EX-10.25 20 s001032x3_ex10-25.htm EXHIBIT 10.25

 

Exhibit 10.25

             
007 FOURTEENTH STREET, N.W.
WASHINGTON, D. C. 20005-2018
TELEPHONE (202) 434-0700
FACSIMILE (202) 434-0800

Rogers & Wells
Two Hundred Park Avenue
New York, N.Y. 10166-0153

 

TELEPHONE (212) 878-8000
FACSIMILE (212) 878-8375

 

40 BASINGHALL STREET
LONDON EC2Y 506, ENGLAND
TELEPHONE 44-171-628-0101
FACSIMILE 44-171-828-8111
           
   
444 SOUTH FLOWER STREET
LOS ANGELES, CA 90071-2901
TELEPHONE (213) 689-2900
FACSIMILE (213) 689-2999
WESTENDSTRASSE 16-22
60326 FRANKFURT/MAIN
FEDERAL REPUBLIC OF GERMANY
TELEPHONE 49-69-97-14-78-0
FACSIMILE 49-69-97-14-78-33
           
           
47 AVENUE HOCHE
75008 PARIS, FRANCE
TELEPHONE 33-1-44-09-48-00
FACSIMILE 33-1-44-09-46-01
                     33-1-42-67-50-81
ONE EXCHANGE SQUARE
B CONNAUGHT PLACE
CENTRAL, HONG KONG
TELEPHONE (852) 2844-3500
FACSIMILE (852)2844-3555

 

MEMORANDUM

 

TO: Thomas D. Wright, Jr. DATE: April 2, 1997
       
FROM:  Howard M. Endelman CC: Steven A. Hobbs
       
RE: NATC/NTC    

 

Attached for your files please find a copy of the Trademark Consent Agreement dated March 26, 1997 by and between North Atlantic Trading Company, Inc. and Bolloré Technologies, S.A.

 

Best regards.

 

H.M.E.

 

 
 

 

TRADEMARK CONSENT AGREEMENT

 

This agreement, made this 26th day of March, 1997, by and between North Atlantic Trading Company, Inc. (hereinafter referred to as “NATC”), a Delaware Corporation, whose address is 3200 Beechleaf Court Suite 920, Raleigh USA and Bolloré Technologies, S.A., a French Corporation whose address is Odet 29500 Commune d’Ergué-Gabéric France (hereinafter referred to as “Bolloré”);

 

WHEREAS, NATC is the owner of, inter alia, the marks shown on Schedules Al and A2, and where applicable the registrations and applications relating thereto (“NATC Marks”) attached hereto; and

 

WHEREAS, Bolloré is the owner of, inter alia, the marks shown on Schedules B1 and B2, and where applicable the registrations and applications relating thereto (“Balloré Marks”) attached hereto;

 

WHEREAS, NATC desires to use and register the NATC Marks set forth in Schedule A2, for the goods specified therein; and

 

WHEREAS, Bolloré desires to use and register the Bolloré Marks set forth in Schedule B2, for the goods recited therein; and

 

WHEREAS, NATC and Bolloré mutually recognize the validity of each other’s marks as set forth in the attached Schedules,

 

NOW, THEREFORE, for good and valuable consideration, the parties hereby agree and state as follows:

 

1.          NATC believes there is no likelihood of confusion or conflict between its NATC Marks shown on Schedules A1 and A2, and the Bolloré Marks, shown on Schedules B1 and B2;

 

2.          Bolloré believes there is no likelihood of confusion or conflict between its Bolloré Marks shown on Schedules B1 and B2, and the NATC Marks shown on Schedules A1 and A2.

 

3.          NATC will take no action to interfere with the use and/or registration of the Bolloré Marks shown on Schedules B1 and B2.

 

4.          Bolloré will take no action to interfere with the use and/or registration of the NATC Marks shown on Schedules A1 and A2.

 

5.          Bolloré is a specialist in the manufacture of cigarette papers. Bolloré manufactures cigarette paper bobbins and those bobbins are converted into booklets in accordance with specific instructions of Bolloré. Hence, Bolloré strictly controls the quality of its cigarette paper bobbins and the converting thereof into booklets, and therefore the quality of the cigarette papers which arc sold to the public under the Bolloré Marks.

 

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6.          NATC is a specialist in the field of tobacco products. NATC strictly controls the processing and packaging of its tobacco products and therefore the quality of the tobacco products which are sold to the public under the NATC Marks.

