Attached files
| file | filename |
|---|---|
| EX-2.1 - Rennova Health, Inc. | v211473_ex2-1.htm |
| EX-99.1 - Rennova Health, Inc. | v211473_ex99-1.htm |
| EX-10.2 - Rennova Health, Inc. | v211473_ex10-2.htm |
| 8-K - Rennova Health, Inc. | v211473_8k.htm |
Exhibit
10.1
EXECUTION
VERSION
TRADEMARK
LICENSE AGREEMENT
This
Trademark
License Agreement (“Agreement”)
is effective as of the Closing Date by and between Tegal
Corporation, a Delaware corporation (“Seller”)
and SPP
Process Technology
Systems Ltd., a company incorporated and registered in England and Wales
(“Purchaser”).
WHEREAS, Seller and Purchaser
have entered into an Asset Purchase Agreement, dated as of February 9, 2011 (the
“Purchase
Agreement”); and
WHEREAS, in connection with
the foregoing, Seller desires to grant to Purchaser and its Designees a license
to use certain Licensed Marks (as defined below);
NOW, THEREFORE, in
consideration of the mutual promises of the parties hereto, and of good and
valuable consideration, it is agreed by and between the parties as
follows:
1. DEFINITIONS. For
the purposes of this Agreement the following capitalized terms are defined in
this Section 1 and shall have the meaning specified herein. Other
terms that are capitalized but not specifically defined in this Section 1 or in
the body of the Agreement shall have the meanings set forth in the Purchase
Agreement.
1.1. “Designee”
means the Affiliates of Purchaser designated pursuant to the Designation Notice
.
1.2. “Licensed
Marks” means the trademarks of Seller set forth in Exhibit A attached
hereto.
1.3. “Purchaser
Products” means any products designed, developed, distributed, marketed,
manufactured, tested, assembled, used, imported, licensed, offered for sale,
and/or sold in connection with the Included Business.
1.4. “Trademark Usage
Guidelines” means the written guidelines for proper usage of the Licensed
Marks, as in use by Seller immediately prior to the Closing Date and as revised
and updated from time to time by Seller with notice to Purchaser. All
such guidelines may be revised and updated by Seller from time to time during
the term of the license in its reasonable discretion.
1.5. “Transferred
Trademarks” means the trademarks transferred to Purchaser and its
Designees as part of the Purchased Intellectual Property pursuant to the
Purchase Agreement.
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2.
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LICENSES.
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2.1. License
Grant. Subject to the terms and conditions of this Agreement,
Seller hereby grants to Purchaser and each of its Designees an exclusive,
non-transferable (except as permitted pursuant to Section 7.5), worldwide,
royalty-free license, without right of sublicense, during the term of this
Agreement to use, copy, distribute and reproduce the Licensed Marks solely in
connection with the manufacture, assembly, use, import, export, design,
development, distribution, marketing, selling and support of the Purchaser
Products and solely in combination with the Transferred Trademarks (for example,
“Tegal 4200SE™”). Purchaser guarantees the compliance of each of its
Designees with the terms and conditions of this Agreement.
2.2. License
Restrictions. Purchaser agrees to, and to cause its Designees
to, use the Licensed Marks during the term of the license only in a manner that
is consistent with the Trademark Usage Guidelines that Seller may furnish to
Purchaser from time to time, including all required trademark
notices. Purchaser agrees not to, and will cause its Designees not
to, take any action inconsistent with such ownership and further agrees to take,
and to cause its Designees to take, at Seller’s reasonable expense, any action,
including the conduct of legal proceedings, which Seller deems necessary to
establish and preserve Seller’s rights in and to the Licensed
Marks. Purchaser shall not, and shall cause its Designees not to,
adopt, use or attempt to register any trademarks or trade names that are
confusingly similar to the Licensed Marks or in such a way as to create
combination marks with the Licensed Marks. Upon Seller’s request,
Purchaser shall provide, or shall cause its Designees to provide, Seller with
samples of all materials that use the Licensed Marks prior to their public use
or display for Seller’s quality control purposes.
