Trademark Licence Agreement - Wipro Ltd., Wipro ePeripherals Ltd. and Wipro Trademarks Holding Ltd.
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TRADEMARK LICENCE AGREEMENT
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BY AND AMONG:
(1) WIPRO LIMITED
(2) WIPRO EPERIPHERALS LIMITED
(3) WIPRO TRADEMARKS HOLDING LIMITED
(4) PROMOTERS
Dated August 30, 2000
<PAGE>
TRADE MARK LICENSE AGREEMENT
THIS AGREEMENT is made as of the 30th day of August 2000 by and between:
WIPRO LIMITED, a company deemed to be registered under the Companies Act, 1956,
having its registered office at Doddakannelli, Sarjapur Road, Bangalore - 560
035 (hereinafter referred to as "Wipro" which expression shall unless it be
repugnant to the context be deemed to include its successors in title and
permitted assigns) of the First Part; and
WIPRO ePERIPHERALS LIMITED, a company registered under the Companies Act, 1956,
having its registered office at 40/1A Basappa Complex, Lavelle Road, Bangalore
(hereinafter referred to as "the Company" which expression shall unless it be
repugnant to the context be deemed to include its successors in title and
permitted assigns) of the Second Part.
WIPRO TRADEMARKS HOLDING LIMITED, a company deemed to be registered under the
Companies Act, 1956, having its registered office at Doddakannelli, Sarjapur
Road, Bangalore - 560 035 (hereinafter referred to as "WTMHL" which expression
shall unless it be repugnant to the context be deemed to include its successors
in title and permitted assigns) of the third Part; and
THE PARTIES listed in Exhibit A to this Agreement (hereinafter collectively
referred to as "Promoters" which term and expression shall include its
successors and assigns)
WHEREAS
A. Wipro is a diversified company having a presence in a number of
businesses. Wipro, has, inter alia, been carrying on the business of
manufacture and marketing of computer peripherals through its Peripherals
Systems Division (PSD).
B. Wipro is a licensee of the trade name, brand name and/ or logo as
described in Schedule 1 to this Agreement (hereinafter referred to as the
"the Trade Mark") pursuant to a Trade Name License and Use Agreement
between Wipro TradeMarks Holding Limited and Wipro and consequently enjoys
various rights therein;
C. Wipro has decided to restructure PSD as a separate legal entity to allow
entrepreneurial talent, to get strategic investment, to facilitate the
growth of the volume driven product business in the new entity and to
create value for its shareholders.
D. Consequent to this, Wipro and the Company has entered into a Business Sale
and Purchase Agreement dated August 30, 2000 in terms of which the PSD of
the Company has been sold by Wipro to the Company.
E. In terms of the conditions contained in the Business Sale and Purchase
Agreement, Wipro agrees to assign certain Intellectual Property Rights as
per the details set out in Schedule 1 to this Agreement (hereinafter
referred to as "Intellectual Properties")
F. Therefore, the Parties hereto are now entering into this Trade Mark
License Agreement whereby Wipro has agreed to assign certain Intellectual
Property Rights.
NOW IT IS HEREBY AGREED BY AND BETWEEN THE PARTIES AS FOLLOWS:
<PAGE>
1. DEFINITIONS AND INTERPRETATIONS
1.1 Definitions
In this Agreement , the terms listed below shall, unless the context
requires otherwise have the meanings attached to them. These terms may be
identified by the capitalisation of the first letter of each principal
word thereof.:
1.1.1 "Agreement" shall mean this Trade Mark License Agreement.
1.1.2 "New Products" means any products (other than the Products) that the
Company may launch or introduce or market or manufacture.
1.1.3 "Party" means either of Wipro and / or the Company and "Parties" shall
refer to both of them collectively.
1.1.4 "Products" means the products set out in Schedule 3 to this
Agreement.
1.1.5 "Promoters" means all the shareholders of the purchaser (other than
the Vendor) each of whom individually hold more than 0.5% of the equity
share capital of the Purchaser.
1.1.6 "Related Agreements" shall refer to Business Sale and Purchase Agreement,
Participation and Management Agreement, Facilities and Services Agreement
and Intellectual Property Assignment Agreement
1.1.7 "Trade Mark" shall mean the trade name, brand name and/or logo having the
name "Wipro" either as suffix or prefix as detailed in Schedule 2 to this
Agreement.
