TRADEMARK PHASE-OUT LICENSE AGREEMENT dated as of April 3, 2023
(this “Agreement”), by and between JOHNSON & JOHNSON, a New Jersey
corporation (“J&J”), and JOHNSON & JOHNSON CONSUMER INC. (“JJCI”).
J&J and JJCI may be referred to herein individually as a “Party” and collectively as
the “Parties”.
R E C I T A L S
WHEREAS, in connection with the Separation of Kenvue
Inc., a Delaware corporation (“Kenvue”) and J&J, JJCI shall be an
Affiliate of Kenvue following the Separation Date;
WHEREAS, in connection with the contemplated
Separation of Kenvue and J&J, and as part of a plan with the execution of
this Agreement, J&J and Kenvue are entering into a Separation
Agreement (the “Separation Agreement”);
WHEREAS, in connection with the contemplated
Separation of Kenvue and J&J, and as part of a plan with the execution of
this Agreement, J&J and Kenvue are entering into an Intellectual
Property Agreement (the “IP Agreement”) providing for, among others,
the transfer of certain Intellectual Property to Kenvue and the granting of
certain licenses between the Kenvue and J&J;
WHEREAS, J&J owns the Licensed J&J Marks (as
defined below) and hold registrations thereof in various countries of the
world for various products and services, and have the right to license the
Licensed J&J Marks to JJCI in accordance with the terms, and subject to
the conditions, set forth herein; and
WHEREAS, in connection with the transactions
contemplated by the Separation Agreement, J&J desires to grant to JJCI a
limited license to use the Licensed J&J Marks in accordance with the
terms, and subject to the conditions, set forth herein.
NOW, THEREFORE, in consideration of the mutual
agreements, provisions and covenants contained in this Agreement, the
Parties, intending to be legally bound, hereby agree as follows:
ARTICLE I
DEFINITIONS
SECTION 1.01. Definitions.
(a) As used in this Agreement, the following terms have
the following meanings:
“Affiliate” of any Person means a Person that controls, is
controlled by or is under common control with such Person. As
used herein, “control” of any entity means the possession,
directly or indirectly, of the power to direct or cause the
direction of the management or policies of such entity, whether
through ownership of voting securities or other interests, by
contract or otherwise; provided, however, that for purposes of
this Agreement (a) Kenvue and the other members of the
Kenvue Group shall not be considered Affiliates of J&J or any
of the other members of the J&J Group and (b) J&J and the
other members of the J&J Group shall not be considered
Affiliates of Kenvue or any of the other members of the Kenvue
Group.
“Group” means either the J&J Group or the Kenvue Group, as
the context requires.
“IP Agreement” has the meaning ascribed thereto in the
recitals.
“ITU Applications” has the meaning ascribed thereto in the IP
Agreement.
“J&J Group” means J&J and each of its subsidiaries, but
excluding any member of the Kenvue Group.
“JOHNSON’s License Agreement” means the associated marks
license agreement that J&J, Janssen Pharmaceutica NV
(“JPNV”) and JJCI are entering into as part of a plan with the
execution of this Agreement.
“Kenvue Business” has the meaning ascribed thereto in the
Separation Agreement.
“Kenvue Group” means Kenvue Inc., a Delaware corporation,
and each Person that will be a subsidiary of Kenvue Inc.
including in each case any Person that is merged or
consolidated with or into Kenvue Inc. or any subsidiary of
Kenvue Inc.
“Licensed J&J Marks” means the Trademarks listed and
referenced in Schedule A attached hereto.
“Local Separation Date” means the date hereof.
“OFAC” has the meaning set forth in Section 2.03.
“Person” means an individual, a general or limited partnership,
a corporation, a trust, a joint venture, an unincorporated
organization, a limited liability company, any other entity and
any governmental authority.
“Sanctioned Country Trademarks” has the meaning set forth in
Section 2.03.
“Separation” has the meaning ascribed thereto in the Separation
Agreement.
