This Terms Schedule includes factors to be considered by VRM Global Holdings Pty Ltd in respect to the grant of a Sub-License to the person or entity identified below. The Sub-License Agreement attached to this Terms Schedule if it commences operation will allow the Sub-Licensee to produce and to distribute the Outputs identified in Annexure A to the attached Sub-License.
Name of Entity or Person:
(The Proposed Sub-Licensee)
Operating Premises Address:
Telephone Contact Number:
Minimum Annual Input Quantity:
6,000 Litres/1500 Gallons License Fee
Included in the minimum annual quantity purchases
I/We hereby apply to be a user of VRM Biologik processes and a licensed manufacturer of and distributor of the Outputs described in and on the terms and conditions of the attached Sub-License Agreement.
Please execute this Terms Schedule and the attached Sub-License Agreement and submit a scanned copy of the entire document to: email@example.com
The attached Sub-License Agreement shall not commence operation and shall not be enforceable until executed by both VRM International Pty Ltd and VRM Global Holdings Pty Ltd
BETWEEN: VRM INTERNATIONAL PTY LTD (ACN 136 687 155)
('the Head Licensor')
THE PARTY NAMED IN ITEM 1A OF ANNEXURE A TO THIS LICENSE AGREEMENT
THE PARTY NAMED IN ITEM 1B OF ANNEXURE A TO THIS LICENSE AGREEMENT
('the Sub-Licensee') VRM GLOBAL HOLDINGS PTY LTD (ACN 603 353 993)
22-24 Reward Crescent Bohle, QLD 4818 Australia
Contact: The Directors
PARTIES: VRM INTERNATIONAL PTY LTD (ACN 136 687 155) of 22-24 Reward Crescent Bohle QLD, 4818 Australia ('the Head Licensor') AND: THE PARTY NAMED IN ITEM 1A OF ANNEXURE A TO THIS LICENSE AGREEMENT ('the Sub-Licensor') AND: THE PARTY NAMED IN ITEM 1B OF ANNEXURE A TO THIS LICENSE AGREEMENT ('the Sub-Licensee') BACKGROUND
A. The Head Licensor:
(i) is a company incorporated in Australia.
(ii) is a member of the VRM Biologik Group of Companies and is primarily responsible for the maintenance of Intellectual Property.
B. The Sub-Licensor is a licensee of the Head Licensor in respect to use of the Rights.
Applications Manual means the manual attached hereto as Annexure E. Authority means any applicable government, council, local authority or other statutory authority or department. Breach Notice means a notice given under clause 19. Consequential Loss means any of the following:
(a) loss of revenue;
(b) loss of profits;
(c) loss of opportunity to make profits;
(d) loss of business;
(e) loss of business opportunity;
(f) loss of use or amenity, or loss of anticipated savings;
(g) special, exemplary or punitive damages; and
(h) any loss which does not directly and naturally flow in the normal course of events from the occurrence of the event giving rise to the liability for such loss, whether or not such loss was in the contemplation of the parties at the time of entry into this License Agreement,
including without limitation any of the above types of loss arising from an interruption to a business or activity. Controller means a liquidator, administrator, receiver, receiver and manager, mortgagee in possession or other external controller appointed by virtue of the laws of insolvency or appointed by a creditor, by the Sub-Licensee or by the holder of security over the assets of the Sub-Licensee. Date hereof means the Date of this License Agreement appearing in Item 9: of Annexure A to this agreement. Exceptional Circumstance means a circumstance beyond the reasonable control of the parties which results in a party being unable to observe or perform on time an obligation under this License Agreement, provided such event is not due to such party's sole negligence. Such circumstances include:
(a) adverse changes in government regulations;
(b) any disaster or act of God, epidemic or pandemic, lightning strikes, atmospheric disturbances, earthquakes, floods, storms, explosions, fires and any natural disaster;
(c) acts of war, acts of public enemies, terrorism, riots, civil commotion, malicious damage, sabotage and revolution, cyber-attacks, viruses or malware, data loss as a result of the actions of a third party;
(d) strikes or industrial disputes;
(e) materials or labour shortage; and
(f) acts or omissions of any third party network providers (such as internet, telephony or power provider),
but does not include lack of finances. Head License means the License agreement between the Head Licensor and Sub-Licensor dated 3 March 2017. Head Licensor means VRM International Pty Ltd (ACN 136 687 155). Inputs means the products identified in Item 4(a) of Annexure A. Intellectual Property means collectively all of the intellectual property (including without limitation the rights attaching to marks, patent rights, copyright and design rights) being the property of the Licensor and attaching to the Patents, Marks, Recipes, Materials, Media and Manuals (and the processes therein) as referred to in clause 1 hereof, and includes this License Agreement. Law means any statute, rule, regulation, proclamation, order in council, ordinance, local law or by-law, whether:
(a) present or future; or
(b) State, federal or otherwise. Liability
means any liability, debt or obligation, whether actual, contingent or prospective, present or future, qualified or unqualified or incurred jointly or severally with any other person. License Agreement means this Sub-License Agreement. License Fee Means the License Fee referred to in Item 6 of Annexure A. Loss
means any loss (including without limitation Consequential Loss), claims, actions, liabilities, damages, expenses, diminution in value or deficiency of any kind whether direct, indirect, consequential or otherwise. Manuals means the Process Manual and the Applications Manual. Marks means the marks, names, brands, logos, barcodes and devices set out in Annexure C hereto. Master Licensee
Materials Means the entity identified in Item 1C of Annexure A of this License Agreement or the entity otherwise appointed by the Head Licensor from time to time to administer the terms of this agreement in the Territory.
