Exhibit 10.16


 


TRADEMARK CROSS-LICENSE


AGREEMENT


 


 


BY AND BETWEEN


 


 


SemiLEDs Corporation


 


 


AND


 


 


Xurui Guangdian Co., Ltd.


 


 


MAY 7, 2010


 

















 


TRADEMARK CROSS-LICENSE AGREEMENT


 


This Trademark Cross-License Agreement (this “Agreement”) is entered into on May 7,
2010 by and between:


 


SemiLEDs
Corporation, an American corporation
incorporated and existing under the laws of the United States having a
registered office at 999 Main Street, Suite 1010, Boise, ID 83702
USA, and duly represented by Trung Tri Doan (nationality: USA) (hereinafter
referred to as “SemiLEDs”), and


 


Xurui
Guangdian Co., Ltd., a Chinese
corporation incorporated and existing under the laws of the PRC having a
registered office at Room 201, Building B, Innovation Center, The
South China Sea Software Scien-tech Garden, Shishan Town, Nanhai District,
Foshan City, Guangdong Province (hereinafter referred to as “Xurui”).


 


The parties above are
also referred to as “Licensor” or “Licensee.”


 


WHEREAS:


 


1.       SemiLEDs
is one of the investors in Xurui and subject to the Framework Agreement Among
the Investors of Xurui (the “Framework
Agreement”) entered into by all investors of Xurui on December 25,
2009. SemiLEDs agrees that it shall, as quickly as possible upon the completion
of capital increase concerned, grant royalty-free, exclusive and
nontransferable licenses concerning the trademarks listed in Schedule 5 of the
Framework Agreement (i.e., Schedule 1 hereof) and any trademarks to be acquired
in the future by SemiLEDs to Xurui for the manufacture of LED epitaxial wafers
or chips within China (excluding Taiwan). However, except as Xurui has been
listed, SemiLEDs transfers its shares in Xurui or waiver and/or fails to
exercise its preemptive right at the capital increase of Xurui, SemiLEDs may
terminate the license granted hereunder immediately if the members appointed by
SemiLEDs are no longer in the majority of the Board of Xurui;


 


2.       Xurui
agrees to grant a royalty-free, transferable and exclusive license to SemiLEDs
and its affiliates to globally use trademarks to be acquired by Xurui in the
future, but such license does not include the use of the trademark in China
(excluding Taiwan); and


 


3.       All
the investors of the Xurui signed the Capital Increase Agreement on March 26,
2010 (the “Capital Increase Agreement”).


 


NOW THEREFORE, in consideration of the
mutual undertakings and covenants and any other good and valuable consideration
which is acknowledged as sufficient by the Parties, the Parties hereto shall,
under the principles of equality and mutual benefits, enter into the following
agreement for mutual observance:


 


1.                    DEFINITIONS


 


The terms used in this
Agreement shall be defined as follows:


 


1

















 


1.1
“SemiLEDs Trademark” refers to the trademarks listed in Schedule 1 hereof, as
well as any other trademarks to be acquired by SemiLEDs.


 


1.2
“SemiLEDs License Program” refers to the products or services of Xurui on which
any of SemiLEDs Trademark is granted to be used, and the scope of such program
shall be limited to the manufacture of the high-brightness LED epitaxial wafers
and chips.


 


1.3
“Affiliates of SemiLEDs” refers to SS Optoelectronics Co., Ltd., Artemis
Opto Electronic Technologies Pvt. Ltd., SILQ (Malaysia) Sdn Bhd, VIETLED
Optoelectronics JSC and any other subsidiaries of SemiLEDs in which SemiLEDs
holds at least 49% of the shares.


 


1.4
“Xurui Trademark” refers to all trademarks acquired by Xurui upon
incorporation.


 


1.5
“Effective Date of the Agreement”: this Agreement will come into effect
automatically as of the date when the Xurui obtains the updated business
license issued by the competent Administration for Industry and Commerce after
the capital increase pursuant to the Capital Increase Agreement has been
fulfilled.


 


2.                    LICENSE GRANTED TO XURUI BY SEMILEDS


 


2.1                SemiLEDs hereby grants to Xurui and Xurui accepts the royalty-free,
exclusive license for the use of SemiLEDs trademarks on the SemiLEDs License
Program within the PRC (excluding Taiwan).