“Separation Agreement” has the meaning ascribed thereto in
the recitals.
“Separation Date” has the meaning ascribed thereto in the
Separation Agreement.
“Term” has the meaning set forth in Section 4.01.
“Trademarks” means trademarks, service marks, trade names,
logos, slogans, trade dress or other source identifiers, including
any registration or any application for registration therefor,
including, for clarity, ITU Applications, together with all
goodwill associated therewith.
“Trademark Coexistence Agreement” means the trademark
coexistence agreement that J&J, JPNV and JJCI are entering
into as part of a plan with the execution of this Agreement.
(b) Any capitalized terms used but not defined in this Agreement have the
meaning given to them in the Separation Agreement.
ARTICLE II
LICENSE GRANT
SECTION 2.01. Grant. Subject to the terms and
conditions of this Agreement, J&J hereby grants to JJCI a non-exclusive,
non-sublicensable (except as set forth in Section 2.02), non-assignable
(except as set forth in Section 6.01), royalty-free, fully paid up worldwide
license, to use the Licensed J&J Marks as such Licensed J&J Marks were
used as of the Local Separation Date in the Kenvue Business (including
any proposed uses in progress at the Local Separation Date that cannot be
suspended without significant cost) and for the time periods set forth in
Article IV herein.
SECTION 2.02. Sublicensing. The license set forth in
Section 2.01 herein shall be sublicensable by JJCI to JJCI’s Affiliates as
well as to third parties
engaged by JJCI to manufacture a product on behalf of JJCI or provide a
service to JJCI that is reasonably necessary to support the Kenvue
Business, but not for independent use by such third parties, and in each
case subject to the following: (a) with respect to the sublicense to third
parties, the right to sublicense does not include the right to further
sublicense; and (b) with respect to all sublicenses, JJCI is responsible for
the acts and omissions of each of its sublicensees. Any act or omission of
a sublicensee that would be a violation of this Agreement if committed by
JJCI will be deemed a violation of this Agreement by JJCI.
SECTION 2.03. Sanctioned Country Intellectual Property
Rights. Notwithstanding anything to the contrary in this Agreement, the
Parties acknowledge that any grant of any licensing rights from J&J to
JJCI to any Trademarks from Cuba, Iran, North Korea, Syria, or
Venezuela, (“Sanctioned Country Trademarks”) require and is subject to
prior authorization from the U.S. Treasury Department’s Office of
Foreign Assets Control (“OFAC”). When and as the Parties agree, JJCI
shall have the right to request that J&J use commercially reasonable
efforts to submit a request to OFAC for authorization to grant a license to
the relevant Sanctioned Country Trademarks, as appropriate.
ARTICLE III
OWNERSHIP AND USE OF LICENSED J&J MARKS
SECTION 3.01. Ownership. JJCI acknowledges the
validity, and J&J’s exclusive ownership, of the Licensed J&J Marks and
agrees that any and all goodwill, rights or interests in the Licensed J&J
Marks that might be acquired by the use of the Licensed J&J Marks by
JJCI shall inure to the sole benefit of J&J. If JJCI or any of its Affiliates
obtains rights or interests in the Licensed J&J Marks, JJCI (on behalf of
itself and its Affiliates) hereby transfers and shall execute upon written
request by J&J any additional documents or instruments necessary or
desirable to transfer, those rights or interests to J&J. JJCI acknowledges
and agrees that, as between J&J and JJCI, JJCI has been extended only a
mere permissive right to use the Licensed J&J Marks as provided in this
Agreement, which right is not coupled with any ownership interest. Any
rights not granted to JJCI in this Agreement are specifically reserved by
and for J&J.
