Trademark and Domain Name Licence Agreement - Tom.com Enterprises Ltd. and Beijing Super Channel Network Ltd.
27 February 2004
TOM.COM ENTERPRISES LIMITED
BEIJING SUPER CHANNEL NETWORK LIMITED
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TRADEMARK AND DOMAIN NAME
LICENCE AGREEMENT
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CONTENTS
CLAUSE PAGE
1. INTERPRETATION............................................................ 1
2. TERMINATION OF PREVIOUS LICENCES AND AMENDMENT OF SUB-LICENCES............ 4
3. GRANT OF LICENCE.......................................................... 4
4. CONDITIONS OF USE......................................................... 6
5. MAINTENANCE OF MARKS AND DOMAIN NAMES..................................... 7
6. APPROVAL AND INSPECTION................................................... 7
7. REGISTRATION OF THE DOMAIN NAMES.......................................... 8
8. OWNERSHIP................................................................. 8
9. INFRINGEMENT.............................................................. 9
10. CONFIDENTIAL INFORMATION................................................. 10
11. INDEMNITY................................................................ 10
12. LICENSEE'S REPRESENTATIONS AND WARRANTIES................................ 11
13. DURATION OF AGREEMENT.................................................... 12
14. TERMINATION.............................................................. 13
15. CONSEQUENCES OF TERMINATION.............................................. 14
16. ASSIGNMENT AND OTHER DEALINGS............................................ 15
17. RESOLVING DISPUTES....................................................... 16
18. NOTICES.................................................................. 17
19. WAIVERS.................................................................. 18
20. REMEDIES CUMULATIVE...................................................... 19
21. AMENDMENT................................................................ 19
22. SEVERABILITY............................................................. 19
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23. FORCE MAJEURE............................................................ 19
24. ENTIRE AGREEMENT......................................................... 19
25. LEGAL RELATIONSHIP....................................................... 20
26 GOVERNING LAW AND JURISDICTION........................................... 20
27. LANGUAGE................................................................. 20
28. COUNTERPARTS............................................................. 20
SCHEDULE 1 TRADEMARKS......................................................... 1
SCHEDULE 2 DOMAIN NAMES....................................................... 1
SCHEDULE 3 TOM.COM & DEVICE................................................... 1
SCHEDULE 4 BRAND GUIDELINES................................................... 1
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This Trademark and Domain Name Licence Agreement is made on 27 February 2004
Between
(1) TOM.COM ENTERPRISES LIMITED (Licensor), a company incorporated under the
laws of British Virgin Islands, whose registered office is at Offshore
Incorporations Limited, P.O. Box 957, Offshore Incorporations Centre, Road
Town, Tortola, British Virgin Islands; and
(2) BEIJING SUPER CHANNEL NETWORK LIMITED also known as [Company name in
Chinese] (Licensee), a company incorporated under the laws of the People's
Republic of China, whose registered office is at Room F09, 2/F, 3 North
Yongchong Road, Beijing Economic-Technological Development Area, Beijing,
the People's Republic of China.
Whereas
(A) The Licensor is the owner of the Marks and the registrant of the Domain
Names.
(B) The Licensor has agreed to grant the Licensee, and the Licensee has
accepted, a licence to use the Marks and the Domain Names on the terms and
conditions of this agreement.
(C) The parties have mutually agreed to terminate the two licence agreements
that they entered into on 26 September 2003 in respect of the Marks and Domain
Names.
It is agreed as follows:
1. Interpretation
1.1 In this agreement:
Audio-visual Business means a business that involves the production, licensing
and/or delivery of audio-visual content by any transmission mode, including
without limitation broadcasting (whether by satellite, cable or otherwise),
web-casting and any other mode which is now known or may be developed in the
future;
Beijing Lei Ting means Beijing Lei Ting Wan Jun Network Technology Limited
[Company name in Chinese], a company established under the laws of the PRC with
limited liability;
Brand Guidelines means the guidelines set out in Schedule 4 prescribing the
permitted context, form and manner in which the Marks may be used, and may be
amended from time to time by written notice from the Licensor to the Licensee;
Business Day means a day (other than a Saturday or Sunday) on which banks are
generally open in the Territory for business;
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Confidential Information is defined in clause 10.1(a);
Domain Names means the internet names of websites, which are registered with
accredited registrars of Internet Corporation for Assigned Names and Numbers, as
set out in Schedule 2;
Expiry Date is defined in clause 13.1;
GreaTom means Beijing GreaTom United Technology Company Limited [Company name in
Chinese], a company established under the laws of the PRC with limited
liability;
Group means TOM Online Inc. and:
(a) its wholly owned subsidiaries from time to time;
(b) any entity established in the PRC in which it enjoys the entire economic
interest (and over which it has effective control) through contractual
arrangements;
(c) GreaTom (for so long as TOM Online Inc. or one of its wholly owned
subsidiaries is interested in at least 90% of the registered capital of
GreaTom); and
(d) any such other entity as may from time to time be agreed by the Licensor;
Intellectual Property Rights means trade marks, copyright, designs, logos,
get-up, confidential information, know-how or other intellectual property rights
whether registered or not and including applications for registration, and all
rights or forms of protection having equivalent or similar effect anywhere in
the world;
Internet Portal means a website that acts as an entrance to other websites on
the internet and it typically incorporates (but not always) search engines, free
email, instant messaging and chat, personalised home pages and news services;
Licensed Services means the business comprising the following:
(a) commercial enterprise solutions, being the provision of technical and
consultancy services in respect of internet-related computer hardware and
software to enable customers to set up their internet and wireless
infrastructures;
(b) value-added products and services provided by or through an Internet
Portal, including but not limited to the provision of SMS, MMS, online
games, ringtones, lifestyle and business information, educational material