 


2.2                Xurui may not transfer or sublicense any license granted to Xurui by
SemiLEDs as stipulated in Article 2.1.


 


2.3                Without SemiLEDs’ written consent, Xurui may not use the SemiLEDs
Trademark or any other designs of patterns or characters similar to or  confused with the SemiLEDs Trademark as part of the name for or
trademark owned by any corporation, partnership or other entities owned by or
affiliated with Xurui.


 


2.4                Xurui shall not use the SemiLEDs Trademark for the advertisement,
promotion, sale or distribution of any unauthorized products or services.


 


2.5                Xurui agrees to use the SemiLEDs Trademark according to the following
conditions:


 


1)                   It
shall use such trademark in the manner designated by SemiLEDs or its authorized
representatives and shall observe the corresponding instructions made by
SemiLEDs or its authorized representatives concerning the trademark species and
the pattern of such trademarks in use or exhibition. In such events, SemiLEDs
shall provide Xurui the product packaging samples and advertising materials
from time to time for reference. Xurui shall be responsible for reproducing the
samples of trademarks used for the products licensed and shall bear all
expenses arising thereof. All samples of trademarks by Xurui shall be used only
upon the submission to SemiLEDs or its authorized representative and the
corresponding approval is obtained, and Xurui shall not use any trademark
without the approval of SemiLEDs or its authorized representative. Xurui agrees
that it shall observe all instructions made by 


 


2

















 


SemiLEDs
or its authorized representatives regarding the samples, use or reproduction of
trademarks. In addition, Xurui shall also provide SemiLEDs with samples of
trademarks printed or made with various materials for the purpose of use.


 


2)              Xurui
shall ensure that any use of product packaging, trademarks or marks shall not
violate any laws of the PRC.


 


3)              Xurui
shall indicate “Manufactured (or Provided) by Xurui Guangdian Co., Ltd” or
shall indicate any other words provided by SemiLEDs or its authorized
representatives from time to time on the licensed products, packages or
promotional materials.


 


2.6                       During the license period as stipulated in Article 2 hereof and
upon the termination of such license period due to the causes listed in Article 11
hereof, Xurui shall not, directly or indirectly, use or apply for registration
of any trademarks, names, logos or words similar to the SemiLEDs Trademark in
appearance, pronunciation or design or any design patents including any part of
the SemiLEDs Trademark or similar to the SemiLEDs Trademark.


 


2.7                       During the license period as stipulated in Article 2 hereof, Xurui
shall not, without the prior written consent of SemiLEDs, make advertisements
or promotions of any services and/or products concerning any high-brightness
LED epitaxial wafers or chips with any marks of any other corporations.


 


2.8                       Xurui agrees that SemiLEDs has full authorities to supervise the quality
of the products and/or services manufactured, distributed and/or rendered under
the SemiLEDs License Program. Xurui agrees that all such products and/or
services should conform to the quality standards established and monitored by
the entities providing similar products or services to SemiLEDs (the “Quality
Standards”). Xurui agrees that it may use SemiLEDs trademarks only when such
Quality Standards are met by such products or services manufactured, used
and/or sold under the License Program. Xurui agrees that SemiLEDs or its
authorized representatives may access and inspect the License Program,
processes and facilities upon reasonable notice, and agrees that it shall, at
the reasonable request of SemiLEDs, provide samples of License Program products
to enable SemiLEDs to affirm whether such License Program satisfies the Quality
Standards or any other requirements for sampling, quality control and
marketing. It shall constitute breach of the Agreement by Xurui if any of its
products fails to satisfy the standards or requirements mentioned above.


 


3.                    LICENSE MADE TO SEMILEDS AND ITS AFFILIATES BY XURUI


 


3.1                       Xurui hereby agrees to grant a royalty-free, transferable and exclusive  license to SemiLEDs and its affiliates, and SemiLEDs, on behalf of
SemiLEDs and its affiliates, accepts such licenses for the use of Xurui
Trademark globally.