SECTION 3.02. Registration and Maintenance. At J&J’s
cost and expense, J&J shall use commercially reasonable efforts to
prosecute, maintain and renew, as applicable, the Licensed J&J Marks
during the Term. J&J and its Affiliates will own all right, title and interest
in and to any and all registrations and applications for registration of the
Licensed J&J Marks, whether filed before or
after the Local Separation Date. JJCI shall supply J&J with such
information as J&J may reasonably request in writing in order for J&J to
acquire, maintain and renew registrations of the Licensed J&J Marks, to
record this Agreement, to enter JJCI as a registered or authorized user of
the Licensed J&J Marks or for any purpose reasonably related to J&J’s
maintenance and protection of the Licensed J&J Marks. JJCI shall fully
cooperate with J&J’s reasonable written requests in the execution, filing,
and prosecution of any registration of a Trademark relating to the
Licensed J&J Marks that J&J may desire to obtain. For the foregoing
purpose, JJCI shall supply to J&J such samples, labels, letterheads and
other similar materials bearing the Licensed J&J Marks as may be
reasonably required by J&J.
SECTION 3.03. Enforcement. JJCI shall give J&J
commercially reasonable notice of any known infringements or other
violations of the Licensed J&J Marks of which it becomes aware. JJCI
shall render to J&J full and commercially reasonable cooperation for the
enforcement and protection (including any action to prevent and enforce
against counterfeiting and unlawful diversion) of the Licensed J&J
Marks. J&J shall retain all rights to bring all actions and proceedings in
connection with infringement or other violations of the Licensed J&J
Marks in its sole discretion. If J&J decides to enforce the Licensed J&J
Marks, all costs incurred and all recoveries made shall be for the account
of J&J. J&J shall also retain the right to decide how to manage, resolve,
or settle any such enforcement action so long as any resolution or
settlement does not adversely impact the rights granted to JJCI herein, in
which case the proposed resolution or settlement shall require the prior
written approval of JJCI, not to be unreasonably withheld. In the event
that JJCI would be adversely impacted by a proposed resolution or
settlement, consent shall be required from JJCI, not to be unreasonably
withheld. If J&J decides not to take action to enforce or protect a
Licensed J&J Mark and JJCI reasonably determines that enforcement is
necessary to preserve the rights granted to it herein, JJCI shall have the
right to pursue such action at its own cost and expense and retain any lost
profits, damages and costs recovered. J&J shall render to JJCI full and
commercially reasonable cooperation for the same, including executing
and providing powers of attorney and other documents as reasonably
requested in writing by JJCI, including, if required, to be named as a
party to such an enforcement action (all at JJCI’s expense), provided that
J&J shall have the right in any such action to meaningfully advise and
consult with JJCI and JJCI shall not resolve or settle such action that
would adversely impact the rights granted to J&J in this Agreement
without J&J’s prior written approval, not to be unreasonably withheld.
SECTION 3.04. Restrictions on Use; No Registration.
JJCI agrees not to, except as permitted in the JOHNSON’s License
Agreement: (a) use or register in any jurisdiction any Trademarks
confusingly similar to, or consisting in whole or in part of, any of the
Licensed J&J Marks; or (b) register any of the Licensed J&J Marks in
any jurisdiction, without in each case the express prior written consent of
J&J. Whenever JJCI becomes aware of any reasonable likelihood of
confusion or risk thereof between a Trademark used by JJCI and a
Licensed J&J Mark, JJCI and shall take appropriate steps to promptly
remedy or avoid such confusion or risk of confusion. Notwithstanding the
foregoing, JJCI shall be allowed to file for registration and use the
“JOHNSON’S” Trademark in those jurisdictions where JJCI is the owner
of such trademark as of the Local Separation Date pursuant to the IP
Agreement, becomes the owner subject to Section 7.14 of the
JOHNSON’s License Agreement, or in any jurisdictions subsequently
agreed to by the Parties, subject to the terms of the Trademark
Coexistence Agreement.
SECTION 3.05. Quality Standards. JJCI acknowledges
and agrees that all use of the Licensed J&J Marks by JJCI hereunder shall
be in accordance in all respects with the provisions of this Agreement and
shall conform to the same high standards of quality associated with the
Licensed J&J Marks as observed immediately prior to the Local
Separation Date. JJCI shall comply with all applicable Laws.