and dating services, delivered to users by the means of:
(i) wireless telecoms networks (such as mobile phones and interactive
voice response); and
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(ii) websites;
(c) online advertising services, where advertising on an Internet Portal is
sold to third parties (for example, in the form of banner advertising or
pop-up boxes) at both the wholesale and retail levels; and
(d) e-commerce, that allows users and merchants to sell/purchase products and
services through the internet to/from other users and merchants,
but excluding in each case any Audio-visual Business;
Marks means the Trademarks and the "TOM.COM & Device" mark collectively;
Permitted Sub-Licensee means any entity, to whom the Licensee sub-licenses the
right to use any of the Marks and/or the Domain Names pursuant to clause 16.5;
PRC means the People's Republic of China (excluding Hong Kong, Macau and
Taiwan);
Registrar means the accredited registrars of Internet Corporation for Assigned
Names and Numbers, with whom the Licensor has registered the Domain Names;
Shenzhen Freenet means Shenzhen Freenet Information Technology Company Limited
[Company name in Chinese], a company established under the laws of the PRC with
limited liability;
Sub-licences means:
(a) the agreements in respect of the sub-licence of the Marks between:
(i) the Licensee and Beijing Lei Ting dated 26 September 2003;
(ii) the Licensee and Shenzhen Freenet dated 26 September 2003; and
(iii) the Licensee and Wu Ji Network dated 19 November 2003; and
(b) the agreements in respect of the sub-licence of the Domains between:
(i) the Licensee and Beijing Lei Ting dated 26 September 2003;
(ii) the Licensee and Shenzhen Freenet dated 26 September 2003; and
(iii) the Licensee and Wu Ji Network dated 19 November 2003;
Territory means the PRC;
Term means the term of this agreement, as set out in clause 13;
TOM.COM & Device means the mark sets out in Schedule 3;
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Trademark Office means a government body that has the statutory power to deal
with matters relating to trademarks, including recording licences of trademarks
in the PRC;
Trademarks means the marks set out in Schedule 1; and
Website means a set of web pages hosted on a computer that is connected the
internet, where the uniform resource locator of that computer contains any of
the Domain Names; and
Wu Ji Network means Beijing Leitingwuji Network Technology Company Limited
[Company name in Chinese], a company established under the laws of the PRC with
limited liability.
1.2 In this agreement, unless the context otherwise requires:
(a) references to persons includes individuals, bodies corporate (wherever
incorporated), unincorporated associations and partnerships; and
(b) the headings are inserted for convenience only and do not affect the
construction of this agreement.
1.3 The Schedules comprise 2 schedules to this agreement and form part of this
agreement.
2. Termination of previous licences and Amendment of Sub-licences
2.1 The Licensor and the Licensee agree to terminate the two licence
agreements, which they entered into on 26 September 2003 in respect of the Marks
and the Domain Names, with immediate effect of the date of this agreement by
mutual consent.
2.2 Despite clause 2.1, the Licensee is not obliged to terminate the
Sub-licences, provided the Licensee must procure Beijing Lei Ting, Shenzhen
Freenet and Wu Ji Network to agree to amend the Sub-licences so that they comply
with the terms and conditions of this agreement, including the provisions of
clause 16.5(a), within 10 Business Days of the date of this agreement. For the
purposes of this agreement, the amended Sub-licences are deemed to be the
sub-licences entered into by the Licensee pursuant to clause 16.5(a).
3. Grant of Licence
3.1 The Licensor grants to the Licensee a royalty-free licence during the Term
to use:
(a) the Trademarks on a non-exclusive basis; and
(b) the TOM.COM & Device mark and the Domain Names on an exclusive basis,
in relation to the provision of the Licensed Services in the Territory, subject
to the terms of this agreement.
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3.2 For the avoidance of doubt, the licence granted under clause 3.1(b) in
respect of the TOM.COM & Device mark does not exclude the Licensor itself or
through any licensee from using that mark within the Territory for any purposes
other than providing the Licensed Services.
3.3 For the avoidance of doubt, the licence granted under clause 3.1(b) in
respect of the Domain Names only allows the Licensee to:
(a) set up and operate the Websites for the sole purpose of selling or
supplying, or offering for sale or supply, the Licensed Services,
targeting the public in the Territory only; and
(b) use the Domain Names as addresses on the internet, including as email
addresses.
3.4 The Licensee must at all times fully comply, and ensure the Permitted
Sub-Licensees fully comply, with the registration agreement(s) that the Licensor
has entered into in respect of the registration of the Domain Names and any
relevant policies issued by the Registrars in relation to domain names from time
to time.
3.5 The Licensee acknowledges that to the extent the Licensor has not
registered any of the Marks in the Territory, the Licensor only grants the
Licensee the unregistered right, title and interest in those Marks, which it
owns throughout the Territory.
3.6 The Licensee must record the licence granted to it under clause 3.1(a)
with the Trademark Office. The Licensee must record the licence granted to it
under clause 3.1(b) with the Trademark Office as soon as practicable after the
TOM.COM & Device mark becomes registered. At any time during the Term, the
Licensee may require the Licensor to execute short form recordal licences for
each of the registered Marks for recordal at the Trademark Office, the terms of
which will be no more onerous than the terms of this agreement. All information
which the Licensee proposes to provide to the Trademark Office (including the
wording of the short form recordal licence) must be approved in writing in
advance by the Licensor. The Licensor may prevent the Licensee from providing
certain information to the Trademark Office, if the Licensor believes that such
disclosure is unnecessary.
3.7 On termination of this agreement, the Licensor and the Licensee will
jointly notify the Trademark Office and the relevant local bureau(x) of industry
and commerce of the fact of the termination in writing. The Licensee must assist
the Licensor at the Licensee's cost as necessary to achieve cancellation of the
records relating to this agreement.
3.8 At any time during the Term, the Licensor may request the Registrar to
amend its registration records to show the Licensee as the person being
responsible for all administration, billing and technical matters in respect of
the Domain Names. The Licensor may require the Licensee to execute any documents
that may be necessary to amend the registration records.