 


3.2                       Any Trademarks acquired by Xurui will be automatically granted to
SemiLEDs and its affiliates by the stipulations of Article 3.1 upon the
receipt by Xurui, and no separate agreement is required to be entered into by
and between SemiLEDs or its affiliates (as one party) and Xurui (as the  other party) for the license mentioned in Article 3.1 hereof.
However, if it is 


 


3

















 


necessary for the
performance of Article 3.1 or at the request of SemiLEDs and/or its
affiliates, Xurui shall actively cooperate with SemiLEDs and/or its affiliates
to sign such further separate agreement and any other related documents.


 


4.                    CONFIDENTIALITY


 


During the term hereof
and at any time thereafter, each Party shall be responsible to keep confidential
any confidential and proprietary information it acquires of the other Party
and/or its affiliates during the process of cooperation between the Parties.


 


5.                    REGISTRATION


 


Each Party agrees to make
the corresponding registration of this Agreement in accordance with the laws of
the country where the right of the trademark is granted. In such event, if
applicable, the other Party shall make all efforts to assist the completion of
such registration as quickly as possible.


 


6.                    RIGHT TO SUE FOR SPECIFIC PERFORMANCE OR DAMAGES


 


Hereby each of the
Parties represents and warrants that it has full rights, powers and authorities
to enter into, perform, assume and fulfill this Agreement and any or all
obligations hereunder, and this Agreement, upon being duly signed, shall
constitute effective and binding obligations to each Party and may be enforced
against each of the Parties. Each Party reserves the right to sue for specific
performance of the rights and obligations under this Agreement, or for the
payment of damages, without terminating the Agreement.


 


7.                    INDEMNIFICATION


 


Xurui agrees to assume
responsibility and be liable for any damages arising out of or in connection
with the defective or unqualified products manufactured by Xurui.


 


8.                    INFRINGEMENT


 


If any claim is made by
any third party concerning the infringement of any intellectual property right
by any products manufactured by Xurui, Xurui shall immediately notify SemiLEDs.
SemiLEDs may, at the expense of Xurui, provide full cooperation to Xurui for any
action taken by Xurui representing the maximum interests of SemiLEDs. In such
event, Xurui may have full authority and power to make any or all decisions
regarding such action, including whether or not to carry out any corresponding
activities or to make efforts for and/or reach any settlement. Xurui agrees to
assume responsibility and be liable for any losses, damages, liabilities,
penalties, claims, proceedings, judgments, expenses and costs (including
attorney’s fees) arising out of or in connection with any infringement claims
or proceedings made by any third party as stipulated in the above Article 7.


 


9.                    LIMITATION OF LIABILITY BY SEMILEDS


 


9.1
EXCEPT AS OTHERWISE EXPRESSLY STIPULATED HEREIN, SEMILEDS MAKES NO
REPRESENTATION, WARRANTY OR


 


4

















 


UNDERTAKING, EXPLICITLY, IMPLICITLY,
LEGALLY OR OTHERWISE ON THE TRADEMARKS LICENSED HEREUNDER INCLUDING BUT NOT
LIMITED TO THE REPRESENTATION, WARRANTY OR UNDERTAKING ON THE MARKETABILITY,
NON-INFRINGEMENT OR FITNESS FOR ANY PARTICULAR PURPOSE OF XURUI. SEMILEDS SHALL
NOT BE LIABLE FOR ANY INDIRECT, CONSEQUENTIAL OR SPECIAL DAMAGES OR LOSSES, OR
ANY NEGLIGENT OR INTENTIONAL INFRINGEMENT DUE TO PERFORMANCE OF THE AGREEMENT
BY XURUI, INCLUDING BUT NOT LIMITED TO THE LOSS OF PROFITS, GAINS, INTERESTS
OR IDLE EQUIPMENT ARISING OUT OF ANY BREACH OF XURUI HEREUNDER.


 


9.2
IN ADDITION TO THE STIPULATIONS OF ARTICLE 9.1, NEITHER PARTY MAKES ANY
EXPLICIT OR IMPLICIT WARRANTY ON OR TAKES ANY LIABILITY OR OBLIGATIONS TO ANY
CLAIMS MADE BY ANY THIRD PARTY ARISING OUT OF OR IN CONNECTION WITH THE
INFRINGEMENT ON, MISUSE OF, UNAUTHORIZED USE OF THE INTELLECTUAL PROPERTY
RIGHTS OF ANY THIRD PARTY.