ARTICLE IV
TERM AND TERMINATION
SECTION 4.01. Term. The term of this Agreement shall
commence on the Local Separation Date and continue for a period of ten
(10) years following the Separation Date (the “Term”). Notwithstanding
the foregoing, the Parties agree that the following uses of the Licensed
J&J Marks shall be limited to the time periods for use of the same, as
described in detail below:
(a) Use of the Licensed J&J Marks on any internal and
external product packaging and labels (including images of such product
packaging and labels in other materials) shall terminate within five
(5) years from the Separation Date. If at such termination date JJCI
continues to make such uses of the Licensed J&J Marks despite
commercially reasonable efforts to terminate use (as certified in writing
to J&J), this period shall be extended by an additional three (3) years.
(b) Use of the Licensed J&J Marks in the corporate name
of any JJCI legal entity (other than use on labels or other packaging and
related product
materials in use as of the Local Separation Date) shall terminate within
one (1) year from the Separation Date, or, where the name change for
such legal entities occurs after the Separation Date, within one (1) year of
such change of name, but, in any event not to exceed five (5) years from
the Separation Date.
(c) Use of the Licensed J&J Marks in any stationery,
administrative, employment, communications (internal and external) and
similar materials shall terminate within one (1) year from the Separation
Date. Notwithstanding the foregoing, if the use of the Licensed J&J
Marks in such materials is incorporated in a legal entity name, then the
termination date for such use shall be within one (1) year of the change of
such legal entity name but not to exceed five (5) years from the
Separation Date.
(d) Use of the Licensed J&J Marks in any website
(intranet or extranet) content (other than images of product packaging and
labels as permitted under Section 4.01(a)), social media content (except
historical posts), and other digital content uses shall terminate within one
(1) year from the Separation Date. Notwithstanding the foregoing, if the
use of the Licensed J&J Marks in such materials is incorporated in a legal
entity name, then the termination date for such use shall be within one
(1) year of the change of such legal entity name but not to exceed five
(5) years from the Separation Date.
(e) Active JJCI websites with domain names containing
Licensed J&J Marks shall be reassigned to a new domain which does not
contain any Licensed J&J Marks (i) within one (1) year after the
Separation Date, or (ii) for domain names that correspond to a legal entity
name, within one (1) year after the change of the associated legal entity
name, but in no event longer than five (5) years.
After transitioning, JJCI shall be permitted to maintain
such domain names solely to redirect to the corresponding JJCI domain
name, but it shall terminate all such use within five (5) years after the
Separation Date. If at such termination date JJCI continues to make such
uses of the Licensed J&J Marks in domain names on labeling, despite
commercially reasonable efforts to terminate use (as certified in writing
to J&J), this period for continued use solely for redirecting to the JJCI
domain name shall be extended by an additional three (3) years.
(f) Use of the Licensed J&J Marks in interior and exterior
facilities signage, manufacturing and supply chain machinery, and
vehicles shall terminate within two (2) years from the Separation Date.
Notwithstanding the foregoing, if the use of the Licensed J&J Marks in
such materials is incorporated in a legal
entity name, then the termination date for such use shall be within two
(2) years of the change of such legal entity name but not to exceed five
(5) years from the Separation Date.
(g) Use of the Licensed J&J Marks in bottle or product
molds and as embossed or debossed on tablets shall terminate in the next
replacement cycle for such items, in the ordinary course of business, but
at least within eight (8) years from the Separation Date. If at the time of
such termination JJCI continues to make such uses of the Licensed J&J
Marks despite commercially reasonable efforts to terminate use (as
certified in writing to J&J), this period shall be extended by an additional
two (2) years
SECTION 4.02. Effect of Termination or Expiration.
Upon any expiration or termination of this Agreement, JJCI shall cease
and completely discontinue all use of the Licensed J&J Marks and all
licenses granted to JJCI herein shall immediately terminate.
