TRADEMARK LICENSE AGREEMENT

 

 

 

THIS AGREEMENT, effective as of the 17th day of April 2000 , by and between The Procter & Gamble Company, an Ohio corporation, (hereinafter called "Licensor" together with its Affiliates), and Magia Products, LLC, a New Jersey limited liability company (hereinafter called "Licensee" together with its Affiliates).

 

WHEREAS, Licensor has the right to use and to license others to use the MR. CLEAN® TRADEMARK, including its stylized presentation on package and logo, (hereinafter called "Licensed Mark") which is a well known and famous trademark owned and used by Licensor in association with its advertising and marketing of household cleansing products; and

 

WHEREAS, Licensee recognized the benefits to be derived from utilizing the Licensed Mark and desires to utilize said Licensed Mark upon and in connection with the manufacture, sale, and distribution of articles hereinafter described; and

 

WHEREAS, Licensor is willing to so permit the limited use by Licensee of the Licensed Mark;

 

WHEREAS, Licensor understands and agrees that Licensee already sells and will continue to sell products in the Licensed Product category without using the Licensed Mark;

 

NOW, THEREFORE, in consideration of the premises and mutual covenants hereinafter set forth and for other good and valuable consideration, the parties hereto agree as follows:

 

 

[***] The use of 'Licensed Product' throughout this Agreement shall refer to the Product bearing the Licensed Mark.

 

A. Manufacturing. To manufacture, in a manner and quality that is consistent with the Licensed Product specimens previously approved by Licensor, Licensed Products for distribution and sale under the grant given in Section 1 part C (Sale).

 

 

B. Labeling and Packaging. To label and package Licensed Product manufactured under the grant given in Section 1 part A (Manufacturing) using labels and packaging that are consistent in form and quality with the labeling and packaging specimens previously approved by Licensor, for distribution and sale under the grant given in Section 1 part C (Sale).

 

C. Sale. To distribute and sell, at Licensee's wholesale price, Licensed Product manufactured, labeled and packaged under the grants in Section 1 part A (Manufacturing) and Section 1 part B (Labeling and Packaging) solely within the Area as defined below in Section 2, and only for ultimate resale to consumers within the Area. Licensed Product will be offered to all of Licensee's current and future customers including, but not limited to, those in the grocery, drug and mass merchandise, club, home center, hardware stores and institutional channels, as well as e-commerce outlets accepted by Licensor, at prices determined by Licensee. For the acceptance in order to obtain Licensor approval to any website, Licensee shall make a written request to Licenser including the name of the website. Licensors failure to notify Licensee of its approval within ten (10) of its receipt of same shall constitute disapproval, provided however, that if Licensee does not receive a response to its request for approval of submitted materials within the allotted ten (10) business days, Licensee may notify Licensor in writing that it has not had a response from Licensor. Licensor shall then have five (5) additional business days to respond to the submitted materials. If Licensor fails to respond after notice within five (5) additional business days, the website request shall be deemed approved.

 

D. Use of the Licensed Mark. To use the Licensed Mark for Licensed Product manufactured, labeled and packaged under the grants in Section 1 part A (Manufacturing), Section 1 part B (Labeling and Packaging) and Section 1, part C (Sale), in such form and manner as shall be permitted by Licensor, including displaying the Licensed Mark on Licensee's Licensed Product, packaging for the Licensed Product, vehicles, stationery, advertising, and promotional material used in connection with the sale of Product, subject to compliance with all other provisions set forth herein.

 

E. Use of Licenser's Name. To use the words "Manufactured by Magla Products, LLC under license from The Procter & Gamble Company, Cincinnati, Ohio," or the equivalent on labels or packaging for Licensed Product manufactured and packed under the grants in Section 1 part A (Manufacturing) and Section 1 part B (Labeling and Packaging).

 

F. Subcontracting. Subcontracting the manufacture of Licensed Product shall not be deemed sublicensing or other transfer of rights, duties, or obligations for the Licensed Mark.

 

G. Approval. The approval to be given by Licensor in this Section 1 shall not be unreasonably withheld.

 

 

 

 

If Licensor wishes to grant a license for the Licensed Products covering [***]

 

 

4. LICENSEE'S OBLIGATIONS.

 

 

production prototype sample and twelve (12) representative production samples in writing within ten (10) business days of receipt shall constitute non-approval, provided however, that if Licensee does not receive a response to its request for approval of submitted materials within the allotted ten (10) business days, Licensee may notify Licensor in writing that it has not had a response from Licensor. Licensor shall then have five (5) additional business days to respond to the submitted materials. If Licensor fails to respond after notice within five (5) additional business days, the materials shall be deemed approved. In view of the substantial tooling and other costs which will be incurred by Licensee prior to its delivery to Licensor of the twelve (12) representative production samples, Licensor agrees that it will not unreasonably withhold nor delay its approval of such samples, Licensee shall not ship to trade customers Licensed Products which have not been approved or deemed approved by Licensor.

