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EXHIBIT 2.2
THIS TRANSFER AGREEMENT made the 10th day of November, 2000.
BETWEEN:
BLUE GIANT CORPORATION, a corporation incorporated
under the laws of the State of Delaware,
(hereinafter called the "Transferor")
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BLUE GIANT EQUIPMENT CORPORATION (formerly
1445833 Ontario Inc.), a corporation incorporated
under the laws of the Province of Ontario,
(hereinafter called the "Transferee")
The parties agree as follows:
1. INTERPRETATION
1.1 For the purposes of this Agreement, the following terms shall have
the respective meanings set out below:
(a) "Know-How" means all existing (but only to the extent used by
Transferor in commercial production of Products [as
hereinafter defined]) technical information (including,
without limitation, invention disclosures, trade secrets and
knowhow), assembly and detailed drawings; design information,
part lists, operation and maintenance instructions and
manuals; servicing and installation instructions; written
information relating to manufacturing and assembling
processes; lists of manufacturing equipment; data on
application engineering and information relating to
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quality control standards;
(b) Patents" means all of the Transferor's existing interests in
patents and registered industrial designs and pending
applications for industrial designs and patents that are set
forth on Schedule "A";
(c) "Products" means the following powered and manual stackers,
powered and manual pallet trucks, walkie lift trucks and
tractor products: ROI-55, MTS-2000, BGP, BGS, BGL, BGN, BGNR,
GTT, TT Series, P Stakmate PTW and parts for all of the
foregoing;
(d) "Trade Marks" means all of the existing trade mark and trade
name rights of the Transferor in the trade name and trade
marks set forth on Schedule "B";
(e) "Transferor's Technology" means all of the Transferor's
existing interests in the Patents and Know-How to the extent
and only to the extent that such Know-How is used by the
Transferor in the commercial production and use of the
Products;
1.2 Unless otherwise indicated, all dollar amounts in this Agreement are
expressed in United States funds.
1.3 This Agreement shall be construed, interpreted and enforced in
accordance with, and the respective rights and obligations of the parties
shall be governed by, the laws of the State of Delaware.
1.4 No amendment or waiver of any provision of this Agreement shall be
binding on either party unless consented to in writing by such party. No
waiver of any provision of this Agreement shall constitute a waiver of any
other provision, nor shall any waiver
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constitute a continuing waiver unless otherwise provided.
1.5 Each party hereto acknowledges that it and its legal counsel have
reviewed and participated in settling the terms of this Agreement, and the
parties hereby agree that any rule of construction to the effect that any
ambiguity is to be resolved against the drafting party shall not be applicable
in the interpretation of this Agreement.
1.6 The following schedules are attached to and form part of this
Agreement:
Schedule A - Patents
Schedule B - Trade Marks
Schedule C - Restricted Dealers
Schedule D - Certain Dealers
2. GRANT OF TRANSFEROR'S TECHNOLOGY AND TRADE MARKS
2.1 Upon and subject to the provisions of this Agreement, the Transferor
hereby sells, assigns, transfers and sets over to the Transferee an undivided
fifty percent (50%) interest in all of the Transferor's Technology.
2.2 Upon and subject to the provisions of this Agreement, the Transferor
hereby sells, assigns, transfers and sets over to the Transferee all of the
Transferor's interest in and to the Trade Marks together with the goodwill of
the business attached to the Trade Marks, including all registrations and
applications to register the Trade Marks worldwide. Without limiting the
generality of the foregoing, (1) the Transferor agrees that, as soon as
practicable after the date hereof, it will change its name to a name that does
not include the words "Blue Giant" or any similar words, and (2) the
Transferor agrees that it shall not manufacture any Products with a "Blue
Giant" logo except pursuant to the Agreement dated the date hereof between
Blue Giant Corporation, as Seller, and 1445833 Ontario Inc., as Buyer,
consisting of a private branding agreement for Products
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manufactured by Seller for Buyer.
2.3 The sale and transfer of the Transferor's Technology and the Trade
Marks is subject to the following terms and conditions to be performed or
fulfilled prior to any such sale and transfer taking effect:
(a) the United States Bankruptcy Court for the District of
Delaware in case No. 00-1730(SLR) and Transferor's lender,
Congress Financial Corporation, shall have approved the
execution, delivery and performance of this Agreement by the
Transferor; and
(b) the closing of the Agreement dated October 19, 2000 between
1445833 Ontario Inc., as purchaser, and Blue Giant Limited,
as vendor, consisting of the sale of the latter's loading
dock equipment business.
