Professional Documents
Culture Documents
This agreement (the Agreement) has been made and entered into by and between
1. Easycare Research GmBH, a company incorporated in Germany with its principal address
at Bruchwies 10, 66663 Merzig, Germany (Easycare), and
2. &R Carton AB, a company incorporated in Sweden with its principal address at
Adelgatan 6, 211 22 Malm, Sweden (Carton),
RECITALS
WHEREAS, Carton is the holder of the Community trademark CEKACAN with registration
No. 3473923.
WHEREAS, Easycare is the holder of the German trademarks CENAMAN with reg. No. 306
02 041 and CENAMAN with registration No. 306 02 057 (Easycare Trademarks).
WHEREAS, Carton has filed oppositions with respect to Easycare Trademarks (the
Opposition Proceedings).
WHEREAS, the Parties wish to agree on the use and registration of their respective marks.
1. DEFINITIONS
Affiliate shall mean any legal entity that directly or indirectly controls or is
controlled by or is under the same control as a Party from time to time.
Effective Date shall mean the date both Parties have signed this Agreement.
Obligations shall mean (i) in relation to Easycare, the obligations set out in Section
3, and (ii) in relation to Carton, the obligations set out in Section 4.
2 (5)
Trademark Rights shall mean (i) in relation to Easycare, trademark, trade name
and/or other rights in the mark CENAMAN, and (ii) in relation to Carton, trademark,
trade name and/or other rights in the mark CEKACAN; acquired by use or
registration prior or after the Effective Date.
Use shall mean use of a trademark either (i) directly, on or in relation to products or
services, or (ii) indirectly, by granting licensees to use the trademark on or in relation
to products or services.
2. RESTRICTIONS ON REGISTRATION
2.1 Easycare undertakes to limit, within 30 days from the effective date of this Agreement,
the specification of goods of both Easycare Trademarks to only cover the following
goods in class 16:
Easycare undertakes not to Use or register, and shall see to it that none of its
Affiliates(s) Use or register, any mark comprising the word CENAMAN on or in
relation to any other goods in class 16 than the goods listed above in the Territory.
3. EASYCARES OBLIGATIONS
3.1 Easycare consents to and shall not resist, or assist others to resist, the Use and
registration by Carton or its Assignee(s) of the trademark CEKACAN on or in
relation to Carton Goods in the Territory.
In particular, Easycare shall to the extent its trademark, trade name and/or other rights
are invoked or cited as bars against an application for registration by Carton or its
Assignee(s) of the trademark CEKACAN for Carton Goods in the Territory, execute
letter(s) of consent to such registrations.
3.2 Easycare undertakes not to challenge the registered rights in the trademark CEKACAN
for Carton Goods held by Carton or its Assignee(s) from time to time in the Territory.
4. CARTONS OBLIGATIONS
4.1 Carton consents to and shall not resist, or assist others to resist, the Use and registration
by Easycare or its Assignee(s) of the trademark CENAMAN on or in relation to
Easycare Goods in the Territory.
3 (5)
In particular, Carton shall to the extent its trademark, trade name and/or other rights
are invoked or cited as bars against an application for registration by Easycare or its
Assignee(s) of the trademark CENAMAN for Easycare Goods in the Territory,
execute letter(s) of consent to such registrations.
4.2 Carton undertakes not to challenge the registered rights in the trademark CENAMAN
for Easycare Goods held by Easycare or its Assignee(s) from time to time in the
Territory.
5.1 Each Party agrees that its Obligations shall, as far as possible pursuant to applicable
law, be construed as binding limitations of its Trademark Rights and, hence, be
binding on its Assignee(s) of such Trademark Rights, whether or not the Assignee(s)
in question are informed hereof.
Notwithstanding the foregoing, each Party undertakes to take all necessary steps to
ensure that all of its current and future Licensees and Assignee(s) are informed of and
become bound by the Obligations of the Party.
5.2 If a Licensee or Assignee of a Party should not become bound by the Obligations of the
Party, for whatever reason;
6. the Party in question shall be fully liable for any action or omission by said Licensee or
Assignee that is contrary to the terms and conditions of this Agreement, and
7. the other Party shall not be bound by its Obligations in relation to such person.
