Trademark Assignment And License-back Agreement

AGREEMENT FOR
TRADEMARK ASSIGNMENT AND LICENSE-BACK


This AGREEMENT FOR TRADEMARK ASSIGNMENT AND LICENSE-BACK ("Agreement") is made and entered into as of this 17th day of November, 1997 by and between Iveco Magirus Brandschutztechnik GmbH, a German corporation with offices at Magirusstrasse 16, 89077 Ulm, Germany ("Assignor"), Figgie International Inc., a Delaware corporation with offices at 4420 Sherwin Road, Willoughby, Ohio 44094, U.S.A. ("FII"), and SKL Lift, Inc., a Delaware corporation with offices at 369 West Western Avenue, Port Washington, Wisconsin 53074, U.S.A. ("SKL").


WHEREAS, Assignor is the owner of the rights to the trademark "Snorkel" in numerous jurisdictions throughout the world (the "Assigned Trademarks"), including without limitation the registrations and applications to register set forth on Schedule A hereto; and


WHEREAS, Assignor acquired, among other things, its rights to the Assigned Trademarks pursuant to an Agreement for the Acquisition of Specified Assets Relating to the Simon Aerial Fire Platform Range, executed by and between Assignor and Simon UK 1995 Limited on or about May 30, 1997 (the "Acquisition Agreement"); and


WHEREAS, FII is the owner of the trademark "Snorkel" registered with the United States Patent and Trademark Office as Registration Number 719,225 and issued on August 1, 1961 (the "FII Trademark"); and


WHEREAS, the Snorkel division of FII's predecessor-in-interest, A-T-O Inc., and Assignor's predecessor-in-interest, Simon Engineering Dudley Limited, entered into an Agreement dated as of June 1, 1977 (together with any amendments thereto, the "License Agreement") pursuant to which each party granted to the other the license to use the "Snorkel" name in certain specified countries in connection with the marketing of certain specified products, subject to the terms and conditions thereof; and


WHEREAS, FII or its predecessor-in-interest has been using the "Snorkel" name continuously in connection with the manufacture, marketing and sale of elevating work platforms and aerial fire-fighting platform apparatus; and


WHEREAS, Assignor or its predecessor-in-interest has been using the "Snorkel" name continuously in connection with the manufacture, marketing and sale of fire trucks and parts thereof, including aerial fire-fighting platform apparatus; and


WHEREAS, Assignor and FII desire to terminate the License Agreement and replace it with this Agreement to provide for the parties' continued use of the "Snorkel" name pursuant to the terms and conditions hereof; and


WHEREAS, FII and SKL (among others) have entered into an Asset Purchase Agreement dated as of July 19, 1997 (the "Asset Purchase Agreement") pursuant to which FII has agreed to sell to SKL and SKL has agreed to buy from FII the business heretofore conducted by the Snorkel division of FII as a going concern (the "Snorkel Business"); and


WHEREAS, pursuant to the Asset Purchase Agreement, FII has agreed to assign to SKL, among other things, certain Intellectual Property (as defined in the Asset Purchase Agreement) used in the Snorkel Business, including the FII Trademark and such rights as FII possesses or acquires in the Assigned Trademarks; and


WHEREAS, Assignor desires to sell, assign and transfer to FII, for the benefit of and acquisition by SKL, Assignor's entire right, title and interest in, to and under the Assigned Trademarks, in accordance with and subject to the terms and conditions and as further set forth herein; and


WHEREAS, FII desires to purchase all of Assignor's right, title and interest in, to and under the Assigned Trademarks for the benefit of and acquisition by SKL, in accordance with and subject to the terms and conditions and as further set forth herein;


NOW, THEREFORE, in consideration of the payments, representations, warranties, covenants and other terms and conditions contained herein and in the Asset Purchase Agreement, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereto agree as follows:


ARTICLE I


Termination and Release


Section 1.1. Termination and Release by Assignor. Assignor, for itself and for all persons claiming through Assignor, including without limitation any of its affiliates and subsidiaries and all directors, officers, employees, agents, representatives, successors and assigns of any of the foregoing, in each applicable case, whether direct or indirect (collectively, the "Assignor Releasing Parties"), hereby (a) terminates the License Agreement in its entirety as of the date first written above, which is the date upon which the closing of the transactions contemplated by the Asset Purchase Agreement takes place (the "Closing Date"), and (b) unconditionally and irrevocably releases and forever discharges, from and after the Closing Date, FII, its affiliates and subsidiaries and all of their respective directors, officers, employees, agents, representatives, customers, predecessors, successors and assigns, in each applicable case, whether direct or indirect (the "FII Released Parties"), from any and all rights, claims, demands, judgments, obligations, liabilities and damages, whether accrued or unaccrued, asserted or unasserted, and whether known or unknown, which ever existed or now exist, including without limitation claims for damages or injunctive relief, relating in any way to or arising out of or in connection with the License Agreement or any of the FII


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Released Parties' use of the name "Snorkel" or "Snorkelift" or any variations or derivations thereof anywhere in the world (each individually, a "Claim Against FII Released Parties"). Assignor expressly intends that this release shall be effective regardless of whether the basis for any Claim Against FII Released Parties hereby released shall have been known to or anticipated by the Assignor Releasing Parties. Assignor agrees that it will not, and it will cause each other Assignor Releasing Party controlled by it not to, prosecute or otherwise initiate any legal action with respect to any Claim Against FII Released Parties against any of the FII Released Parties or be a party to or a participant in, or voluntarily cooperate in, any Claim Against FII Released Parties by any third party against any of the FII Released Parties.