means the labels, brochures, pamphlets, technical reports, case studies and other documents written, auditory or digital for use in promotion of the Products and being the items set out in or referred to in Annexure H. Media means all of the domain names, websites and other digital media set out in Annexure I hereto. Outputs means the products identified in Item 5 of Annexure A. Patents means the registered patents set out in the Patent Schedule. Process Manual means the manual attached hereto as Annexure F. Products means collectively the Inputs and the Outputs. Recipes means the recipes and processes described in the documents attached as Annexure D. Rights means the rights and entitlements set out in Annexure B. Sub-Licensee means the person referred to in Item 1B of Annexure A. Sub-Licensor means the person referred to in Item 1A of Annexure A. Tax means any Goods and Services Tax, Value Added Tax, Stamp Duty and other taxes, duties or imposts imposed by an Authority on a vendor, seller, purchaser or buyer in respect to the supply, provision, sale, distribution or purchase of goods or services or like transactions. Termination Notice means a notice given in accordance with clauses 19 or 20. Terms Schedule means the Terms Schedule attached to the License Agreement and signed on behalf of the Sub-Licensee. Territory means the Territory referred to in Item 8 of Annexure A. VRM Entity means any or all of VRM Global Holdings Pty Ltd, VRM International Pty Ltd, VRM Biologik Pty Ltd, the Master Licensee and/or the Sub-Licensor INTERPRETATION
In this License Agreement, unless the subject or context otherwise requires:
(a) a reference to 'dollar' or '$' is a reference to the currency of Australia where the address of the Sub-Licensee as set out in item 2 of Annexure A is located within Australia and to the currency of the United States of America where the address of the Sub-Licensee as set out in item 2 of Annexure A is located outside Australia.
(b) words importing the singular include the plural and vice versa;
(c) words importing natural persons include corporations, firms, unincorporated associations, partnerships, trusts and any other entities recognized by law and vice versa;
(d) if a word or phrase is defined, other parts of speech and grammatical forms of that word or phrase have corresponding meanings;
(e) reference to this License Agreement is also a reference to all of its annexures;
(f) reference to clauses and annexures are references to clauses and annexures of this License Agreement;
(g) a reference to a time of day is a reference to that time of day in Queensland, Australia;
(h) a reference to a market is a reference to any legal market for the sale of goods and services in any jurisdiction whether online or otherwise;
(i) references to any statutory enactment or law must be construed as reference to that enactment or law as amended or modified or re-enacted from time to time and to the corresponding provisions of any similar enactment or law of any other relevant jurisdiction;
(j) a construction that would promote the purpose or object underlying this License Agreement is to be preferred to a construction that would not promote that purpose or object;
(k) headings are for the purpose of convenient reference only and do not form part of this License Agreement or affect its construction or interpretation; and
(l) no rule of construction applies to the disadvantage of a party because that party was responsible for the preparation of this License Agreement or any part of it.
Intellectual Property and Rights
1. The Head Licensor warrants that, and the Sub-Licensor and Sub-Licensee acknowledge that the Head Licensor:
(a) has the ability and capacity to permit the Sub-Licensor to exercise the Rights;
(b) is the owner of the Patents;
(c) is the owner of the Marks;
(d) is the owner of the Media;
(e) is the owner of the Recipes; and
(f) is the owner of the Manuals set out in Annexures E and F and of the processes described therein.
2. (a) This License Agreement and its operation do not vest in the Sub-Licensee any interest of any nature in any of the Intellectual Property;
(b) The Head Licensor hereby indemnifies the Sub-Licensee in respect to any Loss sustained or claim arising as a result of a breach of the Head Licensor's warranty as to its ability and capacity to deal with the Intellectual Property;
(c) By the Head License the Head Licensor has given permission to the Sub-Licensor to enter into this License Agreement with the Sub-Licensee.
3. (a) In consideration of and subject at all times to the continued fulfillment and proper performance by the Sub-Licensee of its obligations as set out in this License Agreement, the Head Licensor and the Sub-Licensor permit the Sub-Licensee to exercise the Rights in the Territory for the period commencing on the Date hereof and ending on the date specified at Item 3 of Annexure A.
(b) The Sub-Licensee shall only exercise the Rights for a purpose that is in accordance with this License Agreement.