3. OWNERSHIP
OF LICENSED MARKS. Purchaser acknowledges Seller’s exclusive
ownership of the Licensed Marks and the renown of the Licensed Marks
worldwide. As between the parties, Seller shall own all right, title
and interest in the Licensed Marks. Purchaser agrees not to challenge
the ownership or validity of the Licensed Marks. The use of the
Licensed Marks by Purchaser and its Designees shall inure exclusively to the
benefit of Seller, and neither Purchaser nor any of its Designees shall acquire
or assert any rights therein. Purchaser recognizes the value of the
goodwill associated with the Licensed Marks, and that the Licensed Marks may
have acquired secondary meaning in the minds of the public.
4.
[RESERVED].
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5.
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TERM;
TERMINATION.
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5.1. Term. Unless otherwise agreed
by the parties or as set forth in Section 5.2 below, this Agreement will be
effective on a perpetual basis.
5.2.
Termination. Seller may terminate
this Agreement if Purchaser materially breaches a provision of this Agreement
and fails to cure such breach within thirty (30) days after Seller provides
written notice of such breach to Purchaser.
5.3.
Survival. Sections 3, 5.3,
6 and 7 shall survive any termination or expiration of this Agreement
or the licenses hereunder.
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6.
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LIMITATION
OF LIABILITY.
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TO THE
MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, IN NO EVENT SHALL EITHER PARTY OR
ITS AFFILIATES BE LIABLE TO THE OTHER PARTY, ITS AFFILIATES OR TO ANY THIRD
PARTY CLAIMING THROUGH OR UNDER SUCH OTHER PARTY, FOR ANY LOST PROFITS OR FOR
ANY SPECIAL, CONSEQUENTIAL, INDIRECT OR INCIDENTAL DAMAGES, HOWEVER CAUSED AND
ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS
AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
7. MISCELLANEOUS.
7.1. No Obligation to Obtain or Maintain
Marks. Neither party shall be obligated to: (a) file any
application for registration of any trademark, or to secure any rights in any
trademarks, (b) maintain any trademark registration, or (c) provide
any assistance, except for the obligations expressly assumed in this
Agreement.
7.2. Amendment and
Modification. This Agreement may be amended, modified or
supplemented, only by a written agreement signed by the parties
hereto.
7.3. Waiver of Compliance;
Consents. Any failure of Purchaser, on the one hand, or
Seller, on the other hand, to comply with any obligation, covenant, agreement or
condition herein may be waived by Seller or Purchaser, respectively, only by a
written instrument signed by the party granting such waiver, but such waiver or
failure to insist upon strict compliance with such obligation, covenant,
agreement or condition shall not operate as a waiver of, or estoppel with
respect to, any subsequent or other failure. Whenever this Agreement
requires or permits consent by or on behalf of a party, such consent shall be
given in writing in a manner consistent with the requirements for a waiver of
compliance as set forth in this Section 7.3.
7.4. Notices. All notices and
other communications provided for herein shall be in writing and shall be deemed
to have been duly given when delivered personally or when sent by telecopy or
other electronic or digital transmission method (including, but not limited to,
in portable document format by electronic mail) or three (3) business days after
being mailed by registered or certified mail, return receipt requested, postage
prepaid, to the party to whom it is directed or one (1) business day after being
sent via an internationally recognized courier service for next business day
delivery, to the party to whom it is directed:
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If
to Purchaser, to:
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SPP
Process Technology Systems, Ltd.
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Ringland
Way
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Newport
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NP18
2TA
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United
Kingdom
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Attention: Richard
Rees, VP & Chief Finance
Officer
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Facsimile: +44.1633.414141
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With a
copy to:
Bingham
McCutchen LLP
1900
University Avenue
East Palo
Alto, California 94303
Attention: Bart
Deamer
Facsimile: +1.650.849.4800
If to
Seller, to:
Tegal
Corporation
2201 S.
McDowell Blvd.