1.2 Interpretation
Unless otherwise stated or unless the context otherwise requires, in this
Agreement:
(a) References to any document or agreement including this Agreement shall be
deemed to include any references to such documents or agreement as
amended, supplemented or replaced from time to time in accordance with
its terms and (where applicable) subject to compliance with the
requirements set forth therein.
(b) References to a statute, ordinance or other law shall be deemed to
include regulations and other instruments under it and consolidations,
amendments, re-enactments or replacements of any of them.
(c) References herein to Clauses and Schedules are to clauses in and
schedules to this Agreement unless the context requires otherwise and the
Schedules to this Agreement shall be deemed to form part of this
Agreement. The headings are inserted for convenience only and shall not
affect the construction of this Agreement.
(d) Unless the context requires otherwise, words importing the singular
include the plural and vice versa and words importing a gender include
every gender.
(e) Unless the context requires otherwise any words or items which are not
specifically defined in this Agreement shall have the same meaning
assigned to it in the Business Sale and Purchase Agreement and
Participation and Management Agreement.
<PAGE>
2. GRANT OF LICENSE
2.1 Subject to the terms and conditions of this Agreement, Wipro has permitted
the Company to use the Trade mark "Wipro" as a prefix to its corporate
name registered with the Registrar of Companies. Within one year of the
date of this Agreement or six (6) months prior to its IPO, whichever is
later, the Company shall change it's name to ensure that the word "Wipro"
is no longer used as part of its corporate name.
2.2 Subject to the terms and conditions of this Agreement, Wipro hereby grants
to the Company a non-exclusive license to use the Trade Mark as detailed
in Schedule 2:
(a) Solely in relation to its Products;
(b) Stationery, packing material, visiting cards and advertising
materials of the Company solely in relation to such Products.
Such license shall expire at the end of three years from the date of this
Agreement.
However, after the expiry of the said terms of three years, the parties
may mutually agree for a right to use the Wipro brand on such terms and
conditions as may be mutually agreed upon.
2.3 The Company shall not be entitled to use the Trade Mark in relation to any
New Products unless Wipro grants to the Company a license to use the Trade
Mark in relation to such New Products. For a period of two (2) years from
the date of this Agreement, Wipro shall not unreasonably refuse to grant a
license to use the Trade Mark in relation to the New Products. Thereafter
Wipro shall be free, at its own discretion, to refuse to grant a license
without providing any reason whatsoever. Any such license granted by Wipro
under this Clause 2.3 shall expire at the end of the three years from the
date of this Agreement.
2.4 The license of the Trade Mark by Wipro to the Company shall not be
licensed along with the goodwill of the business enjoyed by Wipro in India
in respect of use of the Trade Mark. Consequently, the Company shall not
have any right to the goodwill that exists or that may exist in relation
to the Trademark.
2.5 In consideration of giving the Company the rights under Clause 2.1, the
Company shall pay Wipro an amount of Rs.25.00 Mn ( RupeesTwenty five
Million) per year for the three years from the date of this Agreement).
2.6 The consideration payable under this clause shall be paid by the Company
to Wipro if the brand name "Wipro" is used by the Company even once either
as part of its name or in relation to its product.
2.6 The consideration payable under Clause 2.5 above shall be payable by the
Company to Wipro in the following manner;
Quarter ending Amount payable Due date for payment
September 30, 2000 Rs.20,85,000 October 31, 2000
Dec 31, 2000 to June 30, 2003 Rs.6,252,000 per quarter Within 30 days from
end of every quarter
<PAGE>
(11 quarters) (Rs.68,772,000 for 11 quarters)
September 30, 2003 Rs. 41,43,000 October 31, 2003
Total Rs.75,000,000
Any delay in payment beyond the above due dates shall be liable to an
interest @ 18% p.a. from the due date till the date of payment.
2.8 Notwithstanding anything contained in Clause 2.6, in the event of
termination of this Agreement for any reason whatsoever, all monies
payable by the Company to Wipro shall become due and payable immediately.
2.9 The trade mark "Wipro, as well as the Wipro brand name shall at all times
be used by the Company in accordance with the internal policies and
procedures hereafter referred to as the "Identity Manual" for usage of
such trade mark, trade name as issued by Wipro from time to time.
3. PROTECTION OF THE TRADE MARK
3.1 The Parties agree to take all necessary steps and to exert best efforts at
all times to ensure protection (statutory or otherwise) of the Trade Mark.
Consistent with this obligation, the Company agrees to execute all papers
and documents that Wipro may deem necessary or may require to ensure
protection of it's intellectual property rights in the Trade Mark, both
during and after the period of license granted under this Agreement.
