EXCISED VERSION of Exhibit
10.138
Exhibit
10.138: Certain confidential information in this Exhibit 10.138 was omitted and
filed separately with the Securities and Exchange Commission (“SEC”) with a
request for confidential treatment by Inter Parfums, Inc.
LICENCE
AGREEMENT
J
CHOO LIMITED
AND
INTER
PARFUMS SA
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CONTENTS
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PAGE
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1.
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DEFINITIONS
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- 2
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2.
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LICENCE
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- 3
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3.
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COMPENSATION
TO LICENSOR
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- 4
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4.
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PRODUCTS
AND QUALITY CONTROL
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- 7
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5.
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MARKETING
AND LAUNCH PLANS, ADVERTISING, MARKETING AND SALES
PROMOTION
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- 9
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6.
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DISTRIBUTION
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15 -
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7.
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TERM
AND TERMINATION
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16 -
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8.
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TRADEMARKS
AND OTHER INTELLECTUAL PROPERTY RIGHTS
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18 -
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9.
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EXCLUSIVITY
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21 -
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10.
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PRODUCT
LIABILITY
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21 -
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11.
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CONFIDENTIALITY
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22 -
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12.
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NOTICES
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23 -
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13.
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ASSIGNMENT
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23 -
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14.
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ENTIRE
AGREEMENT, MODIFICATION
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23 -
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15.
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APPLICABLE
LAW, JURISDICTION
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24 -
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16.
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REMEDIES,
NO WAIVER
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24 -
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17.
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SEVERABILITY
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25 -
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18.
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SECTION
HEADINGS
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25 -
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19.
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FORCE
MAJEURE
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25 -
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Annex
A
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Trademarks
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Annex
B
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Form
of Royalty Report
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Annex
C
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Projected
Net Sales and Royalties
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Annex
D
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Selective
Distribution Criteria
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Annex
E
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Annual
Marketing Plan
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LICENCE
AGREEMENT
between
J
CHOO LIMITED
a company
incorporated under the laws of United Kingdom with Co No: 03185783, having its
registered office at 4, Lancer Square, Kensington Church Street, London W8
4EH
hereinafter
referred to as “LICENSOR”
and
INTER
PARFUMS SA,
a company
incorporated under the laws of France RCS Paris B 350 219 382 , having
its registered office at 4 rond-point des Champs Elysée 75008 PARIS,
France
hereafter
referred to as “LICENSEE”
WHEREAS,
LICENSOR and/or its RELATED COMPANIES (as hereinafter defined) are the owners of
the TRADEMARKS (as hereinafter defined), the tradename “Jimmy Choo” (hereinafter
“TRADENAME”), and the goodwill and reputation associated with them and
manufactures or has manufactured for it and sells under the TRADEMARKS luxury
lifestyle accessories with women’s shoes and handbags.
WHEREAS,
LICENSOR has the right to grant the exclusive right to use the TRADEMARKS and
the TRADENAME in connection with the marketing of luxury fragrance and cosmetic
products throughout the world in accordance with the terms and conditions of
this AGREEMENT and to grant a licence for the use of the TRADEMARKS as provided
herein.
WHEREAS,
LICENSEE desires to obtain the right to use the TRADEMARKS and the TRADENAME on
and in connection with the development, manufacture and sale of the PRODUCTS (as
hereinafter defined) throughout the world in accordance with the terms and
conditions of this AGREEMENT.
WHEREAS,
LICENSOR is willing to grant LICENSEE the right to use the TRADEMARKS and the
TRADENAME on and/or in connection with the manufacture and sale of the PRODUCTS
(as hereinafter defined) throughout the TERRITORY on the terms and conditions
hereinafter provided.
THEREFORE,
in consideration of the said premises and the mutual promises and covenants
contained herein, the parties agree as follows:
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1.
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DEFINITIONS
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Unless
the context otherwise requires, the following terms shall have the following
meanings:
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1.1
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“AGREEMENT”
shall mean this Licence Agreement including all Annexes and Exhibits
hereto, as the same may be amended, supplemented or modified in accordance
with Section
14 hereof;
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1.2
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“TERM”,
shall mean, subject to the terms and conditions of article 7.1 below, a
term of a period of 12 ( twelve) years commencing on
1 January 2010 and expiring on 31 December
2021.
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1.3
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“CONTRACTUAL
YEAR” shall mean for the duration of the TERM any period of twelve months
commencing on January 1 and ending on the following December
31;
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1.4
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“TRADEMARKS”
shall mean the trademark “Jimmy Choo” and other trademarks as represented
and listed in Annex A hereto,
together with any further names, symbols or marks which the parties may
agree to introduce in accordance with the provisions of this AGREEMENT for
the purpose of applying to the PRODUCTS, and shall include (but not be
limited to) the various registrations thereof which have been obtained,
which are pending, or which may be obtained, as are relevant to the
PRODUCTS;
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1.5
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“BOTTLES”
shall mean the bottles or other containers (including, but without
limitation, tubes, vials, jars, etc.) for the PRODUCTS in which the
PRODUCTS are sold;
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1.6
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“PRESENTATION”
shall mean all trademarks, get-up, designs, advertising, merchandising,
point of sale (“POS”), promotional and packaging (including labelling)
material appearing upon or used in relation to the
PRODUCTS;
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1.7
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“PRODUCTS”
shall mean such luxury fragrance (women’s and men’s fragrance and home
fragrance) and cosmetic products limited to bath and body products, to the
exclusion of skin care and make up products as shall be launched in
accordance with the provisions of this AGREEMENT, that LICENSEE may
market, distribute and sell in connection with the TRADEMARKS and/or the
TRADENAME pursuant to the terms and conditions of this
AGREEMENT;
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1.8
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“QUALITY
CRITERIA” shall mean that PRODUCTS (including the BOTTLES and the
PRESENTATION) shall be manufactured to the best standards of quality,
utilising quality ingredients and materials, such that the standard of
quality of the finished PRODUCTS and PRESENTATION is commensurate with
that to be expected of luxury fragrance products of similar price and
luxury to the PRODUCTS and shall be consistent with the luxury image
associated with the Jimmy Choo
brand.
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1.9
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“LICENSOR’S
OUTLETS” shall mean those shop-in-shops, corners, concessions, outlets and
free standing boutiques which are owned, operated or managed by LICENSOR,
by any of its RELATED COMPANIES and/or by a third party under the
TRADENAME;
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- 2
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1.10
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“TERRITORY”
shall mean all countries and territories throughout the world, including
duty free zones;
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1.11
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“NET
SALES” shall mean, to the exception of the United Kingdom and the United
States, the total prices invoiced by LICENSEE on Ex-Factory basis and by
any of its RELATED COMPANIES on net wholesale sales basis, on
the first sale of PRODUCTS in the ordinary course of business to a third
party, after deduction of any sales taxes , credits, product returns,
trade or cash discounts (including year-end discounts), provided that the
aggregate of such deductions shall not exceed such amount as would be
normal business practice in the Luxury fragrance sector for comparable
products. In respect of the United Kingdom and United States, NET SALES
shall refer to net wholesale sales whatever there is a RELATED COMPANY or
an independent distributor selling the PRODUCTS. For the avoidance of any
doubt, NET SALES shall not include sales of POS and/or promotional
materials, including but not limited to testers, minis, samples, show
cards and windows.
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1.12
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“RELATED
COMPANIES” shall mean any parent or subsidiary of any of the parties or
any company affiliated with or related to any of them in which they hold
more than 50% of the shares voting rights or otherwise has effective
control.
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2.
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LICENCE
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2.1
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LICENSOR
hereby grants LICENSEE an exclusive licence to use the TRADEMARKS and/or
the TRADENAME in connection with the development, manufacture, sale,
distribution, advertising, merchandising, promotion and marketing of the
PRODUCTS in the TERRITORY for the TERM of the AGREEMENT in accordance with
the conditions set out below. LICENSEE shall be entitled to use the
TRADEMARKS set forth in Annex A hereto
and/or the TRADENAME in connection with other trademarks and/or other
distinctive or descriptive attributes (words, logos, devices, etc.) but
only as LICENSOR shall first approve in accordance with Section 4.2 (in
particular Section 4.2.2)
and as set forth below.
