by and between
(in the following: Licensor)
a n d
(in the following: Licensee)
WHEREAS, Licensor is the owner of the name 'X' and of certain trademarks and service marks comprising such name;
WHEREAS, Licensee has pursuant to the Acquisition Agreement dated._______ acquired the Automotive Division from Licensor;
WHEREAS, Licensee desires to use the trademark 'X' under license from Licensor in connection with its business operations and Licensor is willing to grant such a license upon the terms and conditions set forth in this Agreement.
NOW, THEREFORE, the Parties agree as follows:
Article 1. Definitions
1. 'Business Operations' shall mean the business activities of Licensee in the area of the Automotive Division, as more closely defined in Annex A.
2. 'Automotive Division' shall mean such part of Licensor’s business operations which are related to the manufacturing and distribution of automotive parts, small engines, clutch systems, connecting parts and filters and which has been acquired by Licensee pursuant to the Acquisition Agreement dated _______
3. 'Territory' shall mean the countries or other geographic areas or locations as set forth in Annex B.
4. 'Trademark' shall mean the trademark 'X', German registration number 100 100 and 200 200 and the corresponding foreign registrations and international trademarks covering the respective countries as set forth in Annex B.
Article 2. License Grant
1. Licensor hereby grants to Licensee, under the terms and conditions of this Agreement, a revokable, non-transferable license to use the Trademark in carrying out the Business Operations in the Territory. The license granted is exclusive for use in connection with the Business Operations for four (4) years from the date of signature of this Agreement. Thereafter the license is non-exclusive for the remainder of the term of this Agreement.
It is understood that Licensor will continue to use the Trademark for its remaining business but shall not use the Trademark in the Territory for any operations identical or similar to the Business Operations of Licensee. The Parties insofar expressly refer to the covenant not to compete of Licensor as set forth in Article 37 of the Acquisition Agreement.
2. Licensee shall be entitled to use the Trademark under this license only in connection with the word 'Autozubehör' in the form 'X Autozubehör'. Licensee shall always use its own name concurrently as a designation of origin if space permits.
3. Licensee shall only be entitled to use the Trademark in the form set forth in Annex C. The relationship or printing size between the Trademark and the following word 'Autozubehör', as well as the relationship or printing size between the Trademark and the firm name of Licensee, as set forth in Annex D, has to be followed. In the text of any advertisements the Trademark may only be used if it is identified by an R in a circle with a footnote and a clear indication in such footnote that the Trademark is a registered trademark of Licensor.
4. Licensee shall not be entitled to incorporate the Trademark or any similar name or trademarks into the company name of Licensee nor to use the Trademark as business name according to § 5 Absatz 2 MarkenG.
5. Licensee shall not at any time use or employ the Trademark in any manner except as permitted in this Agreement.
6. Licensee shall be entitled to grant sublicenses within the license grant to such manufacturers which belong to the Licensee’s group, provided, that any sublicensee agrees in writing to be bound by the provisions of this Agreement and to be liable directly to Licensor for its performance in addition to the Licensee’s liability for such sublicensee’s performance.
Article 3. Royalty
The consideration for the use of the Trademark by Licensee is part of the purchase price for the Automotive Division as determined by Article 12 of the Acquisition Agreement. No further royalty shall be due.
Article 4. Quality Standards
1. Licensee shall meet Licensor’s standards of quality in the performance of Business Operations under the Trademark as to enhance the value and good will of the business associated with and symbolized by the licensed Trademark and shall comply in all respects with all applicable standards required by any and all local laws or other regulation in the Territory. Licensee agrees to abide by all rules and standards established under Article 4.2 in respect thereto.
2. Licensor has the right and duty to formulate and enforce reasonable standards of quality and performance (as these, for example, are set forth in the Qualitätshandbuch (Quality Handbook) to be observed by Licensee in rendering Business Operations under the Trademark. Licensor shall have the right, in its reasonable discretion, to make changes in presently established standards of quality, set new standards and make new rules relating to quality control.