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4. Conditions of Use
4.1 The Licensee must:
(a) use the Marks and the Domain Names only in a manner which conforms to the
Brand Guidelines;
(b) use the Marks (including as respects colour, printing style, typeface and
size) only in the form set out in the Brand Guidelines;
(c) include on all materials on which any of the Marks appear, the name of the
Licensor;
(d) when using a registered Mark in the PRC, always mark the Mark with the
symbol (R) or the characters [Description in Chinese];
(e) keep the Trademark Office and the Licensor informed of any changes in the
name and address of the Licensee;
(f) include on all materials, on which any of the Marks or the Domain Names
appears, a statement, in a form approved in writing by the Licensor, that
the Mark or the Domain Name is owned or registered (as the case may be) by
the Licensor, and, if applicable, is the registered trademark of the
Licensor and is used under licence by the Licensee;
(g) not use, register or attempt to register any trademarks, company, business
or trading names or domain names which are substantially identical or
similar to (or which incorporate) any of the Marks or Domain Names, any
aspect of them, or any other trademarks, trade names or domain names of
the Licensor, without the Licensor's prior written consent (and then only
in accordance with any conditions which the Licensor may, in its absolute
discretion, provide for);
(h) not do anything which could, in the Licensor's reasonable opinion, bring
the Marks, the Domain Names or the Licensor into disrepute or which could
otherwise damage the goodwill attaching to the Marks, the Domain Names,
any other trademarks or domain names or, trade names of the Licensor;
(i) not use the Marks in a manner which could, in the Licensor's reasonable
opinion, result in any of them becoming generic or in the Licensor's
rights in them becoming diluted, or which could otherwise prejudice or
invalidate a registration or application for registration of any of the
Marks;
(j) consult with the Licensor as to the form and content of all marketing,
advertising and promotional materials in which the Marks appear, and not
use or distribute any of these materials in any medium (electronic or
otherwise), unless the Licensor has first approved them in writing;
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(k) ensure that the provision of the Licensed Services, and its use of the
Marks and Domain Names, comply at all times with all applicable laws,
regulations and industry requirements and standards in force within the
Territory; and
(l) at the costs of the Licensee, prepare, process or obtain all necessary
documents, approvals, and permits and take compliance measures (including,
if necessary, any registration of the Licensed Services) for the provision
of the Licensed Services in the Territory.
5. Maintenance of Marks and Domain Names
5.1 Throughout the Term, the Licensor will, at the Licensee's cost, take all
reasonable steps to maintain registrations for:
(a) the Marks in the Territory; and
(b) the Domain Names (but subject to clause 5.2),
provided that the Licensee must promptly provide all assistance required by the
Licensor in connection with doing so, including preparing evidence of the
Licensee's use of the Marks.
5.2 If the Licensor has nominated the Licensee as the person being responsible
for all administration, billing and technical matters in relation to the Domain
Names pursuant to clause 3.8, the Licensee must, at its own cost, take all steps
to maintain the registration for the Domain Names.
5.3 The Licensee must, at the Licensor's cost, provide all assistance
(including preparing evidence of the Licensee's use of the Marks) required by
the Licensor to enable the Licensor to:
(a) prepare, file and prosecute any trademark applications for the TOM.COM &
Device mark and any new trademarks that are substantially identical with
or similar to the Marks, or are otherwise related to the Marks; and
(b) protect its rights in respect of the Marks and the Domain Names,
in any jurisdiction.
5.4 The Licensor may decide, in its absolute discretion, whether, and if so
when, to prepare, file and prosecute any trademark applications for the TOM.COM
& Device mark and any new trademarks that are substantially identical with or
similar to the Marks, or are otherwise related to the Marks in any jurisdiction.
6. Approval and Inspection
6.1 The Licensee must:
(a) provide the Licensor with samples of all materials (including any
advertising, marketing or promotional materials on or in relation to which
the Marks and
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Domain Names are used) for written approval by the Licensor prior to them
being used; and
(b) on reasonable prior notice from the Licensor, permit the Licensor (or its
nominated representative) to enter the Licensee's premises during any
Business Day, to check that the Licensee is complying with its obligations
under this agreement.
6.2 If the Licensor believes, on reasonable grounds, that the Licensee is
failing to comply with any of its obligations under clause 4:
(a) the Licensee must take any steps (at the Licensee's expense) which the
Licensor determines are necessary to ensure compliance; and
(b) the Licensee must not sell, distribute or otherwise dispose of any
materials which the Licensor determines do not comply with the Licensee's
obligations under clause 4, without the prior written consent of the
Licensor.
7. Registration of the Domain Names
7.1 If there are any changes in the rules or regulations (including the rules
issued by any relevant Registrar), so as to prevent the Licensor from
maintaining the registration of the Domain Names in its name, the Licensee must,
at the direction of the Licensor, register the Domain Names in its own name and
will give the Licensor particulars of any such registration, including renewal
dates. All registrations by the Licensee will be held on trust for the Licensor
and the Licensee undertakes to transfer each one to the Licensor immediately
following termination of this agreement, or when such a transfer becomes
permissible under the relevant rules or regulations, whichever is the earlier.
7.2 The Licensee consents to hyper-text links being put in place by the
Licensor, if the Licensor deems it appropriate to do so, from any of its domain
names to the Domain Names.
8. Ownership
The Licensee acknowledges and agrees that:
(a) all Intellectual Property Rights and other rights in the Marks and the
Domain Names are the exclusive property of the Licensor;
(b) it will not acquire, nor claim, any right, title or interest in or to any
of the Marks and/or Domain Names, or the goodwill attaching to them by
virtue of this agreement or its use of the Marks and the Domain Names in
any jurisdiction, other than the rights specifically granted to it under
clause 3.1;
(c) all goodwill arising from use of the Marks and the Domain Names by the
Licensee before, during or after the Term will accrue and belong to the
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Licensor, and the Licensee must, at the Licensor's request and cost,
promptly execute all documents required by the Licensor to confirm this;
and
(d) all use of the Marks and the Domain Names by the Licensee will be deemed
to be use by the Licensor for the purposes of proving and/or confirming
the Licensor's ownership of the Marks and the Domain Names.
9. Infringement
9.1 The Licensee must immediately notify the Licensor in writing of any of the
following matters which comes to its attention (giving full particulars):
(a) any actual, suspected or threatened infringement of the Marks;
(b) any unauthorised use of the Domain Names, or use of any other domain name
which is substantially identical with or similar to the Domain Names,
whether at the top level domain, country code top level domain or any
other domain levels;
(c) any allegation or complaint made by any third party that any of the Marks
and/or Domain Names is invalid, that use of the Marks and/or Domain Names
infringes any third party rights, or that use of the Marks may cause
deception or confusion to the public; and
(d) any other form of attack or claim to which any of the Marks and/or Domain
Names may be subject.
