Trademark License Agreement - Tom.com Enterprises Ltd. and Beijing Super Channel Network Ltd.
[Translation of Chinese original]
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "Agreement") is entered into as of
September 26, 2003 by and between the following two parties in Beijing.
The Licensor: tom.com enterprise Limited
Legal Address: Offshore Incorporations Limited, P.O. Box 957, Offshore
Incorporations Centre, Road Town, Tortola, British
Virgin Islands
The Licensee: Beijing Super Channel Network Limited
Legal Address: F09 2/F 3 Yongchangbeilu Road, Beijing Economic and
Technological Development Zone, China
WHEREAS, the Licensor, an enterprise registered in the British Virgin
Islands ("BVI") under the laws of BVI, owns the trademarks registered in Hong
Kong as defined in Appendix 1.
WHEREAS, the Licensee is a wholly foreign owned company registered in
Beijing under the laws of the People's Republic of China (the"PRC");
WHEREAS, the Licensor desires to license the aforesaid trademarks to the
Licensee in accordance with the terms and conditions set forth herein and the
Licensee wishes to accept the license on the terms and conditions set forth
herein;
NOW THEREFORE, the parties agree as follows:
1. Grant of License
1.1 The Trademarks
Under the terms and conditions hereinafter set forth, the Licensor hereby grants
a general license free of charge to the Licensee for the registered trademarks,
as defined in Appendix 1, including all the trademarks, any part of the
trademarks, and any design, character, symbol, and visual representation of the
trademarks (collectively the "Trademarks"), and the Licensee hereby accepts the
Trademarks. Notwithstanding the provisions aforesaid, the Licensee shall pay
fees to the Licensor for its use of the Trademarks and the standards for such
license fees shall be decided by both parties through negotiation, in the event
that the shares held by Licensor's shareholder Tom.com Limited in TOM Online Inc
(holding indirectly the shares of the Licensee) are less than 30%. If no
agreement is reached by the Licensor and the Licensee under the above
circumstances, the Licensee is entitled to continue to use the
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Trademarks free of charge in accordance with the provisions under the Agreement
for one year from the date such shareholding falls below 30%.
1.2 Scope
1.2.1 The license hereunder is non-exclusive.
1.2.2 The license hereby granted extends only to the PRC and is effective
only in the Internet-related business in which the Licensee operates.
The Licensee agrees that it will not make, or authorize any direct or
indirect use of the Trademarks in any other area.
1.3 Assignment and Sublicense
1.3.1 The Licensor agrees the Licensee may sublicense the Trademarks
hereunder to any subsidiary companies within the group of Tom Online
Inc. without prior written consent of the Licensor; however, the
Licensee shall obtain the Licensor's prior written consent if the
Licensee sublicenses the Trademarks to any third party outside the
group of Tom Online Inc.; provided that the scope of any of the
aforesaid sublicense shall not exceed the Licensee's right to the
Trademarks hereunder.
1.3.2 The Licensee shall not assign, lease, pledge, or in any other way
transfer the rights, obligations, and the economic benefits of the
license granted hereby or any portion of the rights included therein
to any third party without the prior written consent of the Licensor.
2. Goodwill
The Licensee recognizes the value of the goodwill associated with the
Trademarks, and acknowledges that the Trademarks and all intellectual property
rights therein and goodwill pertaining thereto shall be the sole and exclusive
property of the Licensor, and that the Trademarks have an underlying association
with the Licensor by public perception.
3. Confidentiality
3.1 By accepting the granting of the Trademark licenses from the Licensor, the
Licensee agrees to protect and maintain the confidentiality of any and all
confidential data and information acknowledged or received by the Licensee
(collectively the "Confidential Information"). Upon termination or
expiration of this Agreement, the Licensee shall, at the Licensor's option,
return all and any documents, information or software containing any such
Confidential Information to the Licensor, or destroy and delete the
Confidential Information from any electronic devices and cease to use them.
The Licensee shall not disclose, grant
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or transfer any Confidential Information to any third party without the
Licensor's prior written consent.