4. The permission given by the Head Licensor and Sub-Licensor to the Sub-Licensee to exercise the Rights and any other entitlements of the Sub-Licensee arising pursuant to this License Agreement does not restrict or limit in any manner whatsoever the ability and capacity of the Sub-Licensor, or of the Head Licensor, or of any VRM Entity to:
(a) also use and exercise the Rights for their own purposes and to sell the Products in any market, territory or jurisdiction; or
(b) permit another person to exercise the Rights and to sell the Products in any market, territory or jurisdiction save that neither the Sub-Licensor, the Head Licensor nor any VRM Entity will appoint another person to exercise the Rights to manufacture or sell any of the Outputs identified in Annexure B in the Territory without first offering the Sub-Licensee the opportunity to sell the Products to that person and to implement and operate any Buy-Back provisions offered to that person.
5. (a) The Rights to manufacture of any of the Outputs (being those rights identified in item (v), (vi), (vii) and (viii) in Annexure B) may only be exercised by the Sub-Licensee at the premises, or upon the land specified at Item 2 of Annexure A;
(b) The Sub-Licensee may apply to both the Sub-Licensor and the Head Licensor for written permission to exercise the Rights at another place or location;
(c) The Sub-Licensee may promote, advertise and sell the Outputs in the Territory only.
(d) By exercising any of the Rights, the Sub-Licensee agrees to the implementation of quality control and inspection protocols implemented from time to time by the Sub-Licensor including but not limited to:
(I) Physical inspection of the premises or the land specified at Item 2 of Annexure A by the Master Licensee (if one is appointed), the Sub-Licensor or its nominee at any time provided that notification of any such inspection shall be given by the Sub-Licensor or its nominee to the Sub-Licensee no less than 48 hours prior to any such inspection, to ensure the Sub-Licensee’s compliance with the Manuals, and the Sub-Licensee shall take all steps necessary to facilitate any access required by the Head Licensor and Sub-Licensor in this respect. If the Head Licensor or Sub-Licensor reasonably considers the Sub-Licensee has failed to comply with the Manuals then:
(A) the Head Licensor, Sub-Licensor or Master Licensee (as applicable) must provide the Sub-Licensee with a written notice, detailing the particulars of the Sub-Licensee’s non-compliance with the Manuals and requiring the Sub-Licensee to remedy the breach; and
(B) the Sub-Licensee must rectify the alleged non-compliance within thirty (30) days of receiving the notification under clause 5(d)(I)(A).
(II) Supply by the Sub-Licensee to the Master Licensee, Sub-Licensor or its nominee, upon request in writing by digital or manual means and within 7 days of the date of such request, of a detailed production list and product inventory for all of the Outputs manufactured by the Sub-Licensee which includes production batch identification numbers, volume produced, date of production and descriptive information which identifies the source of all input materials used in the production process.
(III) Supply by the Sub-Licensee to the Master Licensee, Sub-Licensor or its nominee, upon request in writing by digital or manual means and within 7 days of the date of such request, of samples of no less than 1 Litre volume of any batch of any of the Outputs manufactured by the Sub-Licensee provided that:
(i) Dispatch of samples so requested by a recognised carrier shall constitute supply in accordance with this clause.
(ii) Shipping costs for the supply of any such samples shall be shared equally by the Sub-Licensor and the Sub-Licensee.
(iii) The Sub-Licensor or its nominee shall provide, in the request for samples, an address to which the samples shall be sent.
(IV) Immediate implementation of the provisions of clause 19 by the Sub-Licensor should the Sub-Licensee fail to comply with any part of this clause 5.
6. The Head Licensor may at its sole discretion, and at any time remove, delete, replace, substitute or amend any of the Marks, Materials, Recipes, Media and Manuals by written notice to the Sub-Licensee. Following removal, deletion, replacement, substitution or amendment of a Mark, Materials, Manual or Recipe by the Head Licensor, the Sub-Licensee:
(a) shall only use the Marks, Materials, Media, Manuals or Recipes as substituted or amended;
(b) shall immediately cease using any Mark, Material, Media, Recipe or Manual, or part thereof, that has been removed, replaced or deleted; and
(c) acknowledges that all the Marks, Materials, Manuals, Media or Recipes as removed, deleted, replaced, substituted or amended shall form part of or continue to form part of the Intellectual Property.
7. (a) The Sub-Licensee shall not amend or alter any of the Inputs, Outputs, Products, Marks, Materials, Media, Recipes, or any of the processes as described in any of the Manuals except as permitted by this License Agreement.
(b) It is agreed by the Sub-Licensee that any amendment or alteration of a Mark, the Materials, Media, Recipe, or process in a Manual in breach of clause 7(a):
(I) shall in any event be the property of the Head Licensor; and
(II) shall form part of the Intellectual Property.