9.2 The Licensee must not make any admissions in respect of these matters
other than to the Licensor and must, in each case, provide the Licensor with all
relevant information in its possession. The Licensee must take no other action
in relation to these matters, except as directed or consented to by the
Licensor.
9.3 The Licensor may decide in its absolute discretion whether or not to take
action, what action to take and in whose name (either in the name of the
Licensor, the Licensee, or the Licensor and the Licensee jointly) the action
should be taken in respect of any of the matters in clause 9.1 and will have
exclusive control over any resulting claims, actions and proceedings.
9.4 The Licensee must, at the Licensor's cost, provide any assistance which
the Licensor requires (including bringing proceedings or lending its name to any
proceedings brought by the Licensor) in connection with any of the matters in
clause 9.1.
9.5 The cost of bringing or defending any claim or action under clause 9.1
will be borne by the Licensor. Any award of costs or damages or other
compensation payment recovered in connection with any of those matters will be
for the account of the Licensor.
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10. Confidential information
10.1 Each party must:
(a) keep confidential the terms of this agreement and all information, whether
in written or any other form, which has been disclosed to it by or on
behalf of the other party in confidence or which by its nature ought to be
regarded as confidential (including, without limitation, any business
information in respect of the other party which is not directly applicable
or relevant to the arrangement contemplated by this agreement)
(Confidential Information); and
(b) procure that its officers, employees and representatives keep secret and
treat as confidential all such documentation and information.
10.2 Clause 10.1 does not apply to information:
(a) to the extent required to be disclosed by any applicable law or by any
recognised stock exchange or governmental or other regulatory or
supervisory body or authority of competent jurisdiction, to whose rules
the party making the disclosure is subject, whether or not having the
force of law, provided that the party disclosing the information must
notify the other party of the information to be disclosed (and of the
circumstances in which the disclosure is alleged to be required) as early
as reasonably possible, before such disclosure must be made and must take
all reasonable action to avoid and limit such disclosure;
(b) which has been independently developed by the recipient party, otherwise
than in the course of the exercise of that party's rights under this
agreement or the implementation of this agreement;
(c) which, in order to perform its obligations under or pursuant to this
agreement, either party is required to disclose to a third party;
(d) disclosed to any applicable tax authority to the extent required by a
legal obligation; or
(e) which the recipient party can prove was already known to it before its
receipt from, or which was developed independently of, the disclosing
party.
10.3 This clause 10 will survive the expiry or termination of this agreement.
11. Indemnity
11.1 The Licensor will not, under any circumstances, be responsible for any
statement or representation made by the Licensee in relation to any Licensed
Services. To the extent that the Licensor becomes responsible as a result of
statutory regulation or otherwise, the Licensee must indemnify the Licensor
against any claims or demands arising out of any such statement or
representation.
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11.2 The Licensee must indemnify the Licensor (both as principal and as agent
for all Permitted Sub-Licensees) for and against any and all losses,
liabilities, costs, expenses and claims (including all legal costs and expenses
on a solicitor and own client basis) suffered or incurred by the Licensor as
result of or in connection with:
(a) any breach by the Licensee of this agreement, negligence or other act or
omission;
(b) any action, claim, demand or proceedings by a third party in connection
with the use of the Marks or the Domain Names by the Licensee (other than
in accordance with the terms of this agreement);
(c) any action, claim, demand or proceedings by the Registrar in connection
with the Domain Names;
(d) any action, claim, demand or proceedings by a third party in connection
with the provision of the Licensed Services by the Licensee;
(e) use by the Licensee of any corporate name or trading style or domain name
derived from the Marks or Domain Names in breach of the terms of this
agreement;
(f) any action, claim, demand or proceedings by a third party in connection
with any act or omission of the Licensee or any Permitted Sub-Licensee; or
(g) any breach by any Permitted Sub-Licensee of the terms of its sub-licence
agreement or any negligence or other act or omission by the Permitted
Sub-Licensees.
12. Licensee's representations and warranties
12.1 The Licensee represents and warrants that:
(a) it is a company duly incorporated under the laws of the PRC; and
(b) it has obtained all necessary authorisation permits and/or approvals from
all necessary and relevant third parties and/or government authorities in
order to perform its obligations and duties under this agreement.
12.2 The Licensee further represents and warrants that its execution and
performance of this agreement:
(a) are within its corporate power and business scope;
(b) have been duly authorized by all necessary corporate action;
(c) will not contravene its articles of association; and
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(d) will not contravene any law (including regulations, policies, directives,
tax rulings, customs notices, import tax liabilities or requirements,
etc.) or contractual restrictions binding on or affecting it.
13. Duration of Agreement
13.1 This agreement commences on the date of this agreement and, unless
terminated earlier in accordance with clause 14, continues up to and including
the date on which the later of the following events occurs (the Expiry Date):
(a) TOM Group Limited's percentage ownership of the total issued ordinary
shares of TOM Online Inc. (whether in the form of ordinary shares or
ordinary shares represented by American depository shares and whether
directly or indirectly and legally or beneficially owned) falls below 30%
of the total issued ordinary shares of TOM Online Inc.; and
(b) the second anniversary of the date, on which the ordinary shares of TOM
Online Inc. are listed on the Growth Enterprise Market of The Stock
Exchange of Hong Kong Limited and/or American depository shares
representing ordinary shares in TOM Online Inc. are included for quotation
on the NASDAQ National Market in the United States (whichever is the
earlier).
13.2 To the extent possible, within 30 Business Days prior to the Expiry Date,
the Licensor may by written notice require the Licensee to commence to negotiate
a further licence agreement that would allow the Licensee to continue using the
Marks and the Domain Names, and the term of this agreement will be extended from
the Expiry Date until the earlier of:
(a) the parties enter into further licence agreements in respect of the use of
the Marks and the Domain Names; or
(b) the expiry of a one-year period from the Expiry Date, if the parties fail
to agree on the terms and conditions of a further licence agreement in
respect of the use of the Marks within 30 Business Days of the Expiry
Date.