3.2 Every use of the Trade Mark shall be to the benefit of Wipro.
3.3 The Company shall not, at any time, do or suffer any act to be done which
may in any way impair the rights of Wipro in the Trade Mark. The Company
shall use its best efforts to discover and, in so far as it is within its
power, to prevent any infringement of Wipro's rights in the Trade Mark.
3.4 The Company acknowledges and accepts Wipro's proprietary rights and
ownership in the Trade Mark and the Company shall not at any time do or
cause to be done any act or thing, directly and indirectly, contesting or
in any way impairing any part of the Wipro's rights in relation to the
Trade Mark or the goodwill symbolised thereby.
3.5 The Company agrees that it will not in any manner represent that it has
any ownership, interest in or to the Trade Mark or to any registration(s)
or application(s) for registration thereof, and hereby expressly waives
any future rights or claims accruing or arising in the Trade Mark in any
manner or form whatsoever.
3.6 Wipro hereby authorises the Company and the Company in turn undertakes to
use the Trade Mark solely in accordance with the terms and conditions of
this Agreement and by ensuring compliance with identity manual for use of
the Trade Mark (including stipulations with respect to quality standards
in relation to the Products and restrictions with respect to New Products)
that Wipro may give the Company from time to time.
3.7 The Company shall permit Wipro or its appointed representative at all
reasonable times to enter any of the premises of the Company, or the
premises from which the Business (or any part thereof) is undertaken, to
inspect the arrangements in relation to the manufacture and marketing of
the Products (or any New Products).
<PAGE>
3.8 If any aspect of the Business of the Company does not, in the opinion of
Wipro, conform to the identity manual of Wipro, Wipro shall inform the
Company in writing and the Company cease to use the Trade Mark at the end
of 60 days unless the Company has, to the satisfaction of Wipro, made such
changes to ensure that the policies and procedures laid down by Wipro in
the identity manual are met.
3.9 Wipro shall have the right to request that the Company change any
marketing literature, promotional and advertising material, publications,
stationary and building signage which display the Trade Mark produced by
or on behalf of the Company, which Wipro believes is or may be misleading
or which is or may be detrimental to the validity or reputation of the
Trade Mark or which misuses the Trade Mark, and the Company shall
immediately comply with such request.
4. DEVELOPMENT OF THE TRADE NAME
4.1 On account of the Company deriving benefit from the promotion of the Trade
Mark by Wipro, the Company agrees to pay Wipro an amount of Rs.3.00 Mn
(Rupees Three Million) per year for three years. The same shall be the
Company's contribution for the promotion of the Trade Mark
4.2 The amount payable under clause 4.1 shall be paid by the Company to Wipro
irrespective of the actual quantum of usage by Wipro towards promotion of
the trade mark.
4.3 The considerable payable under Clause 4.1 above shall be payable by the
Company to Wipro in the following manner;
Quarter ending Amount payable Due date for payment
September 30, 2000 Rs.252,000 October 31, 2000
Dec 31, 2000 to June 30, 2003 Rs.825,000 per quarter Within 30 days end
of every quarter
(11 quarters) Rs.8,250,000 (for 11 quarters)
September 30, 2003 Rs. 498,000 October 31, 2003
Total Rs.90,00,000
Any delay in payment beyond the above due dates shall be liable to an
interest @ 15% p.a. from the due date till the date of payment.
Notwithstanding anything contained in Clause 4.3, in the event of
termination of this Agreement for any reason whatsoever, all monies
payable by the Company to Wipro shall become due and payable immediately.
5. INFRINGEMENT
5.1 The Company shall forthwith notify Wipro in writing, of any (actual,
suspected or apparent) infringement, counterfeiting or passing off, or of
any circumstances which may adversely affect the rights of Wipro in the
Trade Mark, of which the Company is cognisant, immediately on such
information or knowledge being received by the Company. On receipt of such
information, Wipro shall be free to take all steps (including legal
action) that may be necessary.
5.2 Wipro shall, at its sole discretion and at its costs, defend any action
(whether legal or other) with a view to protect the Trade Mark in India
and to put an end to any such
<PAGE>
infringement, counterfeiting or passing off action and the Company will
provide all assistance and co-operation to Wipro in this regard. Any award
of damages by the Court or other authority shall inure to the benefit of
Wipro. The Company shall not be entitled to take or institute any such
action (either by way of informal protest, actions or proceedings) without
the express written approval of Wipro.