 

(ii) The approval process detailed in the preceding paragraph shall also apply to any change in the Licensed Product, including but not limited to product design, configuration, or product formula. Changes in supplier involving no material changes to product specifications would not require approval of Licensor.

 

 

 

 

5. LICENSEE'S COVENANTS

 

With regard to its actions hereunder, Licensee expressly covenants as follows:

 

 

6. INDEMNIFICATION AND INSURANCE

 

 

(i) result from adulteration or misbranding (within the meaning of any applicable federal or state law, including consumer product safety laws) of any Licensed Product, due in whole or part to the negligence of Licensee; or

 

(ii) result from the unsaleability of the Licensed Product in the course of wholesale or retail trade, due in whole or part to the negligence of Licensee; or

 

(iii) result from any disputes with the trade resulting from Licensee's dealings or relations therewith; or

 

(iv) result from any advertising, promotion, or other actions or inactions by Licensee in furtherance of its rights under this Agreement; or

 

(v) are due to Licensee's breach of any warranty, covenant or agreement by Licensee contained herein; or

 

(vi) result from any consumer's use or possession of Licensed Products ; or

 

(vii) result from any governmental action, i.e. federal, state or, local.

 

 

 

Licensee agrees and covenants to maintain such insurance, including the endorsement of Licensor as an additional insured party, in full force and effect from the effective date of this license until three (3) years after the eventual termination hereof. Licensee may not remove Licensor as an additional insured party from Licensee's insurance policy without written consent from Licensor except that Licensor may be removed without its consent after three (3) years after the termination hereof. All costs associated with Licensee's insurance policy, including the endorsement of Licensor as an additional insured party, will be borne by Licensee.

 

Warranties and representations of Licensor. Licensor represents and warrants to Licensee that the making of this Agreement by Licensor does not violate or infringe any agreements, right or obligations of Licensor or any other person, firm, or corporation, that Licensor has the full right, power and authority to enter into and fully perform this agreement. To the exclusion of any other warranty and representation, Licensor warrants and represents

(i)	Licensor is the registered owner of the Licensed Mark for the class of products covering household and hard surface cleaners;
(ii)	Licensor has applied for registering the Licensed Mark on the Principal Register in the U.S. Patent and Trademark Office and on comparable registration in Canada in the Area for the class of products covering the Licensed Products;

(iii)

the Licensed Mark when registered covers the Licensed Product in the Area;

 

The foregoing representations and warranties shall continue to be true and correct during the term of this Agreement and during any extension or renewal of the term of this Agreement.

 

7. LICENSOR'S RIGHTS & OBLIGATIONS

 

 

Licensee agrees and acknowledges that upon the termination or expiration of this Agreement it shall have no claims or rights whatsoever against Licensor, for contributing to establish or to increase the goodwill of the Licensed Mark or of the Product limited to the use of the Licensed Mark on the Product. Licensor agrees and acknowledges that all use of Licensee's trademarks on the Licensed Product or on the packaging by Licensee will inure to the benefit of Licensee. Licensor will at any time, whether during or after the term of this Agreement, execute any documents reasonably required by Licensee to confirm its ownership rights. Licensor agrees and acknowledges that upon the termination or expiration of this Agreement, it shall have not rights whatsoever to use the Licensee's trademarks.

 

 

Licensee agrees and acknowledges and Licensor warrants to Licensee that Licensor is the owner of all rights, titles and interests in and to the Licensed Mark. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Mark by Licensee shall inure to the benefit of Licensor for such purposes.

 

 

Licensor, at its sole cost and expense and in its own name, may in its sole discretion prosecute andior defend any action or proceeding which Licensor deems necessary or desirable to protect the Licensed Mark including but not limited to actions or proceedings involving infringement of the Licensed Mark. In taking its decision, Licensor shall take into account various factors, including the probability of success of such actions or proceedings as well as the potential impact of the infringement on Licensee's business. Licensee, upon written request by Licensor, may join Licensor in any such action or proceeding at Licensor's sole cost. Licensee may prosecute and defend at its sole cost and expense and in its own name any action or proceeding to protect its own designs and styles.

 

Licensee shall not commence any action or proceeding alleging infringement of the Licensed Mark without the prior written consent of Licensor and shall not defend any such action unless it shall first make written demand upon Licensor to do so. Any and all damages recovered in any action or proceeding commenced by Licensor shall belong solely and exclusively to Licensor, but Licensor shall have no liability to Licensee or to any other person for any damages awarded or recovered against Licensee or such other person, including but not limited to any action or proceeding alleging any violation of any antitrust, trade regulation or similar statute, or unfair competition, unless arising out of breach by Licensor of its warranties, covenants or agreements hereunder,

 

 

 

 

 

8. LICENSE FEES

 

ii. Yearly Sales Projections:

Year 1 ( [***] ) =  [***]

Year 2 ( [***] ) =  [***]

Year 3 ( [***] ) =  [***]

 

 

 

 

Net Sales mean [***]

 

The Royalty fee shall be paid based on quarterly net sales, and will be due [***] after the end of each calendar quarter. For purposes of this Agreement, "Quarter" means any three month period beginning on any January 1 and ending the next March 31, beginning on any April 1 and ending on next June 30, beginning on any July 1 and ending on next September 30, and beginning on any October 1 and ending December 31, provided however that the first quarter for the purposes of this agreement shall begin on the Effective Date and end on the earliest of the next March 31, June 30, September 30 or December 31.

