Exhibit
10.1


 


CONFIDENTIAL
TREATMENT REQUESTED:


 


Portions
of this Exhibit have been redacted pursuant to a request for confidential
treatment under Rule 24b-2 of the General Rules and Regulations under
the Securities Exchange Act of 1934, as amended.  Such redacted portions
have been replaced with “{***}” in this Exhibit.  An unredacted version of this
document has been filed separately with the Securities and Exchange Commission
along with the request for confidential treatment.


 


TRADEMARK LICENSE AGREEMENT


 


THIS TRADEMARK LICENSE AGREEMENT (this “Agreement”)
is made and entered into as of the 14th day of May,
2009 (the “Effective Date”), by and between SMITHKLINE BEECHAM CORPORATION, a
GlaxoSmithKline company, a corporation duly organized and existing under the
laws of the Commonwealth of Pennsylvania (“GSK”), and BIOVAIL LABORATORIES
INTERNATIONAL SRL, a Barbados society with restricted liability (“Biovail”).


 


RECITALS


 


WHEREAS, GSK and Biovail are parties to that certain Asset
Purchase Agreement, dated as of May 5, 2009 (the “APA”), pursuant to which
GSK sold and transferred to Biovail certain assets and liabilities relating to
the Product in the Territory (as such terms are defined in the APA);


 


WHEREAS, GSK is the owner of the trademark WELLBUTRIN XL (the
“Licensed Mark”), the corresponding goodwill, and United States Trademark
Registration No. 2,826,347, as well as the Product Trade Dress; and


 


WHEREAS, Biovail desires to obtain a license from GSK, and
GSK desires to grant a license to Biovail, to use the Licensed Mark and the
Product Trade Dress, in connection with the advertising, promotion,
manufacture, offer for sale, sale and distribution of the Product in the
Territory.


 

















 


NOW, THEREFORE, for and in consideration of the premises
and the covenants provided herein (including the above recitals that are hereby
incorporated herein), and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties,
intending to be legally bound, agree as follows:


 


1.                                       Definitions. 
Capitalized terms not otherwise defined in this Agreement shall have the
meanings set forth in the APA.


 


2.                                       Grant of
License.  During the Term of this
Agreement, and subject to the terms and conditions contained herein, GSK grants
to Biovail, and Biovail hereby accepts, a nontransferable (except as permitted
hereunder), sole and exclusive, royalty-free license (the “License”), to use
the Licensed Mark and the Product Trade Dress in connection with the
advertising, promotion, manufacture, offer for sale, sale and distribution of
the Product solely in the Territory. 
Biovail consents and agrees that it shall only use the Licensed Mark in
its entirety.  The license granted
hereunder shall be personal to Biovail. 
Biovail may not sublicense, in whole or in part, any of the rights
granted hereunder without the prior written consent of GSK, which consent shall
not be unreasonably conditioned, delayed or withheld.  For the avoidance of doubt, without such
consent from GSK, Biovail may nonetheless sublicense its rights under this
Agreement to its Affiliates and distributors, but only as reasonably necessary
to exercise the rights granted to Biovail hereunder.  Any attempted assignment or sublicense by
Biovail not permitted under this Agreement shall be void and of no force or
effect and shall constitute a material breach of this Agreement.


 


3.                                       Use of License
Mark, Product Trade Dress. 
Biovail shall use and shall cause its permitted sublicensees to use the
Licensed Mark and the Product Trade Dress only in association with the Product
identified in the APA in the Territory. 
GSK shall not itself use, or license or otherwise permit any third party
to use the Licensed Mark or the Product Trade Dress in the Territory during the
term of this Agreement.


 


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4.                                       Quality Control.


 


(a)                                  Biovail agrees
to use the Licensed Mark and the Product Trade Dress only in relation to the
Product consistent with GSK’s brand guidelines attached hereto as Exhibit 1
and to not intentionally use the Licensed Mark and the Product Trade Dress in
any way that would diminish, tarnish, disparage, or damage the goodwill in and
to the Licensed Mark and the Product Trade Dress.  Biovail agrees to use the same level of due
care to avoid diminishing, tarnishing, disparaging, or damaging the goodwill of
the Licensed Mark and the Product Trade Dress as Biovail would use in
connection with its own trademark and trade dress.


