Master Trademark License Agreement between Millipore Corporation and Millipore MicroElectronics, Inc.

Summary

Millipore Corporation (MIL) and Millipore MicroElectronics, Inc. (MMI) enter into this agreement to allow MMI to use the MILLIPORE trademark and its variations for a limited period following the separation of MMI from MIL. The agreement outlines the terms under which MMI can use the trademark while it transitions to a new brand identity, ensuring quality standards and preventing confusion in the marketplace. Both parties agree to cooperate during this transition, and the license is subject to specific conditions and time limits.

EX-2.7 8 0008.txt FORM OF MASTER TRADEMARK LICENSE AGREEMENT EXHIBIT 2.7 Exhibit D7 to the Separation Agreement MASTER TRADEMARK LICENSE AGREEMENT This Master Trademark License Agreement (the "Agreement') is entered into and effective as of March 31, 2001 (the "Effective Date"), between Millipore Corporation, a Massachusetts corporation ("MIL"), having an office at 80 Ashby Road, Bedford, Massachusetts 01730 and Millipore MicroElectronics, Inc., a Delaware corporation ("MMI"), having an office at Patriots Park, Bedford, Massachusetts 01730, with reference to the following: RECITALS WHEREAS, the Board of Directors of Millipore Corporation ("MIL") has determined that it is in the best interest of MIL and its stockholders to separate Millipore's existing businesses into two independent businesses; WHEREAS, as part of the foregoing, MIL and MMI, have entered into a Master Separation and Distribution Agreement (as defined below) which provides, among other things, for the separation of certain MMI assets and MMI liabilities, the initial public offering of MMI stock, the distribution of such stock and the execution and delivery of certain other agreements in order to facilitate and provide for the foregoing; WHEREAS, MIL has previously used the mark MILLIPORE in association with various fields of commercial activity, including, without limitation, the development, manufacture and sale of high quality devices and equipment for microelectronic devices and the manufacture of such devices; WHEREAS, as a result of its commercial activity under the MILLIPORE mark, and various variations thereof, the MILLIPORE mark is now distinctively associated with goods and services made or offered by, endorsed by, distributed by, and/or approved by MIL, and with the high quality of such goods and services. As a further result of its activities in connection with the MILLIPORE mark, MIL has acquired and owns the MILLIPORE mark and the variations thereof registered on the Principal Register of the U.S. Patent & Trademark Office and more fully described in Exhibit A, attached hereto, as well as unregistered variations of the MILLIPORE mark which MIL has used in commerce as of the Effective Date which are also described in Exhibit A; WHEREAS, it is the intention of MMI to develop a new brand identity for its goods and services over a commercially reasonable period, and MMI and MIL have agreed to cooperate in such transition; and WHEREAS in order to prevent confusion with regard to the MILLIPORE mark, and variations thereof, to maintain the distinctiveness and goodwill associated with such marks, and to permit the transition to a new brand identity by MMI, MIL and MMI now wish to enter into a license agreement permitting MMI to make continued use of such marks in for a reasonable period and in an appropriate manner, as set forth below. NOW, THEREFORE, in consideration of the mutual promises and agreements of the parties, and of good and valuable consideration the receipt and sufficiency of which is hereby acknowledged, it is agreed by and between the parties as follows: ARTICLE 1. DEFINITIONS Defined terms, indicated by the use of initial capitalization, shall have the meaning ascribed to them below, or, for defined terms not defined below, shall have the meaning ascribed to them in context upon their first occurrence in this Agreement. Capitalized terms used herein without definition shall have the meaning ascribed thereto in the Separation Agreement. 1.1. COLLATERAL MATERIALS. "Collateral Materials" means all packaging, tags, labels, advertising, promotions, display fixtures, instructions, technical briefs, data sheets, warranties and other materials of any and all types associated with the MMI Business Products that are marked with the Licensed Mark. 1.2. CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials" means materials that make a trade name use of marks or other identifiers, including, without limitation, trade names appearing on business cards, letterhead, stationery, paper stock and other supplies, and signage on real property and buildings, and excluding, without limitation trademark and service mark uses. 1.3. DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in the Separation Agreement. 1.4. LEGACY MATERIALS. "Legacy Materials" means objects or materials that were created by MIL prior to the Separation Date which bear one or more of the Licensed Marks and which are acquired by MMI pursuant to process by which assets are allocated to MMI as part of MMI's separation from MIL. For example, and without limitation, Legacy Materials includes product brochures printed by MIL relating to products which after the separation, shall be sold by MMI. 1.5. LICENSED MARKS. "Licensed Marks" means the registered marks described in Exhibit A attached hereto and unregistered variations of such marks in which MMI has use-based rights. 1.6. LICENSE TERM. "License Term" means the period commencing on the Effective Date and continuing until the earlier of the expiration of this Agreement pursuant to Section 6.1 hereof, or the prior termination of this Agreement by either party pursuant to the terms of this Agreement. 