TRADEMARK ASSIGNMENT AGREEMENT
DATED AS OF July 31, 1992
BY AND BETWEEN
CLARK EQUIPMENT COMPANY,
as Assignor
AND
CLARK MATERIAL HANDLING COMPANY,
as Assignee
2
TABLE OF CONTENTS
Page ARTICLE 1 DEFINITIONS ..................................................... 1
1.1 General ......................................................... 1
1.2 "Agreement" ..................................................... 2
1.3 "Assigned Marks" ................................................ 2
1.4 "Assumed Liabilities" ........................................... 2
1.5 "Eligible Goods and Services .................................... 2
1.6 "Marks" ......................................................... 2
1.7 "Registrations" ................................................. 3
1.8 "Retained Business" ............................................. 3
1.9 "Retained Marks" ................................................ 3
ARTICLE 2 INTELLECTUAL PROPERTY RIGHTS .................................... 3
2.1 Assignment ...................................................... 3
2.1.1 Grant ........................................................... 3
2.1.2 Delivery of Assignment Instruments .............................. 3
2.1.3 Amendment of Trademark Registrations ............................ 3
2.1.4 Use of Marks; Change of Names ................................... 4
2.2 Grant of License ................................................ 6
2.3 Reservation of Rights ........................................... 6
2.4 No Other Assignments, Licenses or Access ........................ 6
ARTICLE 3 DEFENSE AND MAINTENANCE ......................................... 6
3.1 Infringement Defense ............................................ 6
3.1.1 Notice and Control .............................................. 6
3.1.2 Procedure ....................................................... 7
3.2 Maintenance of Registrations .................................... 7
ARTICLE 4 WARRANTIES ...................................................... 7
(i) 3
Page ARTICLE 5 INDEMNIFICATION ................................................. 7
5.1. Indemnification ................................................. 7
5.2 Assumed Liabilities ............................................. 8
ARTICLE 6 MISCELLANEOUS ................................................... 8
6.1 Notices ......................................................... 8
6.2 Successors and Assigns .......................................... 8
6.3 Amendment, Modification and Waiver .............................. 9
6.4 No Third Party Beneficiaries .................................... 9
6.5 Interpretation .................................................. 9
6.6 Legal Enforceability ............................................ 9
6.7 Governing Law ................................................... 9
6.8 Entire Agreement ................................................ 9
6.9 Expenses ........................................................ 10
6.10 Counterparts .................................................... 10
ARTICLE 7 TERMINATION OF LICENSE .......................................... 10
(ii) 4 SCHEDULES
1.3 ASSIGNED MARKS
1.7 REGISTRATIONS
2.1.2 FORM OF TRADEMARK ASSIGNMENT
2.2(a) LICENSED MARKS
2.2(b) LICENSE AGREEMENT
(iii) 5
TRADEMARK ASSIGNMENT AGREEMENT dated as of July 31, 1992, by and between CLARK EQUIPMENT COMPANY, a
Delaware corporation (the "Assignor"), and CLARK MATERIAL HANDLING COMPANY, a Kentucky corporation (the "Assignee"). Capitalized terms used herein and not otherwise defined herein shall have the respective meanings assigned to such terms in the Stock Purchase Agreement, and all such definitions are expressly made a part of this Agreement as though fully and completely set forth herein.
WHEREAS, Assignor, either directly or through the Other Sellers, owns all of the issued and outstanding shares of capital stock of each member of the CMH Group other than the Clarklift/Samsung Entities, and owns a portion of the issued and outstanding shares of capital stock of each of the Clarklift/Samsung Entities (collectively, the "Group Stock");
WHEREAS, Assignor and Terex Corporation, a Delaware corporation and the parent company of the Assignee have entered into a Stock Purchase Agreement dated as of May 27, 1992 (the "Stock Purchase Agreement"), providing for the sale by Assignor to the Purchaser of the Group Stock, all on the terms and subject to the conditions set forth in the Stock Purchase Agreement and the Ancillary Agreements; and
WHEREAS, pursuant to the Stock Purchase Agreement, Assignor has agreed to assign to Assignee, and Assignee has agreed to acquire from Assignor, rights in certain marks owned by Assignor, in accordance with the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and mutual covenants and agreements hereinafter set forth, the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
As used in this Agreement, the following terms shall have the following meanings:
1.1 General. Unless the context indicates otherwise, the terms "hereof", "herein" and "hereunder" as 6 used in this Agreement shall refer to this Agreement in its entirety and not to any particular portion of this Agreement.