 


(b)                                 Upon reasonable
advance written request, Biovail will deliver to GSK, samples of the Product
and samples of packaging, advertising and collateral materials that bears the
Licensed Mark and the Product Trade Dress for the inspection of GSK.  If GSK reasonably determines that Biovail fails
to maintain a consistent level of quality in accordance with the terms of this
Agreement, then GSK may request that Biovail take reasonable steps to remedy
any such deficiencies and Biovail shall promptly comply with such requests.


 


(c)                                  Biovail agrees
not to authorize any third party to use the Licensed Mark or the Product Trade
Dress other than as permitted under this Agreement.  Biovail agrees not to use and shall cause its
permitted sublicensees not to use any trade mark confusingly similar to the Licensed
Mark or the Product Trade Dress.


 


(d)                                 Biovail and its
permitted sublicensees shall comply with all applicable laws and regulations
and obtain all appropriate government approvals pertaining to the sale, lease,
distribution and advertising of Product bearing the Licensed Mark and/or the Product
Trade Dress.


 


(e)                                  Biovail may not
and agrees that neither it nor any of its permitted sublicensees will use the
Licensed Mark outside the Territory.


 


5.                                       Acknowledgment
of Ownership Rights.  Biovail
hereby expressly acknowledges GSK’s ownership of, and rights in, the Licensed
Mark and the Product Trade Dress.  
During


 


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the term of this Agreement,
Biovail agrees that it will not (and will not assist or authorize any third
party to) attack, dispute or contest the validity of GSK’s ownership of the
Licensed Mark and the Product Trade Dress. 
Biovail further agrees that, in the event it acquires any rights in the
Licensed Mark or the Product Trade Dress in the United States or elsewhere in
the world (except as provided under Section 6 of this Agreement and other
rights granted by this Agreement), at GSK’s request, Biovail shall assign all
such rights to GSK, together with all goodwill associated with such rights.


 


6.                                       Maintenance of Licensed Mark.


 


(a)                                  GSK shall not take any
intentional steps to tarnish, disparage, damage and/or diminish the value of
the Licensed Mark or the Product Trade Dress (or the goodwill associated with
either of the foregoing) or frustrate or hinder Biovail’s ability to exercise
its rights under this Agreement.


 


(b)                                 GSK shall
prepare, file, prosecute and maintain trademark applications and registrations
at the United States Patent and Trademark Office for the Licensed Mark.  All costs and expenses (including but not
limited to attorneys’ fees and expenses and official fees) of preparing,
filing, prosecuting and maintaining the Licensed Mark shall be borne by GSK.


 


(c)                                  GSK shall not (i) abandon
the Licensed Mark; (ii) abandon any application for the Licensed Mark; or (iii) permit
any registration issuing therefrom to lapse, expire or be cancelled in the
Territory without first notifying Biovail.


 


(d)                                 If GSK
contemplates any of the events in Section 6(c), GSK will use commercially
reasonable efforts to provide Biovail with as much prior written notice as is
reasonably practicable under the circumstances, but no less than twenty (20)
days prior written notice.  Upon receipt
of such notice, Biovail shall have the option (at its choice) to (A) continue
the prosecution of such applications (and/or maintain such registrations) or
pay any required fees in the name of GSK (or its designee) or (B) promptly
receive an assignment of such Licensed Mark


 


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and the Product Trade Dress
from GSK (and all applications and registration for same, along with all
associated goodwill).  Biovail shall
promptly notify GSK in writing of its election pursuant to the foregoing
sentence.  In the event that Biovail
elects to receive an assignment of the Licensed Mark and the Product Trade
Dress, GSK shall effect such assignment, at its sole cost, within thirty (30)
days of receipt of Biovail’s notice of its election.  In such event, GSK agrees, for no additional
consideration, to execute such further documents and to do such other acts as
may be reasonably necessary and proper to vest full title in, to and under the
Licensed Mark and/or the Product Trade Dress in Biovail, and/or may be
necessary in the Territory for Biovail to obtain, maintain, renew, issue or
enforce such trademark (and related applications and registrations) and trade
dress.  In the event of such assignment
to Biovail, this Agreement shall expire; provided, however that Section 6(a) shall
survive and GSK shall not (and shall not assist or authorize any third party
to) attack, dispute or contest the validity of Biovail’s ownership of the
Licensed Mark and the Product Trade Dress.