Notwithstanding the foregoing, JJCI shall have the right at all times after
the Local Separation Date to use the Licensed J&J Marks (a) to describe
in all aspects and in any and all media the history of the Kenvue Business
solely for historical, archival or factual purposes, in a manner that is not
misleading and, does not suggest endorsement, sponsorship or approval
by J&J, or (b) as required by applicable Law.
ARTICLE V
WARRANTIES AND COMPLIANCE
SECTION 5.01. Disclaimer of Warranties. Except as
expressly set forth herein, the Parties acknowledge and agree that: (a) the
Licensed J&J Marks are provided as-is, where-is and with all faults;
(b) each Party assumes all risks and liabilities arising from or relating to
its use of and reliance upon the Licensed J&J Marks; and (c) neither Party
makes any representation or warranty with respect thereto. EXCEPT AS
EXPRESSLY SET FORTH IN THIS AGREEMENT, IN THE
SEPARATION AGREEMENT OR THE IP AGREEMENT, EACH
PARTY AND ITS RESPECTIVE GROUP HEREBY EXPRESSLY
DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES
REGARDING THE LICENSED J&J MARKS, WHETHER EXPRESS
OR IMPLIED, INCLUDING ANY REPRESENTATION OR
WARRANTY IN REGARD TO NON-INFRINGEMENT,
MISAPPROPRIATION, COMMERCIAL UTILITY,
MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
SECTION 5.02. Compliance with Laws and Regulations.
Each Party and its respective Group shall be responsible for its own
compliance with any and all Laws applicable to its performance under
this Agreement.
SECTION 5.03. No Obligation to Prosecute or Maintain
Registrations. Except as expressly set forth in this Agreement, no Party or
any member of its Group shall have any obligation to seek, perfect or
maintain any protection for any of its Trademarks. Without limiting the
generality of the foregoing, except as expressly set forth in this
Agreement, no Party or any member of its Group shall have any
obligation hereunder to file or prosecute any application for registration
or to maintain any registration of Trademarks.
SECTION 5.04. Group Members. Each Party shall cause
the members of its Group to comply with all applicable provisions of this
Agreement.
ARTICLE VI
ASSIGNMENT
SECTION 6.01. Assignment or Transfer. This Agreement
shall not be assignable, in whole or in part, directly or indirectly, by any
Party hereto without the prior written consent of the other Party, and any
attempt to assign any rights or obligations arising under this Agreement
without such consent shall be void. Notwithstanding the foregoing, either
Party may assign this Agreement, in whole or in part, without the prior
written consent of the other Party (i) to any of its Affiliates; (ii) in
connection with a merger, consolidation, or sale of the business relating
to the Licensed J&J Marks; or (iii) in connection with a sale of a portion
of the Kenvue Business licensed to use the Licensed J&J Marks per the
terms of this Agreement. In the event that JJCI assigns its rights and
obligations to a third-party pursuant to (iii) above, it shall nevertheless
remain fully responsible and liable to J&J for the compliance with the
terms and conditions herein by such third-party unless J&J agrees in
writing that such obligations can be assigned to the party acquiring the
business.
ARTICLE VII
MISCELLANEOUS
SECTION 7.01. Counterparts; Entire Agreement;
Corporate Power. (a) This Agreement may be executed in one or more
counterparts, all of which counterparts shall be considered one and the
same agreement, and shall become effective when one or more
counterparts have been signed by each Party and delivered to the other
Party. This Agreement may be executed by facsimile or PDF
signature and a facsimile or PDF signature shall constitute an original for
all purposes.
(b) This Agreement and Schedules hereto, together with
the Separation Agreement, IP Agreement, the Trademark Coexistence
Agreement and the JOHNSON’S License Agreement, contain the entire
agreement between the Parties with respect to the subject matter hereof
and supersede all previous agreements, negotiations, discussions,
writings, understandings, commitments and conversations with respect to
such subject matter, and there are no agreements or understandings
between the Parties with respect to the subject matter hereof other than
those set forth or referred to herein or therein.