1.2 "Agreement" means this Trademark Assignment Agreement and all Schedules and amendments and supplements, if any, hereto.
1.3 "Assigned Marks" means all rights in (i) the CLARK Mark and all Marks that incorporate the term "Clark", but do not also include (x) the word "Equipment," (y) the word "Components," or (z) any derivative of either "Equipment" or "Components," for use in connection with Eligible Goods and Services, and only for such use, in those countries listed on Schedule 1.7 hereto; (ii) each of the Registrations listed on Schedule 1.3 annexed hereto which relates entirely or principally to Eligible Goods and Services, to the extent, and only to the extent, such registration relates to the country, and the Eligible Goods and Services indicated on said Schedule as to such registration; and (iii) the right to register in countries set forth on Schedule 1.7 applications for registration, as set forth in Section 2.1.3(a) hereof, for the CLARK Mark and other Marks that incorporate the word "Clark," but do not also include (x) the word "Equipment," (y) the word "Components," or (z) any derivative of either "Equipment" or "Components."
1.4 "Assumed Liabilities" means all liabilities arising from or related to the use, in the conduct of the Business prior to the Closing Date, of any Assigned Mark.
1.5 "Eligible Goods and Services" means forklift trucks, industrial trucks, tow tractors, tuggers, powered hand trucks and walkies, as well as parts, accessories and attachments relating to any of the foregoing, together with services and activities incidental to the foregoing, to the extent manufactured, sold and provided by Assignor exclusively with respect to the Business immediately prior to the Closing Date, plus any new models of or improvements to any of the foregoing products, but excluding transmissions, transaxles, axles, brakes, torque converters and systems to transfer power, and components and parts thereof and any other products, parts, components or services manufactured, distributed, or provided by Assignor or any of its other divisions or business units.
1.6 "Marks" means all domestic and foreign trademarks, service marks, trade dress, and trademark and
-2- 7 service mark registrations and applications therefor owned by Assignor on the Closing Date.
1.7 "Registrations" means the domestic or foreign trademark or service mark registrations for the CLARK Mark and for the Marks that incorporate the term "Clark", and applications therefor, that are listed on Schedule 1.7 attached hereto.
1.8 "Retained Business" means any business engaged in by Assignor on the Closing Date, or prior or subsequent thereto, other than the Business.
1.9 "Retained Marks" means all rights in and to the CLARK Mark and any other Marks owned by Assignor or in which Assignor has any rights, other than the Assigned Marks.
ARTICLE 2
INTELLECTUAL PROPERTY RIGHTS
2.1 Assignment.
2.1.1 Grant. Effective as of the Closing Date, Assignor hereby assigns and transfers to Assignee, and Assignee accepts, (a) all of Assignor's right, title and interest in and to the Assigned Marks, together with the goodwill associated with and symbolized by any Assigned Mark so assigned and transferred and (b) the right to sue for past infringement of any Assigned Mark.
2.1.2 Delivery of Assignment Instruments. As soon as practical after the Closing Date, Assignor shall deliver to Assignee executed instruments of assignment substantially in the form of the Trademark Assignment contained in Schedule 2.1.2 annexed hereto, with respect to any Registration which is an Assigned Mark.