 

7.          Pursuant to an agreement between the parties, NATC is the exclusive United State distributor of cigarette paper sold under the Bolloré Marks. Each booklet bears a statement identifying NATC simply as distributor.

 

8.          NATC and Bolloré acknowledge that the purchasing public is not and will not be harmed by the relationship between the parties. The parties acknowledge that their respective marks have been used in the United States on their respective products, for more than 20 years, without any known confusion of the purchasing public.

 

9.          Except as otherwise agreed between the parties, in order to avoid any potential confusion, NATC agrees not to use the NATC Marks within the United States on cigarette papers, and Bolloré agrees not to use the Bolloré Marks on any tobacco products within the United States.

 

10.        In the unlikely event that any consumers are confused as to the source of origin of either party’s goods, the parties agree to take such further steps as are reasonable and necessary under the circumstances to correct such confusion.

 

11.        NATC consents to the use and registration by Bolloré of the Bolloré Marks which are shown on Schedule B2, for the goods recited therein.

 

12.        Bolloré consents to the use and registration by NATC of the NATC Marks which are shown on Schedule A2, for the goods recited therein.

 

13.        Each party shall reasonably cooperate with the other in obtaining and preserving registrations for the Marks shown on the Schedules by providing the other with Letters of Consent or any other such documents which may be reasonably required in order to overcome any official actions or objections which may be made by the trademark office in any country or territory. Any expenses associated with the preparation and filing of any such letters or documents will be borne by the requesting party.

 

14.        Each party shall have the right, but nor the obligation, to terminate all of the rights granted hereunder if the other party is in material breach of any of its obligations hereunder.

 

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15.        This Agreement and the provisions herein will be binding at all times upon and inure to the benefit of the parties hereto, their successors and assigns. This Agreement constitutes the entire agreement between the parties and may not be changed, modified, amended or supplemented, except in a writing signed by the parties.

 

IN WITNESS WHEREOF, the parties have executed this Agreement on the day and year first above written.

       
  NORTH ATLANTIC TRADING COMPANY, INC.
   
   
    JACK AFRICK  
Dated: 26th March 1997 By:

/s/ Jack Africk 

 
    Name:  
    Title: Director and Chief Executive Officer

       
  BOLLORÉ TECHNOLOGIES, S.A.
   
       
Dated: 26th March 1997 By: /s/ Cedric Bollore

 
    Name: CEDRIC BOLLORÉ  
    Title: Marketing Director
Industrial Divisions

 

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SCHEDULE A1

 

Mark/Goods   Reg. No.   Date Registered
         
ZIG-ZAG
for cigars
  1,133,291   April 15, 1980
         
ZIG-ZAG and Design
for cigarette tobacco
  1,512,985   November 15, 1988
         
ZIG-ZAG
for cigarette tobacco
  1,472,580   January 12, 1988
         
ZIG-ZAG CANADIAN BLEND
for smoking tobacco
  1,756,211   March 2, 1993
         
ZIG-ZAG CANADIAN ROYAL BLEND
for smoking tobacco
  1,753,378   February 15, 1993
         
ZIG-ZAG And Design
for smoking tobacco
  1,775,416   June 8, 1993

 

SCHEDULE A2

 

Mark/Goods   Appln. No.   Filing Date
         
ZIG-ZAG (stylized)
for cigars
  74/562,128   April 17, 1995
DESIGN of a band
for cigars
  74/562,143   April 17, 1995
ZIG-ZAG Add Design
for cigars
  74/691,043   June 20, 1995
ZIG-ZAG COLD STANDARD
for cigarette tobacco
  71/573,369   May 11, 1995

 

 
 

 

Schedule B1

 

Bollore Technologies
Registered Trademarks

 

Trademark Registration
Date
Registration
No.
Goods
MAN’S HEAD DESIGN March 25,
1983
Canadian
Registration
278058
Cigarette papers.
MAN’S HEAD DESIGN August 9,
1983
U.S.
Registration
1247856
Cigarette papers.
ZIG-ZAG August 16,
1955
U.S.
Registration
610530
Cigarette papers.
ZIG-ZAG December 18,
1979
U.S.
Registration
1127946
Cigarette papers.

 

 
 

 

Schedule B2

 

Bollore Technologies
Marks to Be Registered

 

Trademark Filing Date Goods
SMOKING MAN
DESIGN
April 17,1995 Cigarette papers.
SMOKING MAN IN
CIRCLE DESIGN
June 16, 1995 Cigarette papers.

 

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