13.3 The parties agree that the further licence agreement in respect of the
Domain Names will contain, at the minimum, the following terms:
(a) the Licensor will grant the Licensee a perpetual and non-exclusive licence
to use:
(i) the "TOM.COM" mark solely in the form of the Domain Names; and
(ii) the Domain Names,
in respect of the Licensed Services in the Territory, for a lump sum
up-front fee, that is the lower of the amount to be agreed between the
parties or US$5,000,000; and
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(b) for the avoidance of doubt, the licence under clause 13.3(a) only confers
on the Licensee the rights set out in clause 3.3.
13.4 During the one-year period referred to in clause 13.2(b):
(a) the Licensee may use secondary marks or service names, which may be
created by itself or others, in close proximity to the Marks to
distinguish the Licensed Services, subject to the prior written approval
of the Licensor. The Licensee may only use such secondary marks or service
names for the sole purpose of transitioning out of using the Marks;
(b) the Licensee must exercise its right under clause 13.4(a) in a manner that
fully complies with clause 4; and
(c) the Licensee may register the secondary marks or service names under its
own name, subject to the Licensor approving the application to be filed by
the Licensee for the registration.
14. Termination
14.1 On the occurrence of any of the following events, the Licensor may
(without prejudice to any other right or remedy) by written notice to the
Licensee terminate this agreement with immediate effect:
(a) if the Licensee commits a breach of any material obligation under this
agreement, and in the case of a breach which is capable of remedy fails to
remedy it within 30 days of receipt of notice from the Licensor of such
breach and of its intention to exercise its rights under this clause. For
the purposes of this clause 14.1(a), a breach will be considered capable
of remedy, if the party in breach can comply with the provision in
question in all respects other than as to time of performance; or
(b) a petition is presented, or a meeting is convened for the purpose of
considering a resolution or other steps are taken for the winding up of
the Licensee or a winding up order is made against or a provisional
liquidator appointed with respect to the Licensee; or
(c) an encumbrancer takes possession of, or a trustee or administrative
receiver or similar officer is appointed in respect of, all or any part of
the business or assets of the Licensee, or distress or any form of
execution is levied or enforced upon or sued out against any such assets
and is not discharged within 7 days of being levied, enforced or sued out;
or
(d) the Licensee is unable to pay or becomes unable to pay its debts as they
fall due, or suspends or threatens to suspend making payments with respect
to all or any class of its debts, or the value of the Licensee's assets is
less than the amount of its liabilities, taking into account its
contingent and prospective liabilities, or a moratorium is declared in
respect of the Licensee's debts; or
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(e) any step, including a proposal, petition or order, the convening of a
meeting or a resolution, is taken by the Licensee or any person with a
view to a composition or arrangement or composition with, or any
assignment for the benefit of, its creditors; or
(f) anything analogous to any of the events described in paragraphs (b) - (e),
inclusive, occurs under the laws of any applicable jurisdiction; or
(g) the Licensee ceases or threatens to cease to carry on the whole or any
material part of its business; or
(h) the Licensee challenges the validity of or the entitlement of the Licensor
to use or license the use of any of the Marks or Domain Names, or objects
to the renewal of any of the Marks or Domain Names; or
(i) if the Trademarks Office refuses to record this agreement for whatever
reason; or
(j) any material change occurs in the ownership or control of the Licensee.
14.2 Either party may terminate this agreement on 90 days written notice to the
other party, if that party reasonably believes that circumstances have changed
to such an extent that the Licensee is no longer able, or permitted by a change
in government policy or practice, to provide the Licensed Services in the
Territory by utilizing its current business practices and structure.
15. Consequences of Termination
15.1 On expiry or termination of this agreement for any reason, the licence
granted under clause 3.1, will immediately cease and the Licensee must
immediately:
(a) cease all use of the Marks and Domain Names in relation to the Licensed
Services or otherwise (including cancelling, or at the option of the
Licensor, transferring to the Licensor, any registrations in its name for
any corporate, business, trade or domain names incorporating any of the
Marks or Domain Names, or any aspect of them, with any relevant registry
and any telephone listings);
(b) immediately (and at its own expense) deliver to the Licensor or to any
person nominated by the Licensor all products and materials, in electronic
or hard copy form, (including signs, advertising materials, technical
data, stationery, designs and drawings) under its or its agent's control
on or in relation to which any of the Marks or Domain Names are being or
have been used by the Licensee; or, if requested by the Licensor, destroy
them and certify in writing to the Licensor that this has been done and
the cost of such delivery or destruction, as the case may be, will be
borne by the Licensee; and
(c) immediately (and at its own expense) deliver to the Licensor or to any
person nominated by the Licensor all Confidential Information, in
electronic or hard
<PAGE>
copy form, (including signs, advertising materials, technical data,
stationery, designs and drawings) under its or its agent's control or, if
requested by the Licensor, destroy them and certify in writing to the
Licensor that this has been done and the cost of such delivery or
destruction, as the case may be, will be borne by the Licensee.
15.2 Termination or expiry of this agreement will not release either party from
any liability which at the time of termination or expiry has already accrued to
the other party, nor affect in any way the survival of clauses 8, 9, 10 11, 17,
any other right, duty or obligation of the parties which is expressly stated
elsewhere in this agreement to survive such termination or expiry.
16. Assignment and Other Dealings
16.1 The Licensee agrees and acknowledges that the Licensor is entitled at any
time to assign, transfer or charge all or any of its rights and/or obligations
under this agreement or to sub-contract the performance of any of its
obligations under this agreement, without the consent of the Licensee.
16.2 If the Licensor assigns, transfers or charges any of its rights and/or
obligations under this agreement or sub-contracts the performance of any of its
obligations under this agreement, the Licensor will notify the Licensee as soon
as practicable after such assignment, transfer, or charge or sub-contracting,
together with particulars of the assignee, transferee, or chargee or
sub-contractor.
