EXHIBIT 10.44A
[*] indicates that a confidential portion of the text of this agreement has been
omitted.
AMENDED AND RESTATED TRADEMARK LICENSE AGREEMENT
Entered into between the undersigned as of January 11,
2012 (the "Effective
Date"):
BIOFARMA,
A company duly organized and existing under the laws of France
and having its office at:
22 rue Garnier,
92200 NEUILLY-SUR-SEINE
FRANCE
(hereinafter referred to as "BIOFARMA")
AND
XOMA IRELAND LIMITED,
A company duly organized and existing under the laws of the Republic of Ireland
and having its office at:
26 Upper Pembroke Street
DUBLIN 2
IRELAND
(hereinafter referred to as "XOMA")
BIOFARMA and XOMA are hereinafter individually referred to as the "Party" or
collectively referred to as the "Parties".
SUMMARY
PAGE
ARTICLE I DEFINITIONS
1
ARTICLE II GRANT
5
ARTICLE III
REPRESENTATIONS AND WARRANTIES OF BIOFARMA
6
ARTICLE IV REPRESENTATIONS AND
WARRANTIES OF XOMA
7
ARTICLE V TRADEMARK AND QUALITY CONTROL
8
ARTICLE VI ROYALTIES
10
ARTICLE VII INFRINGEMENT/ENFORCEMENT
11
ARTICLE VIII TERM AND TERMINATION
13
ARTICLE IX MISCELLANEOUS
13
i
PREAMBLE
WHEREAS, BIOFARMA is the owner of certain Trademarks (as hereinafter defined) in
the Territory (as hereinafter defined);
WHEREAS, XOMA LS LIMITED ("XOMA LS") approached BIOFARMA, an Affiliate of LES
LABORATOIRES SERVIER ("SERVIER"), in order to acquire an exclusive license to
use the Trademarks in the Territory in connection with the commercialization of
the Licensed Products (as hereinafter defined) in the Territory, and BIOFARMA
agreed to grant such license;
WHEREAS, BIOFARMA and XOMA LS entered into a Trademark License Agreement (the
"Original Agreement"), dated July 7, 2010 (the "Original Agreement Effective
Date");
WHEREAS, XOMA LS assigned the Original Agreement to XOMA on March 14, 2011;
WHEREAS, XOMA and SERVIER are parties to that certain License and
Commercialization Agreement, dated July 7, 2010 (the "License and
Commercialization Agreement"), as amended, pursuant to which SERVIER is
exclusively licensing to XOMA certain intellectual property rights so as to
enable XOMA to commercialize the Licensed Products in the Territory;
WHEREAS, XOMA and SERVIER are entering into an Amended and Restated License and
Commercialization Agreement, dated of even date herewith, pursuant to which,
among other things, SERVIER is expanding the license grant to XOMA to include an
additional Licensed Product, currently commercialized in the Territory under the
trade name ACEON® (the "Amended and Restated Agreement"); and
WHEREAS, in connection with the execution of the Amended and Restated Agreement,
XOMA desires to receive a license grant to the ACEON trademark used for such
additional Licensed Product, and the Parties desire to amend and restate the
Original Agreement as set forth herein
(hereinafter this "Agreement").NOW, THEREFORE, IN CONSIDERATION OF THE
FOREGOING AND OF THE UNDERTAKINGS CONTAINED HEREIN, THE PARTIES, INTENDING TO BE
LEGALLY BOUND HEREBY, AGREE AS FOLLOWS:
ARTICLE I
DEFINITIONS
As used in this Agreement, the following terms have the following meanings,
capitalized terms used but not defined herein shall have the meaning set forth
in the Amended and Restated Agreement:
1.1
"ACEON" means all pharmaceutical preparations, in all dosage
strengths, formulations and methods