2.1.3 Amendment of Trademark Registrations. (a) As soon as practical after the Closing Date, to the extent permitted by applicable law, Assignor shall file in the United States Patent and Trademark Office (the "PTO") and each of the appropriate offices of the applicable foreign governments all instruments necessary to apply for all amendments to each Registration, where applicable, excluding Registrations on Schedule 1.3, so as to delete from its list of goods and services any Eligible Goods and
-3- 8 Services. Assignor shall use its commercially reasonable efforts to prosecute each such application through to completion, and shall retain each Registration with respect to all goods and services other than the Eligible Goods and Services. Assignee shall have the right to file in the PTO and appropriate foreign governmental agencies, for the countries set forth on Schedule 1.7 hereto, applications for registration of the CLARK Mark and other Marks that incorporate the term "Clark," but do not also incorporate (i) the word "Equipment," or (ii) the word "Components," or (iii) any derivative of "Equipment" or "Components," with respect to the Eligible Goods and Services. Assignor agrees to execute further documents necessary to effectuate this provision, including but not limited to consents to use.
(b) As soon as practical after the Closing Date, to the extent permitted by applicable law, Assignee shall file in the PTO and each of the appropriate offices of the applicable foreign governments all instruments necessary to apply for all amendments to each Registration on Schedule 1.3 relating principally but not entirely to Eligible Goods and Services, so as to delete from its list of goods and services any goods and services that are not Eligible Goods and Services. Assignee shall use its commercially reasonable efforts to prosecute each such application through to completion, and shall retain each Registration with respect to all Eligible Goods and Services. As to each such Registration in connection with which Assignee files for an amendment, Assignor shall have the right to file, in the country issuing said Registration, an application for a registration of the mark in question for goods and services other than Eligible Goods and Services. Assignee agrees to execute further documents necessary to effectuate this provision, including but not limited to consents to use.
2.1.4 Use of Marks; Change of Names. (a) From and after the Closing Date, Assignee shall be entitled to use all of the Assigned Marks in accordance with the terms hereof. Assignee will, as promptly as practicable following the Closing Date, remove or obliterate all the Retained Marks from its signs, purchase orders, invoices, sales orders, labels, letterheads, shipping documents and other materials, and Assignee shall not put into use after the Closing Date any such materials not in existence on the Closing Date that bear any Retained Mark or any Mark similar thereto (except that this provision shall not diminish Assignee's right to use the Assigned Marks or any variation thereof). Notwithstanding the foregoing, Assignee may (a)
-4- 9 deplete all inventory, work-in-process, parts and materials existing on the Closing Date which use any Retained Mark or a mark similar thereto, (b) for a period of ninety (90) days following the Closing Date, deplete all stationery, invoices and other paper goods existing on the Closing Date which use any Retained Mark or a mark similar thereto, and (c) use (but shall deplete as promptly as reasonably practical) all packaging, brochures and parts manuals existing on the Closing Date which use any Retained Mark or a mark similar thereto; provided, however, that in each case Assignee shall place or cause to be placed on any such item a stamp, mark or other notation identifying the Business as a business of the CMH Group (and not of CEC); and provided, further, that in no event shall Assignee or any member of the CMH Group reorder any of the foregoing items. Nothing in this provision shall diminish Assignee's right to use any Assigned Marks or any variation thereof.
(b) From and after the 40th Business Day following the Closing Date, Assignee shall not, nor shall any entity affiliated with Assignee, use any trade name or Mark that incorporates both the term "Clark" and (i) the term "Equipment," or (ii) the term "Components," or (iii) any derivative of "Equipment" or "Components." Within 40 Business Days after the Closing Date, Assignee shall cause each of the members of the CMH Group set forth below to change its corporate name to the name set forth opposite such corporation below:
CMH Group Member New Corporate Name
---------------- ------------------ Clark Equipment GmbH Clark Material Handling
GmbH
Clark Components International Clark Material Handling Inc. International Inc.
Clark France Manutention S.A. Clark Material Handling
France Manutention S.A.
Clark Maquinaria S.A. Clark Material Handling
Maquinaria S.A.
Clark Components Korea, Inc. Clark Material Handling
Korea, Inc.