1.7. MARK. "Mark" means any trademark, service mark, trade name, trade dress, domain name, and the like, or other word, name, symbol or device, or any combination thereof, used or intended to be used by a Person to identify and distinguish the products or services of that Person from the products or services of others and to indicate the source, nature, or quality of such goods or services or endorsement, sponsorship or affiliation with such goods or services including without limitation all registrations and applications therefor throughout the world and all common law and other rights therein throughout the world. 1.8. MMI BUSINESS PRODUCTS. "MMI Business Products" means any and all products of MMI. 2 1.9. PERSON. "Person" means an individual, a partnership, a corporation, a limited liability company, an association, a joint stock company, a trust, a joint venture, an unincorporated organization, and a governmental entity or any department, agency or political subdivision thereof. 1.10. QUALITY STANDARDS. "Quality Standards" means standards of quality applicable to the MMI Business Products, as in use immediately prior to the Separation Date, unless otherwise communicated in writing by MIL from time to time. 1.11. SELL. To "Sell" a product means to sell, transfer, lease or otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed thereto. 1.12. SEPARATION DATE. "Separation Date" means March 31, 2001, or such other date as may be fixed by the Board of Directors of Millipore Corporation as identifying that date upon which the line of business operated under the MILLIPORE mark in the field of microelectronics is separated from MIL and operated independently by MMI. 1.13. SUBSIDIARY. "Subsidiary" of any Person means a corporation or other organization whether incorporated or unincorporated of which at least a majority of the securities or interests having by the terms thereof ordinary voting power to elect at least a majority of the board of directors or others performing similar functions with respect to such corporation or other organization is directly or indirectly owned or controlled by such Person or by any one or more of its Subsidiaries, or by such Person and one or more of its Subsidiaries; provided, however, that no Person that is not directly or indirectly wholly- owned by any other Person shall be a Subsidiary of such other Person unless such other Person controls, or has the right, power or ability to control, that Person. For purposes of this Agreement, MMI shall be deemed not to be a subsidiary of MIL. 1.14. THIRD PARTY. "Third Party" means a Person other than Millipore, MIL and its other Subsidiaries and MMI and its Subsidiaries. 1.15. TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means the guidelines for proper usage of the Licensed Marks, and any of them, as such Guidelines may be revised and updated in writing by MIL from time to time. Without limitation, such Trademark Usage Guidelines include the Corporate ---------- Identity Manual, dated 1991 which has been previously provided to MMI by MIL. - --------------- ARTICLE 2. LICENSES 2.1. LICENSE GRANT. Subject to MMI's adherence to the terms and conditions of this Agreement, MIL grants to MMI a personal, non-exclusive, worldwide, fully- paid and non-transferable (except as set forth in Section 9.9) license, with the right to sublicense set forth in Section 2.3 below, to use the Licensed Marks subject to and pursuant to the license restrictions set forth in Section 2.2 below, each of which is both a covenant and an express restriction on the scope of the license granted herein. 3 2.2. RESTRICTIONS. MMI covenants that it shall adhere to the following restrictions, each of which is also an express limitation on the rights granted to MMI herein. (a) MMI shall use the Licensed Marks only for the License Term; (b) MMI shall use the Licensed Marks only in conjunction with the term "Microelectronics" or such other mark or term as proposed by MMI and agreed to in writing by MIL at its sole discretion; (c) MMI shall use the Licensed Marks only in connection with MMI Business Products, the Sale and offer for Sale of MMI Business Products, and in the advertisement and promotion of such MMI Business Products in all fields of use; (d) MMI shall not mutilate or alter any Licensed Mark, shall always make proper adjective use of trademarks and service marks included within the Licensed Marks, shall always use the marks with all relevant proprietary designations and notices including "(R)" and "(TM)" as appropriate, shall acknowledge and disclose in all printed materials that make use of one or more Licensed Marks that "all rights, title, and interests in and to [such Marks] is owned by Millipore Corporation of Bedford, Massachusetts and [such Marks] are used with permission," and shall in all other respects use the Licensed Marks in a manner that is consistent with the Trademark Usage Guidelines, or in such other manner as is approved in writing by MIL at MIL's sole discretion; (e) MMI shall use the Licensed Marks in connection with the below identified Legacy Materials subject to the below stated restrictions. MMI may use any Millipore Corporation Corporate Identity Materials in connection with the conduct of the MMI business, up to and including the Distribution Date, in connection with the MMI business, but only to the extent that, as of the Separation Date, they are in use, in inventory or on order and only to the extent such materials exist within the assets transferred to MMI. During the License