5.3 Notwithstanding Clause 5.2 all cost for ;
a. defending the name "Wipro ePeripherals" or any name which has either a
suffix or prefix of Wipro and usage of the letter "W" along with its
name shall be solely to the account of the Company.
b. Defending all cases which arises out of any wrongful usage of the
trade mark "Wipro" or trade name "Wipro".
6. LIMITATION OF LIABILITY
6.1 The Company shall not be liable for any claims, damages, losses, costs and
expenses or any other financial or other liabilities arising out of or
relating to the use of the Trade Mark by Wipro or any other group company
of Wipro, prior to the date of this Agreement.
6.2 Wipro shall not have any liability to the Company for claims by third
parties or any consequential losses, direct or indirect, suffered by the
Company with respect to the use of the Trade Mark by the Company on and
after the date of this Agreement.
7. TERM AND TERMINATION
7.1 At any time during the existence of a license to use the Trade Mark,
provisions of this Agreement and the licenses granted under Clause 2 in
particular may be terminated:
(a) Immediately upon the termination or expiration, for any reason
whatsoever, of any of the Related Agreements for any reason
whatsoever,
(b) Immediately, in case of winding up, liquidation, filing for
bankruptcy or compounding in respect of the Company.
(c) by mutual agreement of the Parties, and the termination in such case
will be effective at such time as may be agreed in writing between
Wipro and the Company.
7.2 Either Party shall also have the right to terminate this Agreement by
giving thirty (30) days' notice in writing to the other Party, in case
such other Party commits a material breach of the provisions of this
Agreement fails to remedy such breach to the satisfaction of the Company
within thirty (30) days after receiving written notice for remedying such
material breach.
7.3 Any termination of this Agreement, as aforesaid, shall not relieve any
Party of any obligations and liabilities accrued prior to the date of
termination.
8. NO AGENCY
The Parties agree that the relationship between Wipro and the Company
under this Agreement is that of principal to principal and no agency shall
be established as a result of this Agreement.
<PAGE>
9. WAIVER
The failure, with or without intent, of any Party to insist upon the
performance (in strict conformity with the literal requirements) by the
other Party of any term or stipulation of this Agreement, shall not be
treated or deemed to constitute a modification of any terms or
stipulations of this Agreement. Nor shall such failure or election be
deemed to constitute a waiver of the right of such Party at any time
whatsoever thereafter to insist upon performance by the other party
strictly in accordance with any terms or provisions hereof.
All terms, conditions and obligations under this Agreement shall remain in
full force and effect at all times during the subsistence of this
Agreement except where otherwise amended or modified by them by mutual
written agreement.
10. ENTIRE AGREEMENT AND MODIFICATIONS
The Parties confirm and acknowledge that this Agreement shall constitute
the entire agreement between them and shall supersede and override all
previous communications, either oral or written, between the Parties with
respect to the subject matter of this Agreement, and no agreement or
understanding varying or extending the same shall be binding upon any
Party unless arising out of the specific provisions of this Agreement.
No amendment, modification or addition to this Agreement shall be
effective or binding on either of the Parties unless set forth in writing
and executed by them through their duly authorised representatives; and
subject to obtaining requisite approval, if any, following such execution.
11. NOTICES
All notices, communications and other correspondence required or permitted
by this Agreement shall be in writing and shall be sent by (a) facsimile,
with confirmation copy sent by registered first class airmail, (b) by
personal delivery with acknowledgement of receipt or (c) by registered,
first class air mail, return receipt requested and postage prepaid, to the
following address:
in the case of the Wipro to: Corporate Vice President - Legal and Company
Secretary
WIPRO Limited
Doddakannelli, Sarjapur Road
Bangalore - 560 035
Fax: 91 (80) 844 0051
in the case of Company to: Chief Executive Officer
Wipro ePeripherals Limited
40/1A Basappa Complex
Bangalore
Fax 2270378
<PAGE>
in the case of
Wipro Trademarks Holding Ltd Director
Wipro Trademarks Holding Ltd.
Doddakannelli, Sarjapur Road
Bangalore
Fax 8440051
In the case of Promoters Ram N Agarwal
209/1B, HAL II Stage
16 B Main
Bangalore 560 008
All such notices, communications and correspondence shall be sent and
deemed to have been received as follows: (i) if by facsimile, upon receipt
of the confirmation copy; and (ii) if by personal delivery, courier or
registered, first class airmail, upon receipt or refusal of delivery. A
Party may change the address to which notices are to be sent by a notice
given in accordance with these provisions. All notices will be in English.
