TRADEMARK, PATENT, COPYRIGHT AND KNOW-HOW
LICENSE AGREEMENT
WARNER-LAMBERT COMPANY
GLAXO WELLCOME INC.
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Dated as of June 30, 1996
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TABLE OF CONTENTS
Page
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SECTION 1 Definitions ............................. 1
SECTION 2 Grant of Rights ......................... 4
SECTION 3 Scope of Rights ......................... 5
SECTION 4 Quality Control ......................... 6
SECTION 5 Reservation of Rights ................... 7
SECTION 6 Protection of the Mixed-Use Intellectual
Property................................ 8
SECTION 7 Maintenance of the Mixed-Use Trademarks,
Mixed-Use Patents and Mixed-Use
Copyrights; Challenging of Applications;
Abandonment ............................ 10
SECTION 8 Consultation ............................ 11
SECTION 9 Rights to the Mixed-Use Intellectual
Property ............................... 11
SECTION 10 Confidentiality ......................... 12
SECTION 11 Third Party Mixed-Use Know-How .......... 13
SECTION 12 Indemnification ......................... 14
SECTION 13 Term; Termination ....................... 14
SECTION 14 Further Assurances ...................... 16
SECTION 15 Notices ................................. 16
SECTION 16 Contractual Relationship ................ 17
SECTION 17 Governing Law ........................... 17
SECTION 18 Submission to Jurisdiction .............. 17
SECTION 19 Counterparts............................. 17
SECTION 20 Entire Understanding .................... 17
SECTION 21 Transferability; Binding Effect ......... 18
SECTION 22 Amendment ............................... 18
SECTION 23 Severability ............................ 19
SECTION 24 Waiver .................................. 19
SECTION 25 Remedies ................................ 19
SECTION 26 Headings ................................ 20
TRADEMARK, PATENT, COPYRIGHT AND KNOW-HOW
LICENSE AGREEMENT
This AGREEMENT is made as of this 30th day of June, 1996, by and between WARNER-LAMBERT COMPANY, a Delaware corporation with its principal place of business at 201 Tabor Road, Morris Plains, New Jersey 07950 ("Licensor"),
GLAXO WELLCOME INC., a North Carolina corporation with its principal place of business at Five Moore Drive, Research Triangle Park, North Carolina 27709 ("Licensee").
WHEREAS Licensee or its Affiliates are the proprietor of certain intellectual property outside the Core Territory and concurrently with the execution of this Agreement Licensee or its Affiliates will enter into an agreement dated as of the date hereof with Licensor or its Affiliates which grants a license to Licensor or its Affiliates to use such intellectual property outside the Core Territory to develop and manufacture products sold in the Non-Prescription Field exclusively for sale in the Core Territory; and
WHEREAS Licensor is the proprietor of the Mixed-Use Intellectual Property in the Territory and Licensee desires to license such Mixed-Use Intellectual Property under the terms and conditions contained herein.
NOW IT IS HEREBY AGREED as follows:
1 . DEFINITIONS.
In this Agreement the following words shall have the meanings set forth below:
"Claims" shall mean all claims, costs, liabilities, damages, losses, expenses (including reasonable fees and disbursements of counsel), obligations, liens, assessments, judgements and fines.
"Copyright" shall mean original works of authorship fixed in any tangible medium of expression
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including, literary works, musical, dramatic, pictorial, graphic and sculptured works.
"Core Territory" shall mean Andorra, Australia, Austria, Belgium, Canada, Denmark, Finland, France (including its overseas departments and overseas territories and Monaco), Germany, Gibraltar, Greece, Iceland, Ireland, Italy, Liechtenstein, Luxembourg, Mexico, the Netherlands, New Zealand, Norway, Portugal, San Marino, Spain, Sweden, Switzerland, the United Kingdom, the United States and the Vatican City.
"Line Extensions" shall mean any extensions of (a) any Product listed on Schedule 1A, 2A, 3A or 4A hereto which extensions (i) utilize any of the same Mixed-Use Intellectual Property as such Product and (ii) are sold by or on behalf of Licensee in the Non-Prescription Field exclusively for sale outside the Core Territory (it being understood that such a sale may be made within the Core Territory only if it is exclusively for resale and delivery outside the Core Territory and each purchaser with respect thereto confirms and agrees to such restriction) or (b) any Product listed on Schedule 13, 2B, 3B or 4B hereto which extensions (i) utilize any of the same Mixed-Use Intellectual Property as such Product, (ii) are of the same or similar product class, category or formulation as such Product and (iii) are sold in the Prescription Field by or on behalf of Licensee. For the avoidance of doubt, Line Extensions shall exclude any extensions developed by or on behalf of Licensor,
"Mixed-Use Copyrights" shall mean any Copyright used in the Territory on or in connection with a Product (i) in the Non-Prescription Field as identified on Schedule 3A or (ii) in the Prescription Field as identified on Schedule 3B. For the avoidance of doubt, unregistered copyrights used on or in connection with Products identified on Schedule 3A or 3B as of the date hereof are deemed Mixed-Use Copyrights; however, any unregistered copyrights developed after the date hereof by Licensor shall not be considered Mixed-Use Copyrights.