16.3 The Licensee must from time to time upon request from the Licensor execute
any agreements or other instruments (including, without limitation, any
supplement or amendment to this agreement) as may be required by the relevant
recordal procedures; or which may be required in order to give effect to or
perfect any assignment, transfer, or charge or sub-contracting referred to in
clause 16.1.
16.4 Subject to clause 16.5, the Licensee must not, and it must not purport to,
assign, transfer, charge or otherwise deal with all or any of its rights and/or
obligations under this agreement, and the Licensee must not declare, create or
dispose of any right or interest in it, or sub-contract the performance of any
of its obligations under this agreement, without the prior written consent of
the Licensor, which consent may be withheld or delayed by the Licensor in its
sole discretion.
16.5 The Licensee may:
(a) without the prior written consent of the Licensor, sub-license its rights
under this agreement to any entity within the Group, provided:
(i) the sub-licence must be in writing on the same terms as this
agreement (except that the sub-licensee must not have the right to
sub-license its rights under the sub-licence to any third party);
<PAGE>
(ii) the permission to sub-license (and all sub-licences granted) under
this clause will terminate automatically on termination or expiry of
this agreement;
(iii) the Licensee will be liable for all acts and omissions of its
sub-licensees;
(iv) the Licensee must at all times and at its own cost enforce
compliance by the sub-licensees with the terms of the sub-licences;
(v) the Licensee must take all steps, at its own cost, necessary to
record any sub-licence or short form recordal licence at the
Trademark Office and the Licensor will have the same rights in
respect of such recordal documentation as provided for in respect of
the recordal of this agreement under clauses 3.6 and 12; and
(vi) upon a sub-licensee ceasing to be a member of the Group, the
relevant sub-licence will terminate automatically; and
(b) with the prior written consent of the Licensor, sub-licence its rights
under this agreement to any entity outside the Group, on terms and
conditions to be approved by the Licensor, which approval may be withheld
or delayed by the Licensor in its sole discretion.
17. Resolving Disputes
17.1 Consultation
(a) The parties will attempt in good faith to resolve any dispute arising out
of or relating to this agreement, by consultation with one another as soon
as practicable after the dispute arises.
(b) If, 30 days after the dispute arises, the parties cannot reach a mutual
agreement as to how to solve the dispute, senior management of the
respective parties will meet for a second consultation.
(c) If the dispute is not resolved within 30 days after such second
consultation is proposed, either party may refer the matter to arbitrators
for binding arbitration, in accordance with clause 17.2 below.
17.2 Arbitration
(a) If the parties are unable to resolve any dispute, controversy or claim
arising out of or relating to this agreement through negotiation, as
provided in clause 17.1 above, the matter will, at the written request of
either party, be settled by arbitration in accordance with the UNCITRAL
Arbitration Rules as at present in force and as may be amended by the rest
of this clause.
(b) The arbitration will be conducted in the English language in Hong Kong at
the Hong Kong International Arbitration Centre (HKIAC).
<PAGE>
(c) There will be a panel of three arbitrators. Each party will appoint one
arbitrator to the panel. The third arbitrator will be appointed by the two
arbitrators already appointed to the panel by the parties or, in the
absence of agreement on the last appointment within 20 days, will be
appointed by the then Secretary General of the HKIAC.
(d) Any such arbitration must be administered by the HKIAC in accordance with
the HKIAC Procedures for Arbitration in force at the date of this
agreement, including such additions to the UNCITRAL Arbitration Rules as
are therein contained.
(e) The arbitration award will be final and conclusive and will receive
recognition, and judgment upon such award may be entered and enforced, in
any court of competent jurisdiction.
18. Notices
18.1 Any notice to be given by one party to the other under, or in connection
with, this agreement must be in writing and signed by or on behalf of the party
giving it. It must be served by sending it by fax to the number set out in
clause 18.2, or delivering it by hand, or sending it by pre-paid recorded
delivery, special delivery or registered post, to the address set out in clause
18.2, and in each case marked for the attention of the relevant party (or as
otherwise notified from time to time in accordance with the provisions of this
clause 18). Any notice so served by hand, fax or post will be deemed to have
been duly given:
(a) in the case of delivery by hand, when delivered;
(b) in the case of fax, at the time of transmission;
(c) in the case of prepaid recorded delivery, special delivery or registered
post, at 10.00 am on the second Business Day following the date of
posting,
provided that in each case where delivery by hand or by fax occurs after 6.00 pm
on a Business Day or on a day which is not a Business Day, service shall be
deemed to occur at 9.00 am on the next following Business Day.
References to time in this clause are to local time in the country of the
addressee.
18.2 The addresses and fax numbers of the parties for the purpose of clause
18.1 are as follows:
(a) Licensor
Address: 48/F., The Centre
99 Queen's Road Central
Central
Hong Kong
Fax: 852 2189 7446
<PAGE>
Attention: The Company Secretary
(b) Licensee
Address: Room F09, 2/F
3 North Yongchong Road
Beijing Economic-Technological Development Area
Beijing
The People's Republic of China
Fax: 86 10 8518 1160
Attention: The Company Secretary
with a copy to TOM Online Inc.
Address: 8/F, Tower W3
Oriental Plaza
No. 1 Dong Chan An Avenue
Dong Cheng District
Beijing 100738
The People's Republic of China
Fax: 86 10 8518 5555
Attention: The Company Secretary
18.3 A party may notify the other party to this agreement of a change to its
name, relevant addressee, address or fax number for the purposes of this clause
18, provided that, such notice will only be effective on:
(a) the date specified in the notice as the date on which the change is to
take place; or
(b) if no date is specified or the date specified is less than 5 Business Days
after the date on which notice is given, the date following 5 Business
Days after notice of any change has been given.
18.4 All notices under or in connection with this agreement must be in the
English language or, if in Chinese, accompanied by a translation into English.
In the event of any conflict between the English text and the Chinese text, the
English text will prevail.
19. Waivers
No failure or delay by either party in exercising any right or remedy provided
by law under or pursuant to this agreement will impair such right or remedy, or
operate or be construed as a waiver or variation of it, or preclude its exercise
at any subsequent time. No single or partial exercise of any such right or
remedy will preclude any other or further exercise of it or the exercise of any
other right or remedy.