3.2 Section 3.1 shall survive after any amendment, expiration or termination of
this Agreement.
4. Representations and Warranties
4.1 The Licensor makes to the Licensee the following representations and
warranties:
4.1.1 the Licensor is a company duly registered and in good standing under
the applicable laws of the British Virgin Islands;
4.1.2 the Licensor, within its business scope, has full corporate power and
authority and has taken all corporate actions and has obtained all
necessary approvals or authorizations from third parties and
government authorities to execute and perform the obligations under
this Agreement, which will not constitute or result in a violation of
any enforceable and effective laws or previous agreements;
4.1.3 this Agreement will constitute a legal, valid and binding obligation
of the Licensor and will be enforceable against the Licensor in
accordance with its terms upon its execution;
4.1.4 the Licensor has the exclusive ownership of the Trademarks.
4.2 The Licensee makes to the Licensor the following representations and
warranties:
4.2.1 the Licensee is a wholly foreign owned company duly registered and in
good standing under the applicable laws of the PRC;
4.2.2 the Licensee, within its business scope, has full corporate, power
and authority and has taken all corporate actions and has obtained
all necessary approvals or authorizations from third parties and
government authorities to execute and perform the obligations under
this Agreement, which will not constitute or result in a violation of
any enforceable and effective laws or previous agreements;
4.2.3 the Agreement will constitute a legal, valid and binding agreement of
the Licensee and will be enforceable against the Licensee in
accordance with its terms upon its execution.
5. The Licensor's Right of Licensing and Protection of the Licensor's Rights
5.1 The Licensee agrees that it will not during the term of this Agreement, or
thereafter, challenge the right to license or any rights of the Licensor to
the Trademarks or challenge the validity of this license or otherwise take
or fail to
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take any action that impairs such rights or license.
5.2 The Licensee agrees to assist the Licensor to the extent necessary in the
procurement of any protection or to protect any of the Licensor's rights to
the Trademarks. In the event any third party lodges a claim concerning the
Trademarks, the Licensor, if it so desires may commence or prosecute any
claims or lawsuits in its own name or in the name of the Licensee or join
the Licensee as a party thereto. In the event any third party infringes on
the above-mentioned Trademarks, the Licensee shall notify the Licensor in
writing of any infringements or imitations by others of the Trademarks
which may come to the Licensee's attention, and the Licensor shall have the
sole right to determine whether or not any action shall be taken on account
of any such infringements.
5.3 The Licensee further agrees to use the Trademarks only in accordance with
this Agreement and shall not use such Trademarks in any way which, in the
opinion of the Licensor, is deceptive, misleading or in any way damages
such Trademarks or the reputation of the Licensor.
6. Quality
The Licensee shall exert its reasonable best efforts to improve the quality
of the Trademarks, in order to protect and enhance the reputation of the
Trademarks.
7. Promotion
In all cases where the Licensee produces promotional material involving
the Trademarks, the production cost of such material thereof shall be borne by
the Licensee. All copyrights or other intellectual property rights of such
material concerning the Trademarks thereto shall be the sole and exclusive
property of the Licensor whether developed by the Licensor or the Licensee. The
Licensee agrees not to advertise or publicize any of the Trademarks on radio,
television, papers, magazines, the Internet or otherwise without the prior
written consent of the Licensor.
8. Effective Date and Term
8.1 This Agreement has been duly executed by the Parties' authorized
representatives as of the date first set forth above and shall be effective
simultaneously. The term of this Agreement is ten (10) years unless earlier
terminated as set forth below. However, the Licensor and the Licensee shall
review this Agreement every three (3) months to determine whether any
amendment or supplement to the Agreement is necessary depending on the
circumstances.
8.2 This Agreement may be extended for one year only if the Licensor gives the
Licensee its written consent of the extension of this Agreement prior to
the expiration of this Agreement. However, the Licensee has no right to
confirm such extension.
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9. Obligation of Assistance
In order to protect the rights and obligations hereunder of both parties,
the Licensor and the Licensee agree, within the three (3) months from the
execution date of this Agreement, the Licensee shall assist the Licensor to
lodge an application for the licensing of the Trademarks in the PRC.