"Mixed-Use Intellectual Property" shall mean the Mixed-Use Trademarks, Mixed-Use Patents, Mixed-Use Copyrights and Mixed-Use Know-How.
"Mixed-Use Know-How" shall mean all trade secrets, technology, discoveries and improvements, know-how,
proprietary rights, formulae, confidential and proprietary information, technical information, techniques, inventions, designs, drawings, procedures, processes, models, manuals and systems, whether or not patentable, which are invented, developed, acquired, owned or licensed by Licensor as of the date hereof and which relate specifically to the manufacture, use or sale of the Products (whether or not they also relate to the manufacture, use or sale of other products) specified on Schedule 4A or 4B hereto, including, but not necessarily limited to, all biological, chemical, biochemical, toxicological, pharmacological and metabolic material and information and data relating thereto and formulation, clinical, analytical and stability information and data; provided, however, that Mixed-Use Know-How shall not include any know-how in the public domain.
"Mixed-Use Patents" shall mean any Patent used in the Territory in connection with a Product (i) in the Non-Prescription Field as identified on Schedule 2A or (ii) in the Prescription Field as identified on Schedule 2B.
"Mixed-Use Trademarks" shall mean any Trademark used in the Territory on or in connection with a Product (i) in the Non-Prescription Field as identified on Schedule 1A or (ii) in the Prescription Field as identified on Schedule 1B. For the avoidance of doubt, unregistered trademarks, service marks, trade dress, logos and slogans used on or in connection with Products identified on Schedule 1A or 1B as of the date hereof are deemed Mixed-Use Trademarks; however, any of the foregoing developed after the date hereof by Licensor shall not be considered Mixed-Use Trademarks.
"Non-Prescription Field" shall mean the non-prescription consumer health care business.
"Patents" shall mean patents, patent rights, patent applications, registered designs, registered design applications, industrial designs, industrial design applications and industrial design registrations, including any and all divisions, continuations, continuations-in-part, extensions, substitutions, renewals, registrations, revalidations, reissues or additions, including supplementary certificates of protection, of or to any of the aforesaid items.
"Prescription Field" shall mean the prescription consumer health care business.
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"Products" shall mean any of the products specified on Schedules 1A, 1B, 2A, 2B, 3A, 3B, 4A and 4B hereto, as applicable (and any Line Extensions in respect of such Products, which Line Extensions shall be deemed to be Products identified on Schedule 1A, 1B, 2A, 2B, 3A, 3B, 4A or 4B hereto, as applicable).
"Territory" shall mean the United States.
"Trademarks" shall mean trademarks, trademark registrations, trademark applications, service marks, service mark registrations, service mark applications, business marks, brand names, trade names, trade dress, names, logos and slogans and all goodwill associated therewith.
"United States" shall mean the fifty states of the United States of America, the District of Columbia, United States territories and possessions, including the Commonwealth of Puerto Rico, and U.S. military bases worldwide.
Capitalized terms used herein which are not defined herein shall have the meanings set forth in the Purchase Agreement dated as of June 30, 1996, between (i) Warner-Lambert Company and (ii) Glaxo Wellcome plc and Wellcome plc (the "Purchase Agreement"). References to Licensee hereunder shall include Affiliates of Licensee except to the extent the context requires otherwise.
2. GRANT OF RIGHTS.
(a) Subject to any pre-existing rights of any third party as described in Schedule 6 and subject to Section 3, Licensor hereby grants to Licensee an exclusive, royalty-free license to use and employ the Mixed-Use Intellectual Property in the Territory solely in connection with
(i) the development and manufacture by or on behalf of Licensee of any
Product sold by or on behalf of Licensee in the Non-Prescription Field
exclusively for sale outside the Core Territory (it being understood that
such a sale may be made within the Core Territory only if it is exclusively
for resale and delivery outside the Core Territory and each purchaser with
respect thereto confirms and agrees to such restriction) which Product is
specified for such Mixed-
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Use Intellectual Property on Schedule 1A, 2A, 3A or 4A hereto, as applicable,
(ii) the development, manufacturing, marketing, distribution and sale
in the Prescription Field by or on behalf of Licensee of any Product
specified for such Mixed-Use Intellectual Property on Schedule 1B, 2B, 3B or
4B hereto, as applicable.