 

All Royalties due Licensor hereunder shall accrue upon the sale of Licensed Products, regardless of the time of collection by the Licensee. For purposes of this Agreement, Licensed Products shall be considered "sold" upon the date when such Licensed Products are billed, invoiced, shipped or paid for, whichever event occurs first.

 

 

Total of Minimum Royalty Payments	Due Date for Advance Minimum Royalty Payment
[***]	Advance, due upon signing
[***]	by June 30, 2001
[***]	by December 31, 2001
[***]	by June 30, 2002
[***]	by December 31, 2002
[***]	by June 30, 2003

 

 

 ***Text Omitted and Filed Separately with the Securities and Exchange

 

 

 

a)	Total number or amount of Licensed Products, by item sold by licensee
b)	Gross Selling Price of Licensed Product, by item, sold by Licensee

c)	The total offsets (or deductions) by item, against which amount used as reduction to the Gross Selling Price of Licensed Product
d)	The royalties accrued during the calendar quarter and payable to Licenser by Licensee.

 

Such statement shall be furnished to Licensor whether or not any Products were sold during the preceding calendar quarter. A statement should be sent to Nancy Bailey & Associates, 1553 San Ignacio Avenue, Coral Gables, FL 33146, attention: Nancy Bailey, with a copy to The Procter & Gamble Company, Global Licensing F&A C-05, One Procter & Gamble Plaza, Cincinnati, OH 45202, or as otherwise instructed by Licensor.

 

 

The receipt or acceptance by Licensor of any of the statements furnished pursuant to this Agreement or of any royalties paid hereunder shall not preclude Licensor from questioning the accuracy, completeness or sufficiency thereof at any time, and in the event that any inconsistencies or mistakes are discovered and verified as incorrect in such statements or payments, they shall immediately be rectified and the appropriate payment made by Licensee.

 

9. INSPECTION AND AUDIT

 

 

 

 

 

 

 

 

11. TERMINATION

 

 

 

 

 

 

12. CONFIDENTIALITY

 

 

It is understood and agreed that any of Licensee's confidential information which may be disclosed to Licensor pursuant to this Agreement, including without limitation formulas, financial data and business plans, are to be used solely in connection with Licenser's performance under the terms of this Agreement and are not to be disclosed to any persons other than employees or agents of Licensor. Licensor will use the same standard of care protecting against publication or dissemination of Licensee's trade secrets by Licensor and its directors, officers, employees and agents as Licensor uses with respect to information as to its own business which it desires not to have published or disseminated and will so inform and direct its directors, officers, employees and agents receiving such trade secrets. Any memoranda or papers containing trade secrets of Licensee which Licensor may receive in connection herewith are to be returned at Licensee's request. However, the above requirement shall not apply to information which is, or subsequently may become, within the public domain or the knowledge of the general public through no fault of Licensor. Licensor's obligations and duties hereunder shall survive for five years after termination of this Agreement.

 

 

 

 

 

14. FORCE MAJEURE

 

 

15. MISCELLANEOUS

 

 

 

 

To Licensee: Magla Products, LLC

 

159 South Street

P.O, Box 1934

Morristown, NJ ###-###-####

(973) 984-7998; (973) 984-9508 fax Attention: Jordan Glatt, President

 

To Licensor: The Procter & Gamble Company

1 Procter & Gamble Plaza

 

Cincinnati, OH 45202

(513) 983-2506; (513) 983-1264 fax

Attention: Shannon Bryan, Assoc. Brand Manager

 

with copy to:

 

President Global Licensing

Attn: J. D. Weedman

The Procter & Gamble Company One Procter & Gamble Plaza Cincinnati, Ohio 45202

 

Fax #513 ###-###-####

 

To Licensees Agent:

Nancy Bailey & Associates

1553 San Ignacio Avenue

Coral Gables, FL 33146

(305) 668-7000; (305) 668-7001 fax Attention: Nancy Bailey, President

 

or such other addresses as shall be designated by written notice.

 

 

 

 

 

 

 

IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement.

 

 

	The Procter & Gamble Company		Magla Products, LLC
Signature:	/s/ Jeffery D. Woodman		/s/ Jordan Glatt
Title:	Vice President		President
Date:	April 17, 2000		3/17/2000

 

 

 

 

 

 

 

 

 

 

 

 

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