Term only, MMI may use Millipore Corporation Collateral Materials throughout their useful life in connection with the MMI business, but only to the extent that, as of the Separation Date, they are in use, in inventory or on order and only to the extent such materials exist within the assets transferred to MMI. (For clarity, MIL will not be delegated to develop or publish or provide new or additional Collateral Materials after the Separation Date.) During the License Term only, MMI may use molds and other processing equipment which impart a permanent indication of the Millipore Corporation until such molds and equipment are replaced, modified or repaired or termination of the agreement whichever occurs first. (f) Except as allowed by Section 2.2 (b) above, MMI shall not use the Licensed Marks in direct association with another Mark such that the two Marks appear to be a single Mark or in any other composite manner with any Marks of MMI or any Third Party; (g) MMI shall only use the Licensed Marks in a manner consistent with the high standards, reputation and prestige represented by the Licensed Marks, and, without limitation, shall not associate the Licensed Marks with any conduct, objects, or events which are: morally repugnant or offensive to the customers of MIL; involve alleged acts of dishonesty or fraud; involve conduct which is the subject of criminal allegation or investigation; or involves, causes or relates to allegations of personal injury and/or health risk to users of products or services bearing or otherwise branded with a Licensed Mark; 4 (h) MMI shall not use the Licensed Marks in any manner which is deceptive or misleading, which ridicules or is derogatory to MIL or any of the Licensed Marks, or which compromises or reflects unfavorably upon the goodwill, good name, reputation or image of MIL or the Licensed Mark, or which might jeopardize or limit MIL's proprietary interest therein. 2.3. SUBLICENSE TO SUBSIDIARIES. Subject to the terms and conditions of this Agreement, including, without limitation, the restrictions set forth in section 2.2 above, MIL hereby grants to MMI the right to sublicense such rights as it has been granted in Section 2.1 above, but only to Subsidiaries of MMI, -------- and only provided that: (i) such sublicense is granted pursuant to a written agreement that is at least as protective of the rights of MIL as this Agreement; (ii) MIL is named as an express third party beneficiary of each sublicense agreement with standing to enforce all terms of such agreement in addition to such other rights and remedies as MIL may have in law and/or equity; (iii) such sublicense is effective only for so long as the license granted herein is effective or only for so long as the sublicensee remains a Subsidiary of MMI, whichever is shorter; (iv) such Sublicense shall not include the right to grant any further sublicenses; (v) the sublicensee shall be provided a copy of this Agreement and shall be required, to the extent of their sublicensed activity, to fulfill all obligations and adhere to all restrictions set forth in this Agreement; and (vi) MMI shall enforce the sublicense pursuant to Section 4.3 below. Copies of any and all sublicenses granted hereunder, along with all draft and versions thereof, shall be provided to MIL by MMI upon MIL's request therefor. 2.4. COMMUNICATION. MMI hereby consents to MIL using the trademarks, service marks, and trade names of MMI in communications with MIL's constitutents, shareholders, customers and others as nececesary to fairly and accurately describe the origin of MMI, describing the products and services of MMI, and describing MIL's relationship with MMI to the extent, if any, that it exists at the time of the use of such marks. 2.5. RESERVATION OF RIGHTS. Any and all of MIL's rights not expressly granted to MMI are reserved to MIL. Both parties covenant that they shall not make any use of the names or marks of the other that is not permitted by this Agreement. ARTICLE 3. ENFORCEMENT OF GUIDELINES AND QUALITY RESTRICTIONS 3.1. REVIEW. At MIL's request, MMI agrees to furnish or make available for inspection to MIL, free of charge, representative samples of MMI Business Products and Collateral Materials of MMI and its Subsidiaries that are marked with one or more of the Licensed Marks. MIL may also independently conduct customer satisfaction surveys to determine if MMI and its Subsidiaries are meeting the Quality Standards. MMI shall cooperate with MIL fully in the carrying out of such surveys at MIL's expense. In the event of a challenge by MIL, MIL shall, at the request of MMI, provide MMI with copies of customer surveys used by MIL to determine if MMI is meeting the Quality Standards. If MIL is notified or determines that MMI or any of MMI's Subsidiaries is not complying with any Trademark Usage Guidelines or Quality Standards, then, in addition to and without restriction of any other rights or remedies that MIL may enjoy in law, equity or under this Agreement, MIL may notify MMI of an event of non-compliance and the provisions of this Article 3 shall apply. 