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2.2
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During
the term of this AGREEMENT and subject to prior written approval by
LICENSOR, LICENSEE shall also be authorised to use the TRADENAME as a
branch or division name as “Parfums Jimmy Choo”, especially on stationery
, or, to incorporate the TRADENAME into the company name of a RELATED
COMPANY (as “Parfums Jimmy Choo”). The approval shall be deemed to have
been given if LICENSOR does not give written notice of disapproval within
one (1) month after LICENSOR has received LICENSEE’S written request for
approval together with details of the planned incorporation of the
TRADENAME.
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- 3
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2.3
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LICENSEE
warrants that any use of the TRADENAME by a branch, division or RELATED
COMPANY in accordance with the provisions of Section 2.2
above will only be permitted in order to enable LICENSEE to perform its
obligations in relation to the marketing, sale, development and
manufacturing of the PRODUCTS under this AGREEMENT, to the exclusion of
any other activities, and will be subject to that branch, division or
RELATED COMPANY complying in all other respects with the terms of this
AGREEMENT and all applicable local legal requirements relating to its
incorporation and the conduct of its
business.
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2.4
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LICENSEE
may only with LICENSOR’s prior written approval (which will be not be
unreasonably withheld or delayed) and subject to the warranties given in
Sections 10.2 to
10.4, be entitled to sell other products which are not PRODUCTS
together with PRODUCTS, especially in combination packages, marketed under
the TRADEMARK, or to give away other products as “gift with purchase”
together with the PRODUCTS (hereinafter collectively called “OTHER
PRODUCTS”).
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3.
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LICENCE
ROYALTIES
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3.1
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In
consideration of the rights granted and the services to be performed by
LICENSOR during each CONTRACTUAL YEAR or part thereof, LICENSEE shall pay
to LICENSOR a royalty which shall in any CONTRACTUAL YEAR be a minimum
amount as specified in Section 3.3 below and be calculated as
follows:
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3.1.1-
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in
respect of PRODUCTS sold in any countries of the TERRITORY, to the
exception of the United Kingdom and the United States as specified in
Section 3.1.2 below, the royalty shall be equal to [—————]1 of NET SALES of all
PRODUCTS sold in any CONTRACTUAL
YEAR
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3.1.2-
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in
respect of PRODUCTS sold in the United Kingdom and United States in any
CONTRACTUAL YEAR either by a RELATED COMPANY or by a distributor directly
to a retailer or retail outlet which sells PRODUCTS to
consumers for personal use, the royalty shall be equal to [——————]2 of the net
wholesale sales as specified in clause 1.11
above.
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1
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No. 10.138.1.
2
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.2.
- 4
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3.2
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LICENSEE
agrees to pay the following guaranteed minimum royalties to LICENSOR to be
paid in (4) equal amounts in each CONTRACTUAL YEAR (“CY”) in accordance
with Section
3.3 below:
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MINIMUM
GUARANTEED ROYALTIES
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Contractual Year
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Minimum Guaranteed
Royalty
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CY
1 Jan 1 to Dec 31 2010
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EUR
[———-]3, pro-rated
depending on the month of the launch in 2010
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CY
2 Jan 1 to Dec 31 2011
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EUR [———-]4
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CY
3 Jan 1 to Dec 31 2012
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EUR [———-]5
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CY
4 Jan 1 to Dec 31 2013
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EUR [———-]6
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CY
5 Jan 1 to Dec 31 2014
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EUR [———-]7
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CY
6 Jan 1 to Dec 31 2015
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EUR [———-]8
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CY
7 Jan 1 to Dec 31 2016
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EUR [———-]9
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CY
8 Jan 1 to Dec 31 2017
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EUR [———-]10
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CY
9 Jan 1 to Dec 31 2018
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EUR [———-]11
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CY
10 Jan 1 to Dec 31 2019
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EUR [———-]12
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CY
11 Jan 1 to Dec 31 2020
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EUR [———-]13
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CY
12 Jan 1 to Dec 31 2021
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EUR [———-]14
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14
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.14.
- 5
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For the
avoidance of doubt, the parties agree that the minimum guaranteed royalties of
the CY 1 shall be pro-rated depending on the month of the launch of the first
feminine fragrance. Launch month is defined as the month in which the first
commercial invoice for the sale of licensed PRODUCT is raised by LICENSEE. In
the event that such fragrance is not launched in 2010, the minimum guarantee for
CY1 shall not be applicable. However, it is agreed that it is in the parties’
best interest to launch in 2010 to take advantage of market conditions and
LICENSEE shall use its best efforts to launch within CY1. Additionally it is
agreed that the minimum guaranteed royalties shall be non-cumulative on a
year-to-year (CONTRACTUAL YEARS) basis. Projected net sales and projected
royalties appear at Annex C. For the
avoidance of doubt, it is agreed that the said figures are set out on an
indicative basis as far as there is no track record for a JIMMY CHOO business
fragrance. Therefore such projected net sales and related projected royalties
shall not be deemed to create any contractual obligations binding upon the
LICENSEE.
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3.3
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All
royalties shall be paid in Euro. LICENSEE shall, for each quarter of each
CONTRACTUAL YEAR, pay to LICENSOR the greater of the cumulative amount of
royalties payable under Section 3.1
above or the cumulative minimum royalties due in that CONTRACTUAL YEAR up
to that date less any royalties, whether payable under Section 3.1 or
guaranteed minimum royalty payments, already paid in that CONTRACTUAL
YEAR. In no event shall the royalties paid for each quarter be less than
[———-]15 of the annual
minimum guaranteed royalty after taking into account any excess over the
minimum royalty payment paid for the previous quarters in that CONTRACTUAL
YEAR. These payments will be made within [———-]16 calendar days
after the end of each calendar quarter, such quarters ending on 31 March,
30 June, 30 September and 31 December in each CONTRACTUAL YEAR. Each
payment shall be accompanied by a quarterly royalty report in the form as
attached as Annex
B.
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3.4
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In
addition to the quarterly royalty reports referred to in Section 3.3
above, LICENSEE shall – if requested by LICENSOR promptly after the end of
a calendar year – provide to LICENSOR within [———-]17 months of the end
of each calendar year a global certificate from its internal auditors
certifying that the volume and value of sales of the PRODUCTS for that
calendar year and that the figures contained in the quarterly royalty
reports for the same calendar year correspond with the entries in the
books of LICENSEE and where appropriate, any RELATED COMPANY of LICENSEE
or any other entity under its control and certifying the global deductions
from gross sales made to calculate the NET SALES figure for the relevant
calendar year. The certificate shall also certify that the figures set out
in the year-end rebate referred to in Section 6.5 are
true and accurate. Additionally, upon request by, LICENSEE shall provide a
certificate from its external auditors confirming that the volume and
value of sales of the PRODUCTS for that calendar year and that the figures
contained in the quarterly royalty reports correspond with the entries in
the books of LICENSEE and, where appropriate, any RELATED COMPANY of
LICENSEE or any other entity under its control and certifying the global
deductions from gross sales made to calculate the NET SALES figure for the
relevant calendar.
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17
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.17.
- 6
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3.5
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Failure
by LICENSEE to make payment of any royalties within [———-]18 working days after
their due date shall thereafter incur accrued interest at the basic bank
interest rate of BNP, Banque Nationale de Paris, plus [———-]19 per annum. Payment
shall be applied first against any interest which may have been accrued to
the date of the payment and any balance against the amount of royalties
outstanding.
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3.6
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All
taxes required by law to be withheld or assessed on or with respect to the
remittance of royalties by LICENSEE or any RELATED COMPANY hereunder
shall, if paid by LICENSEE or any related party, be deducted from the
amount of royalties payable to LICENSOR. LICENSEE shall furnish LICENSOR
with documentation reflecting the amount and proof of such tax
payments.
