Document O3y1XGeaQyMbJNvpRkBZeXJyp

TRADEMARK LICENSE AGREEMENT Agreement made this /V^day of / 198-1 , between Borg-Warner Corporation, a DelawaJre c{orporation, (herein after referred to as "Borg-Warner") and The Echlin Manu facturing Company, a Connecticut corporation, (hereinafter referred to as "Echlin"); WITNESSETH: WHEREAS, Borg-Warner and Echlin have entered into an Agree ment for Sale of Assets, dated as of February 28, 1981; and WHEREAS, Borg-Warner has ag.reed to grant to Echlin a license to use certain Borg-Warner Trademarks (as defined in Section 1) on, and in connection with the marketing and sale of, Automotive Products (as defined in Section 1) in the Automotive Aftermarket (as defined in Section 1). NOW THEREFORE, the parties hereto do hereby agree as follows: SECTION 1 DEFINITIONS 1.1 Automotive Products The term "Automotive Products", as used in this Agreement, means parts, assemblies and components used in, or designed for use in, passenger cars, vans, light and heavy duty trucks, trailers, fork trucks, off-highway motive equipment, tractors and other agricultur al vehicles: (1) within the product lines heretofore manufactured and/or sold by Borg-Warner ' s Bal1wm/Washington and Ottawa Divisions; (2) within the product lines heret'o- fore manufactured or sold by Echlin, but only as set forth in Schedule A; (3) within the product lines heretofore sold E00097 -2- by Borg-Warner's Automotive Parts Division ( APD) and Bor gWarner's Automotive Parts Division International (APDI), and then only to the extent that such parts, assemblies and components are: (a) manufactured by Borg-Warner or (b) manufactured by suppliers which are currently approved sources for APD and/or APDI, and in all such cases manu factured to the quality standards set forth in Paragraph 4.1 herein; and (4) such additional parts, assemblies and components, other than those described in subparagraphs (1), (2) and (3) above, as approved in writing by 8org-Warner, which approval will not be unreasonably withheld. 1.2 Automotive Aftermarket The term "Automotive After market", as used in this Agreement, means the class of customers constituted by warehouse distributors, fleet specialist distributors, jobbers and others performing the S8me marketing functions, and also rebuilders. 1.3 Boro-Warner Trademarks The term "Borg-Warner Trade marks", as used in This Agreement, means the trademarks and trade dress listed in Schedule B of this Agreement, and no others. 1.4 Boro-Warner Unit The term "Borg-Warner Unit", as used in this Agreement, means an operating unit owned or controlled by Borg-Warner, including divisions, sub sidiaries, subsidiaries and divisions of subsidiaries, affiliated companies, joint ventures or partnerships, whether in existence at Closing or created after Closing. E00098 -3- 1.5 Closing The term "Closing", as used in this Agree ment, means the Closing Date as defined in t he Agreement for Sale of Assets. 1.6 P-rimarv Territory The term "Primary Territory", as used in this Agreement, means the United States and Canada. 1.7 Secondary Territory The term "Secondary Territory", as used in this Agreement, means all other countries of the world. SECTION 2 GRANT 2.1 for the term of this Agreement, and subject to faithful performance of the terms hereof by Echlin, Borg-Warner grants to Echlin: (a) an exclusive right and license, subject to Paragraphs 2.2 and 3.1 herein, to use the BorgWarner Trademarks on, and in connection with the marketing and~sale of, Automotive Products in the Automotive Aftermarket in the Primary Territory; (b) a non-exclusive right and license, subject to Paragraph 2.2 herein, to use the Borg-Warner Trademarks on, and in connection with the market ing and sale of. Automotive Products in the Automotive Aftermarket in the Secondary Territory, except that in the case of Chile, Equador, Peru, E00099 -4- Bolivia, Brazil, Colombia and Venezuela such right and license shall be limited to Automotive "--Sv. Products other than(clutches and clutch partsp and in respect to Mexico, Australis and New Zealand, such right and license shall be limited to Auto motive Products being supplied to such countries by APDI as of Closing. 