3.2. INITIAL CURE PERIOD. A notice of non-compliance from MIL shall be in writing and shall set forth with sufficient particularity to provide notice of the nature of the non-compliance a description of 5 the noncompliance and any requested action for curing such noncompliance. MMI shall then have sixty (60) days with regard to noncompliance by MMI or any Subsidiary after receipt of such notice ("Guideline Initial Cure Period") to correct such noncompliance or submit to MIL a written plan to correct such noncompliance which written plan is reasonably acceptable to MIL. 3.3. SECOND CURE PERIOD. If such noncompliance continues beyond the Guideline Initial Cure Period, MMI and MIL shall each promptly appoint a representative to negotiate in good faith actions that may be necessary to correct such noncompliance. The parties shall have thirty (30) days following the expiration of the Guideline Initial Cure Period to agree on corrective actions, and MMI shall have thirty (30) days from the date of an agreement of corrective actions to implement such corrective actions and cure or cause the cure of such noncompliance ("Second Guideline Cure Period"). 3.4. FINAL CURE PERIOD. If the noncompliance remains uncured after the expiration of the Second Guideline Cure Period, then at MIL's election, MMI, or the noncomplying Subsidiary whichever is applicable, promptly shall cease and desist from the noncomplying activity. Nothing in this Article 3 shall be deemed to expand the rights granted to MMI herein, to limit MMI's obligations hereunder, or to preclude MIL from pursuing any other rights or remedies. ARTICLE 4. FURTHER OBLIGATIONS OF THE PARTIES 4.1. TRANSITION. During the License Term MMI shall use good faith efforts to transition from use of the Licensed Marks to use of New Marks to be developed by MMI. In addition to such other efforts as MMI may engage in, MMI covenants that its efforts to transition to New Marks for itself and its products and services shall, at a minimum, include the following efforts and meet the following requirements: (a) Within eighteen (18) months of the Effective Date, MMI shall have developed New Marks and new brand identifiers for use as replacements for all Licensed Marks (the "Replacement Marks"). (b) Within twenty four (24) months, MMI shall make regular commercial use of the Replacement Marks and all use of the Licensed Marks shall be subordinate to the applicable Replacement Marks. For example, and without limitation, within twenty four (24) months of the Effective Date each product bearing a Licensed Mark will also bear the relevant Replacement Marks. (c) No later than the expiration of the License Term, MMI shall cease and desist from any use of any kind of the Licensed Marks or any of them. 4.2. THIRD PARTY LICENSES. MIL agrees that it and its Subsidiaries shall not license or transfer the Licensed Mark to Third Parties for use in connection with products or services that compete with MMI Business Products for the term of this Agreement. 4.3. ENFORCEMENT OF AGREEMENTS. MMI shall take all appropriate measures at MMI's expense promptly and diligently to enforce the terms of any sublicense agreement or other agreement with any Subsidiary and shall restrain any such Subsidiary from violating such terms, including without limitation (i) monitoring the Subsidiaries' compliance with the relevant Trademark Usage Guidelines and Quality Standards and causing any noncomplying Subsidiary promptly to remedy any failure, (ii) terminating such agreement and/or (iii) commencing legal action, in each case, using a standard of care consistent with 6 MIL's practices as of the Separation Date. In the event that MIL determines that MMI has failed promptly and diligently to enforce the terms of any such agreement using such standard of care, MIL reserves the right to enforce such terms, and MMI shall reimburse MIL for its fully allocated direct costs and expenses incurred in enforcing such agreement. ARTICLE 5. OWNERSHIP 5.1. MMI OWNERSHIP. All rights, title, and interests in and to the Licensed Marks is and shall be owned exclusively by MIL subject to the license granted herein. All goodwill arising from or relating to the Licensed Marks, including all goodwill arising from MMI's licensed use of the Licensed Marks hereunder shall inure to the benefit of MIL. MMI shall provide MIL with written notice each time any Licensed Mark is used in connection with a product, service, or field or channel of commerce with which MMI has not previously associated such Licensed Marks or Licensed Marks. Upon MIL's request, and at MIL's expense, MMI shall cooperate with any effort by MIL to establish, perfect, exploit or defend its rights in and to the Licensed Marks, including, without limitation: (i) providing good faith testimony by declaration, affidavit, in-person or other means whenever such testimony would, in the reasonable judgment of MIL, be useful to the establishment, perfection, exploitation or defense of its interests arising from or relating to the Licensed Marks; (ii) signing further agreements or documentation, including, without limitation, assignments, consents, and releases; (iii) providing samples, exemplars, and copies of any and all objects or materials that make use of one or more of the Licensed Marks, particularly, and without limitation, where such objects or materials are necessary or useful to any effort to establish the nature or scope of use of such Licensed Marks in connection with registration proceedings or litigation; and (iv) providing copies of letters, e-mails, memoranda, or other communications from MMI's customers or any third party commenting on any or all of the Licensed Marks particularly, and without limitation, any communications commenting critically or adverse on the quality of goods or services associated with such Licensed Marks. 5.2. RIGHTS AND REMEDIES. MMI stipulates and agrees that the Licensed Marks have secondary meaning and are distinctively associated with MIL and the goods and services of MIL. To the extent not contrary to applicable law, MMI agrees not to challenge the ownership or validity of the Licensed Marks or any of them. MMI agrees not to use or register in any country any Mark that impinges on MIL's rights in the Licensed Marks, or any element thereof. If any application for registration is, or has been, filed in any country by MMI which relates to any Mark that impinges on MIL's rights in the Licensed Marks, MMI shall immediately abandon any such application or registration or assign it to MIL as MIL may elect. 