(c) J&J represents on behalf of itself and each other
member of the J&J Group, and JJCI represents on behalf of itself and
each other member of the Kenvue Group, as follows:
(i) each such Person has the requisite corporate or other power
and authority and has taken all corporate or other action
necessary in order to execute, deliver and perform this
Agreement and to consummate the transactions contemplated
hereby; and
(ii) this Agreement has been duly executed and delivered
by it and constitutes, or will constitute, a valid and binding
agreement of it enforceable in accordance with the terms
thereof.
SECTION 7.02. Further Assurances. In addition to the
actions specifically provided for elsewhere in this Agreement, each of the
Parties shall use reasonable best efforts, on and after the Local Separation
Date, to take, or cause to be taken, all actions, and to do, or cause to be
done, all things reasonably necessary, proper or advisable under
applicable Laws and agreements to consummate and make effective the
transactions contemplated by this Agreement.
SECTION 7.03. Governing Law; Dispute Resolution;
Jurisdiction. (a) This Agreement shall be governed by, and construed in
accordance with, the Laws of the State of Delaware, regardless of the
Laws that might otherwise govern under applicable principles of conflicts
of Laws thereof.
(b) Unless otherwise set forth in this Agreement, in the
event of any dispute arising under this Agreement between the Parties (a
“Dispute”), either Party may refer such Dispute to the respective senior
officers of such Parties by delivering written notice of such Dispute to the
other Party (a “Negotiation Notice”). Upon delivery of a Negotiation
Notice, each Party shall attempt in good
faith to resolve such Dispute by negotiation among their respective senior
officers who hold, at a minimum, the title of Executive Vice President
and who have authority to settle such Dispute.
(c) If the Parties are unable to resolve any Dispute
within 30 calendar days of the delivery of a Negotiation Notice, then
either Party shall have the right to initiate non-binding mediation by
delivering written notice to the other Party (a “Mediation Notice”). Upon
delivery of a Mediation Notice, the applicable Dispute shall be promptly
submitted for non-binding mediation conducted in accordance with the
Commercial Mediation Rules of the American Arbitration Association
(the “Mediation Rules”), and the Parties shall participate in such
mediation in good faith for a period of 30 calendar days or such longer
period as the Parties may mutually agree in writing (the “Mediation
Period”). In connection with such mediation, the Parties shall cooperate
with each other and the American Arbitration Association in selecting a
neutral mediator with relevant industry experience and in scheduling the
mediation proceedings; provided that, if the Parties are unable to agree on
a neutral mediator within 10 calendar days of the delivery of a Mediation
Notice, the Parties shall cause the American Arbitration Association to
select and appoint a neutral mediator on the Parties’ behalf in accordance
with the Mediation Rules. The Parties agree to bear equally the costs of
any mediation, including any fees or expenses of the applicable mediator;
provided that each Party shall bear its own costs in connection with
participating in such mediation.
(d) If the Parties are unable to resolve any Dispute via
negotiation or mediation in accordance with Section 7.03(b) and
Section 7.03(c), then, following the Mediation Period, either Party may
commence litigation in a court of competent jurisdiction pursuant to
Section 7.03(e). For the avoidance of doubt, except as set forth in
Section 7.03(f), neither Party may commence litigation with respect to a
Dispute until and unless the Parties first fail to resolve such Dispute via
negotiation and mediation in accordance with Section 7.03(b) and
Section 7.03(c).
(e) Each Party irrevocably consents to the exclusive
jurisdiction, forum and venue of the Court of Chancery of the State of
Delaware or, if (and only if) the Court of Chancery of the State of
Delaware finds it lacks subject matter jurisdiction, the federal court of the
United States sitting in Delaware or, if (and only if) the federal court of
the United States sitting in Delaware finds it lacks subject matter
jurisdiction, the Superior Court of the State of Delaware, and appellate
courts thereof, over any and all claims, disputes, controversies or
disagreements between the Parties or any of their respective Subsidiaries,
Affiliates, successors and assigns under or related to this Agreement or
any document executed pursuant to this Agreement or any of the
transactions contemplated hereby or thereby.