Sales, Marketing and Production
8. The Sub-Licensee may promote, advertise and sell the Outputs in the Territory provided that:
(a) The Sub-Licensee has fully complied with the provisions of Clause 5;
(b) Where the Sub-Licensee has unsold or uncommitted inventory of the Outputs, the Sub-Licensor or its nominee in its absolute discretion shall have the option to purchase up to 100 % of the unsold or uncommitted volume of each batch of the Outputs produced by the Sub-Licensee at the Buy-Back Price listed in item 4 (d) of Annexure A. If the Sub-Licensor exercises its option under this clause 8(b):
(I) the Sub-Licensee must sell the Outputs to the Sub-Licensor for the Buy-Back Price listed in item 4 (d) of Annexure A; and
(II) at the Sub-Licensor’s sole discretion and at the Sub-Licensee’s cost, either:
(A) deliver the Outputs to the Sub-Licensor’s premises (as notified by Sub-Licensor from time to time); or
(B) make the Outputs available for collection at the Sub-Licensee’s premises or the land specified at Item 2 of Annexure A.
(c) In promoting and advertising the Outputs the Sub-Licensee shall use the Materials and may use the Media;
(d) The Sub-Licensee shall not promote, advertise or sell the Inputs in any circumstance, save with the written permission of the Sub-Licensor;
(e) The Sub-Licensee shall not in any market, territory or jurisdiction:
(I) affix any Mark to a product or other item that is not an Output;
(II) utilise any of the Material or Media to promote and advertise any product or other item that is not an Output;
(III) affix any logo, device, brand, label, barcode or name to any Output that is not a Mark; and
(IV) use any labels, brochures, pamphlets, technical reports, case studies or other documents written, auditory or digital in promoting an Output that is not part of the Material.
9. (a) The Sub-Licensee shall be responsible for the planning of, content of, and cost of all promotions and advertising used for the purpose of selling the Outputs and shall submit all content, media or material whether written, printed, digitally represented or otherwise configured which is intended for use in advertising or promoting the Outputs to the Sub-Licensor or its nominee prior to any use of such content, media or material;
(a) The Master Licensee, Sub-Licensor and the Head Licensor shall not be liable for the cost of any promotional or advertising activities conducted by the Sub-Licensee in promoting the sale of the Outputs;
(b) The Sub-Licensee hereby indemnifies the Head Licensor, the Sub-Licensor and each VRM Entity for any and all Loss incurred by any of them and in respect to any claim (including the costs arising therefrom) brought against the Head Licensor, the Sub-Licensor or any VRM Entity because of any promotion or advertising conducted by the Sub-Licensee except when such promotion or advertising was expressly approved by the Sub-Licensor;
(c) The Sub-Licensee hereby indemnifies the Head Licensor, the Sub-Licensor, and each VRM Entity for any and all Loss incurred by any of them and in respect to any claim (including the costs arising therefrom) brought against the Head Licensor, the Sub-Licensor or any VRM Entity arising directly or indirectly from:
(I) any breach by the Sub-Licensee of this License Agreement;
(II) any injury to person or property arising from misuse or misapplication by the Sub-Licensee (or its agent) of any Recipe or process in a Manual or arising from sale by the Sub-Licensee of defective Outputs;
(III) the negligent or acts or omissions of the Sub-Licensee or its personnel;
(IV) the Sub-Licensee’s alleged infringement of a third party’s intellectual property rights; and
(V) breach of applicable Law from time to time; and
(d) The Sub-Licensee agrees that the Head Licensor has the right, capacity and standing to enforce the indemnities in this clause 9 on behalf of each VRM Entity.
10. (a) The Recipes are the only recipes and the Manuals contain the only processes that can be used by the Sub-Licensee in production of the Outputs.
(a) The Sub-Licensee is not permitted to apply the Marks to any Output not produced in accordance with a Recipe and/or a process in a Manual.
(b) (i) The Head Licensor and the Sub-Licensor (and their appointed agents including the Master Licensee) shall at all times have the right to inspect, monitor and audit the use and exercise by the Sub-Licensee of the Rights and all of records of the Sub-Licensee, financial or otherwise, related to the use and exercise of the Rights;
(II) The Sub-Licensee undertakes and promises to fully co-operate with the Head Licensor and the Sub-Licensor (and their agents including the Master Licensee) in respect to any inspection, monitoring or audit referred to in clause 10(c)(i) above;
(III) The Sub-Licensee hereby irrevocably gives permission to the Head Licensor and the Sub-Licensor and the Master Licensee to enter any of the Sub-Licensee's premises, including without limitation the premises and/or land specified at Item 2 of Annexure A for the purposes set out in clause 10(c)(i) above.
11. (a) The use of the Marks and the Materials by the Sub-Licensee shall be in the manner prescribed in Annexure C and Annexure H respectively or otherwise in writing from time to time by the Head Licensor.
(a) The Sub-Licensee may apply to the Head Licensor to amend Annexure C or H in respect to the inclusion of further marks or materials or in respect to the permitted use of a Marks or Materials.
(b) Any Mark included in Annexure C or Materials included in Annexure H following an application by the Sub-Licensee shall form part of the Intellectual Property.
License Fees, Input Prices and Tax
12. (a) Upon the Date hereof the Sub-Licensee shall pay to the Master Licensee (if one is appointed) or to the Sub-Licensor (or its nominee) the License Fee set out at Item 6 of Annexure A.
13. (a) The Sub-Licensee must purchase from the Master Licensee (if one is appointed) or from the Sub-Licensor (or its nominee) during each year commencing from the Date hereof, not less than the quantity of Inputs set out in Item 4(b) at the price set out in Item 4(c) of Annexure A.