5.3. LIMITATION ON AUTHORITY. MMI shall not (i) misrepresent to any Person the scope of its authority under this Agreement, (ii) incur or authorize any expenses or liabilities chargeable to MIL , or (iii) take any actions that would impose upon MIL any obligation or liability to a Third Party other than obligations under this Agreement, or other obligations which MIL expressly approves in writing for MMI to incur on its behalf. MMI shall not grant or attempt to grant a security interest in the Licensed Marks, or to record any such security interest in the United States Patent and Trademark Office or elsewhere, against any trademark application or registration belonging to MIL. MIL makes no warranty or representation that trademark registrations have been or shall be applied for, secured or maintained in the Licensed Marks throughout, or anywhere within, the world. 5.4. USE OF MARKS CONSISTENT WITH OWNERSHIP. MMI shall cause to appear on all MMI Business Products, and all Collateral Materials, such legends, markings and notices as may be 7 required by applicable law or reasonably requested by MIL which are necessary or useful to establish, perfect, defend or exploit the proprietary character of the Licensed Marks. To the extent not contrary to applicable law, MMI shall not challenge MIL's ownership of or the validity of the Licensed Mark or any application for registration thereof throughout the world. MMI shall not use or register in any country any domain name or any other brand identifier or proprietary interest, whether recognized currently or in the future, or other designation which would affect the ownership or rights of MIL in and to the Licensed Mark, or otherwise to take any action which would adversely affect any of such ownership rights, or assist anyone else in doing so. MMI shall cause its Subsidiaries to comply with the provisions of this Article. 5.5. INFRINGEMENT PROCEEDINGS. In the event that the MMI learns of any infringement or threatened infringement of the Licensed Marks, or any unfair competition, passing-off or dilution with respect to the Licensed Marks, MMI shall notify MIL or its authorized representative giving particulars thereof, and MMI shall provide necessary information and assistance to MIL or its authorized representatives at MIL's expense in the event that MIL decides that proceedings should be commenced. Notwithstanding the foregoing, MMI is not obligated to monitor or police use of the Licensed Marks by Third Parties other than Subsidiaries. MIL shall have exclusive control of any litigation, opposition, cancellation or related legal proceedings, relating to the use of the licensed trademarks by third parties. The decision whether to bring, maintain or settle any such proceedings shall be at the exclusive option and expense of MIL, and all recoveries shall belong exclusively to MIL. MMI shall not and shall have no right to initiate any such litigation, opposition, cancellation or related legal proceedings in its own name, but, at MIL's request, agrees to be joined as a party in any action taken by MIL to enforce its rights in the Licensed Mark. MIL shall incur no liability to MMI or any other Person under any legal theory by reason of MIL's failure or refusal to prosecute or by MIL's refusal to permit MMI to prosecute, any alleged infringement by Third Parties, nor by reason of any settlement to which MIL may agree. ARTICLE 6. TERMINATION 6.1. TERM. This Agreement shall remain in effect for a period of three (3) years from the Effective Date which shall be automatically renewed for additional one (1) year period unless earlier terminated as provided below in 6.2. 6.2. VOLUNTARY TERMINATION. By written notice to MIL, MMI may voluntarily terminate all or a specified portion of the licenses and rights granted to it hereunder by MIL. Such notice shall specify the effective date of such termination and shall clearly specify any affected Licensed Mark, MMI Business Products or services. 6.3. SURVIVAL. Any termination of licenses and rights of MMI under Section 6.2 shall not affect MMI's licenses and rights with respect to any MMI Business Products made or sold prior to such termination. In addition, the following provisions shall survive any expiration or termination of this Agreement and remain in full force and effect: _____________________. 6.4. OTHER TERMINATION. This Agreement, the Separation Agreement and all other ancillary agreements may be terminated at any time prior to the IPO Closing Date by and in the sole discretion of MIL without the approval of MMI. This Agreement may be terminated at any time after the IPO Closing Date and before the Distribution Date by mutual consent of MIL and MMI. In the event of termination pursuant to this Section 6.4, no party shall have any liability of any kind to the other party. 