2.2 Notwithstanding the grant of the rights and licenses in Paragraph 2.1 herein, Echlin shal 1 not have the Tight to use the Borg-Warner Trademarks on Automotive Products purchased from a third party which is not a Borg-Warner Unit if a Borg-Warner Unit (other than Borg-WBrner's Ballwin/ Washington and Ottawa Divisions) was engaged in the manufacture of such Automotive Product as of the date of this Agreement and a Borg-Warner Unit is, at the time an order for such Automotive.Produet is placed, engaged in the manufacture of such Automotive Product; provided, however, that nothing in this Agreement shall be construed as requiring Echlin to purchase any product or service whatsoever from a Borg-Warner Unit; and provided further that Echlin shall have the right to use the Borg-Warner Trademarks on such Automotive Products manufactured by a Borg-Warner Unit if such Borg-Warner Unit is unable to deliver such Automotive Products for a period of more than thirty (30) dayS because of force m a ,i e u r e condi tions or other forces beyond the control of Borg-Warner, including but not limited- to strikes, wars, insurrection, floods, fires, Acts of God and governmental action, and such right shall continue until Borg-Warner is able to resume Deliveries of such Automotive Products. E00100 -5- 2.3 No other rights or licenses, express or implied, are granted under this Agreement. SECTION 3 EXCEPTION TO EXCLUSIVE GRANT 3.1 Notwithstanding the grant of the exclusive right and license to Echlin under Paragraph 2.1(a), Borg-Warner shall have the right to: (a) continue the use of the Borg-Warner Trademarks on, and in connection with the marketing and sale of, Automotive Products at all levels of distribution to existinq customers (other than customers of Ballwin/Washington and Ottawa Divisions, APD and APDI), or their successors in the business operation, who were purchasing Automotive Products using one or more of the Borg-Warner Trademarks from a Borg-Warner Unit at or prior to Closing. This provision shall not apply to new Automotive Products unless they were under substantial development for market mtroduct ion "by a Borg-Warner Unit prior to Closing or are Automotive Products which are substantially the same or within the same product lines as those sold prior to Closing. (b) continue the use of the Borg-Warner Trademarks on, and in connection with the marketing and sale of, all products and services (including Automotive Products in the Automotive After market) in the Commonwealth of Puerto Rico, unless Echlin acquires B-W Automotive of Puerto Rico, Inc. E00101 -6- (c) continue the use of the Borg-Warner Trademarks on Automotive Products provided such use is -for the purpose of manufacturer identification in respect to Automotive Products sold in bulk or "packaged without the use of a Borg-Warner Trade mark. For example, nothing in this Agreement shall require Borg-Warner to remove a Borg-Warner Trademark stamped or cast on a part supplied in bulk to an original equipment manufacturer for service parts or otherwise, or supplied to the Automotive Aftermarket in a package which does not contain any indicia indicating that the part was manufactured and/or sold by Borg-Warner. SECTION a - QUALITY CONTROL AND TRADEMARK USAGE 4.1 All goods, labeling, advertising and promotional materials manufactured, distributed or used by Echlin pursuant to this Agreement shell strictly comply with at least the quality standards followed at Closing by Borg-Warner or presently required of suppliers to APD and APDI, or in accordance with quality standards acceptable by Borg-Warner as agreed to in writing between Borg-Warner and Echlin from time to time. Borg-Warner shall have final authority and responsibility for the establishment of all such quality standards, which authority and responsi bility will not be unreasonably exerci-sed. 4.2 If any new product lines are to be offered for sale pursuant to Paragraph 1.1(4), Echlin shall refrain froip E00102 -7- using Borg-Warner Trademarks thereon until: (a) represen tative samples of products within such product lines are inspected and evaluated by Bor.g-Warner, which inspection and evaluation shall be promptly made by Borg-Warner and (b) written approval of Borg-Warner is obtained by Echlin, which written approval shall not be unreasonably delayed or withheld. 4.3 Echlin shall, upon request of Borg-Warner, submit, without charge, a reasonable number of samples of Automo tive Products as manufactured and/or proposed to be marketed under the Borg-Warner Trademark-s and shall, at all reason able times, permit Borg-Warnei or its authorized agent to examine the finished Automotive Products manufactured by or for Elchlin (except for Automotive Products supplied by a Borg-Warner Unit) and all quality control test data pertaining thereto, in order that Borg-Warner may determine whether such Automotive Products conform to the quality standards established by Borg-Warner. 4.4 The manner in wtiich the Borg-Warner Trademarks are used by Echlin in any way upon or in other relation to Automotive Products is subject to approval by Borg-Warner, and Echlin shall submit without charge to Borg-Warner for written approval prior to use all packages, labels, dis plays, literature, advertisements or other advertising or promotional materials on which the Borq-Warner Trade marks are used, and, if not approved, shall amend any such materials to the extent required for such approval before such materials are used. The approval contemplated by Borg-Warner herein shall not be unreasonably delayed or w ithheld. E00103 -8- 4.5 Echlin shall comply with all applicable laws and regulations of the jurisdictions, including local and regional, within which Borg-Warner Trademarks may be used pursuant to this Agreement. 