(b) Any increase in the prices of the Inputs to be purchased by the Sub-Licensee during the currency of this License Agreement shall not exceed the increase in the Australian Consumer Price Index from the Date hereof and shall be notified in writing to the Sub-Licensee.
14. The Sub-Licensee shall be solely responsible for any and all Tax applicable to this License Agreement and payable in respect to any transaction arising or contemplated by this License Agreement.
15. The Sub-Licensee shall not disclose to any person any information regarding:
(a) the business of the Master Licensee, the Sub-Licensor or the Head Licensor, which the Sub-Licensee learns as a result of operating under this License Agreement;
(b) information which concerns the Master Licensee, Head Licensor, Sub-Licensor, other licensees, their customers or distributors of the Master Licensee, Head Licensor and the Sub-Licensor;
(c) the fee and remuneration structure set out in this License Agreement;
(d) know-how, trade secrets, ideas, marketing strategies, operational information, technical information and financial information;
(e) proprietary software tools, business processes, project management methodologies and tools, software testing and verification methods, solution architecture models and solutions;
(f) the Inputs;
(g) the Outputs;
(h) the Products;
(i) the Manuals; and
(j) other information, which, by its nature or by the circumstances of its disclosure, is or could reasonably be expected to be regarded as confidential,
(Confidential Information). This obligation continues to apply:
(k) even if the Confidential Information is no longer secret because the Sub-Licensee violated the obligation of confidentiality; and
(l) after termination of this License Agreement.
16. All elements of the Intellectual Property as well as all Confidential Information shall be kept strictly confidential by the Sub-Licensee. This obligation of confidentiality does not apply to information,
(a) which is publicly known;
(b) which the Sub-Licensee can prove was in its possession at the Date hereof;
(c) which is developed independently by the other party without reliance on any of the confidential information; or
(d) which the Sub-Licensee has received from a person who was not subject to an obligation of confidentiality.
17. The Sub-Licensee must:
(a) impose the obligations of confidentiality set out in clauses 15 and 16 on all of its employees, agents, affiliates and distributors;
(b) except as contemplated by this License Agreement or expressly agreed by the Master Licensee, Head Licensor or Sub-Licensor (as applicable) in writing to the contrary, the Sub-Licensee must not reverse engineer, decompile, disassemble, analyse, derive or otherwise attempt to learn, by inspection or otherwise any underlying composition, combination, method, process or ingredients of any of the Confidential Information;
(c) ensure that all Confidential Information in the custody of the Sub-Licensor is protected at all times from unauthorised access or use by a third party, and from misuse, damage or destruction by any person; and
(d) on demand, return to the Master Licensee, Head Licensor or the Sub-Licensor (as applicable) any Confidential Information supplied by the other party in connection with this License Agreement.
18. This License Agreement terminates at midnight on the date specified at Item 3 of Annexure A, unless it is terminated at an earlier date:
(a) by written agreement between the parties; or
(b) by the operation of clauses 19, 20, 22 or 23.
19. (a) If at any time the Sub-Licensee is in breach of any of the terms or conditions of this License Agreement, the Sub-Licensor may give a Breach Notice to the Sub-Licensee specifying the nature of the breach and requiring the Sub-Licensee to remedy the breach.
(b) If after thirty (30) days from the giving of a Breach Notice the Sub-Licensee has not remedied the breach, the Sub-Licensor may immediately terminate this License Agreement by way of a Termination Notice effective upon receipt by the Sub-Licensee.
20. Notwithstanding clause 19, it is agreed that:
(a) a breach by the Sub-Licensee of the obligations in clauses 7 or 23 is a breach incapable of remedy by the Sub-Licensee. Upon a breach of clauses 7 or 23 by the Sub-Licensee, the Sub-Licensor may immediately terminate this License Agreement by way of Termination Notice effective upon receipt by the Sub-Licensee; and
(b) the appointment of a Controller to all or any part of the assets and undertaking of the Sub-Licensee, entitles the Sub-Licensor to immediately terminate this License Agreement by way of Termination Notice effective upon receipt by the Sub-Licensee or the Controller.
21. Upon termination of this License Agreement for any reason whatsoever:
(a) the Sub-Licensee shall immediately cease to use and exercise any of the Rights and shall deliver to the Sub-Licensor (or its nominee) all copies of the Annexures, the Materials, the Recipes, the Manuals and all documents bearing any of the Marks; and
(b) the Sub-Licensee shall remain:
(I) bound to comply with the requirements of clauses 15, 16 and 17; and
(II) subject to the indemnities in clause 9.
22. If the Head License is terminated prior to the expiration of this License Agreement then:
(a) The Head Licensor may nominate a replacement Sub-Licensor. Upon nomination by the Head Licensor of a replacement Sub-Licensor this License Agreement shall forthwith be construed as a license agreement between the Sub-Licensee and the replacement Sub-Licensor.