<PAGE>
20. Remedies Cumulative
The rights and remedies of each of the parties under or pursuant to this
agreement are cumulative, may be exercised as often as such party considers
appropriate and are in addition to its rights and remedies under general law.
21. Amendment
No variation of this agreement will be valid, unless it is in writing and signed
by or on behalf of both parties.
22. Severability
If and to the extent any provision of this agreement is held to be illegal, void
or unenforceable, such provision will be given no effect and will be deemed not
to be included in the agreement, but without invalidating any of the remaining
provisions of this agreement.
23. Force Majeure
23.1 Neither party will be liable for any failure or delay in performing any of
its obligations under or pursuant to this agreement, if such failure or delay is
due to force majeure, and it will be entitled to a reasonable extension of the
time for performing such obligations as a result of such cause.
23.2 For the purpose of this clause 23, "force majeure" means any circumstances
not foreseeable at the date of this agreement and not within the reasonable
control of the party in question including, without prejudice to the generality
of the foregoing, acts by government authorities, strikes, lockouts, shortages
of labour or raw materials, civil commotion, riot, invasion, war, threat of or
preparation for war, fire, explosion, storm, flood, earthquake, lightening,
subsidence, epidemic or other natural physical disaster, but excluding shortage
of funds or financing.
24. Entire Agreement
24.1 Upon execution of this agreement, the parties mutually agree to terminate
all the agreements that they have entered into in respect of the Marks and the
Domain Names prior to the date of this agreement, effective as of the date of
this agreement.
24.2 This agreement sets out the entire agreement and understanding between the
parties in respect of the subject matter of this agreement. It is agreed that:
(a) neither party has entered into this agreement in reliance upon any
representation, warranty or undertaking of the other party which is not
expressly set out or referred to in this agreement;
(b) neither party will have any remedy in respect of misrepresentation or
untrue statement made by the other party which is not contained in this
agreement; and
<PAGE>
(c) this clause will not exclude any liability for, or remedy in respect of,
fraudulent misrepresentation.
25. Legal Relationship
Nothing in this agreement is deemed to constitute a partnership between the
parties nor constitute any party the agent of the other party for any purpose.
26. Governing Law and Jurisdiction
26.1 This agreement and the relationship between the parties will be governed
by, and interpreted in accordance with, the law of Hong Kong Special
Administrative Region (HKSAR) without regard to conflict of law principles. In
the absence of applicable published laws of the HKSAR for a certain matter,
international legal principles and practices will apply.
26.2 Each of the parties agrees that the courts of Hong Kong SAR are to have
exclusive jurisdiction to settle any dispute (including claims for set-off and
counterclaims), which may arise in connection with this agreement, and for such
purposes irrevocably submit to the jurisdiction of the HKSAR courts.
27. Language
This agreement (and any related short form recordal licences) may be written in
a Chinese version and in an English version. Both the Chinese and English
versions are equally effective. If there is any inconsistency between the
Chinese and English versions, the English version will prevail.
28. Counterparts
This agreement may be executed in any number of counterparts and by the parties
to it on separate counterparts, each of which is an original but all of which
together constitute one and the same instrument.
<PAGE>
SCHEDULE 1
TRADEMARKS
Part A. Registered Trademarks
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Registration Registration
Trade/Service Mark Place of Registration Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
TOM & LOGO (1) People's Republic of 35 1499371 28 Dec 2000 Advertising and promotion services
China and information services relating
[Company Logo] thereto; business information
services; all provided online from a
computer database or the Internet;
compilation of advertisements for use
as web pages on the Internet; all
included in Class 35.
------------------------------------------------------------------------------------------------------------------------
TOM & LOGO (1) People's Republic of 36 1491635 14 Dec 2000 Information services relating to
China finance and insurance, provided
[Company Logo] on-line from a computer database or
the Internet; all included in Class
36.
</TABLE>
<PAGE>
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Registration Registration
Trade/Service Mark Place of Registration Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
TOM & LOGO (1) People's Republic of 37 1499788 28 Dec 2000 Information services relating to
China repair or installation, provided
[Company Logo] on-line from a computer database or
the Internet; repair and installation
of telecommunication apparatus; all
included in Class 37.
------------------------------------------------------------------------------------------------------------------------
TOM & LOGO (1) People's Republic of 38 1491846 14 Dec 2000 Telecommunication, facsimile, telex,
China telephone, telegram, message
[Company Logo] collection and transmission services
via electronic means; transmission of
data and of information by
electronic, computer, cable, radio,
radio paging, teleprinter,
teleletter, electronic mail, fax
machine, television, microwave, laser
beam, communications satellite or
other telecommunication means;
consultancy services relating to data
communications; telecommunication
services via radio, satellite and
cable network systems; videotext and
teletext transmission services;
broadcasting or transmission of radio
and television programmes, rental of
telecommunications apparatus; time
sharing services for
telecommunication apparatus;
telecommunication of information
(including web pages), computer
programs and any other data;
electronic mail services; provision
of telecommunications access and
links to computer databases and the
Internet; all included in class 38.
</TABLE>
<PAGE>
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Registration Registration
Trade/Service Mark Place of Registration Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
TOM & LOGO (1) People's Republic of 41 1491525 14 Dec 2000 Information relating to entertainment
China or education, sports and leisure,
[Company Logo] provided on-line from a computer
database or the Internet; electronic
game services provided by means of
the Internet; all included in Class
41.
</TABLE>
<PAGE>
Part B. Applications
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Application Application
Trade/Service Mark Place of Application Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
TOM & LOGO (1) People's Republic of 42 9900152449 16 Dec 1999 Testing of computing,
China telecommunication, electrical and
[Company Logo] electronic apparatus and instruments;
computer programming; software design
and development; computer software
design, computer systems analysis,
maintenance of computer software;
professional consultancy services
relating to telecommunications,
computing apparatus and instruments,
computer networks, software and
information systems, technical
research; rental of electrical and
electronic apparatus and instruments
relating to computing; providing
access to and leasing access time to
computer data bases; computer rental;
design, drawing and commissioned
writing, all for the compilation of
web pages on the Internet;
information services relating to
temporary accommodation, meal,
medical treatment and medicine,
beauty, gardening, law, security,
technology research, fashionable
dress, weather, computer and computer
network, news, provided on-line from
a computer database or from the
Internet; all included in Class 42.