12. SEVERABILITY
Should any part of this Agreement be declared illegal or unenforceable,
the Parties will co-operate in all ways open to them to obtain
substantially the same result or as much thereof as may be possible,
including taking appropriate steps to amend, modify or alter this
Agreement.
If any term or provision of this Agreement shall be hereafter declared by
a final adjudication of any tribunal or court of competent jurisdiction to
be illegal, such adjudication shall not alter the validity or
enforceability of any other term or provision unless the terms and
provisions declared (by either Party) shall be one expressly defined as a
condition precedent or as of the essence of this Agreement, or comprising
an integral part of, or inseparable from the remainder of this Agreement.
13. GOVERNING LAW AND ARBITRATION
13.1 This Agreement shall be governed by and construed and enforced in
accordance with the laws of India.
13.2 Any dispute, controversy or claim arising out of or in relation to this
Agreement or the breach, termination or invalidity thereof, if the same
cannot be settled amicably among the Parties concerned, shall be settled
by final and binding arbitration in accordance with the Rules of
Conciliation and Arbitration of the International Chamber of Commerce. The
arbitration proceedings, shall take place at Bangalore in India and the
proceedings shall be exclusively in English.
13.3 No Party shall be entitled to commence or maintain any action in a court
of law upon any matter in dispute until such matter shall have been
submitted to arbitration and determined as provided above, and then only
for the enforcement of the arbitral award.
<PAGE>
13.4 Pending the resolution of a dispute by arbitration, the Parties shall,
except in the event of termination, continue to perform all their
obligations under this Agreement without prejudice to a final adjustment
in accordance with the arbitral award.
13.5 Notwithstanding anything contained herein, the Parties shall have a right
to institute legal proceedings to prevent any continuing breach of the
provisions of this Agreement to seek an injunctive or any other specific
relief.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by and
through their duly authorised representatives as of the date written herein.
SIGNED by Suresh C Senapaty
Corporate Executive VP-Finance )
for and on behalf of WIPRO )
in the presence of: Satish Menon )
Corporate Vice President-Legal & Company Secretary
SIGNED by Ram N Agarwal )
for and on behalf of THE COMPANY )
in the presence of: G Srinivasan )
SIGNED by Suresh C Senapaty )
for and on behalf of WIPRO TRADEMARKS HOLDING LTD.)
in the presence of:
SIGNED by Ram N Agarwal )
for and on behalf of THE PROMOTERS )
in the presence of: G Srinivasan
<PAGE>
Schedule 1
to the Trade Mark User Agreement
between Wipro and the Company
Wipro Trade Mark Description
Wipro
Wipro Applying Thought
Rainbow Flower
<PAGE>
Schedule 2
<TABLE>
<CAPTION>
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S.NO APLN.NO. TRADE MARK CLASS
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<S> <C> <C> <C>
1. 847030 WIPRO EX 100 SK 16
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2. 847031 WIPRO HQ 2400 16
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3. 847032 WIPRO LQ 1050+DK 9
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4. 847033 WIPRO LQ 1050+DK 16
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5. 847034 WIPRO HQ 1040+ 9
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6. 847035 WIPRO FX 1170 16
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7. 847036 WIPRO HQ 2400 9
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8. 847037 WIPRO HQ 200SX 16
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9. 847038 WIPRO HQ 200SX 9
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10. 847039 WIPRO HQ 1040+ 16
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11. 847040 WIPRO FX 1170 9
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12. 847041 WIPRO EX 200DK 9
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13. 847042 WIPRO WX 1050 9
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14. 847043 WIPRO LX 800 9
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15. 847044 WIPRO EX 1050 16
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16. 847045 WIPRO LX 840 9
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17. 847046 WIPRO LX 800 16
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18. 847047 WIPRO EX 200+ 9
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19. 847048 WIPRO LX 840 16
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20. 847049 WIPRO EX 200SK 9
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21. 847050 WIPRO EX 200+ 16
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22. 847051 WIPRO EX 200SK 16
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23. 847052 WIPRO EX 1050 9
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24. 847053 WIPRO EX 100SK 9
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25. 847054 WIPRO WX 1050 16
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26. 847055 WIPRO EX 200DK 16
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27. 851969 WIPRO LX 240 16
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28. 851970 WIPRO LX 240 9
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29. 635091 WIPRO EX 1050 16
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30. 635092 WIPRO EX 1050 9
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31. 635094 WIPRO EX 1050 16
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32. 580365 WIPRO TRON - 860 9
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33. 580366 WIPRO TRON - 860 16
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</TABLE>