2.2 Grant of License. Notwithstanding any other provision of this Agreement, with regard to the Marks set forth on Schedule 2.2(a) annexed hereto (the "Licensed
-5- 10 Marks"), the provisions of the terms and conditions of the "License Agreement," annexed hereto as Schedule 2.2(b), shall control.
2.3 Reservation of Rights. Assignor reserves all rights in Marks not specifically granted to Assignee pursuant to this Agreement.
2.4 No Other Assignments, Licenses or Access. Except as expressly provided in this Agreement, Assignee is granted no assignments, licenses or rights by implication or otherwise in technology, business information, trademarks or other intellectual property rights owned, controlled or used by Assignor. Assignee acquires no rights hereunder in the Retained Marks.
ARTICLE 3
DEFENSE AND MAINTENANCE
3.1 Infringement Defense.
3.1.1 Notice and Control. In the event that either party hereto or any of its affiliates or subsidiaries becomes a defendant in an infringement action commenced by a third party, and related to one or more of the Assigned Marks or the Retained Marks, said party shall promptly notify the other party in writing. In such case, Assignor and Assignee shall confer with regard to all material aspects of the defense. In the event that any claim in the action is for infringement of an Assigned Mark, Assignee shall control the defense and bear the expense for such claim, and in the event any claim is for infringement of a Retained Mark, Assignor shall control the defense and bear the expense for such claim. In either event, if the resolution of any such action could adversely affect any of the Retained Marks, Assignor shall have the right to control the defense of that portion of the action which so relates to or affects the Retained Marks, and if it could adversely affect any of the Assigned Marks, Assignee shall have the right to control the defense of that portion of the action which so relates to or affects the Assigned Marks. If either party elects not to defend and control the defense of a claim which it has the right to defend hereunder, then the other party shall have the right to defend and control the defense of such claim at its sole expense.
-6- 11
3.1.2 Procedure. The parties hereto shall cooperate with each other at all times in connection with any infringement action under this Section 3.1. If only one of the parties is participating in such action, then the other party's cooperation shall be at no out-of-pocket expense to such other party.
3.2 Maintenance of Registrations. After the Closing Date, Assignee may pursue, maintain, or renew any rights it has received under this Agreement in the Assigned Marks, but it shall have no obligation to do so.
ARTICLE 4
WARRANTIES
Except as set forth in the Stock Purchase Agreement, Assignor makes no warranties or representations.
ARTICLE 5
INDEMNIFICATION
5.1. Indemnification. (a) Assignee hereby agrees to indemnify, defend and hold harmless Assignor and its subsidiaries and affiliates and their respective directors, officers, employees, agents and attorneys, from and against any claim directly or indirectly resulting from, arising out of, or related to the use by Assignee or any subsidiary or affiliate thereof, whether or not in accordance with this Agreement, of (i) any Retained Mark, Assigned Mark, or similar Mark, or (ii) any name using the term "Clark."
(b) Assignor hereby agrees to indemnify, defend and hold harmless Assignee and its subsidiaries and affiliates and their respective directors, officers, employees, agents and attorneys, from and against any claim directly or indirectly resulting from, arising out of, or related to the use by Assignor or any subsidiary or affiliate thereof, whether or not in accordance with this Agreement, of (i) any Retained Mark, Assigned Mark, or similar Mark, or (ii) any name using the term "Clark."
5.2 Assumed Liabilities. Upon the terms and subject to the conditions set forth in this Agreement and in addition to any other liabilities otherwise expressly
-7- 12 assumed by Assignee pursuant to this Agreement, Assignee hereby confirms that it has assumed and agreed to pay, perform and discharge forthwith any and all Assumed Liabilities.
ARTICLE 6
MISCELLANEOUS
6.1 Notices. Any notice or other communications required or permitted hereunder shall be sufficiently given if delivered in person or sent by telecopy or by registered or certified mail, postage prepaid, return receipt requested, addressed as follows:
(a) if to the Assignor, Clark Equipment Company
to it at: 100 North Michigan Street
South Bend, Indiana 46601
Telecopy No.: (219) 239-0237
Attn: Bernard D. Henely, Esq.