7.1 Any Affiliate of Easycare holding a trademark or trade name right to the mark
CENAMAN without being a Licensee or Assignee, if applicable, shall for the
purposes of this Section 5 be deemed to be a Licensee of Easycare. Any Affiliate of
Carton holding a trademark or trade name right to the mark CEKACAN without
being a Licensee or Assignee, if applicable, shall for the purposes of this Section 5 be
deemed to be a Licensee of Carton.
Each Party shall withdraw its claims in the Opposition Proceedings and shall bear its
own costs arisen out of or in relation to the Opposition Proceedings.
9. TERM
This Agreement shall come into force on the Effective Date and shall remain in force
in perpetuity. No Party may unilaterally terminate the Agreement.
4 (5)
10. MISCELLANEOUS
10.1 Severability
The Agreement and its exhibits contain the entire understanding between the Parties
with respect to the subject matter and supersede all prior agreements and discussions
between the Parties.
10.3 Amendments
Amendments to this Agreement shall be made in writing and signed by both Parties in
order to be binding.
10.4 Assignment
This Agreement may be assigned by a Party to a third party purchasing the business
of the Party to which the subject matter of all its Trademark Rights relates.
10.5 Authority
Each of the signatories to this Agreement represents and warrants that he/she has full
power and authority to bind the Party for whom it is executing this Agreement, and
that the Party has full power and authority to enter into this Agreement.
10.6 Costs
Each Party shall bear its own costs accrued in relation to the negotiation and drafting
of this Agreement.
11.2 Any dispute, controversy or claim arising out of or in connection with this contract, or
the breach, termination or invalidity thereof, shall be finally settled by arbitration
administered by the Arbitration Institute of the Stockholm Chamber of Commerce
(the SCC Institute).
The Rules for Expedited Arbitrations of the Arbitration Institute of the Stockholm
Chamber of Commerce shall apply, unless the SCC Institute, taking into account the
complexity of the case, the amount in dispute and other circumstances, determines, in
5 (5)
its discretion, that the Arbitration Rules of the Arbitration Institute of the Stockholm
Chamber of Commerce shall apply. In the latter case, the SCC Institute shall also
decide whether the arbitral tribunal shall be composed of one or three arbitrators.
_____________________
Place: Place:
Date: Date:
______________________________ ________________________________
Exhibit 1
Carton Goods
06: Packages containing metal foil; packaging material containing aluminium sheets, foils or
rolls; foil with contents of aluminium for packaging purposes, packing containing metals
(included in the class), foils containing metal for wrapping and packing purposes.
07: Packaging machines; sealing machines; machines for the production and printing of
packaging materials; machines for the production and filling of packages; machines for the
forming of plastics; machines for injection-moulding packages and packaging details.
16: Paper, carton as well as products containing paper and carton for packaging purposes;
plastic film (wrapping) for packaging purposes; packages of carton (lined and unlined);
packaging materials of plastic (not included in other classes); instruction and teaching
materials (not apparatuses); printing types; clichs; packaging containers and packaging
materials containing paper or plastic coated paper, packaging materials of expanded and/or
extruded plastics.
Exhibit 2
Easycare Goods
09: Gerte zur Aufzeichnung, bertragung und Wiedergabe von Ton und Bild;
Magnetaufzeichnungstrger, Schallplatten; Datenverarbeitungsgerte und Computer; Wge-,
Mess-, Signal-, Kontroll-, Rettungs- und Unterrichtsapparate und -instrumente;
10: medizinische Artikel fr die Untersttzung zum Essen und Trinken, nmlich
Ernhrungspumpen, berleitungsgerte, Langzeitsonden, Infusionsgerte, medizinische
Artikel fr die Untersttzung zum Essen und Trinken, nmlich speziell ausgestaltete
Trinkbecher, Trinkbecherhalter, Geschirre, Essbestecke soweit in
Klasse 10 enthalten; hygienische Artikel aus Gummi fr medizinische Zwecke, soweit in
Klasse 10 enthalten; Bruchbnder, Drainagerhren fr medizinische Zwecke; PET-Flaschen
soweit in Klasse 10 enthalten; Spezialtaschen fr Ernhrungspumpen;