(b) if the Head Licensor does not nominate a replacement Sub-Licensor or in any period where no Sub-Licensor has been appointed by the Head Licensor, this License Agreement shall continue towards or until its expiration in accordance with clause 3(a), on the following basis:
(I) this License Agreement shall forthwith be construed as a License agreement between Head Licensor and Sub-Licensee;
(II) the Head Licensor shall be subrogated to all of the rights and entitlements of the Sub-Licensor and shall be entitled to enforce this License Agreement as if it is the Sub-Licensor; and
(III) all warranties, covenants and undertakings given by the Sub-Licensee to the Sub-Licensor shall be for the benefit of and enforceable by the Head Licensor.
Assignment and Sub-Licenses
23. (a) The Sub-Licensee shall not transfer or assign or attempt to transfer or assign any of the Rights or the benefit of this License Agreement to any person without the prior written approval of both the Head Licensor and the Sub-Licensor. Any such transfer or assignment without such written approval is void:
(b) Any alteration to the management, ownership or structure of the Sub-Licensee to the effect that control of the Sub-Licensee vests in persons other than those in control as at the Date hereof, shall constitute an assignment of the Rights and benefit of this License Agreement in breach of clause 23(a) and shall immediately entitle the Sub-Licensor or Head Licensor to terminate this License Agreement pursuant to clause 20.
24. This License Agreement does not constitute a partnership between the parties. The Sub-Licensee is not an employee of the Head Licensor or the Sub-Licensor or the Master Licensee.
25. Each party may not act in the name of or to the account of the other party, save as expressly permitted by this License Agreement.
26. Schedules and Annexures
This License Agreement includes the following Schedules and Annexures:
Annexure A - the Items Schedule
Annexure B - the Rights
Annexure C - the Marks
Annexure D - the Recipes
Annexure E - the Applications Manual
Annexure F - the Process Manual
Annexure G – the Inputs
Annexure H - the Materials
Annexure I - the Media
Annexure J - the Outputs
Annexure K – the Prices
Annexure L – the Special Conditions
These Schedules and Annexures are an integral part of this License Agreement.
27. Entirety, Variation
(a) Save as provided in this clause 27, this License Agreement constitutes the entire agreement between the parties in respect to its subject matter. Any agreement, representation, statement of will or knowledge or any other circumstance of legal relevance made or having occurred before or at the Date hereof loses any and all effect upon the signing of this License Agreement by its parties; and
(b) Any variation to this License Agreement shall be without effect and unenforceable by any party unless rendered into writing and duly executed by the parties hereto.
No act or omission by a party may be deemed to be a waiver of any entitlement, obligation or liability arising under the License Agreement unless such waiver is acknowledged in writing by the parties hereto.
(a) Any communication to be given under this License Agreement or which is to be made according to the law may be made by email to the email addresses of the parties set out in Item 7 of Annexure A and shall be deemed to be served by 8.00pm on the day it is sent to the address of the other party as stated in Annexure A:
(b) Any change of email address shall be communicated to the other party in writing in accordance with clause 29(a).
If any provision of this License Agreement becomes invalid, illegal or unenforceable in any respect under any law, the validity, legality and enforceability of the remaining provisions shall not in any way be affected or impaired.
Governing Law and Dispute resolution
31. This License Agreement shall be governed by and construed in accordance with the laws of the State of Queensland in Australia and without giving effect to any choice or conflict of law provisions or rule that would cause the application of the laws of any jurisdiction other than the State of Queensland in Australia.
32. The parties undertake to use every effort to amicably settle all disputes arising out of or in connection with this License Agreement and may by agreement engage in formal mediation for that purpose.
33. If the parties agree, any dispute between the parties in respect to the performance of obligations under this License Agreement may be submitted to arbitration in accordance with the Commercial Arbitration Act 1990 (Qld).
34. Any legal proceeding between the parties in respect to the subject matter of this License Agreement, its performance and/or its terms and conditions must be commenced in a court or tribunal of competent jurisdiction situated in the State of Queensland in Australia.
35. The Sub-Licensor and the Sub-Licensee agree that upon the execution of this License Agreement, any and all prior agreements between them in respect to the Rights and/or the Intellectual Property shall be thereby immediately terminated.
36. To the full extent permitted by Law:
(a) neither party will be Liable for Consequential Loss in connection with this License Agreement; and
(b) any term which would otherwise be implied into this License Agreement is excluded.
37. Unless otherwise specified, neither party is liable to third parties regarding, or arising out of or in connection with, this License Agreement.
38. In the event any Law implies or imposes terms into this License Agreement which cannot be lawfully excluded, such terms will apply, save that the liability of each of the Head Licensor and Sub-Licensor for breach of any such term will be limited in accordance with clause 39.
39. If the Head Licensor or Sub-Licensor is found Liable in connection with this License Agreement (whether in contract, tort, or statute):
(a) that party’s Liability shall be limited (at the option of the other party) to any one or more of the following:
(I) re-supplying the goods or services to which the Liability relates or the supply of equivalent goods or services; or
(II) reimbursing the other party for paying someone else to supply the goods or services which the Liability relates; and
(b) irrespective of anything else in this License Agreement, that party’s cumulative Liability in the aggregate (to the fullest extent permitted by Law) shall in no event exceed the License Fee.