 


9.3
EXCEPT AS OTHERWISE STIPULATED IN ARTICLE 9 HEREOF, THE PARTIES HERETO
ACKNOWLEDGE AND AGREE THAT ANY OTHER REPRESENTATION OR WARRANTY, EXPLICITLY OR
IMPLICITLY, IS NOT MADE BY EITHER PARTY, INCLUDING BUT NOT LIMITED TO
THE IMPLIED WARRANTY ON MARKETABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE.


 


10.             NOTIFICATION


 


For the purpose of this
Agreement and for notice and communication, the addresses of the Parties are
indicated in the first page hereof. Any change of address shall remain
non-binding to a Party until the Party receives notice in writing from the
other Party.


 


For the purpose of this
Agreement, any notice, request, demand, and other necessary communication
hereunder shall be in writing and in Chinese and shall be regarded as having
been served effectively (a) on the date of receipt if delivered by hand; (b) on
the date of delivery if delivered through fax machine with confirmation; or (c) on
the 4th business day upon delivering such notice to
the courier or the date confirmed by such courier in writing for the receipt of
such notice (whichever is earlier) if delivered through Federal Express, DHL or
other international express delivery services. All such notice, request,
demand, and other necessary communication hereunder shall be delivered to:


 


If SemiLEDs:


 


SemiLEDs
Corporation


 


999 Main Street, Suite 1010


 


Boise, ID 83702, USA


 


Attention: Trung Tri Doan


 


5














 


With copy to:


 


SemiLEDs
Optoelectronics Co., Ltd.


 


3F, No.11 Ke Jung Rd.,
Chu-Nan Site


 


Hsinchu Science Park,
Chu-Nan 350


 


Miao-Li County, Taiwan


 


Attention: Lydia Chin,
General Counsel


 


 


If Xurui:


 


Xurui
Guangdian Co., Ltd.


 


Room 201, Building B


 


Innovation Center


 


The South China Sea
Software Scien-tech Garden 


 


Shishan Town


 


Nanhai District


 


Foshan City, Guangdong
Province


 


The People’s Republic of
China


 


Attention: Trung Tri Doan


 


Or such communication
shall be delivered to any other address or fax number provided by one Party to
the other parties in writing according to this Article.


 


11.    TERMINATION


 


11.1      The license granted to Xurui by SemiLEDs
hereunder shall be terminated if:


 


1)      Xurui
fails or refuses to perform any of its obligations hereunder, and if such
default is rectifiable, Xurui fails to rectify the same within thirty (30) days
upon the receipt of written notice issued by SemiLEDs for such default; or


 


2)      Xurui
fails to satisfy the Quality Standards listed under Article 2.8 hereof
during the performance of this Agreement; or


 


3)      (a) Xurui
enters into or initiates the insolvency, receivership or bankruptcy process and
such process fails to be rejected or cancelled within 90 days thereafter; or (b) Xurui
enters into any assignment as a whole for the interests of all its creditors;
or (c) Xurui dissolution occurs; or (d) Xurui terminates its business
operations for 90 days or more; or


 


4)      Except
in the event that Xurui has been listed or SemiLEDs sells its shares in
Licensee or waivers and/or fails to fully exercise its preemptive right (no
matter by itself or by designated third party) at the capital increase of
Xurui, the members appointed by SemiLEDs are not in the majority of 


 


6

















 


the
Board of Xurui;


 


SemiLEDs shall provide a
written notice to Xurui prior to the termination of licenses granted hereunder
in accordance with the stipulations of this Article; in such event, such
licenses shall be terminated immediately upon Xurui’s receipt of such notice
issued by SemiLEDs.


 


The license granted to
SemiLEDs by Xurui hereunder shall be terminated if SemiLEDs fails or refuses to
perform any of its obligations hereunder and if such default is rectifiable,
SemiLEDs fails to rectify the same within thirty (30) days upon the receipt of
the written notice issued by Xurui for such default. Xurui shall provide a
written notice to SemiLEDs prior to the termination of licenses granted
hereunder in accordance with the stipulations of this Article. In such event,
such licenses shall be terminated immediately upon SemiLEDs’ receipt of such
notice issued by Xurui.