8 ARTICLE 7. DISPUTE RESOLUTION 7.1. USE AND INITIATION OF PROCEDURE. Except for and expressly excluding Actions in Equity (as defined in Section 7.15 below), in the event of a dispute between the parties arising out of or related to this Agreement (the "Dispute") the parties hereto agree to use the alternative dispute resolution procedures specified in this section (the "Procedure") in good faith in order to resolve such dispute. The Procedure may be modified by written agreement of the parties at the time the Dispute arises. A party seeking to initiate the Procedure shall give written notice to the other party, describing briefly the nature of the dispute and its claim and identifying an individual with authority to settle the dispute on its behalf. The party receiving such notice shall have five (5) days within which to designate, in a written notice given to the initiating party, an individual with authority to settle the dispute on its behalf. Neither of such authorized individuals shall have had direct substantive involvement in the matters involved in the Dispute. 7.2. UNASSISTED SETTLEMENT. The authorized individuals shall make such investigation as they deem appropriate and thereafter promptly (but in no event later than thirty (30) days from the date of the initiating party's notice) shall commence discussions concerning resolution of the Dispute. If the Dispute has not been resolved within thirty (30) days from the commencement of discussions, it shall be submitted to alternative dispute resolution ("ADR") in accordance with the provisions of Sections 7.3 through 7.10 hereof. 7.3. SELECTION OF NEUTRAL. The parties shall have ten (10) days following the submission of the Dispute to ADR in accordance with Section 7.2 above to agree upon a mutually-acceptable person not affiliated with either of the parties (the "Neutral"). If no Neutral has been selected within such time, the parties agree jointly to request the American Arbitration Association, the Center for Public Resources, or another mutually agreed-upon provider of neutral services to supply within ten (10) days a list of potential Neutrals with qualifications as specified by the parties in the joint request. Within five (5) days of receipt of the list, the parties shall independently rank the proposed candidates, shall simultaneously exchange rankings, and shall select as the Neutral the individual receiving the highest combined ranking who is available to serve. 7.4. TIME AND PLACE FOR ADR. In consultation with the Neutral, the parties shall promptly designate a mutually convenient time and place for the ADR (and unless circumstances require otherwise, such time to be not later than forty- five (45) days after selection of the Neutral). 7.5. EXCHANGE OF INFORMATION. In the event either of the parties has substantial need for information in the possession of the other party in order to prepare for the ADR, the parties shall attempt in good faith to agree on Procedures for the expeditious exchange of such information, with the help of the Neutral if required. 7.6. SUMMARY OF VIEWS. One week prior to the first scheduled session of the ADR, each party shall deliver to the Neutral and to the other party a concise written summary of its views on the matter in Dispute. 7.7. STAFFING THE ADR. In the ADR, each party shall be represented by the authorized individual and by counsel. In addition, each party may bring such additional persons as needed to respond 9 to questions, contribute information and participate in the negotiations, the number of such additional persons to be agreed upon by the parties in advance, with the assistance of the Neutral, if necessary. 7.8. CONDUCT OF ADR. The parties, in consultation with the Neutral, shall agree upon a format for the meetings, designed to assure that both the Neutral and the authorized individuals have an opportunity to hear an oral presentation of each party's views on the matter in Dispute, and that the authorized parties attempt to negotiate a resolution of the matter in Dispute, with or without the assistance of counsel or others, but with the assistance of the Neutral. To this end, the Neutral is authorized to conduct both joint meetings and separate private caucuses with the parties. The Neutral shall keep confidential all information learned in private caucus with either party unless specifically authorized by such party to make disclosure of the information to the other party. 7.9. THE NEUTRAL'S VIEWS. The Neutral (I) shall, unless requested not to do so by both parties, provide his opinion to both parties on the probable outcome should the matter be litigated, and (II) shall make one or more recommendations as to the terms of a possible settlement, upon any conditions imposed by the parties (including, but not limited to, a minimum and maximum amount). The Neutral shall base his opinions and recommendations on information available to both parties, excluding such information as may be disclosed to him by the parties in confidence. The opinions and recommendations of the Neutral shall not be binding on the parties. 7.10. TERMINATION OF PROCEDURE. The parties agree to participate in the ADR in good faith to its conclusion (as designated by the Neutral) and not to terminate negotiations concerning resolution of the matters in Dispute until at least ten (10) days thereafter. Each party agrees not to commence any other proceeding or to seek other remedies prior to the conclusion of the ten-day post-ADR negotiation period; PROVIDED, HOWEVER, that either party may commence -------- ------- litigation within five (5) days prior to the date after which the commencement of litigation could be barred by an applicable statute of limitations or in order to request an injunction to prevent irreparable harm, in which event, the parties agree (except as prohibited by court order) to nevertheless continue to participate in the ADR to its conclusion. 7.11. FEES OF NEUTRAL; DISQUALIFICATION. The fees of the Neutral shall be shared equally by the parties. The Neutral shall be disqualified as a witness, consultant, expert or counsel for either party with respect to the matters in Dispute and any related matters in any subsequent litigation or other proceeding with respect to the Dispute. 