2.4 The Transferor covenants, undertakes and agrees to provide to the
Transferee, at the Transferor's expense, signed transfers in registrable form
of the Patents.
2.5 The Transferor covenants, undertakes and agrees, without further
consideration, but at the expense of the Transferee, to do all such things and
execute all such further assurances, applications, instruments and other
documents as may be reasonably required by the Transferee to register or
otherwise perfect the foregoing transfers of the Transferor's Technology and
the Trade Marks.
3. PURCHASE PRICE
3.1 The purchase price for the Transferor's Technology and the Trade
Marks shall be the sum of U.S. $1,500,000 which shall be payable by the
Transferee to the Transferor
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by certified cheque or banker's draft on the date hereof.
4. DISCLOSURE AND TECHNICAL ASSISTANCE
4.1 During the period of 90 days next following the date hereof, the
Transferor shall disclose to the Transferee the Transferor's Technology and
shall provide to the Transferee all reasonable and necessary advice and
assistance with respect to the Transferor's Technology. During the said 90 day
period, if the Transferee requests, on reasonable notice, the Transferor will
send one or more representatives to any facility of the Transferee in North
America to provide advice and assistance with respect to the Transferor's
Technology for an aggregate of not more than 5 person days and, in such an
event, the Transferor may invoice the Transferee for transportation, living
and reasonable personal expenses of the Transferor's representative(s).
4.2 Except for the initial disclosure and assistance set forth in section
4.1, neither the Transferor nor the Transferee shall have any obligation to
disclose to the other any matter relating to the Transferor's Technology or
any discoveries, inventions, developments or improvements in the Transferor's
Technology or the Products or the manufacture thereof or substitutes therefor.
It is the express intention of the parties to this Agreement that after the
initial disclosure period, both parties shall have the right to modify the
Transferor's Technology and the Products provided only that no such
modification shall reduce, impair or restrict the use of the undivided 50
percent interest of the other in the Transferor's Technology. Except for the
Transferor's Technology, full title and interest in all discoveries,
inventions, developments and improvements (whether capable of patent or like
protection or not) relating to the Products or the production, use or
servicing thereof, shall belong to whichever party makes the particular
discovery, invention, development or improvement and such party shall be under
no obligation to grant any form of licence or other interest therein to the
other.
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5. DEALINGS IN TRANSFEROR'S TECHNOLOGY
5.1 Both the Transferor and the Transferee may transfer, license, grant
security interests in and otherwise deal in whole or in part with their
respective interests in the Transferor's Technology provided only that no such
dealing shall reduce, impair or restrict the use of the undivided 50 percent
interest of the other in the Transferor's Technology.
6. WARRANTIES AND LIMITATIONS
6.1 The Transferor represents and warrants to the Transferee that,
(a) except for the approvals referred to in section 2.3(a), there
are no restrictions on the Transferor's power and right to
execute, deliver and perform this Agreement;
(b) to the knowledge of the Transferor, the Transferor's
Technology does not infringe on the intellectual property of
others; and
(c) the Transferor's Technology is sufficient and suitable for
the production of the Products to a quality comparable to the
quality now produced by or on behalf of the Transferor,
provided that,
(i) the Transferee at all times conforms strictly with
the Transferor's Technology, and
(ii) the Transferee employs resources and skills in the
production and
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assembly of the Products comparable to those of a
manufacturer experienced in the production and
assembly of Products of similar complexity and
sophistication.
6.2 Except as expressly set forth in section 6.1, nothing in this
Agreement is or shall be construed as:
(a) any warranty or representation by the Transferor as to the
validity or scope of any claim or aspect of any of the
Patents or any other information or element of the
Transferor's Technology;
(b) any warranty or representation that anything made, used, sold
or otherwise disposed of as a result of the transfer of an
interest in the Transferor's Technology under this Agreement
is or will be free from infringement of patents, copyrights,
trade secrets, trade marks and other rights of third parties;
or
(c) an obligation of the Transferor to bring or prosecute actions
or suits against third parties for infringement.
6.3 Except as expressly set forth in section 6.1, the Transferor makes no
representations and extends no warranties of any kind, either express or
implied. There are no express or implied warranties or conditions of
merchantability or fitness for a particular purpose, or that use of the
Transferor's Technology or the Products will not infringe any patent,
copyright, trade secret, trade mark or other right whether arising by statute
or otherwise in law or from a course of dealing or usage of trade.
6.4 The Transferor shall not be liable for any indirect, incidental,
special or consequential damages, arising directly or indirectly from the use
of the Transferor's Technology or the sale or the disposition of Products by
the Transferee.