3. To assure Licensee’s compliance, Licensor shall have the right to review Licen-see’s performance of Business Operations and inspect Licensee’s Business Ope-rations and the premises where Business Operations are rendered at reasonable times to determine that the quality of Business Operations meets Licensor’s stan-dards.
4. Licensee shall, upon request of Licensor, submit prior to the printing and/or dissemination brochures, advertisements and the like using the Trademark to allow Licensor to review the manner in which the Trademark is used.
5. Licensee shall stop immediately any use of the Trademark which, in the sole discretion of Licensor, endangers the reputation or validity of the Trademark or the name .... Upon request of Licensor Licensee shall remedy such danger in any way necessary.
Article 5. Ownership
1. Licensee hereby agrees that, as between Licensee and Licensor, Licensor is the sole owner of the name ... and the Trademark and all the good will relating thereto, and that the same, at all times, shall be and remain the sole and exclusive property of Licensor and that Licensee, by reason of this Agreement, has not acquired any right, title, interest or claim of ownership in such name and Trademark in the Territory and elsewhere, except for the license granted herein. Licensee shall make all declarations and shall furnish all documentation to Licensor necessary or useful for Licensor to maintain its rights in the Trademark. Licensee shall not challenge the ownership of Licensor. The use by Licensee of the Trademark in the Territory and any and all goodwill arising from such use shall inure solely to the benefit of Licensor and shall be deemed to be solely the property of Licensor in the event that this Agreement shall be terminated. Upon any termination of this Agreement, any and all rights in and to the Trademark granted to Licensee shall automatically terminate.
2. Upon termination or expiration of this Agreement, Licensee shall cease all use of, and will immediately cause its agents, contractors, consultants, and partners to discontinue the use of the Trademark or any similar trademarks and/or names and Licensee will be deemed to have assigned, transferred and conveyed to Licensor any and all equities, goodwill, title, or other rights including an acquired trade dress protection (Ausstattungsschutz) in and to the Trademark or the name ... which may have been obtained by Licensee or which may have been vested in it by reason of Licensee’s activities. Upon Licensor’s request Licensee will execute and deliver to Licensor any instruments to accomplish or confirm the foregoing. Any acquired trade dress protec-tion will be transferred by Licensee to Licensor.
Article 6. Official Approvals
1. Licensor is entitled to forbid the use of the Trademark in a country of the Territory if and when the official approvals or procedures for that country (like deposition of license document, registered user entry, govermental approval) have not been fulfilled.
2. Licensee authorizes Licensor to conduct any approval procedures also on behalf of Licensee if Licensee is informed about such procedures in writing. Licensee irrevocably authorizes Licensor to pursue the cancellation and invalidation of any approval and registered user entries upon termination of this Agreement.
3. Licensor shall be in charge of conducting approval procedures for its own account, provided that the costs for the production of documents by Licensee shall be borne by Licensee.
Article 7. Warranty
1. Licensor does not warrant the legal validity of the Trademark and does not accept any liability that the Trademark may be used without infringing any rights of third parties.
2. Licensor warrants that it has not granted a license to a third party to use the Trademark in connection with the Business Operations.
Article 8. Indemnification
Licensee shall indemnify and hold harmless Licensor from and against all claims, suits, losses, damages and expenses (including without limitation, court costs and attorney’s fees) arising out of any and all activities of Licensee. This indemnification applies also to product liability claims.
Article 9. Penalty
Aside from the obligation to cover Licensor’s actual damages and in addition to any damages to be paid by Licensee, Licensee shall pay to Licensor for any breach of this Agreement or any use of the Trademark contrary to the terms of this Agree-ment a penalty of 100.000,–. If such breach is not cured after a written notice of Licensor Licensee shall pay for each month during which the breach occurs a further penalty of 100.000,–. Prerequisite for payment of the penalty is a prior written warning notice of Licensor. The termination rights of Licensor remain unaffected.