7.12. CONFIDENTIALITY. The parties agree that the Procedure and the ADR are compromise negotiations for purposes of the Federal Rules of Evidence and the Rules of Evidence of any state of competent jurisdiction. The entire of the Procedure and the ADR are confidential, and no stenographic, visual or audio record shall be made. All conduct, statements, promises, offers, views and opinions, whether oral or written, made in the course of the Procedure or the ADR by either of the parties, their agents, employees, representatives, or other invitees and by the Neutral (who shall be the parties' joint agent for purposes of these compromise negotiations) are confidential and shall, in addition and where appropriate, be deemed to be work product and privileged. Such conduct, statements, promises, offers, views and opinions shall not be discoverable or admissible for any purposes, including impeachment, in any litigation or other proceeding involving the parties, and shall not be disclosed to anyone not an agent, employee, expert, witness, or representative of either of the parties; provided, however, that evidence otherwise discoverable or admissible is not excluded from discovery or admission as a result of its use in the ADR. 10 7.13. ARBITRATION. Any Dispute which the parties cannot resolve through mediation within ninety (90) days following the commencement of the Procedure, unless otherwise mutually agreed, shall be submitted to final and binding arbitration under the then current Commercial Arbitration Rules of he American Arbitration Association ("AAA"), by three (3) arbitrators in Boston, Massachusetts. Such arbitrators shall be selected by the mutual agreement of the parties or, failing such agreement, shall be selected according to the aforesaid AAA rules. The arbitrators shall be instructed to prepare and deliver a written, reasoned opinion stating their decision within thirty (30) days of the completion of the arbitration. The prevailing party in such arbitration shall be entitled to expenses, including costs and reasonable attorneys' and other professional fees, incurred in connection with the arbitration (but excluding any costs and fees associated with prior ADR, negotiation or mediation). The decision of the arbitrator shall be final and non-appealable and may be enforced in any court of competent jurisdiction. The use of any ADR procedures shall not be construed under the doctrine of laches, waiver or estoppel to adversely affect the rights of either party. 7.14. CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in writing, the parties shall continue to provide service and honor all other commitments under this Agreement during the course of dispute resolution pursuant to the provisions of this Article 7 with respect to all matters not subject to such dispute, controversy or claim. 7.15. ACTIONS IN EQUITY. "Actions in Equity" means actions for specific performance, temporary, preliminary or permanent injunctive relief, or for other equitable remedies. Notwithstanding any provision of this Agreement, Actions in Equity may be brought by MIL against MMI and its sublicensees in any court of competent subject matter and personal jurisdiction. ARTICLE 8. LIMITATION OF LIABILITY IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER 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; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN THE MASTER SEPARATION AND DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT. ARTICLE 9. MISCELLANEOUS PROVISIONS 9.1. DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE LICENSED MARK AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER ARE PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKE ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the foregoing, neither MIL nor any of its Subsidiaries makes any warranty or representation as to the 11 validity of any Licensed Mark licensed by it to MMI or any warranty or representation that any use of any Licensed Mark with respect to any product or service shall be free from infringement of any rights of any Third Party. 9.2. NO IMPLIED LICENSES. Nothing contained in this Agreement shall be construed as conferring any rights by implication, estoppel or otherwise, under any intellectual property right, other than the rights expressly granted in this Agreement with respect to the Licensed Mark. Neither party is required hereunder to furnish or disclose to the other any information (including copies of registrations of the Licensed Marks), except as specifically provided herein. 9.3. INFRINGEMENT SUITS. MIL shall have no obligations hereunder to institute any action or suit against Third Parties for infringement of the Licensed Marks or to defend any action or suit brought by a Third Party which challenges or concerns the validity of the Licensed Marks. 9.4. NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN THE PARTIES. Without limiting the generality of the foregoing, neither party, nor any of its Subsidiaries is obligated to (i) file any application for registration of any Licensed Mark, or to secure any rights in any Licensed Mark, (ii) to maintain any Licensed Mark registration, or (iii) provide any assistance, except for the obligations expressly assumed in this Agreement. 9.5. ENTIRE AGREEMENT. This Agreement, the Separation and Distribution Agreement and the other Ancillary Agreements (as defined in the Separation and Distribution Agreement) and the Exhibits and Schedules referenced or attached hereto and thereto constitute the entire agreement between the parties with respect to the subject matter hereof and thereof and shall supersede all prior written and oral and all contemporaneous oral agreements and understandings with respect to the subject matter hereof and thereof. To the extent there is a conflict between this Agreement and the Master Assignment and Assumption Agreement between the parties, the terms of this Agreement shall govern. 