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3.7
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LICENSEE
shall not be obliged to pay royalties on any compensation received from
its customers as participation in advertising and sales promotion, such as
payments for decoration, testers and samples which will not be charged to
end consumers.
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3.8
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LICENSEE
agrees to keep full and accurate books and records relating to the
marketing and the sale of the PRODUCTS. LICENSEE agrees that LICENSOR
shall have the right to inspect, audit or make copies of the books and
records of LICENSEE and/or any RELATED COMPANIES of LICENSEE relating to
the computation and the payment of the royalties due and owing to LICENSOR
within two years after the quarter in question up to [———-]20 times a year at
reasonable times and upon no less than [———-]21 month’s prior
notice. This right terminates [———-]22 years after the
expiration of this AGREEMENT.
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3.9
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If
a shortfall in the ROYALTIES paid is verified, LICENSEE shall promptly pay
to LICENSOR all additional ROYALTIES due. If the shortfall is greater than
[———-]23 of the cumulative
amount of ROYALTIES paid by LICENSEE for the relevant CONTRACT YEAR, then
the LICENSEE shall also pay to LICENSOR an amount equal to the reasonable
costs and expenses of LICENSOR’S examination together with interest
calculated in accordance with Section 3.5
above.
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4.
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PRODUCTS
AND QUALITY CONTROL
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4.1
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The
parties shall collaborate in the development process of the PRODUCTS so
that the PRODUCTS brought to the market will be consistent with the image
of LICENSOR and the TRADEMARKS, and in conformity with the QUALITY
CRITERIA.
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18
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.18.
23
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.23.
- 7
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LICENSEE
expressly agrees to take LICENSOR’S image and reputation into consideration in
the development and the manufacturing of the PRODUCTS and ensure that the
PRODUCTS will be in accordance with LICENSOR’S image and reputation and will not
harm or diminish LICENSOR’S image and reputation and the goodwill LICENSOR has
built up with its other products.
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4.2
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The
parties agree that LICENSOR shall have approval rights with regard to the
PRODUCTS over:
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·
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the
concept
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·
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the
scent
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·
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the
name
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·
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the
inner and outer packaging (including but not limited to the bottles, the
folding boxes, any other packagings, tubes, vials and jars, decoration,
testers and samples)
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·
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advertising
creative and PR events
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and any
changes made thereto. As far advertising and marketing, it is referred to Section 5.5
below.
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4.2.1
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If
LICENSOR does not give its approval of any of LICENSEE’S proposals with
regard to the concept, the scent or the packaging, it shall give its
reasons for such withholding and agrees to submit its ideas, input,
advice, and suggestions with regard thereto to LICENSEE within [———-]24 business days
after having received such
proposal.
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4.2.2
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Within
[———-]25 business days of
receipt of LICENSEE’S request for approval of any name in accordance with
this Section
4.2, or any trademark and/or any other attribute in accordance with
Section
2.1 as well as the submission of a completed availability search by
LICENSEE in accordance with Section 8.16
below, LICENSOR shall notify LICENSEE which names, trademarks or
attributes it approves or disapproves and shall give its reason for any
disapproval.
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4.2.3
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In
the event of non-approval pursuant to Sub-Sections 4.2.1
and/or 4.2.2 above, LICENSEE agrees to take LICENSOR’S comments,
ideas, input and advice into consideration and to amend or revise its
proposal and/or implement LICENSOR’S suggestions and submit the revised
proposal to LICENSOR for its approval, it being understood that LICENSOR
and LICENSEE shall use their best endeavours to closely cooperate in order
to have finally a satisfactory common
project.
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4.2.4
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Any
proposal submitted to LICENSOR for approval and not disapproved within
[———-]26 business days
after LICENSOR having received such proposal shall be deemed to have been
approved.
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26
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.23.
- 8
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4.3
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LICENSEE
shall be responsible for ensuring that the PRODUCTS, the BOTTLES, the
PRESENTATION and the scent/fragrance comply with the agreed designs,
models and prototypes and with all relevant laws, regulations,
specifications and standards in force with respect thereto and with all
LICENSOR’S reasonable instructions relating to the PRODUCTS, in
particular, their quality and presentation. LICENSEE will withdraw from
the course of manufacture and/or storage and not place upon the market any
goods found not in accordance with the QUALITY CRITERIA, whether fully or
partly manufactured.
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4.4
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LICENSEE
agrees to use commercially reasonable efforts to develop the sales of the
PRODUCTS and to launch new PRODUCT lines at least in key markets, as
follows:
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-
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CONTRACTUAL
YEAR [———-]27 : launch of the
first fragrance for women
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-
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CONTRACTUAL
YEAR[———-]28: launch of the
second new fragrance for women
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-
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CONTRACTUAL
YEAR [———-]29 : launch of the
third new fragrance for women
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4.5
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LICENSOR
agrees to use its best efforts to ensure that the reputation, image and
the goodwill of the TRADEMARKS and/or of the TRADENAME shall retain its
present standing (as of signing of this AGREEMENT), particularly in
connection with other products manufactured and/or distributed under the
TRADEMARKS and/or the TRADENAME by LICENSOR, RELATED COMPANIES of LICENSOR
or other licensees, sub-licensees and franchisees of
LICENSOR.
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4.6
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LICENSEE
will permit LICENSOR or its authorised representative at all reasonable
times to enter the LICENSEE’S premises where the PRODUCTS are made,
stored, distributed or sold, for the purpose of inspection thereof. In
order to enable LICENSOR to control the quality of the PRODUCTS, LICENSEE
agrees to submit to LICENSOR after reasonable request random samples (up
to 4 items per range of PRODUCTS) free of cost for
inspection.
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4.7
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If
LICENSEE uses sub-manufacturers or sub-licensees, in accordance with the
terms of this AGREEMENT for the manufacture of the PRODUCTS, LICENSEE
shall remain liable for ensuring that the quality of the PRODUCTS remains
in accordance with the QUALITY CRITERIA. LICENSEE shall permit or procure
that the sub-manufacturer or sub-licensee shall permit the LICENSOR or its
representative during normal business hours to enter any place of
manufacture or storage occupied by or used by the sub-manufacturer or the
sub-licensee for the purpose of inspection of the PRODUCTS and to ensure
that the QUALITY CRITERIA are being adhered
to.
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5.
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MARKETING
AND LAUNCH PLANS, ADVERTISING, MARKETING AND SALES
PROMOTION
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5.1
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LICENSEE
shall, on a [———-]30 months basis, and
in each calendar year, communicate in writing to LICENSOR the
following:
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27
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.23.
29
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.29.
30
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.30.
- 9
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(a)
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its
marketing plan for the following [———-]31 months period to
include the information set out in Annex E
hereto;
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(b)
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any
new PRODUCT launch plans, if relevant, in accordance with Section 5.3
below.
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5.2
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At
the time LICENSEE presents its marketing plan in accordance with Section 5.1 (a)
above, LICENSOR shall present its PRODUCT marketing plan for the following
[———-]32 month
period.
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5.3
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The
launch plan for each new line of PRODUCTS shall be presented at the
relevant marketing proposal presentation referred to in Section 5.1
above, or at a separate presentation if agreed by the
parties.
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5.4
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LICENSEE
shall be responsible for producing and circulating all advertising and
promotional materials in the TERRITORY at its cost. LICENSEE agrees to
take LICENSOR’S image into consideration in its advertising and promotion
for the PRODUCTS and to ensure that the advertising and promotion for the
PRODUCTS will be in accordance with LICENSOR’S image and reputation and
will not harm or diminish LICENSOR’S image and reputation and the goodwill
LICENSOR has built up with its other products. LICENSEE further agrees to
consult with LICENSOR with regard to advertising and sales promotion and
to take LICENSOR’S advice into due consideration in order to develop
advertising which is consistent with the image and reputation of LICENSOR.
