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 trademark Hydro® (“the Trademark”) and the HYDRO CIRCAL® trademark 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 trademarks and marketing material owned and created by Hydro, as further defined in this Agreement.
Now, the Parties agree as follows:
1.1 Affiliates means, when used with reference to a Party, any entity directly or indirectly controlling, controlled by or under common control with such Party. For the purposes of this Agreement "control" means direct or indirect ownership of over fifty percent of the outstanding shares of an entity, or the right to receive over fifty percent of the profits or earnings of an entity.
1.2 Eligible Customer Products means products under Customer brand or model including or incorporating a Hydro low-carbon aluminum product, a Hydro recycled aluminum product, and/or a HYDRO CIRCAL product. One Eligible Customer Product may include more than one product.
1.3 HYDRO CIRCAL Products means certain aluminum products sold by Hydro or any of its Affiliates fulfilling particular requirements for the recycling of materials as set out in Exhibit A to this Agreement.
1.4 HYDRO CIRCAL Trademark means the registered and unregistered trademark "CIRCAL" and certain logos and other marks that incorporate this trademark as set out in Exhibit B to this Agreement.
1.5 Hydro Low-Carbon Aluminum products means certain aluminum products sold by Hydro or any of its Affiliates fulfilling specific requirements regarding CO2 emission as set out in Exhibit A to this Agreement.
1.6 Hydro Marketing Material means material prepared by Hydro for the marketing of the Trademarks, including the Hydro LOW-CARBON aluminum product tags, the Hydro RECYCLED aluminum product tags, and the HYDRO CIRCAL logo, which are all are displayed in Exhibit A to this Agreement and which can be downloaded from www.hydro.com. All Hydro Marketing Material is protected by copyright and is part of the intellectual property belonging to Hydro.
1.7 Hydro Recycled Aluminum products means certain aluminum products sold by Hydro or any of its Affiliates fulfilling particular requirements for the recycling of materials as set out in Exhibit A to this Agreement.
1.8 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.
1.9 The Territories means the jurisdictions where the respective trademarks are registered, cf. Exhibit B.
1.10 The Trademark means the wordmark Hydro, the combined mark Hydro and the Hydro logo as specified in Exhibit A to this Agreement.
2. LICENSE GRANT
2.1 Subject to the terms and conditions of this Agreement, Hydro grants Customer a limited, non-exclusive, non-transferable, royalty-free license to use the Trademark, the HYDRO CIRCAL trademark and the Hydro Marketing Material in the Territories and solely on Eligible Customer Products, and in advertising and promotional materials for such products.
2.2 Customer shall not in any way alter the composition of the Low-Carbon aluminum products, the Hydro Recycled aluminium products or the HYDRO CIRCAL Products that are included or incorporated in an Eligible Customer Product. The Customer shall present to Hydro upon request the specification on the relevant Hydro LOW-CARBON aluminum products, the Hydro RECYCLED aluminum products or the Hydro CIRCAL Products that are included or incorporated in an Eligible Customer Product.
3. CONDITIONS FOR USE OF HYDRO TRADEMARKS
3.1 Customer shall include the Trademark, the HYDRO CIRCAL trademark and the relevant Hydro Marketing Materials in all advertising for the relevant Eligible Customer Products.
3.2 The Customer shall comply with the guidelines for trademark use incorporated in Exhibit A and which will be made available to the Customer online upon the acceptance of this Agreement.
3.3 The guidelines may be amended by Hydro from time to time in its sole discretion. The Customer has an obligation to ensure that the Customer’s use is in compliance with the most recent guidelines. To ensure compliance with the guidelines, Hydro will provide Customer with computer graphic files online, which includes the Hydro Marketing Material. Hydro shall notify the Customer if the guidelines are amended.
3.4 Customer shall not use any Trademark or the HYDRO CIRCAL trademark as a noun, or pluralize, make possessive or abbreviate the Trademark or the HYDRO CIRCAL trademark.
3.5 Customer shall make Hydro ownership of the Trademark and the HYDRO CIRCAL trademark known by stating the following:
“HYDRO (device) is a trademark of Norsk Hydro ASA" or “HYDRO CIRCAL is a trademark of Norsk Hydro ASA”
3.6 Customer shall not alter the Trademark or the HYDRO CIRCAL trademark in any way or incorporate its own and/or any third-party trademark into the Trademark or the HYDRO CIRCAL trademark.
3.7 Customer shall not use the Trademark or the HYDRO CIRCAL trademark in any way that creates confusion as to Customer products' association with Hydro or indicates that Customer is in any way related to Hydro.
3.7 Customer may not use the Trademark or the HYDRO CIRCAL trademark on invoices or in general advertising of Customer's business not specifically related to a relevant Eligible Customer Product.
3.8 The Customer shall not do, or omit to do, anything in its use of the Trademark or the HYDRO CIRCAL trademark that could, in Hydro's sole discretion, adversely affect their validity or reputation.
3.9 The Customer may only use Hydro Marketing Material as instructed by Hydro. Customer shall not alter the Hydro Marketing Material unless explicitly agreed in writing by Hydro.
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 Either party may immediately terminate this Agreement for breach by the other party upon written notice.
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 Trademark and the HYDRO CIRCAL trademark and cease all use of the Hydro Marketing Material.
5.1 Hydro retains all Intellectual Property Rights in the Hydro Marketing Materials, to the Trademark and the HYDRO CIRCAL trademark. The Customer shall promptly give notice in writing to Hydro if it becomes aware of any infringement or suspected infringement of the Trademark, the HYDRO CIRCAL trademark or the Hydro Marketing Material. Hydro shall, in absolute discretion, decide what action to take in respect of the matter (if any).
5.2 Hydro makes no representation or warranty as to the validity or enforceability of the Trademark or the HYDRO CIRCAL trademark nor as to whether they infringe any Intellectual Property Rights of third parties.
5.3 The Customer shall be responsible for complying with regulatory requirements and any marketing regulations, hereunder, but not limited to any greenwashing regulations, pertaining to the sale and marketing by the Customer of the Eligible Customer Product.
5.4 Neither Party shall be liable to the other Party for special, incidental, or consequential damages.
5.5 Customer will indemnify, defend and hold Hydro harmless from any costs, damages, losses and expenses relating to any third-party claims, actions or proceedings against Customer arising out of or related in any way to (i) use of the Trademark, the HYDRO CIRCAL trademark and/or the Hydro Marketing Material or (ii) the design, manufacture, use, marketing, distribution or sale of an Eligible Customer Product.
5.6 This Agreement and any dispute or claim arising out or in connection with it or its subject matter or formation (including non-contractual disputes or claims) with this shall be governed by or 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).