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7. INFRINGEMENT ACTIONS
7.1 If any infringement action, proceeding or claim of any kind or nature
is instituted against either the Transferor or the Transferee (the "Affected
Party") because of its use of the Transferor's Technology or the production,
use or sale of Products, the Affected Party will notify the other party in
writing, in reasonable detail, of the date and nature of such action,
proceeding or claim, and from time to time of the progress thereof. The
Affected Party shall not be obligated to defend any such action, proceeding or
claim or to defend or save harmless the other party against any such action,
proceeding or claim. At the request of the other party, the Affected Party
shall permit the other party to intervene or otherwise appear in or in
connection with any action, proceeding or claim above described through
counsel selected by the other party at the sole expense of the other party.
7.2 The Transferor and the Transferee shall promptly notify one another
in writing of any suspected infringement of any of the Transferor's
Technology. Both parties shall have the right, but not the obligation, to
prosecute at its own expense any suspected infringement and to include the
other party as a party plaintiff in any such suit without expense to such
other party. If both Transferor and Transferee participate and share in the
cost of any such lawsuit, both parties shall share equally in any recovery.
8. NON-COMPETITION
8.1 Until the fourth anniversary of the date of this Agreement, except
with the written consent of the Transferor, neither the Transferee nor any
affiliate of the Transferee shall (i) sell or lease or offer to sell or lease
any Products or products incorporating any element of the Transferor's
Technology, however branded, to the dealers of the
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Transferor or Clark Material Handling Company set forth on Schedule C with the
exception of those dealers set forth on Schedule D, or (ii) appoint any of the
dealers of the Transferor or Clark Material Handling Company set forth on
Schedule C as a dealer of the Transferee or any affiliate of the Transferee
with respect to Products.
9. CONFIDENTIALITY
9.1 Each of the parties acknowledges and agrees that the Transferor's
Technology is confidential and proprietary information and agrees that the
Transferor's Technology will be held in confidence by it and will be disclosed
only pursuant to the provisions of this Agreement. Each of the parties may
disclose the Transferor's Technology, (i) to affiliates of such party, (ii) to
others on a need-to-know basis to the extent necessary for the production,
sale and after-sale servicing of Products and modified or new products
incorporating elements of the Transferor's Technology, and (iii) in connection
with a bona fide commercial transaction for value, provided that the
disclosing party directs each person to whom it discloses any part of the
Transferor's Technology to maintain the confidentiality of the Transferor's
Technology and to use the same only to the extent necessary in connection with
a bona fide commercial transaction for value.
10. DISCLAIMER OF CERTAIN OBLIGATIONS
10.1 The rights of the parties in the Transferor's Technology and
otherwise under this Agreement shall be separate and not joint or collective
and nothing herein contained shall ever be construed as creating a partnership
or trust of any kind or as imposing upon either of the parties hereto any
partnership or fiduciary duty, obligation or liability. Neither party shall be
the agent of the other.
11. NOTICES
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11.1 (a) Any notice or other communication required or permitted to be
given hereunder shall be in writing and shall be delivered in
person, transmitted by telecopy or similar means of recorded
electronic communication or sent by registered or certified
mail, charges prepaid, addressed as follows:
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(i) if to the Transferor:
Blue Giant Corporation
172 Trade Street
Lexington, KY 40511
U.S.A.
Attention: Michael J. Grossman
Vice-President, Secretary and General
Counsel
Telecopy No.: 859-367-4002
(ii) if to the Transferee:
TBM Holdings, Inc.
136 Main Street
Westport CT 06880
U.S.A.
Attention: William Schwartz, President
Telecopy No.: 203-227-1050
</TABLE>
(b) Any such notice or communication shall be deemed to have been
given and received on the day on which it was delivered or
transmitted (or, if such day is not a business day, on the
next following business day) or, if mailed, on the fifth
business day following the date of mailing; provided,
however, that if at the time of mailing or within five
business days thereafter there is or occurs a labour dispute
or other event that may reasonably be expected
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to disrupt the delivery of documents by mail, any notice or
other communication hereunder shall be delivered or
transmitted by means of recorded electronic communication as
aforesaid.
(c) Either party may at any time and from time to time change its
address for service by giving notice to the other party in
accordance to this section 11.
IN WITNESS WHEREOF, this Agreement has been executed by the
parties.
BLUE GIANT CORPORATION
By: /s/ Michael Grossman
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BLUE GIANT EQUIPMENT CORPORATION
By: /s/ William A. Schwartz
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