Notwithstanding the foregoing, LICENSOR shall have final approval over the
advertising agency, model, stylist and photographer used in each key
campaign.
|
|
5.5
|
The
parties agree that LICENSOR shall have approval rights with regard to the
advertising and marketing for the PRODUCTS
over
|
the
“central” marketing materials
the
“central” PR releases
the
“central” advertising material
major
public relation events
(“central”
means the initial core materials that will be sent by LICENSEE to international
markets for translation and adaptation to local markets. It is thereby
understood, that there will be no “local” marketing, PR and advertising material
other than the translated or to the local needs adapted “central” marketing, PR
and advertising material).
32
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.32.
- 10
-
If
LICENSOR does not consent to any of LICENSEE’S proposals with regard to the
advertising and marketing for the PRODUCTS, it shall give its reasons for such
withholding and agrees to submit its ideas, input and advice with regard thereto
to LICENSEE within [———-]33 business days after
having received such proposal. LICENSEE agrees to take LICENSOR’S comments,
ideas, input and advice into consideration and amend or revise its proposal
and/or implement LICENSOR’S suggestions and submit the revised proposal to
LICENSOR for approval-it being understood that LICENSOR and LICENSEE shall use
their best endeavours to closely cooperate in order to have finally an agreed
marketing plan.
|
5.6
|
LICENSEE
undertakes to spend jointly with its distributors the following amounts in
respect of advertising and marketing of the PRODUCTS (hereinafter called
“Advertising and Marketing
Expenditure”)
|
|
|
5.6.1
|
in
the event that the fragrance is launched in CONTRACTUAL YEAR 2010, in
CONTRACTUAL YEAR 2010, the minimum amount of the Advertising and Marketing
Expenditure shall be Euros [———-]34
|
|
|
5.6.2
|
in
the CONTRACTUAL YEAR 2011, the minimum amount of the Advertising and
Marketing Expenditure shall be Euros [———-]35;
|
|
|
5.6.3
|
in
the CONTRACTUAL YEAR 2012, the minimum amount of the Advertising and
Marketing Expenditure shall be Euros [———-]36;
|
|
|
5.6.4
|
during
the three following CONTRACTUAL YEARS, the minimum amount of the
Advertising and Marketing Expenditure shall be [———-]37 of the NET SALES
in the year 2013 and [———-]38 of the NET SALES
for the years 2014 and 2015;
|
|
|
5.6.5
|
Subject
to the provisions of article 7 below, the minimum amount of the
Advertising and Marketing Expenditure shall be [———-]39 of the NET SALES
for the remainder of the term of this agreement until 31st
December 2021;
|
|
5.7
|
LICENSEE
shall spend jointly with its distributors the amount of the minimum
Advertising and Marketing Expenditure specified in clause 5.6.4 above
split between the following
percentages:
|
33
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.33.
39
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.39.
- 11
-
- “Above
the line”
expenditures [———-]40
- “Below
the line”
expenditures [———-]41
For the
avoidance of doubt, an equivalent proportionate split shall be applied to the
Minimum Advertising and Marketing Expenditure specified in clauses 5.6.1 to
5.6.3 inclusive, which is represented as follows:-
Clause
5.6.1- EUROS [———-]42
- the
proportionate split is EUROS [———-]43 “Above the line” and
EUROS [———-]44 “Below the
line”
Clause
5.6.2- EUROS [———-]45
- the
proportionate split is EUROS [———-]46 “Above the line” and
EUROS [———-]47 “Below the
line”
Clause
5.6.3 –EUROS [———-]48
|
|
-
|
the
proportionate split is EUROS [————]49 “Above the line”
and EUROS [———-]50 “Below the
line”
|
Clause
5.6.4 – [———-]51
|
|
-
|
the
proportionate split is [———-]52 “Above the line”
and [———-]53 “Below the
line”
|
53
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.53.
- 12
-
Clause
5.6.4 – [———-]54
-the
proportionate split is [———-]55 “Above the
line” and [———-]56 “Below the
line”
For the
purpose of this section 5.7, "Above the line" expenditures
shall include all advertising through mass media advertising (magazines, radio,
press/print, TV, billboards, web and internet banner ads, cinema) and
cooperative advertising (advertising related to the PRODUCTS in magazines and
store catalogues produced by or on behalf of retailers (such as Marionnaud,
Sephora, Saks), as well as direct production costs (agency costs, photographer,
buyouts, usage rights, modelling costs) and "Below the Line" expenditures
shall POS displays, testers, demonstration, gift with purchases, show cards,
windows, dummies, other sell-through (direct mail, consumer meetings (including
costs of independent beauty consultant incurred in respect of selling or
presenting the PRODUCTS in the point of sale), stand in department stores,
public relations (including trade shows).
Product
development costs (e.g. tooling) for new PRODUCTS launched and pre-launch costs
(e.g. PR, events and basic set up costs) in the first year of their launch,
shall NOT be included in the Advertising and Marketing
Expenditure.
|
5.8
|
Any
information about LICENSOR as well as any pictures and photos of LICENSOR
or LICENSOR’S OUTLETS shall be subject to LICENSOR’S prior written
approval.
|
LICENSOR
agrees to sell to LICENSEE a reasonable number of samples of other products of
LICENSOR at wholesale price and provide LICENSEE with a reasonable number of
photos, drawings, etc. of LICENSOR’S shops or products for LICENSEE’S use in
advertising, promotion or any other way. In the event that LICENSOR meets any
reasonable request of LICENSEE, for example, creating product for a photo shoot
or providing such other product and/or service which is specific to the
LICENSEE’s requirements, then LICENSEE shall fully reimburse LICENSOR for all
costs and expenses related thereto.
|
5.9
|
In
case LICENSOR and LICENSEE intend to arrange for public relation
statements referring to their co-operation they will beforehand consult
with each other and harmonise words, pictures and further details of the
public relation actions and each shall confirm in writing to the other its
approval of the final format of such statement prior to public
release.
|
|
5.10
|
If
requested by LICENSEE, LICENSOR agrees to inform LICENSEE about its actual
marketing strategies and communication concepts by providing LICENSOR with
relevant technical information, namely any and all retail information in
connection with, for example, creative and technical input with respect to
design, image, corporate identity, brand direction, advertising, marketing
and promotion (including LICENSOR’S global marketing policy) relating to
the PRODUCTS;
|
56
Confidential information omitted and filed separately with the SEC with a
request for confidential treatment by Inter Parfums, Inc. No.
10.138.56.
- 13
-
|
5.11
|
LICENSEE
shall take these strategies into reasonable consideration for the
development of the advertising and promotion for the
PRODUCTS.
|
|
5.12
|
If
requested by either party, the parties shall consult with each other from
time to time on advertising and promotion activities to be implemented
jointly and/or together with other licensees, sub-licensees or franchisees
of LICENSOR.
|
|
5.13
|
LICENSEE
shall make available to LICENSOR:
|
|
|
-
|
a
[———-]57 report on the
status of its expenditure for advertising, merchandising and promotions,
including Advertising and Marketing Expenditure;
and
|
|
|
-
|
regular
evidence of expenditure in relation to advertising, merchandising and
promotion for the PRODUCTS by providing representative samples of its
advertising, public relation releases,
etc.
|
|
5.14
|
LICENSOR
shall be free to use for LICENSOR’S OUTLETS LICENSEE’S advertising and
marketing materials for the PRODUCTS, subject to the limitations of rights
granted by third parties in relation to such advertising and marketing
materials for the PRODUCTS. To this end, LICENSEE will supply to LICENSOR
reasonable quantities of aforesaid material, upon request by LICENSOR at
local wholesale price.
|
|
5.15
|
LICENSEE
shall reimburse LICENSOR for any expenses incurred on LICENSEE’s behalf in
relation to marketing and advertising activities including but not limited
to personal appearances, launch events, advertising shoots and public
relations activities. Such expenses shall include but shall not be limited
to the payment of First Class travel and accommodation for LICENSOR’s
Senior Management (President and CEO) and Business Class travel and
accommodation for all other LICENSOR
employees.
|
|
5.16
|
On
a bi-annual basis LICENSEE shall submit to LICENSOR a list of requests for
LICENSOR’s participation in certain activities to promote the PRODUCTS
such as key media interviews, launch events, in store appearances and
other such public relations activities as may be requested. LICENSEE shall
reimburse LICENSOR’s costs and expenses for its participation in any of
the activities. LICENSEE acknowledges that LICENSOR has the absolute right
to refuse to participate in any given activity without giving any
reasons.
|
|
5.17
|
It
is acknowledged that from time to time Tamara Mellon or such similarly
situated Executive at the given time (“JC President”) shall be making
personal appearances to promote the PRODUCTS upon the mutual agreement of
the parties. In the event that the JC President participates in any
broadcast media, television show, red carpet event, or key editorial shoot
focused on the PRODUCTS then LICENSEE shall reimburse LICENSOR for make
up, stylist and First Class travel and accommodation (including specialist
driver services) costs and
expenses.
|
57 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.57.