4.6 Echlin shall make available upon Borg-Warner's request all documentation within its custody and control relating to Automotive Products bearing Borg-Warner Trademarks and respecting product complaints, product disapprovals, product rejections or product recalls, and all actions taken with respect thereto. 4.7 In the event that the nature or quality of the goods, or advertising, labeling or other advertising and pro motional materials being offered or distributed by Echlin are reasonably determined by Borg-Warner not to comply with the standards or other limitations established pursuant to this Agreement, Borq-Warner shall notify Echlin in writing specifically designating the alleged non-compliance. Echlin shall then cure any such non-compliance as soon as possible and, in any -event , not more than sixty (60) Cays from the date of Borg-Warner's notification. ll ]V 4.8 As examples of Echlin's responsibilities to properly use each of the Borg-Warner Trademarks, when used, Echlin undertakes: (a) To use each said Borg-Warner Trademark only I;r as a trademark. (b) Where applicable, to indicate by appropriate notice, such as@, that each said Borg-Warner Trademark is registered. E00104 -9- (c) To give reasonable indication that each said Borg-Wamer Trademark is the property of Bor g-Warne r. (d) To give reasonable indication that each said Borg-Warner Trademark is used under license or by the authority and under control of Borg-Warner; and (e) Not to do or, if within the control of Echlin, permit to be done, any act which will impair the rights of Borg-Warner in and to any of the Borg-Warner Trademarks or the reputation or good will of Borg-Warner. 4.9 Echlin will not use any of the Borg-Warner Trademarks with one or more other trademarks of Echlin or any other trademark, other than the trademarks assigned tp Echlin in the Agreement for Sale of Assets, unless prior written consent is obtained from Borg-Warner. SECTION 5 - OWNERSHIP AND MAINTENANCE OP BORG-WARNER TRADEMARKS 5.1 Echlin acknowledges that the Borg-Warner Trademarks ana derivatives thereof and all registrations therefor recorded in Bor g-Wa r ne r 1 s name are valid and are the pro perty of Borg-Warner, and that all use by Echlin of the Borg-Warner Trademarks shall inure to the benefit of BorgWarner, and Echlin shall not reoresent or claim that it has any right, title or interest in said trademarks, or any registrations or applications thereof, other than those E00105 -10- rights granted herein; and Echlin further agrees never to contest, either directly or indirectly, the validity of Borg-Warner's rights in the Borg-Warner Trademarks or any registrations thereof, or to aid any other person, firm or corporation.to infringe or contest such rights. Should Echlin develop, adopt or acquire, directly or indirectly, any right, title or interest in or to any of the Borg-Warner Trademarks, other of Borg-Warner1s names or trademarks for identifying Automotive Products, any trade dress used in connection with said names or marks, or any good will developed in connection with same, Echlin shall hold such right as trustee for Borq-Warne-r subject to all of the above restrictions and shall not assign, license or otherwise dispose of said name or mark to any third party and, for a nominal consideration of ONE UNITED STATES DOLLAR (U.S. $1.00!, and upon request or demand by Borg-Warner, Echlin shall assign to Borg-Warner all right, title and interest in said name, mark or trade dress, together with the good will in connection with which said name, mark or trade dress is used. 5.2 Echlin shall, from time to time during the life of this Agreement, upon- request of Borg-Warner, sign any papers or documents that Boro-Warner deems necessary or desirable to continue the rights granted by this Agreement in conformity with the laws of those jurisdictions in which Echlin may use said Trademarks, including whatever documents may be necessary to record Echlin as user of said Trade marks. All out-of-pocket expenses attributable to the registration, recording and processing of registered user or similar agreements shall be paid by Echlin. E00106 -11- 5.3 c h 1 in shall comply with the trademark laws of all jurisdictions, including local or regional, in which Ech1 in is allowed by this Agreement to use the Borg-Warner Trademarks, with respect to the use of the Trademarks, and shall do whatever may be necessary in cooperation with Bor g-Warner to preserve and maintain the rights snd in terests of Borg-Warner in the Bor. q-Warner Trademarks. 