The right of Licensee to have any Product in the Non-Prescription Field described in the foregoing clause (i) manufactured by a third party shall be subject to the prior written consent of Licensor, which consent shall not be unreasonably withheld or delayed. Licensor may only withhold consent with respect to a third party manufacturer if Licensor has a reasonable basis to believe that such third party manufacturer might engage in activities which would result in the diversion of any Products in the Non-Prescription Field for sale inside the Core Territory or engage in any other activities or arrangements with similar results.
(b) In the event that Licensee desires to use any Trademark with respect to a Product listed on Schedule 1B in the Prescription Field in the Territory which is the same as or confusingly similar to any Mixed-Use Trademark identified on Schedule 1B, Licensor shall, at Licensee's reasonable request, use reasonable efforts to register such Trademark and license such Trademark to Licensee pursuant to the terms of this Agreement.
3. SCOPE OF RIGHTS.
(a) Licensee shall not use or register, or attempt to register, in the Core Territory any Trademark which is the same as or confusingly similar to any Trademark on Schedule 1A, except for such use as is provided for herein.
(b) If required by any Governmental Rule, when any Mixed-Use Trademark is used by Licensee, it shall be accompanied by wording to show that it is a Trademark used by Licensee with the permission of Licensor. The terms of such wording and its placement shall be in accordance with any applicable Governmental Rules.
(c) Licensee undertakes to use the Mixed-Use Trademarks and Mixed-Use Copyrights in the Territory only in
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respect of, upon or in connection with (i) Products identified on Schedule 1A or 3A, as applicable, that are developed and manufactured by or on behalf of Licensee and sold by or on behalf of Licensee in the Non-Prescription Field exclusively for sale outside the Core Territory or (ii) Products identified on Schedule 1B or 3B, as applicable, that are developed, manufactured, marketed, distributed and sold in the Prescription Field by or on behalf of Licensee. The foregoing does not affect Licensee's right to use its Trademarks and Copyrights outside of the Core Territory.
(d) In connection with Section 2 hereof, Licensee shall not:
(i) incorporate packaging of Products used by Licensor in the Core
Territory unless required by Governmental Authority to incorporate such
packaging, provided that where such packaging is used by Licensee as of the
date hereof, this restriction shall apply only to any change to such
packaging after the date of this Agreement which change increases or is
likely to increase the risk of confusion; and
(ii) use in connection with the marketing or sale, outside the Core
Territory, of any Product or any products that are the same as or similar to
any Products, any packaging or user instructions printed in any language
other than the language used by the government in the country where such
Product or product is intended to be marketed or sold (and in respect of
countries in the former Soviet Union, Russian), provided that (x) this
restriction shall apply only to any change in packaging or user instructions
after the date of this Agreement and (y) one or more languages commonly used
on packaging or user instructions in such country may be used if it can be
reasonably demonstrated that the use of such other language or languages is
well-established and widespread on packaging or user instructions in such
country for products similar to such Products or products in which event such
language or languages may be used on packaging or user instructions in such
country. Licensee shall notify Licensor of any such use under (y) within a
reasonable period of time.
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4. QUALITY CONTROL.
(a) Licensee agrees to adhere to all standards required by any applicable Governmental Rule, including any standards relating to current good manufacturing practices with respect to the Products, but only to the extent that the failure to comply might reasonably be expected to have a material adverse effect on the Mixed-Use Trademarks or Licensor's rights thereto. Licenser acknowledges that the standards of quality employed as of the date hereof with respect to the Products identified on Schedules 1A, 1B, 3A and 3B hereto (excluding Line Extensions) are acceptable to Licensor and Licensee agrees to adhere to such standards unless it obtains the prior written consent of Licensor, such consent not to be unreasonably withheld or delayed. Licensee shall notify Licensor of standards of quality with respect to any Line Extensions within sixty (60) days prior to launch of such Line Extensions and Licensor shall notify Licensee as to whether such standards of quality are acceptable or, if unacceptable, provide a reasonably detailed description of the reasons why such standards are unacceptable. If Licensor fails to notify Licensee within thirty (30) days after being notified by Licensee of such standards of quality, such standards of quality shall be deemed acceptable by Licensor.
(b) Licensee agrees to furnish to Licensor or its representatives upon the reasonable request of Licensor or its representatives, samples of the Products, whether or not manufactured by Licensee, and other Product materials using the Mixed-Use Trademarks, including, but not limited to, labelling, packaging, advertising and publicity material.
(c) Licensee shall use the Mixed-Use Trademarks in an appropriate manner, without jeopardizing the significance, distinctiveness or validity of such Mixed-Use Trademarks. Licensor hereby consents to the Product packaging and other uses of the Mixed-Use Trademarks existing on the date hereof.
5. RESERVATION OF RIGHTS.
Licenser reserves for itself all rights to use and employ any of the Mixed-Use Intellectual Property for any purpose other than those granted in Section 2, including, without limitation, Licensor or any of its Affiliates' rights to use any of the Mixed-Use Intellectual Property in the Non-Prescription Field in the Co ...
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