- 14
-
|
6.
|
DISTRIBUTION
|
|
6.1
|
LICENSEE
agrees to distribute the PRODUCTS or have them distributed by its RELATED
COMPANIES or third party distributors only through selected distribution
channels (speciality department stores, qualified independent perfumeries,
select perfumery chains and travel retail outlets) of a similar standing
luxury and prestige to the Jimmy Choo brand and subject that other brands
of same level of profile as Jimmy Choo are also represented. For the
avoidance of doubt, LICENSEE will inform LICENSOR of its proposed
arrangements with regard to US distribution for its prior written
approval.
|
|
6.2
|
LICENSEE
shall use its best efforts to ensure that such outlets conform with
LICENSOR’S selective distribution criteria as set out in Annex D hereto.
LICENSOR reserves the right for its representatives to visit all outlets
supplied by LICENSEE or its authorised distributors in order to ensure
that they do so conform and, in the event they do not and after being
requested by LICENSOR, LICENSEE shall, subject to compliance with local
laws, ensure that such outlets will no longer be supplied with the
PRODUCTS.
|
|
6.3
|
LICENSEE
agrees not to distribute or sell the PRODUCTS though correspondence
(including internet, mail order / catalogue sales) without first obtaining
LICENSOR’S written consent. LICENSEE further agrees that the marketing,
distribution or sale of the PRODUCTS through any electronic means such as
the Internet shall only be authorised for approved retailers provided they
have a physical outlet fulfilling the criteria as set out in Section
6.2/Annex D, and provided that the use of the Internet is consistent with
the high quality and high luxury image of the PRODUCTS and criteria as
LICENSOR may reasonably communicate from time to
time.
|
|
6.4
|
LICENSOR
shall be free, in its exclusive discretion, to market and sell the
PRODUCTS through LICENSOR’S OUTLETS in the TERRITORY. It is agreed that
LICENSOR, and any of its RELATED COMPANIES or franchisees, shall order the
PRODUCTS from LICENSEE, and LICENSEE shall accept, or procure the
acceptance of such orders, and shall deliver the PRODUCTS to LICENSOR at
local wholesale price minus [———-]58. Royalties shall
be paid in accordance with the provisions of Section 3 above on sales to
LICENSOR, any of its RELATED COMPANIES or franchisees in accordance with
this Section.
|
|
6.5
|
LICENSEE
shall sell the PRODUCTS to employees of LICENSOR at LICENSEE’s wholesale
price less [———-]59.
|
58 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.58.
59 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.59.
- 15
-
|
7.
|
TERM
AND TERMINATION
|
|
7.1
|
The
term of this AGREEMENT shall commence on January 1, 2010 and shall have a
duration of twelve (12) CONTRACTUAL YEARS expiring on December 31,
2021. This AGREEMENT may be terminated, with effect from 31
December 2016 subject to a six-month prior notice, if the
LICENSEE has not complied with the payment of the minimum royalties in
clause 3.2, the minimum Advertising and Marketing spend in clause 5.6 or
if the LICENSEE has not achieved during the CONTRACTUAL YEAR 2015 at least
EUROS [————]60 NET
SALES.
|
|
7.2
|
If
the aggregate of the NET SALES from 1 January 2015 to 31 December 2015 in
respect of the licensed PRODUCTS is less than EUROS [———-]61 NET SALES, either
party shall, with effect from 31 December 2016, be entitled to terminate
this Agreement, by giving at least [———-]62 month’s notice
expiring on or before 31 December
2016.
|
|
7.3
|
The
parties agree that they shall no later than 31 December 2018 (CONTRACTUAL
YEAR 9) consult together with a view to agreeing the terms and conditions
upon which they may further extend the AGREEMENT for a further [————]63 years until 31
December 2026, but in the absence of any such renewal agreement by 31
December 2020 this Agreement shall terminate on 31 December
2021.
|
|
7.4
|
If
LICENSEE fails to invoice third parties and/or retailers by April 2011 for
whatever reason, LICENSOR may terminate this AGREEEMENT by serving [———-]64 months notice on
LICENSEE.
|
|
7.5
|
Each
party shall be entitled to terminate the AGREEMENT upon written notice to
the other party upon the occurrence of any of the following
events:
|
|
|
7.5.1
|
the
other party shall default or fail to make when due any payment due
hereunder, and such default or failure shall continue for a period of
[———-]65 days after receipt
of notice thereof from the other
party;
|
|
|
7.5.2
|
a
material breach of any provision of this AGREEMENT which is not remedied
within [———-]66 days of written
notice thereof;
|
|
|
7.5.3
|
liquidation,
insolvency or bankruptcy, suspension of payments, heavy indebtedness or
discontinuance of business of the other
party;
|
|
|
7.5.4
|
any
of the circumstances referred to in Section 19
below persist for a period of at least [———-]67 calendar
months.
|
60 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.60.
61 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.61.
62 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.62.
63 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.63.
64 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.64.
65 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.65.
66 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.66.
67 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.67.
- 16
-
|
7.6
|
Any
notice of termination must be given by means of a registered letter sent
to the relevant party’s address in accordance with the provisions of Section 12
below.
|
|
7.7
|
Upon
the expiration or termination of the
AGREEMENT:
|
|
|
7.7.1
|
LICENSEE
shall cease to manufacture the PRODUCTS, the BOTTLES and the
PRESENTATION;
|
|
|
7.7.2
|
provided
the termination has not been a result of default of LICENSEE or of notice
having been given by either party under Sections 7.4
above, LICENSEE shall be entitled to sell off the existing stock of
PRODUCTS for a period up to [———-]68 months following
the date of termination and to use up the existing materials for the
manufacture of the PRODUCTS and to sell off the so-produced PRODUCTS
within the sell-off period. During the sell-off period LICENSEE shall
continue to provide [———-]69 reports and pay
royalties on NET SALES, but shall not be obliged to pay any minimum
royalties. PRODUCTS will not be sold at a discount (other than ordinary
discounts in the normal course of business) unless LICENSOR’S prior
written approval has been obtained;
|
|
|
7.7.3
|
LICENSEE
shall either at the end of the sell-off period referred to in Section
7.7.2 above or, if there is no sell-off period, upon expiration or
termination of the AGREEMENT, promptly supply to LICENSOR an inventory of
the PRODUCTS, BOTTLES and PRESENTATION and all other materials relevant to
manufacture, marketing and distribution of the PRODUCTS, including but not
limited to bottles, folding-boxes or other containers then in stock, and
an inventory of all relevant tooling. LICENSOR shall have the right to
purchase the inventory at production cost or, in case of tooling, at its
depreciated value (based on depreciation over five years in accordance
with standard accounting principles) within [———-]70 months after
receipt of the inventory; If not otherwise agreed between the parties,
LICENSOR, if using its option, has to acquire any and all of the PRODUCTS,
bottles, packaging, semi-finished PRODUCTS and materials, unless obsolete,
damaged or otherwise un-saleable at the lower of cost or net realisable
value;
|
|
|
7.7.4
|
LICENSEE
will return all material relating to the PRODUCTS which is the property of
LICENSOR promptly following termination or, if relevant, at the end of the
sell-off period;
|
|
|
7.7.5
|
all
rights granted to LICENSEE to use the TRADEMARKS, the TRADENAME, the
BOTTLES and the PRESENTATION and the scent/fragrance of the PRODUCTS shall
cease.
|
68 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.68.