5.4 If Echl in shall become aware of any infringement or acts of unfair competition relating to the Borg-Warner Trademarks, Echlin shall promptly inform Borg-Warner thereof and shall cooperate when requested by Borg-Warner in any action against such acts of infringement or unfair competi tion. Borg-Warner shall have sole discretion in deciding what actions, if any, should be taken with regard to such acts of infringement or unfair competition. Borg-Warner shall determine which party shall make. objections to any acts of infringement or unfair competition and to answer objections, if any, to the use by Echlin of the Borg-Warner Trademarks. All objections and leaal proceedings respecting the Borg-Warner Trademarks or any acts of infringement or unfair' competition r'elating thereto shall be under the direction and control of Borg-Warner. Legal fees and other expenses incurred shall be paid by Borg-Warner or in a manner otherwise agreed to in writing by the parties, and all recoveries of monies shall be the property of Borg-Warner unless otherwise agreed to in writing by the par ties. Section 6 - INDEMNIFICATION 6.1 Notwithstanding any other provisions contained in this Agreement, it is understood and agreed that Borg-Warner E00107 * * < 1 * -12- shall not be liable for any defects in material or work manship respecting Automotive Products manufactured by or for Echlin, or f ot any warranty respecting any Automotive Products manufactured by or for Echlin pursuant to this Agreement, and Echlin shall indemnify and save Borg-Warner harmless from any and all losses, liabilities, demands, expenses (including reasonable attorneys's fees), and claims of any character .whatsoever which shall or may arise out of any activities of Echlin carried out pursuant to the terms of this Agreement, except as to claims contesting Echlin's right to use the Borg-Warner Trademarks; provided, however, that this Section shall not apply to claims arising out of products manufactured by Borg-Warner. Section 7 - ASSIGNMENT 7.1 Echlin may not assign or otherwise transfer the rights granted to it under this Agreement without first receiving the prior written consent of Borg-Warner, but subject to this restriction, this Agreement shall be binding upon the parties, their successors and assigns. 5ECTI0N 8 - TERM AND TERMINATION B.3 The term of this Agreement shall be for fifteen (15) years and shall continue in force until terminated by either party giving the other party five (5) years prior written notice of termination, in accordance with paragraph 11.3 herein. Such notice may be given by either party at any time after the end of the tenth year o f the 15 year term, to be effective five (5) years after it hasr been given. E00108 -13- 8.2 During the rive (5) year period after notice of termination has been served, Borg-Warner will cooperate with Echlin to assure an orderly transition of product designation while Echlin phases out the use of the- BorgWarner Trademarks, provided that the provisions of Paragraph 4.9 will not be affected. 5.3 This Agreement: (a) may be terminated forthwith at any time by mutual agreement between the parties; (b) may be terminated forthwith at any time by Borg-Warner in the event that Echlin commits a breach of any of the conditions or restrict ions contained in this Agreement and does not remedy this breach within forty-five days after notice from Borg-Warner to Echlin in the manner provided for in Paragraph 11.3; (c) may be terminated forthwith if Borg-Warner has reasonable grounds to believe that Echlin is about: (i) to cease_doing business; (n) to enter, or enters into: (a) voluntary or involuntary bankruptcy, and/or (b) receivership, and/or (c) a composition with creditors, and/or 1lquidation; (d) may be terminated forthwith by Borg-Warner if any government or agency thereof prohibits the perfor mance of all or a substantial part of the obliga tions of either party hereto; and E00109 -u- (e) may be terminated forthwith by Borq-Warner if Echlin's assets, business, or a controlling number of its shares are confiscated, expropriated, seized, intervened or placed under trusteeship or similar control of any government, or agency or person acting or purporting to act under any governmental authority, or if Echlin is required to divest itself of the Automotive Aftermarket Operations, acquired by Echlin under the Agreement for Sale of Assets. 