 


11.2      Xurui
shall immediately terminate its use of any SemiLEDs Trademark or any
advertisements or promotion materials pertaining to SemiLEDs Trademark in any
form or manner upon the termination of such license granted to Xurui by
SemiLEDs; likewise, SemiLEDs shall immediately  terminate
its use of any Xurui Trademark or any advertisements or promotion materials
pertaining to Xurui Trademark in any form or manner upon the termination of
such license granted to SemiLEDs by Xurui.


 


11.3      The
termination of license granted to one Party of this Agreement by the other
Party of this Agreement hereunder in accordance with Article 11 hereof
shall not jeopardize the effects and enforcement forces of any other
stipulations herein.


 


12.    FORCE MAJEURE


 


Neither Party shall be
liable for any failure or delay of performance hereunder if the same, totally
or partially, arises out of or is in connection with a natural disaster, action
of civil or military authorities, fire, flood, infectious disease, quarantine
restriction, war, riot, strike or any other causes beyond the reasonable
control of such Party.


 


13.    IMMUNITY


 


Any delay, deferment or
postponement for the exercise of any provisions hereunder by either Party shall
not jeopardize or affect any rights or remedies enjoyed by such Party. The
immunity for any default or breach shall not constitute waiver for any further
default or breach.


 


14.    APPLICABLE LAWS AND DISPUTE RESOLUTION


 


14.1      This
Agreement shall be governed by the laws of the PRC, provided, however, as to
any particular trademark listed in Schedule 1 hereof, the laws of the country
where the rights and the title to such trademark are granted shall be
applicable.


 


14.2      Any
dispute, controversy or claim arising out of or in connection with this
Agreement but not involving any particular trademark under this Agreement,
shall be settled, based on the principle of trust and honesty, by the duly
authorized representatives of the Parties hereto through amiable negotiation.
If the Parties fail to resolve such dispute, controversy or claim within 180
days 


 


7

















 


upon the date on which
the first communication made by the representatives of the Parties for such
dispute settlement or within any other term agreed by the Parties, such
dispute, controversy or claim shall be finally resolved by three arbitrators
(the “Arbitrators”) designated in accordance with the existing arbitration rules of
the Chinese International Economic and Trade Arbitration Commission. Such
arbitration shall be in Chinese and shall be and conducted by the South China
Sub-Commission of China International Economic and Trade Arbitration
Commission. The location for such arbitration, if the parties fail to reach
consent on such location, shall be the one determined by Arbitrators in
accordance with said arbitration rules. The arbitration award rendered by such
arbitration shall be final and binding to the Parties hereto and may be
enforced by any court with competent jurisdiction.


 


Arbitrators shall consent
in writing that any or all information provided by either Party for arbitration
shall be kept confidential. The laws of the PRC shall be applied by Arbitrators
for the interpretation of this Agreement if any dispute, claim or controversy
between the Parties hereto arises out of or is in connection with the general
issues of this Agreement but does not involve any particular trademark under
this Agreement.


 


Such Arbitrators are not
authorized to (i) make awards deciding the punitive, consequential or
indirect damages or any other compensation disproportionately with the losses
actually suffered by the winning party; or  (ii) increase
the amount of compensation for actual damages due to infringement at its sole
discretion or under any circumstances make any decision, award or judgment
inconsistent with the stipulations of this Agreement. Notwithstanding the
stipulations mentioned above, the winning party may require Arbitrators to make
an award for the reasonable compensation of attorney’s fees incurred .


 


14.3    Either
Party may require the competent court with jurisdiction with regard to any said
dispute, claim or controversy in connection with any particular trademark under
this Agreement to grant injunctive relief or any other interim relief for the
avoidance of any irreparable damages. In order to comply with the
confidentiality provision in Article 4, any Party requiring such
injunctive relief or any other interim relief from the competent court shall
make application to such court for the issuance of an order protecting the
information provided by either Party, and for the hearing to be held in private
session concerning any or all proceedings related to the application of such
injunctive relief or any other interim relief.