------------------------------------------------------------------------------------------------------------------------
TOM & LOGO (1) People's Republic of 9 9900152443 16 Dec 1999 Data processing apparatus; data
China logging apparatus; data storing
apparatus; data transmission and
reception apparatus; data display
</TABLE>
<PAGE>
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Application Application
Trade/Service Mark Place of Application Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
[Company Logo] apparatus; data input, output or
print-out apparatus;
facsimile, telex, telephone,
telegram, radiopaging,
telecommunications, data
communications and data acquisition
installations, apparatus and
instruments; all for processing,
logging, storing, transmission,
display, reception, input, output or
print-out of non-pictorial or
graphical data; apparatus for
recording, transmission or
reproduction of sound or images;
discs, tapes and wires, all being
magnetic data carriers; floppy disc
driving apparatus; magnetic encoded
cards; magnetic tapes for audio or
visual signals, video display units,
video discs, electronic computers,
computer terminals, computer
keyboards and printers for use
therewith, computer programs;
computer software and hardware;
computer memories; computer
interfaces; microprocessors; modems,
digital optical transmission
apparatus and instruments; laser
apparatus and instruments; apparatus
included in Class 9 for viewing
electronic images recorded by
electronic cameras; facsimile
telegraphy apparatus; computer
software and publications in
electronic form supplied on-line from
databases or from facilities provided
on the Internet (including web sites)
and recorded in data carriers;
computer software and
telecommunications apparatus
(including modems) to enable
connection to databases and the
Internet; computer software to enable
</TABLE>
<PAGE>
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
Application Application
Trade/Service Mark Place of Application Class No. Date Goods/services
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
searching of data; all included in
Class 9.
</TABLE>
<PAGE>
SCHEDULE 2
DOMAIN NAMES
tom.com
bj.tom.com
cn.tom.com
<PAGE>
SCHEDULE 3
TOM.COM & DEVICE
[Company Logo]
<PAGE>
SCHEDULE 4
BRAND GUIDELINES
Part A Brand Guidelines
1. The Mark must always be highlighted in literature and advertising to draw
attention to its special status as a trademark.
2. The symbol (R) for registered marks and symbol(TM) for unregistered marks,
must be used in at least one prominent position in all labels, packaging,
promotional materials, website or any other medium where the Mark is used.
3. On all product labels, packaging, promotional materials, website, or any
other medium on which the Mark is used, there must always be:
(a) a statement that the Mark is used under licence from the Licensor; and
(b) a statement as to the place of manufacture of the products to which
the Mark is applied.
4. The Mark must only be used as an adjective and not as a noun or a verb. It
must not be used to describe the goods or services to which it relates.
5. The Mark must never be pluralised.
6. The Mark must only be used in connection with the products or services for
which it is registered or applied for. It must not be used either by itself
or as part of any other identification or name in relation to any goods or
services not authorised by the Licensor.
7. The Mark must only be used in accordance with the "TOM mark basic
application guidelines" specified by the Licensor from time to time and set
out as at the date of this Agreement in Part B of the Brand Guidelines.
8. Use of the Mark must be uniform and consistent and in the form in which it
is registered or applied for. In particular, the Mark must be used only in
the size, shape, colour and fonts in which it is specified. No alteration,
modification, distortion or animation in any way can be made to the Mark.
9. The Mark must not be used together with any other trade marks (i.e. in
co-branding), without the approval of the Licensor. As a general rule no
other trade mark, graphic or text may appear in close proximity to the
Mark, unless otherwise permitted under this agreement.
10. The market place must be carefully and continuously monitored to identify
any unauthorised use or misuse of any of the Marks.
<PAGE>
11. All artwork incorporating the Mark must be in an approved form and
deposited with a central repository.
12. No part of the Mark may be included in domain name registrations, without
the approval of the Licensor.
13. No part of the Mark may be included in a company name, without the approval
of the Licensor.
Part B The TOM Mark Basic Application Guidelines
1. Fixed Format: The TOM symbol and "tom.com" are set in a fixed format. No
other versions, formats or rearrangements are allowed. The Mark must always
be reproduced from the digital artwork template provided
2. Exclusion Zone: there is an exclusion zone set around the Mark. No graphic
elements are allowed within this zone:-
[CHART APPEARS HERE]
<PAGE>
3. Minimum Size: There are guidelines governing the size of the logo. The
symbol size should not be smaller than 7mm as measured below:
[CHART APPEARS HERE]
<PAGE>
4. Background & Colour: The TOM blue (pantone 5467) is the preferred
background. Please refer to the 4-colour & pantone requirement of the Mark
below:-
[CHART APPEARS HERE]
<PAGE>
[CHART APPEARS HERE]
Whenever possible the corporate colours should be printed using Pantone
colours.
<PAGE>
5. Inappropriate Special Effects: The Mark can only appear in the fixed
formats shown. Examples of unacceptable usage are shown below:-
[CHART APPEARS HERE]
<PAGE>
6. Mark in Chinese: The same fixed format should be applied in both Chinese
and English language environment.
7. Trademark as Part of a Slogan: There is no fixed format for the Mark as
part of the slogan. It has to be considered and judged on a case-by-case
basis.
<PAGE>
IN WITNESS WHEREOF this agreement has been signed by the authorised
representatives of the parties on the day and year first written above.
SIGNED by Debbie Chang )
)
on behalf of ) /s/ Debbie Chang
TOM.COM ENTERPRISES )
LIMITED )
in the presence of )
Name:
Position:
Nationality:
SIGNED by Xu Zhiming )
)
on behalf of ) /s/ Xu Zhiming
BEIJING SUPER CHANNEL )
NETWORK LIMITED )
in the presence of )
Name: Angela S.F. Mak /s/ Angela S.F. Mak
Position: Solicitor
Nationality: Australian