Petaluma,
CA 94954
Attention: Thomas
R. Mika, President and Chief Executive Officer
Facsimile: +1.707.763.0415
With a
copy to:
Latham
& Watkins LLP
140 Scott
Drive
Menlo
Park, California 94025
Attention: Robert
Phillips
Facsimile: +1.650.463.2600
or for
any party, at such other address as such party shall have specified in writing
to each of the others in accordance with this Section 7.4.
7.5. Assignment. Seller may
assign this Agreement without Purchaser’s consent upon any dissolution,
liquidation, reorganization, change of control, merger, acquisition, or sale of
all or substantially all of the assets of Seller. Except as expressly set forth
herein, Purchaser may not assign or transfer this Agreement, directly or
indirectly, in whole or in part, whether voluntarily or involuntarily or by
operation of law or otherwise, without Seller’s prior written consent. Any
assignment in violation of this Section 7.5 shall be null and void from the
beginning; provided, however, that Purchaser may assign this Agreement or any or
all of its rights and interests hereunder to one or more of its affiliates or
upon any change of control, merger, acquisition or sale of substantially all of
the assets of Purchaser.
7.6. Governing
Law. This Agreement shall be governed by and construed in
accordance with the domestic laws of the State of California, without giving
effect to any choice of law or conflict of law provision or rule that would
cause the application of the laws of any jurisdiction other than the State of
California.
7.7. Interpretation. The
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. The parties
hereto are sophisticated, represented by counsel and jointly have participated
in the negotiation and drafting of this Agreement and there shall be no
presumption or burden of proof favoring or disfavoring any party by virtue of
the authorship of any provision of this Agreement.
7.8. No Third Party
Beneficiaries. This Agreement is not intended to, and does
not, create any rights or benefits of any party other than the parties
hereto.
7.9. Severability. Wherever
possible, each provision of this Agreement shall be interpreted in such manner
as to be effective and valid under applicable law, but in case any one or more
of the provisions contained herein shall, for any reason, be held to be invalid,
illegal or unenforceable in any respect, such invalidity, illegality or
unenforceability shall not affect any other provision of this Agreement, and
this Agreement shall be construed as if such invalid, illegal or unenforceable
provision or provisions had never been contained herein unless the deletion of
such provision or provisions would result in such a material change as to cause
completion of the transactions contemplated hereby to be
unreasonable.
7.10. Construction. Unless
the context of this Agreement otherwise requires: (i) words of any gender
include each other gender; (ii) words using the singular or plural number
also include the plural or singular number, respectively; (iii) the terms
“hereof,” “herein,” “hereby” and derivative or similar words refer to this
entire Agreement; (iv) the term “Section” refers to the specified
Section of this Agreement; (v) the term “or” has, except where
otherwise indicated, the inclusive meaning represented by the phrase “and/or”;
and (vi) the term “including” means “including without
limitation”. Whenever this Agreement refers to a number of days, such
number shall refer to calendar days unless Business Days are
specified.
7.11. Counterparts. This
Agreement may be executed in two or more counterparts, each of which shall be
deemed to be an original and all of which together shall be deemed to be one and
the same instrument. Copies of executed counterparts transmitted by
telecopy, telefax or other electronic transmission service shall be considered
original executed counterparts for purposes of this Section 7.11, provided
that receipt of copies of such counterparts is confirmed.
7.12. Entire Agreement. This
Agreement (including Exhibit A hereto) and the Purchase Agreement constitute the
entire understanding among the parties with respect to the subject matter hereof
and shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter
hereof.
[SIGNATURE
PAGE FOLLOWS]
IN WITNESS WHEREOF, the
parties have signed this Trademark License Agreement effective as of the Closing
Date first set forth above.
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SPP
PROCESS TECHNOLOGY SYSTEMS LTD.
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By:
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William Johnson
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Name:
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William
Johnson
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Title:
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President
& CEO
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TEGAL
CORPORATION
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By:
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Thomas R. Mika
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Name:
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Thomas
R. Mika
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Title:
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President
& CEO
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EXHIBIT
A
LICENSED
MARKS
(see
attached)