Article 10. Infringement of Trademark
Licensee shall promptly notify Licensor in writing of any infringement or challenge of the rights of Licensor in the Trademark. Licensor shall have the exclusive right, but not the obligation, to commence actions or proceedings against infringers. Licensee shall take no action against infringers unless requested to do so by Licensor in which event Licensor will bear the expense of Licensee’s action against the infringer and will have the right to manage such action. Licensee will render all and every assistance that may be necessary in connection with such action.
Article 11. Duration and Termination
1. The term of this Agreement is six years, subject to termination in any of the following events.
2. Licensor shall have the right at its option to terminate with immediate effect this Agreement at any time by giving written notice to Licensee if:
– Licensee breaches any of its obligations under the terms of this Agreement; provided, however, the termination shall not become effective if Licensee shall discontinue the breach and remedy its consequences to Licensor’s satisfaction within thirty (30) days following the date of termination; or
– Licensee sells the Business Operations; or
– Licensee’s shareholders or the form of Licensee’s incorporation changes; or
– Licensee challenges the validity of the Trademark; or
– Licensee becomes insolvent, makes a general assignment for the benefit of creditors, bankruptcy or receivership proceedings are instituted against the assets of Licensee or are dismissed for lack of assets.
3. Licensee may terminate this Agreement at any time by giving written notice to Licensor.
4. Upon termination of this Agreement the rights and obligations of the Parties, espe-cially the right of Licensee to use the Trademark, shall cease with exception of the obligations of Licensee set forth in Articles 5, 8, and 9 which shall survive termina-tion.
Article 12. No Agency Created
Nothing in this Agreement shall be construed to constitute either Party the agent of the other.
Artikel 13. Assignment
Without written consent of Licensor, this Agreement and all rights and duties hereunder shall not be assigned. Any attempted assignment shall entitle Licensor to terminate this Agreement with immediate effect.
Article 14. Notices
All notices given under this Agreement shall be in writing and shall be personally delivered or sent by certified mail, return receipt requested, or by express courier service, postage or delivery charges prepaid, and as to Licensor shall be addressed to:
and as to Licensee shall be addressed to:
Article 15. Governing Law
This Agreement shall be interpreted in accordance with and be governed by the laws of the Federal Republic of Germany, and the Parties hereby irrevocably submit themselves to the exclusive jurisdiction of the Landgericht Hamburg.
Article 16. Integration Clause
This Agreement embodies the entire agreement made between the Parties concerning the subject matter dealt with herein and terminates and supersedes all prior agreements between the Parties in respect to such subject matter.
Article 17. Amendment
None of the terms of this Agreement, including this paragraph, can be waived or modified except by an express agreement in writing signed by both Parties.
Article 18. Validity
The provisions of this Agreement shall be deemed to be independent and severable. If any provision of this Agreement is held invalid or unenforceable, the Parties agree to replace this provision by a valid and enforceable provision as close as possible to the intended commercial effect.
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Der Lizenznehmer ist Inhaber der Rechte an der geschäftlichen Bezeichnung ... sowie Eigentümer von bestimmten Marken und Dienstleistungsmarken, welche diese geschäftliche Bezeichnung beinhalten.
Der Lizenznehmer hat gemäß Kaufvertrag vom ________ den Automobil-Bereich von dem Lizenzgeber erworben.
Der Lizenznehmer möchte die Marke ... in Verbindung mit seiner Geschäftstätigkeit unter einer Lizenz des Lizenzgebers nutzen. Der Lizenzgeber ist bereit, eine solche Lizenz gemäß den in diesem Vertrag festgelegten Bestimmungen zu gewähren.
Dies vorausgeschickt, vereinbaren die Parteien folgendes:
Artikel 1. Definitionen
1. “Geschäftsbetrieb" bedeutet die geschäftlichen Aktivitäten des Lizenznehmers auf dem Geschäftsgebiet des Automobil-Bereichs, wie sie in Anlage A genauer definiert sind.
2. “Automobil-Bereich" bedeutet der Teil des Geschäftsbetriebs des Lizenzgebers, welcher sich auf Herstellung und Vertrieb von Automobilteilen, Kleinmotoren, Kupplungssystemen, Verbindungsteilen ...
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