 


7.                                       Term and
Termination.


 


(a)                                  Term.  The term of this Agreement shall commence on
the date hereof and shall continue until expiration pursuant to the last
sentence of Section 6(d) above, unless terminated as set forth in
subsection (b) or (c) below.


 


(b)                                 Termination for
Non-Use of the Licensed Mark.  In the event Biovail voluntarily ceases to
use the Licensed Mark in the Territory, Biovail shall provide prompt written
notice to GSK and upon receipt of such notice GSK may terminate this Agreement
and the License granted hereunder on written notice to Biovail.  In the event Biovail does not provide such
written notice but have voluntarily ceased to


 


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use the Licensed Mark in the
Territory for a period of {***}†, notice by Biovail shall be deemed to have
been given and GSK may terminate this Agreement and the License granted
hereunder on written notice to Biovail.


 


(c)                                  Termination by
Biovail.  Biovail may
terminate this Agreement at any time on forty-five (45) days’ written notice to
GSK.


 


(d)                                 Effect of
Termination.  Upon the
termination of this Agreement for any reason, all rights of Biovail to use the
Licensed Mark and the Product Trade Dress shall cease.  Further, Biovail shall take appropriate steps
to ensure that all use of the Licensed Mark and the Product Trade Dress by
Biovail shall cease; provided, however, that Biovail shall be permitted
to use the Licensed Mark and the Product Trade Dress until the earlier of (i) the
depletion of all Product and associated advertising materials, brochures and
the like remaining in its possession (provided that Biovail will use its
commercially reasonable efforts to promptly deplete such Products and materials
in its possession), and (ii) ninety (90) days following the date on which
it receives notice of the termination.


 


8.                                       Infringement
and Defense.


 


(a)                                  Third-Party
Infringement.  GSK and
Biovail shall each provide the other with prompt notice of any infringement of
the Licensed Mark or the Product Trade Dress by any third party in the
Territory of which they become aware. 
Biovail, at its sole discretion, shall have the first option, {***}†, to bring, prosecute and
settle an enforcement action against such third party for infringement of
the Licensed Mark or the Product Trade Dress in the Territory.  GSK shall provide Biovail with any reasonably
requested assistance in connection with such proceedings.  Any 


 






† Represents
material which has been redacted and filed separately with the Securities and
Exchange Commission pursuant to a request for confidential treatment pursuant
to Rule 24b-2 under the Securities Exchange Act of 1934, as amended.


 


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settlement or award of
expenses, damages or judgments, whether direct or indirect, recovered through
any proceedings brought by Biovail {***}†.


 


(b)                                 Third-Party
Claims.  Any expenses, damages, or
judgments (including attorney’s fees) in connection with claims alleging
trademark infringement involving the use by Biovail of the Licensed Mark and
the Product Trade Dress other than as permitted under this Agreement shall be
the responsibility of GSK.


 


(c)                                  Action by GSK.  In the event Biovail determines not to
prosecute a claim against a third party (as set forth in Section 8(a)), then
GSK may elect, at {***}†, to bring and
prosecute an action against such a third party for infringement of the Licensed
Mark and the Product Trade Dress in the Territory; provided, however,
that GSK shall not settle or compromise any such claim or action, nor make any
admission, that would have an adverse effect on Biovail’s rights hereunder,
without the prior written consent of Biovail, which consent shall not be
unreasonably withheld, conditioned or delayed. 
Any award of expenses, damages or judgments, whether direct or indirect,
recovered through any proceedings brought by GSK {***}†.