Vice President and
General Counsel
with a copy to: White & Case
1155 Avenue of the Americas
New York, New York 10036
Telecopy No.: (212) 354-8113
Attn: William F. Wynne, Jr.,
Esq.
(b) if to the Assignee, Clark Material Handling
to it at: Company
106 West Vine Street,
Suite 701
Lexington, Kentucky 40507
Telecopy No.: (606) 288-1355
Attn: Michael J. Grossman,
Esq.
General Counsel
6.2 Successors and Assigns. This Agreement may not be transferred, assigned, pledged or hypothecated by Assignee without the prior written consent of Assignor.
6.3 Amendment, Modification and Waiver. This Agreement may be amended, modified or supplemented only by written agreement of the parties. Each party hereto may, only by an instrument in writing, waive compliance by the
-8- 13 other party hereto with any term or provision of this Agreement on the part of such other party hereto to be performed or complied with. The waiver by either party hereto of a breach of any term or provision of this Agreement shall not be construed as a waiver of any subsequent breach.
6.4 No Third Party Beneficiaries. This Agree- ment is solely for the benefit of the parties hereto and is not intended to confer upon any other person except the parties hereto any rights or remedies hereunder.
6.5 Interpretation. The Article and Section headings contained in this Agreement are solely for the purpose of reference, are not part of the agreement of the parties and shall not in any way affect the meaning or interpretation of this Agreement. Whenever any words are used herein in the masculine gender, they shall be construed as though they were also used in the feminine gender in all cases where it would so apply.
6.6 Legal Enforceability. Any provision of this Agreement which is prohibited or unenforceable in any jurisdiction shall, as to such jurisdiction, be ineffective to the extent of such prohibition or unenforceability without invalidating the remaining provisions hereof. Any such prohibition or unenforceability in any jurisdiction shall not invalidate or render unenforceable such provision in any other jurisdiction.
6.7 Governing Law. This Agreement shall be governed by and construed and enforced in accordance with the laws of the State of New York applicable to contracts made and to be performed entirely within the State of New York.
6.8 Entire Agreement. This Agreement, including the Schedules and the other agreements and documents referred to herein and incorporated herein by reference, and the Stock Purchase Agreement shall constitute the entire agreement between Assignor and Assignee with respect to the subject matter hereof and shall supersede all previous agreements, negotiations, commitments and writings with respect to such subject matter.
6.9 Expenses. Except as otherwise provided in this Agreement or the Stock Purchase Agreement, Assignor and Assignee shall each pay their own costs and expenses incurred (whether or not payable as of the Closing Date) in
-9- 14 connection with the consummation of the transactions contemplated by this Agreement, including without limitation the fees and expenses of their respective counsel, financial advisors and accountants.
6.10 Counterparts. This Agreement may be executed in two or more counterparts, all of which taken together shall constitute one instrument.
ARTICLE 7
TERMINATION OF LICENSE
The grant of license set forth in Section 2.2 of the Intellectual Property Agreement between CEC and CMHC
-10- 15 dated as of March 31, 1992 is hereby terminated upon execution of this Agreement by the parties hereto.
IN WITNESS WHEREOF, this Agreement has been signed by or on behalf of each of the parties as of the day first above written.
CLARK EQUIPMENT COMPANY
By /s/
--------------------------------------
Name:
Title:
WITNESS:
/s/ - ------------------------
CLARK MATERIAL HANDLING COMPANY
By /s/
--------------------------------------
Name:
Title:
WITNESS:
/s/ - ------------------------
-11- 16
SCHEDULE 1.3
ASSIGNED MARKS
I. UNITED STATES REGISTRATIONS
Regis- Goods/ Mark tration No. Exp. Date Services - ---- ----------- --------- -------- Clark 165,644 01/05/08 Class 19 -
Motor
propelled
trucks
Clark 166,313 01/05/08 Class 23 -
(Supp. Tractors
Reg.)
Clark 507,796 03/22/99 Class 19 -
Power operated
industr ...