69 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.69.
70 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.70.
- 17
-
|
7.8
|
Stocks
of PRODUCTS, BOTTLES and PRESENTATION which display the TRADEMARKS and any
relevant tooling not purchased by LICENSOR and not disposed of during the
sell-off period may be disposed of in such manner as shall be mutually
agreed by the parties or, failing agreement shall be
destroyed.
|
|
8.
|
TRADEMARKS
AND OTHER INTELLECTUAL PROPERTY
RIGHTS
|
|
8.1
|
LICENSOR
guarantees and warrants that it is, respectively, will be, the owner of
the TRADEMARKS set forth in Annex A
hereto and the TRADENAME for the PRODUCTS and to grant this exclusive
license to use the TRADEMARKS set forth in Annex A
hereto and the TRADENAME for the PRODUCTS for the purpose of this
AGREEMENT.
|
|
8.2
|
Subject
to this Section 8.and in general information with respect to the
TRADEMARKS supplied to LICENSEE during the TERM of this AGREEMENT,
LICENSOR undertakes to (i) defend LICENSEE against any and all claims by
third parties based on the use by LICENSEE in accordance with this
AGREEMENT of the TRADEMARKS and/or the TRADENAME and (ii) to indemnify,
reimburse and hold LICENSEE harmless from any and all liability, damages,
cost and expenses, including reasonable attorneys’ fees incurred by
LICENSEE, arising from any such claims made by third parties against
LICENSEE with respect to LICENSEE’S use of the TRADEMARKS and/or the
TRADENAME in accordance with this
AGREEMENT.
|
|
8.3
|
LICENSEE
acknowledges that LICENSOR and/or its RELATED COMPANIES are the exclusive
owners of all rights, title and interests in the TRADEMARKS and/or the
TRADENAME and any part thereof and any other element, whether or not
capable of being registered as a trademark together with all rights in the
designs, copyright, including sketches and technical drawings or other
intellectual property or materials relating to the PRODUCTS, the
PRESENTATION and the BOTTLES, whether produced by LICENSOR or by LICENSEE
or by any sub-contractor or third party appointed by LICENSEE, and of all
goodwill attached thereto and agrees not to attack these rights or to
induce or support any such attacks. The parties agree that any rights in
the TRADEMARKS and the TRADENAME arising from the use of the TRADEMARKS
and/or the TRADENAME or any part thereof by LICENSEE shall inure solely to
the benefit of LICENSOR and/or its RELATED COMPANIES. LICENSEE irrevocably
agrees that any rights which it and/or any of its RELATED COMPANIES may
acquire by virtue of this AGREEMENT in respect of the TRADEMARKS, the
TRADENAME, the PRESENTATION and the BOTTLES shall vest in and promptly
upon request be assigned for the nominal consideration of £1 to the
LICENSOR and/or its RELATED COMPANIES
absolutely.
|
|
8.4
|
The
parties agree to inform each other about any and each substantial
violation or infringement of the TRADEMARKS in relation to the PRODUCTS,
the PRESENTATION, the BOTTLES and other trademarks to be used in
conjunction with the TRADEMARKS and/or the TRADENAME by third
parties which come to their
knowledge.
|
- 18
-
|
8.5
|
LICENSOR
agrees to use its best endeavours to keep at its own cost and expense the
registrations of the TRADEMARKS and other trademarks to be used in
conjunction with the TRADEMARKS (in accordance with this AGREEMENT) in
full force and effect for the TERM of this AGREEMENT and to keep LICENSEE
informed on the legal status of the applications and registrations of the
TRADEMARKS and the other trademarks to be used in conjunction with the
TRADEMARKS in international class of goods
3.
|
|
8.6
|
With
respect to PRODUCTS launched since the signing of this AGREEMENT LICENSOR
shall carry all costs in relation to the registration and administrative
procedures of new names that have been approved under Section 4.2
above.
|
|
8.7
|
LICENSOR
shall at its reasonable business discretion defend the TRADEMARKS, the
TRADENAME and the PRODUCTS as well as any other trademarks used in
relation to the PRODUCTS in accordance with the terms of this AGREEMENT,
at its own cost and in co-ordination with LICENSEE against any and all
violations or infringements which, according to LICENSOR’S reasonable
business discretion, may have a materially adverse impact on this
AGREEMENT, especially against confusingly similar trademarks, trademark
applications or use by third parties for any goods and/or services
identical with or similar to the PRODUCTS. If requested by LICENSOR,
LICENSEE undertakes to assist or support LICENSOR in its measures of
defence within its ability.
|
|
8.8
|
Any
cost and expenses reasonably and properly incurred arising from a
necessary or requested participation of LICENSEE in the measures of
defence of the TRADEMARKS will be refunded by
LICENSOR.
|
|
8.9
|
If
LICENSEE, in its reasonable business discretion, identifies a violation or
infringement of the TRADEMARKS and/or the TRADENAME which in its
reasonable opinion may have a materially adverse impact on this AGREEMENT,
it shall promptly inform LICENSOR and LICENSOR agrees to enter into
discussions with LICENSEE as to the best course of action to adopt to deal
with such violation. The LICENSOR shall not be obliged to bring or defend
any proceedings, whether from infringement or otherwise, in respect of the
TRADEMARKS if it decides in its sole discretion not to do so and LICENSEE
shall not be entitled to bring or defend any action unless it has received
the LICENSOR’s prior written consent. Any such action brought or defended
by the LICENSEE shall be at LICENSEE’s sole expense and it shall not be
entitled to settle such action without the LICENSOR’s prior written
consent. Any benefit arising will be for the sole benefit of the
LICENSOR.
|
|
8.10
|
LICENSEE
undertakes at the request of LICENSOR to sign any document necessary for
the registration and/or maintenance of the validity of the TRADEMARKS. In
addition, to the extent that LICENSOR should deem it advisable to protect
the TRADEMARKS, LICENSEE agrees to provide a statement to the effect that
LICENSEE is producing, selling and promoting the PRODUCTS under LICENSOR’S
control, together with such other assistance (at LICENSOR’S cost) as
LICENSOR reasonably deems necessary for this
purpose.
|
- 19
-
|
8.11
|
LICENSEE
agrees that it shall not, at any time, directly or indirectly contest the
validity of the registration of the TRADEMARKS or LICENSOR’S other
intellectual property rights (including those in the PRESENTATION and the
BOTTLES) to the extent that such rights relate to the subject matter of
this AGREEMENT, or their ownership by LICENSOR, its RELATED COMPANIES,
successors and/or assignees.
|
|
8.12
|
LICENSEE
agrees not to use the TRADEMARKS or LICENSOR’S other intellectual property
rights in respect of the PRESENTATION and the BOTTLES in connection with
the sale of any products other than the PRODUCTS, nor to use, other than
under the terms of this AGREEMENT, the TRADEMARKS and/or the TRADENAME as
a part of its trading name and shall not use in its business any other
trade or service mark, other than under the terms of this AGREEMENT, so
resembling the TRADEMARKS as to be likely to cause
confusion.
|
|
8.13
|
LICENSEE
shall use the TRADEMARKS and all designs, sketches, models, prototypes and
other material directly related to the PRODUCTS as well as the
PRESENTATION and the BOTTLES, solely in connection with the
production, marketing, merchandising, distribution, advertising,
promotion, and sale in the TERRITORY of the PRODUCTS and any OTHER
PRODUCTS which LICENSOR has agreed may be sold or given away with the
PRODUCTS.
|
|
8.14
|
LICENSEE
shall, upon LICENSOR’S reasonable request, mark all labels, cartons, price
lists, promotional and advertising, merchandising and promotional material
and other printed or duplicated material for or relating to the PRODUCTS
with a notice in a form as is normal practice in the industry to the
effect that the TRADEMARKS are registered trademarks and/or the property
of LICENSOR.