(f) Notwithstanding anything in this Agreement to the
contrary, a Party may seek a temporary restraining order or a preliminary
injunction from any court of competent jurisdiction, at any time, in order
to prevent immediate and irreparable injury, loss or damage on a
provisional basis, pending the resolution of any dispute hereunder,
including under Section 7.03(b) or (c) hereof.
SECTION 7.04. Third-Party Beneficiaries. Except as
otherwise expressly set forth herein, (a) the provisions of this Agreement
are solely for the benefit of the Parties hereto and are not intended to
confer upon any Person except the Parties hereto any rights or remedies
hereunder and (b) there are no third-party beneficiaries of this Agreement
and this Agreement shall not provide any third person with any remedy,
claim, liability, reimbursement, cause of action or other right in excess of
those existing without reference to this Agreement.
SECTION 7.05. Notices. All notices or other
communications under this Agreement shall be in writing and shall be
deemed to be duly given (a) when delivered in person, (b) when
transmitted (except if not a Business Day, then the next Business Day)
via email to the email address set out below (to the extent that no “bounce
back” or similar message indicating non-delivery is received with respect
thereto), (c) on the date received, if sent by a nationally recognized
delivery or courier service or (d) upon the earlier of confirmed receipt or
the fifth Business Day following the date of mailing if sent by registered
or certified mail, return receipt requested, postage prepaid, addressed as
follows:
If to J&J, to:
Johnson & Johnson
Law Department
One Johnson & Johnson Plaza
New Brunswick, NJ 08933
Attention: Chief Trademark Counsel
Email: ****
If to JJCI, to:
Johnson & Johnson Consumer Inc.
Attn: Chief IP Counsel
CC: General Counsel
199 Grandview Road
Skillman, NJ 08558
Email: ****
cc: ****
Either Party may, by notice to the other Party, change the address to
which such notices are to be given.
SECTION 7.06. Severability. If any provision of this
Agreement or the application thereof to any Person or circumstance is
determined by a court of competent jurisdiction to be invalid, void or
unenforceable, the remaining provisions hereof, or the application of such
provision to Persons or circumstances or in jurisdictions other than those
as to which it has been held invalid or unenforceable, shall remain in full
force and effect and shall in no way be affected, impaired or invalidated
thereby, so long as the economic or legal substance of the transactions
contemplated hereby is not affected in any manner materially adverse to
either Party. Upon any such determination, any such provision, to the
extent determined to be invalid, void or unenforceable, shall be deemed
replaced by a provision that such court determines is valid and
enforceable and that comes closest to expressing the intention of the
invalid, void or unenforceable provision.
SECTION 7.07. Expenses. Except as expressly set forth in
this Agreement, all third-party fees, costs and expenses paid or incurred
in connection with the provisions of this Agreement will be paid by the
Party incurring such fees or expenses, whether or not the transactions
contemplated by this Agreement are consummated, or as otherwise
agreed by the Parties.
SECTION 7.08. Headings. The article, section and
paragraph headings contained in this Agreement are for reference
purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
SECTION 7.09. Waivers of Default. No failure or delay of
any Party (or the applicable member of its Group) in exercising any right
or remedy under this Agreement shall operate as a waiver thereof, nor
shall any single or partial exercise of any such right or power, or any
abandonment or discontinuance of steps
to enforce such right or power, or any course of conduct, preclude any
other or further exercise thereof or the exercise of any other right or
power. Waiver by any Party of any default by the other Party of any
provision of this Agreement shall not be deemed a waiver by the waiving
Party of any subsequent or other default.
