be shared between
Vivus and Sanofi in proportion to incurred expenses, except that any recovery
with respect to unfair competition claims in the Sanofi Territory shall be
retained solely by Sanofi.
Should Vivus fail to institute infringement
proceedings in the Sanofi Territory, Sanofi, if it deems necessary, shall have
the right but shall not be obligated, to bring suit for such infringement under
its name and at its own costs and expenses. Vivus shall cooperate with Sanofi in
any such proceedings at its own expense including giving testimony and producing
document and material supporting the Vivus Trademark and shall endeavour to
cause the employees of Vivus, as appropriate, to cooperate with Sanofi, all at
Sanofi's expense. Any recoveries obtained in suit for trademark infringement
litigation or in settlement of such infringement undertaken without Vivus'
involvement shall be retained by Sanofi.
(d)
Sanofi Trademarks. To the extent Sanofi
elects to use a Sanofi Trademark in addition or, pursuant to Section 8.8(a), as
an alternative to the Vivus Trademarks in connection with the Manufacture and
the Commercialization of the Products in the Sanofi Territory, Sanofi shall be
responsible for the selection, adoption, registration, maintenance and defense
of such Sanofi Trademarks, as well as all expenses associated therewith.
Sanofi
shall own all Sanofi Trademarks and all rights arising from the use of the
Sanofi Trademarks in the Sanofi Territory shall inure to Sanofi's benefit.
Sanofi shall also choose at its own discretion the related packaging and trade
dress.
*** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS
REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED.
34
(e)
No Similar Trademarks.
Vivus shall not at
any time register or cause to be registered, anywhere in the world, any
trademark, name or design identical or confusingly similar to any of the Sanofi
Trademarks in the Sanofi Territory or outside of the Sanofi Territory without
the express consent of Sanofi. Sanofi shall not at any time register or cause to
be registered, anywhere in the world, any other trademark, name or design
identical to or confusingly similar to any of the Vivus Trademarks without the
express consent of Vivus, which consent shall not be unreasonably withheld,
conditioned or delayed.
(f)
Further Acts. Vivus shall execute,
acknowledge and deliver such instruments and do all such other acts as may be
necessary or appropriate in order to have this Agreement recorded by any
authority operating as a trademark office in the Sanofi Territory or in order to
ascertain or confirm Sanofi's right to use the Vivus Trademarks.
(g)
Infringement of Third Party rights by the
Vivus Trademarks. Notwithstanding the provisions of Section 8.6, Vivus shall:
(i) defend, through counsel of its choosing, at its own cost and expense, any
Claim from a Third Party that claims that the Vivus Trademarks infringe such
Third Party's intellectual Property in the Sanofi Territory; (ii) consult with
Sanofi,