|
|
8.15
|
LICENSEE
agrees to use the TRADEMARKS set forth in Annex A only in
the form as represented in ANNEX A or as may be provided by LICENSOR from
time to time on the PRODUCTS and for the advertising and promotion for the
PRODUCTS. This obligation shall not apply where a TRADEMARK is used within
continuous, flowing text (e. g. in press releases and descriptive texts)
where it could be impracticable to use the TRADEMARKS in the form
represented in ANNEX A Part 1, provided that such representation of the
TRADEMARKS shall be as close to the form represented in ANNEX A as is
practicable in the circumstances.
|
|
8.16
|
LICENSEE
shall be responsible for identifying appropriate names for all new ranges
of the PRODUCTS, together with, if appropriate, new BOTTLES and
PRESENTATION for such new ranges and, to that end, LICENSEE agrees
that:
|
|
|
(i)
|
it
shall use reasonable endeavours to ensure the availability of all proposed
names, designs for new BOTTLES and PRESENTATION and shall carry out the
necessary worldwide trademark searches at its sole cost;
and
|
|
|
(ii)
|
it
shall assist LICENSOR, at LICENSOR’S reasonable request and cost, in
applying to register, registering or otherwise protecting in LICENSOR’S
name any new names, BOTTLE design and/or PRESENTATION approved by LICENSOR
in accordance with this
AGREEMENT.
|
- 20
-
|
|
(iii)
|
LICENSOR
shall have the right to file, to register and/or to use the name with
respect to any other category of products it (and/or its RELATED
COMPANIES) presently markets and distributes under the
TRADENAME.
|
|
9.
|
EXCLUSIVITY
|
|
9.1
|
LICENSOR
agrees, during the term of this
AGREEMENT:
|
|
|
9.1.1
|
not
to manufacture, advertise or promote, distribute or in any other way
market products, which are identical to the PRODUCTS except as may be
permitted in this AGREEMENT;
|
|
|
9.1.2
|
not
to consent to the use of the TRADEMARKS and/or the TRADENAME in connection
with the manufacture, distribution, marketing and/or advertising of
products which are identical to the PRODUCTS, alone or in conjunction with
any additions.
|
|
10.
|
PRODUCT
LIABILITY
|
|
10.1
|
LICENSEE
shall manufacture or have manufactured the PRODUCTS at its own
responsibility and shall enter into or maintain sufficient product
liability insurance, such insurance to also cover the costs of undertaking
a product recall.
|
|
10.2
|
LICENSEE
agrees that the manufacture, marketing and distribution of the PRODUCTS,
and any OTHER PRODUCTS (Section 2.7
above) distributed or sold with the PRODUCTS will be in compliance with
all applicable health and safety laws or regulations and with any relevant
national and international cosmetic labelling, packaging, recycling or
other relevant regulations in the countries of manufacture and
distribution.
|
|
10.3
|
LICENSEE
further agrees that it will organise and effect, at its own expense, all
registrations as are necessary for compliance with local product
registration and health or similar registration requirements. LICENSOR
agrees to assist LICENSEE with regard to such registrations within its
best abilities. LICENSEE agrees to reimburse LICENSOR any costs and
expenses reasonably and properly incurred by LICENSOR in connection with
such registrations.
|
|
10.4
|
LICENSEE
agrees to defend, indemnify and hold LICENSOR harmless from and against
any and all liability, damages, reasonable legal fees, reasonable cost and
expenses incurred by LICENSOR in connection with any claims or legal
actions made by third parties against LICENSOR arising out of a breach of
the provisions of Section 10.2 and/or
10.3 above, or arising out of the use of the TRADENAME by LICENSEE
in accordance with Sections 2.2 to
2.6 above or arising out of any damage or injury caused by any
OTHER PRODUCT (Section 2.7
above) sold with the PRODUCTS, the infringement of the intellectual
property rights or other similar rights of any third party or any
applicable national or international laws or regulations or any other acts
or omissions of LICENSEE or any of its agents, employees or
sub-contractors in connection with the performance of its obligations
hereunder. This indemnity shall not extend to claims for compensation
against LICENSOR which are due to LICENSOR’S own action or failure to
act.
|
- 21
-
|
11.
|
CONFIDENTIALITY
|
|
11.1
|
The
parties agree to keep confidential and secret the provisions of this
AGREEMENT and all non-public information and knowledge each party may
acquire about the other including, without limitation, information
concerning the marketing of their products, even if such information and
knowledge have not expressly been referred to as secret or confidential.
Such information and knowledge may only be used for the purpose of this
AGREEMENT.
|
|
11.2
|
Notwithstanding
anything to the contrary, the information and knowledge as identified
hereinabove shall not be deemed confidential
if:
|
|
11.2.1
|
at
the time of disclosure such information is in the public
domain;
|
|
11.2.2
|
after
disclosure such information becomes a part of the public domain, except by
breach of this AGREEMENT;
|
|
11.2.3
|
such
information must be disclosed as required by applicable law;
or
|
|
11.2.4
|
such
information is known to the other party at the time of
disclosure.
|
|
11.3
|
The
confidentiality provision will remain in force after the termination of
the AGREEMENT, and upon termination, the parties agree to return to each
other, or to destroy, as the other may request, all materials containing
confidential and non-public information and
knowledge.
|
|
11.4
|
The
parties agree to impose this obligation of confidentiality upon all
persons acting on their behalf, including but not limited to their
employees, agents, consultants, sub-contractors, sub-licensees, managers
and representatives.
|
|
11.5
|
Notwithstanding
anything to the contrary contained in this
AGREEMENT,
|
LICENSOR
acknowledges that LICENSEE, has its ordinary shares traded on Euronext, and is
subject to various reporting obligations as a public company. LICENSOR further a
acknowledges that Inter Parfums, Inc., the parent company of LICENSEE (the
“PARENT COMPANY”), is a publicly held company with its Common Stock traded on
The Nasdaq Stock Market, National Market System and is subject to reporting
requirements of the United States federal securities laws. Nothing in the
AGREEMENT shall prohibit the disclosure as may be required of either PARENT
COMPANY or LICENSEE under such securities laws. LICENSEE agrees to discuss in
advance with LICENSOR any such public disclosure that may be required by of
either PARENT COMPANY or LICENSEE. LICENSOR on behalf of itself and its
affiliates shall not trade in the securities of Inter Parfums, Inc., on the
basis of non-public material information.
- 22
-
|
12.
|
NOTICES
|
|
12.1
|
All
reports, communications, requests, approvals and notices required or
permitted by this AGREEMENT to be given to a party shall be in writing and
shall be deemed to be duly given when sent by certified or registered
mail, return receipt requested, addressed to the party concerned or by
facsimile where the sender is able to demonstrate successful transmission
by producing a properly addressed fax transmission report, as
follows:
|
To
LICENSOR:
J Choo
Limited
4, Lancer
Square
Kesington
Church Street
W8
4EH
Attn: Ms.
H Merritt, Legal Director
To
LICENSEE:
Inter-Parfums
SA
4
rond-point des Champs Elysées
75008
PARIS
Attn: M.