10. Termination
10.1 Termination on Expiration.
This Agreement shall expire on the date due unless this Agreement is
extended as set forth above.
10.2 Early Termination
Without prejudice to any legal or other rights or remedies of the party who
asks for termination of this Agreement, any party has the right to
terminate this Agreement immediately with written notice to the other
party, in the event that the other party materially breaches the
obligations under this Agreement, including but not limited to those
prescribed in Section 5.1, 5.2 and 5.3 of this Agreement and fails to cure
its breach within 30 days from the date it receives written notice of its
breach from the non-breaching party.
During the term of this Agreement, the Licensor may terminate this
Agreement at any time with a written notice to the Licensee 30 days before
such termination.
10.3 Survival.
Article 2, 3, 4 and 5 shall survive after the termination or expiration of
this Agreement.
11. Force Majeure
11.1 Force Majeure means any event that is beyond the party's reasonable control
and cannot be prevented with reasonable care, including but not limited to
the acts of the government, nature, fire, explosion, typhoon, flood,
earthquake, tide, lightning, and war. However, any shortage of credit,
capital or finance shall not be regarded as an event of Force Majeure. The
party affected by Force Majeure shall notify the other party without delay.
11.2 In the event that the affected party is delayed in or prevented from
performing its obligations under this Agreement by Force Majeure, only
within the scope of such delay or prevention, the affected party will not
be responsible for any damage by reason of such a failure or delay of
performance. The affected party shall take appropriate measures to minimize
or remove the effects of Force
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Majeure and attempt to resume performance of the obligations delayed or
prevented by the event of Force Majeure. Both parties agree to resume
performance of this Agreement with their best efforts once the event of
Force Majeure is removed.
12. Notices
Notices or other communications required to be given by any party pursuant
to this Agreement shall be written in English and Chinese and shall be deemed to
be duly given when it is delivered personally or sent by registered mail or
postage prepaid mail or by a recognized courier service or by facsimile
transmission to the address set forth below.
Party A: tom.com enterprise Limited
48/F the Center, 99 Queen's Road Central, Hong Kong
Attention: Secretary of the company
Telephone No.: 852-21217838
Facsimile No.: 852-21897446
Party B: Beijing Super Channel Network Limited
F09 2/F 3 Yongchangbeilu Road, Beijing Economic and
Technological Development Zone, China
Attention:
Telephone No.:010-65283399
Facsimile No.: 010-85181160
13. Dispute Resolution
The parties shall strive to settle any disputes arising from the
interpretation or performance in connection with this Agreement through
negotiation in good faith. In the event that a settlement can not be reached
through negotiation within 30 days after a party asks for negotiation, either
party can submit such matter to China International Economic and Trade
Arbitration Commission (the "CIETAC"). The arbitration shall follow the current
rules of CIETAC, and the arbitration proceedings shall be conducted in Chinese
and shall take place in Beijing. The arbitration award shall be final and
binding upon both parties.
14. Law
The validity, interpretation and implementation of this Agreement shall be
governed by the laws of the PRC.
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15. Amendment and Supplement
This Agreement shall not be amended, supplemented or modified except by a
written instrument signed by both parties. The amendment and supplement duly
executed by both parties shall constitute part of this Agreement and shall have
the same legal effect as this Agreement.
16. Severability
Any provision of this Agreement which is invalid or unenforceable due to a
violation of the relevant laws in any jurisdiction shall only be ineffective to
the extent of such invalidity or unenforceability within the relevant
jurisdiction, without affecting in any way the remaining provisions hereof.
17. Appendices
The Appendices referred to in this Agreement are an integral part of this
Agreement and have the same legal effect as this Agreement.
IN WITNESS THEREOF, the parties hereto have caused this Agreement to be
duly executed by a duly authorized representative, each on behalf of the party
hereto, as of the date first set forth above.
Licensor : tom.com enterprise Limited
Representative:
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Licensee: Beijing Super Channel Network Limited
Representative:
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Appendix 1
Trademark Registration Certificate
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