refusal of delivery by
the party being notified. Either party may change its address, etc., by giving
notice of such change as provided herein, provided that such notice is effective
only on receipt.
10.3 Licensee shall not use the name of the Licensor or its
Affiliates in any advertising, marketing or sales activity without the prior
written consent of Licensor. By entering into this Agreement, Licensor does not
directly or indirectly endorse any Products and Licensee shall not state or
imply that this Agreement constitutes any such endorsement by Licensor.
10.4 No waiver of the terms and conditions of this Agreement, or
the failure of either party to strictly enforce any such term or condition on
one or more occasions, shall be construed as a waiver of the same or of any
other term or condition of this Agreement on any other occasion.
10.5 This Agreement shall be governed by and construed in
accordance with the internal laws of the State of New York, without reference to
any principles of conflicts of laws. The parties hereby consent to the
jurisdiction and venue of the United States district courts sitting in the State
of New York and any courts of the State of New York in which any suit, action or
proceeding is brought arising under this Agreement. The parties hereby waive any
claim of forum non conveniens in any suit, action or proceeding brought in any
of the above-mentioned courts. Licensor and Licensee agree that service of
process in any such suit, action or proceeding shall be effective if in writing,
delivered in any manner permitted in Section 10.2 hereof and actually received
by the addressee.
10.6 If any provision in this Agreement is held to be invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
the meaning of such provision shall be construed so as to render it enforceable
to the extent feasible. If no feasible interpretation would save such provision,
it shall be severed from this Agreement and the remainder of this Agreement
shall remain in full force and effect. However, in the event such provision is
considered an essential element of this Agreement, the parties shall promptly
negotiate alternative, reasonably equivalent, enforceable terms.
10.7 Licensee shall comply with all laws, rules and regulations
applicable to the performance of its obligations hereunder, including, without
limitation, all import/export laws, restrictions, controls and regulations
relating to the Technical Information and/or Products.
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10.8 Subject to the Purchase Agreement, the terms and conditions
contained in this Agreement, including the attached Exhibit A, supersede all
prior oral or written understandings between the parties with respect to the
subject matter thereof, and constitutes the entire agreement of the parties with
respect to such subject matter. All prior negotiations, representations,
agreements, and understandings are merged into, extinguished by and completely
expressed by this Agreement. Such terms and conditions shall not be modified or
amended except by a writing signed by authorized representatives of both
parties.
10.9 This Agreement may be executed in several counterparts, each
of which shall be deemed an original, but all of which together shall constitute
one and the same Agreement. A signature page of this Agreement executed and
transmitted via facsimile or electronic mail shall be deemed an original for all
purposes.
10.10 This Agreement shall be binding upon and shall inure to the
benefit of the parties hereto and their respective permitted assigns and
successors.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed below
by their duly authorized representatives.
N.V. Nutricia General Nutrition Corporation
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇
--------------------------- ------------------------------
Printed Name: ▇▇▇▇ ▇▇▇▇▇▇ Printed Name: ▇▇▇▇▇ ▇▇▇▇▇▇
Title: EVP Title: VP
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EXHIBIT A
Licensor Product Compositions
NO. PRODUCT NAME
------- ---------------------------------
1 Women's Ultra Mega Super VitaPak
2 Total Lean
3 Total Lean Plus
4 Chocolate diet
5 Red Core
6 Thermoburst
7 Diet Product
8 Preworkout
9 Liver Health
10 MegaMen
11 Women's Ultra Mega
12 Super VitaPaks
13 Resistance Plus
14 PSA Prostate Cancer Formula
15 Total Lean Oat MRP
16 Multitech/ Femfiber
17 H2O-Lean
18 Distance
19 Energel
20 Fuel powder
21 MegaMRP
22 Whey iso burst
23 MegaCreatine
24 Creatine clear
25 During
26 During RTD
27 Hydration powder
28 Creatine Burst
29 Precreatine
30 Pro Protein
31 New Bone Concept
32 Cognita
33 MemorAll
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