40. The Sub-Licensee must effect and maintain (or be insured under) all of the following insurances:
(a) public and products liability insurance to the value of at least $5 million, for the duration of this License Agreement, covering the Sub-Licensee for its liabilities to third parties for bodily injury and/or illness (including death at any time resulting therefrom) and loss of or damage to tangible property, caused by, arising out of, or in connection with the negligent performance of any obligation or the exercise of any right under this License Agreement, including in respect of the manufacture, processing, alteration, repair, installation, supply, distribution or sale of any product by the Sub-Licensee; and
(b) workers’ compensation insurance or registrations as required by law.
41. If a party (Affected Party):
(a) is prevented from, or delayed in, performance an obligation (other than an obligation of the Sub-Licensee to pay money) by an event of Exceptional Circumstance; and
(b) the Affected Party as soon as possible after the event of Exceptional Circumstance notifies the other party providing particulars of:
(A) the event of Exceptional Circumstance;
(B) the anticipated period of delay; and
(C) the action (if any action is reasonably possible) the Affected Party intends to take to mitigate the effect of the delay,
then those obligations of the Affected Party are suspended for the duration of the event of Exceptional Circumstance.
42. The party which is not the Affected Party must use all reasonable endeavours to remove or mitigate its Loss arising from, and the effects of, the event of Exceptional Circumstance.
43. The parties agree that to the extent applicable, this License Agreement is varied to the extent necessary, but only to the extent necessary to comply with any mandatory requirements of ‘The Franchising Code of Conduct’ as established by the Competition and Consumer (Industry Codes – Franchising) Regulations 2014.
to the License Agreement between VRM International Pty Ltd (I 136 687 155) and the parties named in Item 1A and 1B of Annexure A
* Australian Standard Patent No. 763836 (1999045916) being a ‘Method of Treating Waste Water'.
* Australian Standard Patent No. 767439 (2001054149) being a ‘Method of Treating Waste Water'.
* Australian Standard Patent No. 2012283757 (PCT/AU2012/000835) being for a 'Waste and Organic Matter Conversion Process'.
* Australian Standard Patent No. 2014250680 (PCT2013904135) being for an 'Energy and Retention and Water Manufacture Process for the Conversion of Organic Matters which fosters Carbon Sequestration'.
* United States Patent No. US 11,623,257 B2 being for a ‘Method for Large Scale Hydrosynthesis, Energy Generation and Storage, and/or Topsoil Restoration’.
Those Patents which the Head Licensor may in its absolute discretion add to this Patent Schedule from time to time in a signed writing referencing this Patent Schedule.
Annexure A :
to the License Agreement between VRM International Pty Ltd ACN 136 687 155) and the parties named in Items 1A and 1B
Item 1A: New Earth Technologies Pte Ltd UEN201800826Z 150 Cecil Street #15-01 Singapore (‘the Sub-Licensor’)
Item 1B: The person or entity identified as proposed Sub-Licensee in the Terms Schedule ‘ ('the Sub-Licensee')
Item 1C: The Sustainable Green Team Limited (SGTM) of Florida, USA (‘the Master Licensee’)
Item 2: The land and/or premises identified as the Operating Premises Address in the Terms Schedule
Item 3: The day two (2) years after the date hereof (expiry of this License Agreement)
Item 4: (a) The VRM Biologik Products identified in Annexure ‘G’ ('the Inputs')
(b) the Minimum Annual Input Quantity in the Terms Schedule ('the quantity of Inputs')
(c) The prices appearing in Annexure ‘K’ or published from time to time by the Sub-Licensor ('the price of Inputs' plus Tax (if any))
(d) 20% of the Recommended Retail price of the Outputs listed in Annexure ‘K’ or the Buy-Back price agreed between the parties (‘the Buy-Back Price’)
Item 5: The products identified in Annexure 'J' (’the Outputs')
Item 6: The License Fee set out in the Term‘ Schedule ('the ‘License Fee' plus Tax (if any))
Item 7: The email address in the Term‘ Schedule ('’Sub-Licensee's email address')
Licenses@vrmbiologik.com ('’Sub-Licensor's email address')
Licenses@vrmbiologik.com ('Head Licensor's email address')
Item 8: The area bounded by a circle which has its centre at the Operating Premises Address identified in the Terms Schedule and a radius of 30 miles (‘the Territory’)
Item 9: (‘the Date of this Agreement’)
ANNEXURE B – THE RIGHTS
to the License Agreement between VRM International Pty Ltd (ACN 136 687 155) and the parties named in Items 1A and 1B of Annexure A to the License Agreement
The rights and entitlements of the Sub-Licensee as granted pursuant to this License Agreement ('the Rights') are as follows:
(i) The right to use the Marks set out on Annexure C to this License Agreement in the manner prescribed in Annexure C;
(ii) The right to use the Materials set out or described in Annexure H in this License Agreement;
(iii) The right to use the Media in promoting the sale of the Outputs;
(iv) The right to purchase certain products ('Inputs') at a price and in the quantities identified in Item 4 of Annexure A;
(v) The right to produce certain products ('Outputs') as identified in Item 5 of Annexure A;
(vi) The right to apply certain products (‘Outputs’) as listed in Item 5 of Annexure A on the land specified in Item 2 of Annexure A or in other lands approved form time to time by the Sub-Licensor or the Master Licensee;
(vii) The right to use the Recipes set out in Annexure D for the sole purpose of manufacturing the Outputs;
(viii) The right to use and implement the processes described in the Manuals attached hereto as Annexures E and F for the sole purpose of producing the Outputs;
(ix) The right to sell the Outputs manufactured in accordance with this Sub-License Agreement and subject specifically to any Special Conditions appearing in Annexure L of this Sub-License Agreement.