 


9.                                       No Warranties.  Except as specifically stated in the APA
regarding the Licensed Mark and the Product Trade Dress, GSK makes no
representation or warranty of any kind regarding the Licensed Mark or the
Product Trade Dress or Biovail’s use thereof.


 


10.                                 Indemnification. 
Each party (the “Indemnifying Party”) agrees to indemnify, defend, save
and hold harmless, and hereby does indemnify, defend, save and hold harmless,
the other party and its directors, officers, agents and employees (the “Indemnitees”)
from and against any and all liabilities, claims, causes of actions, suits,
damages and expenses (including reasonable attorneys’ fees) for which the
Indemnitees or any Indemnitee may become liable or may incur or be compelled to
pay in any action or claim, for or by 


 






† Represents
material which has been redacted and filed separately with the Securities and
Exchange Commission pursuant to a request for confidential treatment pursuant
to Rule 24b-2 under the Securities Exchange Act of 1934, as amended.


 


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reason of the Indemnifying Party’s breach of its
applicable obligations and agreements set forth in this Agreement.


 


11.                                 Entire
Agreement.  This
Agreement, together with the applicable provisions of the APA, constitute the
entire agreement and understanding between the parties with respect to the
subject matter hereof, and supersedes and cancels any and all previous
agreements or understandings, whether written or oral, with respect to the
subject matter.  To the extent there are
inconsistent provisions in this Agreement and the APA concerning Biovail’s use
of the Licensed Mark and/or the Product Trade Dress, this Agreement governs.


 


12.                                 Governing Law;
Venue.  This Agreement shall be
governed by and interpreted in accordance with the laws of the State of New York
without reference to choice of law principles that would dictate the
application of a law of another jurisdiction. 
Any legal suit, action or proceeding arising out of or relating to this
Agreement shall be commenced in the United States District Court for the
Eastern District of New York; provided, however, that if a court proceeding is
brought as a third party action as part of a proceeding in a different venue,
either party may initiate such third party action against the other party in
such venue.


 


13.                                 No Agency or
Partnership Between GSK and Biovail.  Nothing in this Agreement or any of the
transactions, obligations or relationships contemplated hereby shall, in and of
itself, constitute GSK or Biovail as the agent, employee, franchisee. or legal
representative for the other for any purpose whatsoever, nor shall any party to
this Agreement hold itself out as such. 
This Agreement does not create and shall not be deemed to create a
relationship of partners, joint venturers, associates franchisee/franchisor, or
principal-and-agent between Biovail and GSK, and each of the parties
acknowledges that each is acting as a principal hereunder.


 


14.                                 Further
Assurances.  From time
to time after the Effective Date, GSK and Biovail shall execute and deliver all
such additional instruments, licenses and certificates and shall take all such
other actions as Biovail or GSK, as the case may be, may reasonably 


 


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request in connection with
the consummation of this Agreement and effecting the intent and purpose hereof.


 


15.                                 Modifications.  This Agreement may not be modified except by
an instrument in writing, signed by an authorized representative of each party.


 


16.                                 Succession and
Assignment.  Except as
set forth in Section 2 of this Agreement, this Agreement may not be
assigned, and the rights and obligations hereunder may not be licensed,
sublicensed, subcontracted or delegated, without the prior written consent of
GSK, which shall not be unreasonably withheld, delayed or conditioned.


 


17.                                 Waiver.  The waiver of
any right to which a party is entitled under this Agreement shall not be
effective unless in writing and signed by the party against whom the waiver is
sought to be enforced, and shall not constitute a waiver of any subsequent
right to which the party would otherwise be entitled.


 


[Signature Page Follows]


 


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IN WITNESS WHEREOF, the parties have caused this Trademark License
Agreement to be executed in their respective corporate names by their officers
duly authorized thereto, all as of the Effective Date.