Philippe BENACIN
or any
other address a party may communicate to the other party in
writing.
|
13.
|
ASSIGNMENT
|
|
13.1
|
Except
as otherwise provided for in accordance with the terms of this AGREEMENT,
neither party shall be entitled to assign its rights or obligations
hereunder without the prior written consent of the
other.
|
|
13.2
|
LICENSEE
shall have the right to assign the rights under the AGREEMENT to any
RELATED COMPANY without LICENSOR’S consent. LICENSEE further will be
entitled to grant sub-licenses to RELATED
COMPANIES.
|
|
13.3
|
Any
such assignment or sub-license under Section 13.1 or
13.2 does in no way affect any of the assignor’s obligations under
the AGREEMENT. The assignor agrees to remain liable for and guaranty the
full performance of this AGREEMENT by the
assignee.
|
|
14.
|
ENTIRE
AGREEMENT, MODIFICATION AND CONCILIATION OF
DISPUTES
|
|
14.1
|
This
AGREEMENT and its Annexes contain a complete statement of all arrangements
between the parties with respect to the subject matter and supersede all
existing arrangements between them concerning this subject
matter.
|
|
14.2
|
Modifications
and/or supplements to this AGREEMENT are only valid if made in
writing.
|
|
14.3
|
CONCILIATION
OF DISPUTES
|
- 23
-
|
|
In
the event of a disagreement between LICENSOR and LICENSEE as to the
validity, construction, performance, or rescission of any provision
hereof, the parties agree to follow the following conciliation procedure
before filing any litigation:
|
|
|
-
|
First,
a meeting between operational managers shall be called by the promptest
party to resolve the disagreement as quickly as possible after the
disagreement arises. The purpose of this meeting shall be to find an
out-of-court solution to the disagreement in question. Minutes of said
meeting shall be drawn up.
|
|
|
-
|
Second,
if the meeting between operational managers does not result in an
out-of-court solution, the chief executive officers of each of the parties
shall meet and strive to resolve said disagreement amicably. Such meeting
must be held in a timely manner and no later than [———-]71 days as of the
meeting between operational
managers.
|
Should
for a further period of [———-]72 days a dispute subsist
as to the validity, construction, performance, and/or rescission hereof in spite
of the conciliation procedure or should one of the parties refuse to follow the
aforementioned procedure promptly, carefully and in good faith, the said dispute
shall be subject to the court procedure as set out below in article
15.
|
15.
|
APPLICABLE
LAW, JURISDICTION
|
This
Agreement shall be governed by, and construed in accordance with, English or Law
and each of the parties irrevocably submits to the exclusive jurisdiction of the
English courts.
|
16.
|
REMEDIES,
NO WAIVER
|
The
specific remedies to which either party may resort under the terms hereof are
cumulative and are not intended to be exclusive of the remedies to which either
party is entitled. No waiver by either party, whether express or implied, of any
provision of this AGREEMENT or any breach or default of any one or more
instances, nor any delay by either party in exercising its rights hereunder,
except as provided for in this AGREEMENT, shall constitute or be deemed a
continuing waiver of such provision or of any other provision of this
AGREEMENT.
71 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.71.
72 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.72.
- 24
-
|
17.
|
SEVERABILITY
|
The
provisions of this AGREEMENT are independent of and severable from each other
and no provision shall be affected or rendered invalid or unenforceable by
virtue of the fact that for any reason any other provision or provisions may be
in whole or in part invalid or unenforceable. The parties hereby agree to
substitute any invalid provision by another valid provision in such a way that
the purpose of the invalid provision is reached as far as possible. The same
shall apply accordingly in case of an omission or an indefinite
provision.
|
18.
|
SECTION
HEADINGS
|
Section
headings as used herein are for identification purposes only, and shall not
affect the meaning or construction of this AGREEMENT.
|
19.
|
FORCE
MAJEURE
|
The
parties hereto shall not be responsible for any loss, damage, consequential or
otherwise, detention or delay caused by fire, law, regulation, civil or military
authority, insurrection or riot, national labour strike or wartime embargoes,
tempest, act of God, shortages or by any other cause whatsoever, which is
unavoidable or beyond the relevant party’s reasonable control; provided however,
that any such force majeure shall not release LICENSEE from its obligations to
make payment of amounts due and owing to LICENSOR in accordance with the terms
of this AGREEMENT. It is agreed that LICENSEE’S obligations to make payments of
amounts due and owing up to, and during, an event of such force majeure shall
not apply during the continuance of that force majeure in the event that the
force majeure itself renders LICENSEE unable to make such payments. In such
circumstances, LICENSEE undertakes to make payment of amounts owing to and
accrued to LICENSOR before and during such force majeure, promptly upon its
cessation.
|
IN
WITNESS whereof the parties have executed this
AGREEMENT
|
||
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
London 29/9/09
|
Paris 29/9/09
|
|
|
place
and date
|
place
and date
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|
- 25
-
ANNEX
A
THE
TRADEMARKS
(Clause
1.4)
The
trademarks as set forth the attached document
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|
ANNEX
B
FORM OF ROYALTY
REPORT
(Clause
3.3)
At the
end of each quarter LICENSEE will provide the following reports which have been
approved by LICENSOR:
|
|
-
|
[———-]73 sales by zone,
country and client
|
|
|
-
|
[———-]74 Statement
allowing to isolate any sales being excluded from the NET SALES definition
as per Clause 1.14
|
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|
73 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.73.
74 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.74.
ANNEX
C
PROJECTED
NET SALES AND PROJECTED ROYALTIES (Clause 3.1)
|
PROJECTED NET SALES (€)
|
PROJECTED ROYALTIES (€)
|
|
|
CY1-0
(unless 2010 launch)
|
CY1-0
(unless 2010 launch)
|
|
|
CY2
–[———-]75
|
CY2
–[———-]76
|
|
|
CY3-[———-]77
|
CY3-[———-]78
|
|
|
CY4-[———-]79
|
CY4-[———-]80
|
|
|
CY5-[———-]81
|
CY5-[———-]82
|
|
|
CY6-[———-]83
|
CY6-[———-]84
|
75 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.75.
76 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.76.
77 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.77.
78 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.78.
79 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.79.
80 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.80.
81 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.81.
82 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.82.
83 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.83.
84 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.84.
2
For the
avoidance of doubt, it is agreed that the above figures are set out on an
indicative basis as far as there is no track record for a JIMMY CHOO business
fragrance. Therefore such projected net sales and related projected royalties
shall not be deemed to create any contractual obligations binding upon the
Licensee.
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|
3
ANNEX
D
SELECTIVE DISTRIBUTION
CRITERIA
(Clause
6.2)
Products
may only be sold in outlets which
exude an
aura of luxury and exclusivity
Such
outlets must, at a minimum have:
|
-
|
A
solid reputation for selling women luxury fragrances established over a
minimum of [———-]85 years trading.
These perfumes must include at least four of the following: [———-]86
|
|
-
|
A
reputation and image compatible with the high quality and reputation of
the TRADEMARK Jimmy Choo
|
|
-
|
A
portfolio of brands of a similar luxury standing and prestige to the Jimmy
Choo brand
|
|
-
|
Clean,
well maintained shop fittings
|
|
-
|
Appropriate
space devoted to luxury fragrances
|
|
-
|
Staff
knowledgeable about luxury
fragrances.
|
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|
85 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.85.
86 Confidential
information omitted and filed separately with the SEC with a request for
confidential treatment by Inter Parfums, Inc. No. 10.138.86.
ANNEX
E
ANNUAL MARKETING
PLAN
Information
to be included in each Annual Marketing Plan
(Clause
5.1 (a))
|
(a)
|
Calendar
of Main Activities
|
|
(b)
|
Conceptual
Approach – by Product and
Communication
|
|
(c)
|
Brand
Name (or code name)
|
|
(d)
|
Price
Positioning
|
|
(e)
|
Distribution:
sales and distribution plan by
countries.
|
|
(f)
|
Assortment
|
- SKU
- GWP
- Promo
- Display
- Tester
- Samples
|
(g)
|
Projected
Net Sales Targets – by Product line and
countries
|
|
(h)
|
Communication
|
|
|
-
|
advertising
and marketing as detailed in section 5.6, presented in summary
form
|
|
(j)
|
New
Product Launch Plan
|
|
(i)
|
Financial
commitments planned by month reconciled to the commitments in the
AGREEMENT
|
|
For
and on behalf of
|
For
and on behalf of
|
|
|
LICENSOR
|
LICENSEE
|
|
|
/s/ Joshua Schulman
|
/s/ Philippe BENACIN
|
|
|
Name:
Joshua Schulman
|
Name:
Philippe BENACIN
|
|
|
Title:
Chief Executive Officer
|
|
Title:
President
|