ANNEXURE C -- THE MARKS
Trade mark Jurisdiction Registration No. Class(es) Status HumiSoil Australia 1540402 1 Registered from 8 February 2013. HumiSoil United States of America 5935221 1 Registered from 17 December 2019. Australia 1305739 1 Registered from 18 June 2009. Australia 1305740 1 Registered from 18 June 2009. Australia 1305741 1 Registered from 18 June 2009. Australia 1305743 1 Registered from 18 June 2009. Xlr8 Bio Common law trade mark
ANNEXURE D - THE RECIPES
Those Recipes included in the Process Manual provided with this Sub-License or delivered by the Sub-Licensor to the Sub-License from time to time
ANNEXURE E – THE APPLICATIONS MANUAL
The Applications Manual provided with this Sub-License or delivered by the Sub-Licensor to the Sub-Licensee from time to time
ANNEXURE F – THE PROCESS MANUAL
The Process Manual provided with this Sub-License or delivered by the Sub-Licensor to the Sub-Licensee from time to time
ANNEXURE G – THE INPUTS
Those products appearing in the Process Manual as inputs to the processes and appearing on the Price List appearing in Annexure K or delivered by the Sub-Licensor to the Sub-Licensee from time to time
ANNEXURE H – THE MATERIALS
Those Materials delivered by the Sub-Licensor or its nominee to the Sub-Licensee from time to time together with any Material agreed in writing between the Sub-Licensor and the Sub-Licensee for use in relation to the Outputs
ANNEXURE I – THE MEDIA
Not applicable – No Media is included in this Sub-License
ANNEXURE J – THE OUTPUTS
HumiSoil® - being the Output product arising from implementation of the Groundswell® Process in accordance with the Process Manual
XLR8® Bio – being the Output product arising from implementation of the Bio-Regen® Process in accordance with the Process Manual
ANNEXURE K – THE PRICES
ANNEXURE L – THE SPECIAL CONDITIONS
to the License Agreement between VRM International Pty Ltd (ACN 136 687 155) and the parties named in Items 1A and 1B of Annexure A to the License Agreement
To the extent of any inconsistency between these special conditions and the terms of the License Agreement, these special conditions will take precedence.
1. The Sub-Licensor may, by advice in writing to the Sub-Licensee, nominate a third party to stand in its stead to exercise any of the buy-back rights attributable to the Sub-Licensor which are included in this Sub-License Agreement
2. The rights to distribute products which are granted to the Sub-Licensor in this Agreement are specifically limited in respect to the sale of the Outputs as follows:
a. The Sub-Licensee shall not, without prior written approval of the Sub-Licensor, package, cause to be package or sell to any third party who packages or causes to be packaged any of the Outputs in a package smaller than described in the table below:
Product Name Minimum Package Size HumiSoil® 1.5 Cubic Yards XLR8 Bio® 265 Gallons b. The Sub-Licensee warrants that it will not, during the term of this Agreement package for sale, cause to be packaged or sell to any third party other than a VRM Entity or a person or entity nominated by a VRM Entity who packages or causes to be packaged for sale any of the Outputs in a package smaller than the minimum package size described in this clause and agrees to hold harmless the Sub-Licensor and any VRM Entity from any action arising from any sale of any of the Outputs delivered for sale in a package smaller than the minimum package size described here.
3. During the term of this agreement the Sub-Licensor will not appoint another person or entity located within the Territory to act as both a manufacturer and distributor of the Outputs.
EXECUTED as an Agreement:
EXECUTED by VRM INTERNATIONAL PTY LTD ACN 136 687 155 in accordance with Section 127(1) of the Corporations Act 2001: )
) Signature of Director
KENNETH MICHAEL BELLAMY
EXECUTED by the Sub-Licensor )
) Signature of Director
EXECUTED by the Sub-Licensee: )
) Signature of Director/Authorised Representative
VRM HGL RKR edits 5 Oct 2021
©2015 VRM International Pty Ltd Page i
G:\Shared drives\Drive VRM Biologik\Data Room\Contracts and Agreements\Master Licensee Framework\Master Licensee Templates\C Sub-Licensees\US Templates\Licensed Manufacturer USA July23.docx
Manufacturer Terms - North and South America