 




	
  SMITHKLINE BEECHAM CORPORATION D/B/A
  GLAXOSMITHKLINE

  	
   

  	
  BIOVAIL LABORATORIES INTERNATIONAL SRL

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ William J. Mosher

  	
   

  	
  By:

  	
  /s/ Michel Chouinard

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Printed Name:

  	
  William J. Mosher

  	
   

  	
  Printed Name:

  	
  Michel Chouinard

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  Vice President & Secretary

  	
   

  	
  Title:

  	
  Chief Operating Officer

  






 

















 


Exhibit 1


 


TRADEMARK GUIDELINES FOR WELLBUTRIN XL®


 


A.                                    GIVE PROPER NOTICE OF TRADEMARK RIGHTS


 


1.                                       Notice Symbols - A proper trademark
notice should follow the mark.  Use the “R-in-a-circle”
symbol (®) in close proximity to the mark. 
Typically, the symbol is in superscript font immediately following the
mark.


 


This should be followed on each page if the topic is
different and as often as is practical.


 


2.                                       Legal Notice:  In any product packaging, advertising
material or article, include the following:


 


WELLBUTRIN XL® is a federally registered trademark of
SmithKline Beecham Corporation.


 


B.                                    USE TRADEMARKS AS ADJECTIVES, FOLLOWED BY THE COMMON
DESCRIPTIVE NAME (NOUN) OF THE PRODUCT.


 


Example:


Wellbutrin XL® tablets


 


The word “brand,” after a mark and before the generic
product name, further guards against improper use.


 


Examples:


WELLBUTRIN XL® brand medication


 


C.                                    MAKE
TRADEMARKS STAND OUT FROM SURROUNDING TEXT


 


The trademark should always be used in a manner that will
distinguish it from the surrounding text. 
Trademarks should be CAPITALIZED, underlined, italicized, placed 


 

















 


in “quotation marks,” or depicted in boldface type,
whenever they appear in printed or electronic media.


 


Example:


WELLBUTRIN XL® antidepressant medication


 


D.                                    NEVER
MAKE TRADEMARKS PLURAL OR POSSESSIVE


 


Since a trademark is not a noun, it should never be used in
the plural form.  Instead pluralize the common
nouns they describe.


 


Examples:


Correct:  Two
Wellbutrin® tablets


Incorrect:  Two
Wellbutrins


 


E.                                      “AFFIX”
TRADEMARKS TO PACKAGING


 


In order for trademark rights to be created and maintained,
a mark must be “affixed” to a specific product so that consumers can see the
mark when making their purchasing decisions. 
Trademarks are affixed by applying them directly to a product, to
containers in which the product is packaged, or to tags or labels attached to
the product.  Trademarks also can appear
in catalogs and online marketing if the marks are used prominently in
association with a picture of the goods and if ordering information is also
provided.


 


F.                                      DO NOT
COMBINE THE WELLBUTRIN XL® TRADEMARK WITH OTHER MARKS


 


The Trademark should stand on its own and should never be
combined with or presented in close proximity to the trademark of any other
company.  Further, the Trademark should
not be used in a manner that might create the impression it is owned by any
company other than GSK or that it is related to another mark.


 

















 


G.                                    DO NOT
USE A GSK TRADEMARK IN A MANNER INCONSISTENT WITH ITS BRAND IMAGE


 


The Trademark represents a unique product identity and is
an important symbol of GSK’s goodwill. 
Accordingly, all marketing and promotional materials should utilize the
relevant Trademark in a manner consistent with the product image.  NEVER use the Trademark in a manner that
makes false or unsubstantiated claims, implies immoral or improper conduct or
is otherwise disparaging to our company or its products.  Further, take affirmative steps to only
present the Trademark in a manner consistent with the product image.


 


H                                       FAITHFULLY REPRODUCE THE LOGO TO MATCH
STANDARDS


 


Logos must be used
consistently, to present a recognizable visual image that consumers can rely
on.  Please ensure that all reproductions
of any Logos are in correct proportion, of good resolution and, when colors are
involved, include all of the correct colors as established by GSK’s Style
Guide, which is attached.


 


I                                            GSK hereby agrees and acknowledges that Biovail’s use of
the Licensed Mark on the Product packaging (including, without limitation, the
package inserts) in a manner consistent with GSK’s use as of the Effective Date
of such Licensed Mark on the Product packaging (including, without limitation,
the package inserts) will be deemed to comply with these Trademark Guidelines.