9.6. GOVERNING LAW. This Agreement shall be construed in accordance with and all Disputes hereunder shall be governed by the laws of the Commonwealth of Massachusetts as applied to transactions taking place wholly within Massachusetts between Massachusetts residents. The Superior Court of Middlesex County and/or the United States District Court for the District of Massachusetts shall have jurisdiction and venue over all Disputes between the parties that are permitted to be brought in a court of law pursuant to Article 7 above. 9.7. DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in any Exhibit or Schedule hereto and in the table of contents to this Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement. Any capitalized term used in any Exhibit or Schedule but not otherwise defined therein, shall have the meaning assigned to such term in this Agreement. When a reference is made in this Agreement to an Article or a Section, Exhibit or Schedule, such reference shall be to an Article or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise indicated. 12 9.8. NOTICES. Notices, offers, requests or other communications required or permitted to be given by either party pursuant to the terms of this Agreement shall be given in writing to the respective parties to the following addresses: if to MIL: Millipore Corporation 80 Ashby Road Bedford, Massachusetts 01730 With a copy : General Counsel Millipore Corporation 80 Ashby Road Bedford, Massachusetts 01730 if to MMI: Millipore MicroElectronics, Inc. Patriots Park Bedford, Massachusetts 01730 With a copy : General Counsel Millipore MicroElectronics, Inc. Patriots Park Bedford, Massachusetts 01730 Or to such other address as the party to whom notice is given may have previously furnished to the other in writing as provided herein. Any notice involving non-performance, termination, or renewal shall be sent by hand delivery, recognized overnight courier or, within the United States, may also be sent via certified mail, return receipt requested. All other notices shall be deemed to have been given and received on the earlier of actual delivery or three (3) days from the date of postmark. 9.9. NONASSIGNABILITY. MMI shall not, directly or indirectly, in whole or in part, whether by operation of law or otherwise, assign or transfer this Agreement or any Licensed Mark except to MIL and any attempted assignment, transfer or delegation shall be voidable at the sole option of MIL. 9.10. SEVERABILITY. If any term or other provision of this Agreement is determined by a court, administrative agency or arbitrator to be invalid, illegal or incapable of being enforced by any rule or law or public policy, all other conditions and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to either party. Upon such determination that any term or other 13 provision is invalid, illegal or incapable of being enforced, the parties hereto shall negotiate in good faith to modify this Agreement so as to effect the original intent of the parties as closely as possible in an acceptable manner to the end that the transactions contemplated hereby are fulfilled to the fullest extent possible. 9.11. FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or delay on the part of either party hereto in the exercise of any right hereunder shall impair such right or be construed to be a waiver of, or acquiescence in, any breach of any representation, warranty or agreement herein, nor shall any single or partial exercise of any such right preclude other or further exercise thereof or of any other right. All rights and remedies existing under this Agreement are cumulative to, and not exclusive of, any rights or remedies otherwise available. 9.12. AMENDMENT. No change or amendment shall be made to this Agreement except by an instrument in writing signed on behalf of each of the parties to such Agreement. 9.13. COUNTERPARTS. This Agreement, including the Ancillary Agreements and the Exhibits and Schedules hereto and thereto and the other documents referred to herein or therein, may be executed in counterparts, each of which shall be deemed to be an original but all of which shall constitute one and the same agreement. 9.14. AUTHORITY. Each of the parties hereto represents to the other that (a) it has the corporate or other requisite power and authority to execute, deliver and perform this Agreement, (b) the execution, delivery and performance of this Agreement by it have been duly authorized by all necessary corporate or other actions, (c) it has duly and validly executed and delivered this Agreement, and (d) this Agreement is a legal, valid and binding obligation, enforceable against it in accordance with its terms subject to applicable bankruptcy, insolvency, reorganization, moratorium or other similar laws affecting creditors' rights generally and general equity principles. WHEREFORE, the parties have signed this Trademark License Agreement effective as of the date first set forth above. Millipore Corporation Millipore MicroElectronics, Inc. By:_____________________ By:____________________ Name:___________________ Name:__________________ Title:____________________ Title:___________________ 14 EXHIBIT A "LICENSED MARKS" [DESCRIBE ALL MARKS THAT IT IS THE INTENTION OF MIL TO LICENSE TO MMI, INCLUDING REGISTRATION NUMBERS AND, FOR GRAPHIC MARKS, DEPICTIONS.] 15