 


14.4    For
any dispute, claim or controversy involved with any trademark hereunder, the
arbitration stipulations of this Article shall not be applied and such
dispute, claim or controversy shall be settled by the competent court or
administrative body with jurisdiction.


 


15.    SUSPENSION


 


If any provisions or
articles of this Agreement are held as invalid under any applicable laws, rules or
regulations, such provisions or articles shall be regarded as having been
omitted from this Agreement and the remaining provisions or articles of this
Agreement shall keep their full force and effect. In such event, the Parties
shall make all efforts to replace such invalid provisions or articles with
valid ones under the 


 


8

















 


applicable laws, rules or
regulations.


 


16.    EFFECT OF HEADINGS


 


Any heading to any
article hereof is inserted only for convenience and shall not, in any way,
define, restrict, limit or describe the scope or purpose of such article, and
neither affect the interpretation of this Agreement for any purpose.


 


17.    AMENDMENT OR ALTERATION


 


If there is any dispute
or inconsistency between this Agreement and any prior discussion by the Parties
hereto concerning the trademarks listed in Schedule 1 hereof, the stipulations
of this Agreement shall prevail. This Agreement may only be amended or altered
in writing and signed by the Parties hereto.


 


18.    CUMULATIVE RIGHTS AND RELIEF


 


The rights and relief
provided herein shall be cumulative and any right or relief excised by either
Party shall not preclude or constitute a waiver of any other rights or relief
available to such Party based on this Agreement or otherwise.


 


19.    NO IMPLICIT WAIVER


 


Neither course of dealing
between the Parties hereto nor any delay of excising any rights, powers or
remedies available to either Party in accordance with this Agreement or
existing or further law, equity, statute or otherwise may constitute the waiver
of or jeopardize such rights, powers or remedies.


 


20.    SEVERABILITY


 


If, under any
circumstance, any provision of this Agreement or its applicability to either
Party is held as invalid, illegal or unenforceable to any extent, the remainder
of this Agreement shall not be affected and therefore may be enforced to the
maximum extent as permitted by the applicable laws.


 


21.    THIRD PARTY AGREEMENT


 


Either Party or their
respective subsidiaries shall not enter into any other third party agreement
inconsistent with this Agreement.


 


22.    NO THIRD PARTY BENEFICIARY


 


Any stipulation of this
Agreement shall not, explicitly or implicitly, constitute or be regarded as
having conferred or granted any right, profit or interest to any other
individual or entity outside the Parties hereto by virtue of this Agreement or
reference.


 


23.    ENTIRE AGREEMENT


 


This Agreement
constitutes all agreements made by the Parties for the subject matters hereof,
and shall, commencing from the effective date, supersede all prior agreements
or understandings, whether written or oral, entered into by the Parties
concerning the subject matters hereof.


 


24.    COUNTERPARTS


 


This Agreement shall be
executed in four copies: each Party shall have one, and the other two copies
may be used for recordation procedures at government departments; each of the
counterparts shall be regarded as the original and shall have equal legal
effect as the original.


 


9

















 


	
  SemiLEDs Corporation

  	
   

  	
  Xurui Guangdian Co., Ltd.

  
	
   

  	
   

  	
  Seal:

  	
   

  
	
   

  	
   

  	
   

  
	
  Signature of Authorized
  Representative:

  	
   

  	
  Signature of Authorized
  Representative:

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Name of Authorized
  Representative:

  	
   

  	
  Name of Authorized
  Representative:

  
	
  Trung Tri Doan

  	
   

  	
  Trung Tri Doan

  
	
  Title:

  	
  Chairman of the Board

  	
   

  	
  Title:

  	
  Chairman of the Board

  
	
   

  	
   

  	
   

  
	
  Date: May 7, 2010

  	
   

  	
  Date: May 7, 2010

  
						



 


10

















 


Schedule 1


 


List of SemiLEDs Trademark


 


	
  Country

  	
   

  	
  Patentee

  	
   

  	
  Patent

  	
   

  	
  Type

  	
   

  	
  Patent No.

  
	
  USA

  	
   

  	
  SemiLEDs Corporation

  	
   

  	
  

  (words only) SEMILEDS

  	
   

  	
  009

  	
   

  	
  3718328

  



 


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