This Trademark license agreement (“Agreement”) is entered into at the date of acceptance (the “Effective Date”), by and between Norsk Hydro ASA, reg. no 914778271 (“Hydro”) and Customer, collectively the “Parties”.
WHEREAS, Hydro is the owner of the trademarks “CIRCAL” and “REDUXA” and certain logos and other marks which incorporate such trademarks, hereunder |HYDRO CIRCAL and HYDRO REDUXA, as further defined in this Agreement.
WHEREAS, Customer purchases certain products from Hydro to be incorporated into Customer products.
WHEREAS, Hydro wishes to grant, and Customer wishes to be granted, certain rights to use the relevant trademarks owned by Hydro as further defined in this Agreement.
Now, the Parties agree as follows:
1.1. Hydro CIRCAL Products means a range of aluminum products sold by Hydro or any of its Affiliates made with a minimum of 75 % post-consumer scrap and with a low aluminum CO2 footprint (below 2.3 kg CO2e/kg aluminum), and where the product is verified by DNV GL and confirmed by an environment product declaration.
1.2. Hydro REDUXA Products means a range of aluminum products sold by Hydro or any of its Affiliates where the CO2 emissions are maximum or below 4.0 kg CO2e/kg aluminum, where the product is verified by DNV GL according to ISO 14064 and confirmed by an environment product declaration.
1.3. Hydro Trademarks means the combined marks HYDRO REDUXA and HYDRO CIRCAL, the way these are exhibited in the Product Brand Guidelines, cf. Exhibit A.
1.4. Intellectual Property Rights means patents, rights to apply for patents, trademarks, trade names, service marks, domain names, copyrights and all applications and registration of such worldwide, industrial models, inventions, know-how, trade secrets, and other intangible proprietary information.
1.5. Eligible Customer Products means products under Customer brand or model including or incorporating a Hydro REDUXA Product and/or a Hydro CIRCAL Product.
1.6. Product Brand Guidelines means a guideline prepared by Hydro with specific rules on how to use the Hydro REDUXA and Hydro CIRCAL trademarks on Eligible Customer Products together with the HYDRO brand and how to communicate the use of Hydro REDUXA and Hydro CIRCAL products on Eligible Customer Products in marketing material. The guideline is a part of this Agreement and included as Exhibit A.
1.7. Territory means the countries where Hydro has registered or pending trademark rights for REDUXA and CIRCAL. The full list of these countries is included in Exhibit B.
2. LICENSE GRANT
Subject to the terms and conditions of this Agreement, Hydro grants Customer a limited, non-exclusive, non-transferable, royalty-free license to use the Hydro Trademarks on Eligible Customer Products or in customer branding of such products within the Territory.
3. CONDITIONS FOR USE OF HYDRO TRADEMARKS
3.1. When using the Hydro Trademarks, the Customer is obligated to comply with the Product Brand Guidelines and the general terms and conditions of this Agreement.
3.2. The Customer also has an obligation to ensure that Hydro Trademarks are used in compliance with Hydro’s most recent Product Brand Guidelines, which may be updated and altered at Hydro’s sole discretion. The latest version of Hydro’s Product Brand Guidelines can always be found in the Brand Center on Hydro.com.
4. TERM AND TERMINATION
4.1. This agreement shall take effect on the Effective Date. Each Party may terminate this Agreement upon thirty (30) days written notice.
4.2. Hydro may immediately terminate this Agreement if the customer uses the Hydro Trademarks in breach of the Product Brand Guidelines or is in breach of the general terms and conditions of this Agreement.
4.3. This Agreement shall immediately expire in the event that any party terminates business operations for any reason. In the event that any party becomes insolvent, has a receiver appointed, goes into liquidation, files a bankruptcy petition, or has a bankruptcy petition filed against it that is not dismissed within thirty (30) days, the other party shall have the option to either (i) cancel the Agreement upon notice to the other party or (ii) continue this Agreement without waiving any rights or remedies it may otherwise have.
4.4. Upon the termination of this Agreement, the Customer shall immediately cease all use of the Hydro Trademarks and related marketing material.
5.1. Hydro retains all Intellectual Property Rights in downloadable material that the Customer access when signing this Agreement, including all Rights to the Product Brand Guidelines and to the Hydro Trademarks and related logos.
5.2. The Customer shall promptly give notice in writing to Hydro if the Customer becomes aware of any infringement or suspected infringement of the Hydro Trademarks. Hydro shall, in absolute discretion, decide what action to take in respect of the matter (if any).
5.3. Hydro makes no representation or warranty as to the inherent validity or enforceability of the Hydro Trademarks, nor as to whether they infringe any Intellectual Property Rights of third parties. Hydro only warrants that the word marks CIRCAL and REDUXA, in addition to the word mark HYDRO, are registered and filed in the jurisdictions listed in Exhibit B and that these registrations and applications have not been challenged by any third-party as of the Effective Date.
5.4. The Customer may not, without the prior written consent from Hydro, file any applications for Hydro Trademarks or variations or parts thereof, in any jurisdiction. This also includes the filing of Hydro Trademarks or any parts or variations thereof, in other classes, not covered by the current registrations and applications owned by Hydro.
5.5. Upon request, the Customer must forward samples of use documentation to Hydro, if Hydro needs such samples in order to maintain or prosecute Hydro’s trademark rights anywhere in the world. The customer must also forward documentation of use to Hydro upon request, if such documentation is needed in any ongoing proceeding against a third-party, or in the preparations thereof.
5.6. The Customer shall be responsible for complying with regulatory requirements pertaining to the sale and marketing by the Customer of the Eligible Customer Product when the Hydro Trademarks are used. Hydro shall not be responsible for any claims arising from such non-compliance.
5.7. Neither Party shall be liable to the other Party for special, incidental, or consequential damages.
5.8. Hydro is not liable for any use of the Hydro Trademarks, if this use in not in accordance with the Product Brand Guidelines or outside the Territory of this Agreement. Hydro is further not liable for any use of the Hydro Trademarks, if these, in fact, are not used on Eligible Customer Products as defined in this Agreement. Hydro shall further not be liable and shall be held harmless against any product liability claims related to the Eligible Customer Products as such, even if the Hydro Trademarks are used on the product or in other marketing communication of such products.
5.9. This agreement and any dispute or claim arising out of or in connection with it or its subject matter or formation (including non-contractual disputes or claims) shall be governed by and construed in accordance with the laws of Norway. Each party irrevocably agrees that Oslo City Court shall have exclusive jurisdiction to settle any dispute or claim arising out of or in connection with this agreement or its subject matter or formation (including non-contractual disputes or claims).