Section 1.2 Termination and Release by FII. FII, for itself and for all persons claiming through FII, including without limitation any of its affiliates and subsidiaries and all directors, officers, employees, agents, representatives, successors and assigns of any of the foregoing, in each applicable case, whether direct or indirect (collectively, the "FII Releasing Parties"), hereby (a) terminates the License Agreement in its entirety as of the Closing Date, and (b) unconditionally and irrevocably releases and forever discharges, from and after the Closing Date, Assignor, its affiliates and subsidiaries and all of their respective directors, officers, employees, agents, representatives, customers, predecessors, successors and assigns, in each applicable case, whether direct or indirect (the "Assignor Released Parties"), from any and all rights, claims, demands, judgments, obligations, liabilities and damages, whether accrued or unaccrued, asserted or unasserted, and whether known or unknown, which ever existed or now exist, including without limitation claims for damages or injunctive relief, relating in any way to or arising out of or in connection with the License Agreement or any of the Assignor Released Parties' use of the name "Snorkel" or any variations or derivations thereof anywhere in the world (each individually, a "Claim Against Assignor Released Parties"). FII expressly intends that this release shall be effective regardless of whether the basis for any Claim Against Assignor Released Parties hereby released shall have been known to or anticipated by the FII Releasing Parties. FII agrees that it will not, and it will cause each other FII Releasing Party controlled by it not to, prosecute or otherwise initiate any legal action with respect to any Claim Against Assignor Released Parties against any of the Assignor Released Parties or be a party to or a participant in, or voluntarily cooperate in, any Claim Against Assignor Released Parties by any third party against any of the Assignor Released Parties.


ARTICLE II


Transfer of Assets


Section 2.1. Assets Transferred Hereunder. Upon the terms and subject to the conditions set forth herein, effective as of the Closing Date, Assignor hereby sells, assigns and transfers to SKL, and SKL hereby acquires, assumes and receives from Assignor, all of Assignor's right, title and interest in, to and under the Assigned Trademarks,


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together with the goodwill of the business connected with the use thereof and symbolized thereby and all causes of action, claims and demands and other rights for, or arising from, any infringement, including past infringement, of the foregoing, and all rights corresponding thereto throughout the world.


Section 2.2. Record Ownership. The parties hereto acknowledge that, as of the date hereof, record ownership of the registrations and applications comprising the Assigned Trademarks has not yet been updated to reflect Assignor's acquisition thereof pursuant to the Acquisition Agreement. The parties agree to cooperate, in as expeditious and economical a fashion as is reasonably possible, in taking all actions and executing all instruments, including those described below in Sections 2.3 and 2.4, necessary to create an accurate chain of title with respect to the record ownership of all registrations and applications comprising the Assigned Trademarks.


Section 2.3. Delivery of Assignment Instruments Prepared by SKL. To the extent such instruments are provided to Assignor by SKL prior to the Closing Date, Assignor shall, within three (3) business days following the Closing Date, deliver to SKL executed instruments confirming the assignment of the Assigned Trademarks from Assignor to SKL pursuant to this Agreement, each in a form satisfactory for the filing and recordal thereof in the appropriate trademark offices in each country set forth on Schedule A hereto. FII shall bear all reasonable costs of filing and recording such assignments.


Section 2.4. Delivery of Assignment Instruments Pursuant to Acquisition Agreement. Assignor shall, as soon as reasonably possible after the Closing Date, deliver to SKL executed instruments confirming the assignment of the Assigned Trademarks to Assignor pursuant to the Acquisition Agreement, each in a form approved by SKL and satisfactory for the filing and recordal thereof in the appropriate trademark offices in each country set forth on Schedule A hereto. Assignor shall bear all reasonable costs of filing and recording such assignments.


ARTICLE III


Consideration


Section 3.1. Consideration. Within the later of three (3) business days following the Closing Date or, to the extent any instruments are provided to Assignor by SKL prior to the Closing Date pursuant to Section 2.3 hereof, three (3) business days following receipt by SKL of executed copies of such agreements, upon the terms and subject to the conditions set forth herein, in consideration of the sale, assignment and transfer of the Assigned Trademarks set forth under Article II hereof, FII shall pay to Assignor the sum of US$100,000 by wire transfer of immediately available funds.

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