8.A Immediately upon termination of this Agreement if terminated under Paragraph 8.3, or at the end of the phase-out period provided for in Paragraph 8.2 if ter minated in accordance with Paraqraph 8.1, Echlin shall immediately cease the use of all of Borp-Warner's names, trademarks, and trade dress includin-g but not limited to the Borg-Warner Trademarks referred to in Schedule B or any near resemblance thereto as might deceive purchasers or prospective purchasers. Further, Echlin agrees, now and in the future, not tj register or adopt any names, a trademarks and trade dress similar to any of Borg-Warner ' s names, trademarks and trade dress. The term "Borg-Warner " as used in this Section includes Boro-Warner Corporation, its several divisions, subsidiaries and affiliated com panies. The phrase "names, trademarks and trade dress", as used in this Section, includes corporate and trade names, trademarks, service matks symbols, designations, indicias, slogans, and other means of identifying products or services of Borg-Warner. Without limiting the foregoing, Echlin E00110 -15- ti * * agrees not to use the words "Borg" or "Warner" or the "X" V k I logo displayed in Schedule B, or any combination thereof, y either alone or with any other word or words as part of its corporate or trade name, nor to use the name 01 trademarks of any Borg-WarneT division or subsidiary as part of its corporate name without having first obtained specific approval thereof in writing from Borg-Warner. SECTION 9 - PAYMENTS 9.2 Royalty Payments Upon Closing, and on each anniversary thereafter as long as this Agreement is in effect, Echlin I shall pay Borg-Warner a royalty in the amount of S 10,000.00 9.2 Late Payment Interest at the then current commercial paper rate paid by Echlin shall be paid from the due date until the date of actual payment on a 1*1 amounts past due under this Section. SECTION 10 - WAIVER AND DEFENSES ,1 10.1 None of the terms of this Agreement shall be deemed to be waived or modifled except by an express aareement in writing signed by a person authorized to that effect by the party against whom enforcement of such waiver or modifica tion is sought. This Agreement constitutes the entire Agreement between Borg-Warner and Echlin with respect to the I Borg-Warner Trademarks and supersedes all prior arrangements I or understandings with respect thereto. The failure or delay of a party hereto to essert or enforce 8ny of its * E00111 [ -16- rights under this Agreement shall not constitute a con tinuing waiver or modification by such party of any of its rights under this Agreement, and any prior failure or delay to assert or enforce any rights under this Agreement shall not constitute a defense to any clin or a right arising under this Agreement. SECTION 11 - MISCELLANEOUS 11.1 Descriptive Headings Descriptive Section and Para graph headings are for convenience only and shall not control or affect the meaning or construction of any pro vision of this Agreement. 11.2 Counterparts for the convenience of the parties, any number of counterparts of this Agreement may be exe cuted by one or more parties hereto and each such executed counterpart shall be, and shall be deemed to be, an original instrument. 11.3 Notices All -notices, consents, requests, instruc tions, approvals and other communications provided for herein and all legal process in regard hereto shall be validly given, made or served, if in writing and delivered personally, by telex (except for legal process) or sent by registered mail, postage prepaid, if to: Bor g-Warner : Borg-Warner Corporation 200 South Michigan Avenue Chicago, Illinois 60604 Attention: General Patent Telex No. 25-3450 Counsel E00112 -17- Ech 1 in s The Echlin Manufacturing Company 175 North Branford Road Branford, Connecticut 06405 Attention: Genera] Counsel Telex No. 963519 or to such other address and telex number as any party hereto may, from time to time, designate in a written notice given in like manner. Notice given by telex shall be deemed delivered on the day the sender receives a telex confirma tion that such notice was received at the telex number of the addressee. Notice given by mail as set out above shall be deemed delivered three days' after the date the same is postmarked. 11.4 Law Applicable This Agreement shall be governed by and construed and enforced in accordance with the laws of the State of Illinois. IN WITNESS WHEREOF, Borg-Warner and Echlin have caused this Agreement to be duly executed in their respective corporate names by their respective officers, each of whom is duly and validly authorized and empowered, and their respective corporate seal to be affixed hereunto and attested by their respective Secretaries, all as of the day and year first above written. BORG-WARNER CORPORATION ATTEST : THE ECHLIN MANUFACTURING COMPANY /. E00113 SCHEDULE A Hydraulic Brake Products, including: Wheel Cylinders . Master Cylinders Disc Brake Rotors Disc Brake Calipers Brake Drums Brake Hardware Brake Hose Assemblies Air Brake and Heavy Duty Electrical Products, including: Slack Adjusters Spring Brakes Air Va1ves Air Hose Assemblies Air Couplings Wheel Seals Trailer Connectors Junction Boxes Cable Assemblies A1ternators Starter Motors Ignition Wire and Cable Products, including: Ignition Wire Sets Battery Cables Jumper Cables Automotive Diagnostic and Testing Equipment E00114 SCHEDULE B TRADEMARKS BORGlfWARNERBORG-WARNER & "X" Design: 'X" Design: TRADE DRESS PHf^invNMMnmu E00115