SECTION 7.10. Specific Performance. In the event of any
actual or threatened default in, or breach of, any of the terms, conditions
and provisions of this Agreement, the affected Party shall have the right
to specific performance and injunctive or other equitable relief of its
rights under this Agreement, in addition to any and all other rights and
remedies at Law or in equity, and all such rights and remedies shall be
cumulative. The Parties agree that the remedies at Law for any breach or
threatened breach hereof, including monetary damages, are inadequate
compensation for any loss and that any defense in any action for specific
performance that a remedy at Law would be adequate is waived. Any
requirements for the securing or posting of any bond with such remedy
are waived.
SECTION 7.11. Amendments; Waivers. No provisions of
this Agreement shall be deemed amended, supplemented or modified by
any Party, unless such amendment, supplement or modification is in
writing and signed by the authorized representative of each Party, and no
waiver of any provisions of this Agreement shall be effective unless in
writing and signed by the authorized representative of the Party sought to
be bound by such waiver.
SECTION 7.12. Interpretation. Words in the singular shall
be held to include the plural and vice versa and words of one gender shall
be held to include the other gender as the context requires. The terms
“hereof,” “herein” and “herewith” and words of similar import, unless
otherwise stated, shall be construed to refer to this Agreement as a whole
(including all of the schedules hereto) and not to any particular provision
of this Agreement. Article, Section or Schedule references are to the
articles, sections and schedules of or to this Agreement unless otherwise
specified. Any capitalized terms used in any Schedule to this Agreement
but not otherwise defined therein shall have the meaning as defined in
this Agreement. Any definition of or reference to any agreement,
instrument or other document herein (including any reference herein to
this Agreement) shall be construed to refer to such agreement, instrument
or other document as from time to time amended, supplemented or
otherwise modified from time to time (subject to any restrictions on such
amendments, supplements or modifications as set forth herein). The word
“including” and words of similar import when used in this Agreement
shall mean “including, without limitation,” unless the context otherwise
requires or unless otherwise specified. The word “or” shall not be
exclusive. The words “will” and “shall” shall be interpreted to have the
same meaning.
SECTION 7.13. Waiver of Jury Trial. EACH OF THE
PARTIES ACKNOWLEDGES AND AGREES THAT ANY
CONTROVERSY THAT MAY ARISE UNDER THIS AGREEMENT
IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT
ISSUES, AND THEREFORE EACH OF THE PARTIES HEREBY
IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY RIGHT
SUCH PARTY MAY HAVE TO A TRIAL BY JURY IN RESPECT OF
ANY LITIGATION DIRECTLY OR INDIRECTLY ARISING OUT OF
OR RELATING TO THIS AGREEMENT. EACH OF THE PARTIES
CERTIFIES AND ACKNOWLEDGES THAT (A) NO
REPRESENTATIVE, AGENT OR ATTORNEY OF THE OTHER
PARTY HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT
THE OTHER PARTY WOULD NOT, IN THE EVENT OF ANY
LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER,
(B) EACH OF THE PARTIES UNDERSTANDS AND HAS
CONSIDERED THE IMPLICATIONS OF THIS WAIVER, (C) EACH
OF THE PARTIES MAKES THIS WAIVER VOLUNTARILY AND
(D) EACH OF THE PARTIES HAS BEEN INDUCED TO ENTER
INTO THIS AGREEMENT BY, AMONG OTHER THINGS, THE
MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION
7.13.
[SIGNATURE PAGES FOLLOW]
IN WITNESS WHEREOF, the Parties have caused this Trademark
Phase-Out License Agreement to be executed by their duly authorized
representatives.
JOHNSON & JOHNSON,
By:
/s/ Jake Feldman
Name: Jake Feldman
Title: Assistant Secretary
JOHNSON & JOHNSON
CONSUMER INC.,
By:
/s/ Jake Feldman
Name: Jake Feldman
Title: Assistant Secretary
[Signature page to Trademark Phase-Out License Agreement]
