Last Updated: November 27, 2014
This EMVCo Trademark License Agreement (“Agreement”) is a contract between EMVCo, LLC, a limited liability company incorporated in Delaware, USA (“EMVCo“) and the company or organization that registers with EMVCo to receive a license under this Agreement (“Licensee”). EMVCo and Licensee are each referred to as a “Party,” and collectively, as the “Parties.”
By clicking the “AGREE” button below, you (i) agree to the following Agreement on behalf of Licensee, (ii) represent that you are an authorized representative of Licensee with authority to bind Licensee to this Agreement, (iii) represent that all information that you provide in the registration form for this license is accurate and complete, and (iv) consent to receiving email and other communications from EMVCo relating to this Agreement.
A. EMVCo owns or has rights in the contactless indicator trademark (“Contactless Indicator”), a sample of which is illustrated as follows:
B. Licensee desires to use the Contactless Indicator in connection with certain contactless (also known as “near field communication” or “NFC”) non-payment transactions, and not in connection with contactless payment transactions.
The Parties agree as follows:
“Application Software” means application software that is designed to operate on a Licensed Device, other than OS Software.
“Approved Specification” means one of the contactless communication protocols or other contactless specifications listed in Schedule 1, as such list may be updated by EMVCo from time to time in accordance with Section 2.5.
“Licensed Device” means a smart tag, proximity integrated circuit card, mobile phone, mobile SIM card, tablet computer, personal computer, contactless terminal or other hardware device that is capable of facilitating contactless interactions with another Licensed Device in accordance with one or more Approved Specifications.
“Licensed Materials” means (i) promotional or informational materials regarding Licensed Products, such as websites, brochures, billboards, posters, presentations and advertisements or (ii) the packaging of a Licensed Device, including the physical packaging and enclosed manuals and other documentation.
“Licensed Product” means a Licensed Device, Application Software, OS Software or other item identified in the Permitted Uses (other than Licensed Materials), on or in which Licensee is authorized to use the Contactless Indicator under this Agreement.
“OS Software” means operating system software that is designed to operate on a Licensed Device and govern the interaction of software on the device (including software of third parties) with any contactless antenna present on the Licensed Device.
“Permitted Uses” means the manner and purposes approved by EMVCo in writing for Licensee’s use of the Contactless Indicator under this Agreement, a current list of which is set forth on Schedule 2, as such list may be updated by EMVCo from time to time in accordance with Section 2.5.
“Reproduction Requirements” means EMVCo’s reproduction standards and specifications for use of the Contactless Indicator, the current versions of which are listed on Schedule 3, as such documents or list may be updated by EMVCo from time to time in accordance with Section 2.5.
“Restricted Jurisdictions” means those jurisdictions which are excluded from the License, a current list of which is set forth on Schedule 4, as such list may be amended or updated by EMVCo from time to time in accordance with Section 2.5.
2.1 Grant of License
Subject to the terms of this Agreement, EMVCo hereby grants to Licensee a nonexclusive, nontransferable, non-sublicensable, royalty-free license under all trademark rights of EMVCo to use the Contactless Indicator solely in accordance with the Permitted Uses and Reproduction Requirements. Licensee shall not use the Contactless Indicator in any manner or for any purpose other than as set forth in this Agreement (the “License“). The License applies in any jurisdiction where EMVCo has the necessary rights to license the Contactless Indicator under this Agreement, but the License specifically excludes the Restricted Jurisdictions. Licensee will not use the Contactless Indicator except as expressly permitted by the License.
2.2 Duration of License
With respect to each type of Licensed Product or Licensed Material, the License will continue for the period of time described in the Permitted Uses, unless otherwise terminated in accordance with this Agreement.
2.3 Suspension and Termination of License
EMVCo may terminate or limit the License with respect to any or all Licensed Products or Licensed Materials in a specific country or other jurisdiction by notifying Licensee in writing of such termination or limitation in the event of any of the following (such notice to Licensee, a “Suspension Notice”):
Licensee shall stop or modify use of the Contactless Indicator in accordance with EMVCo’s Suspension Notice to Licensee, which will provide for at least fourteen (14) days to comply unless EMVCo is required by a governmental authority or other third party to act on shorter notice. EMVCo acknowledges that this fourteen (14) days period is the minimum period that it may grant to Licensee in order to comply, and that EMVCo will use reasonable efforts to provide a longer period of time if EMVCo reasonably believes that doing so will not increase the potential risk or liability of EMVCo or Licensee. With respect to the applicable jurisdictions, the License will be suspended effective immediately upon the compliance deadline set forth in the Suspension Notice, upon which EMVCo may add the applicable jurisdictions to the Restricted Jurisdictions.
For a period of one hundred twenty (120) days from the date of EMVCo’s Suspension Notice, EMVCo will consult in good faith with Licensee (either individually or together with other affected licensees) to discuss and attempt to address Licensee’s concerns with such suspension and the termination or limitation of the License. Unless EMVCo otherwise agrees, upon the conclusion of such one hundred twenty (120) day consultation period, the suspension will become permanent and the License will automatically be limited or terminated with respect to the applicable jurisdictions without further action by EMVCo or notice to Licensee. Upon the suspension or termination of the License in a specific jurisdiction, Licensee’s further use of the Contactless Indicator in the jurisdiction will cease to be authorized by EMVCo under this Agreement.
2.4 Modifications to Contactless Indicator
EMVCo may modify the Contactless Indicator at any time, effective upon four (4) months’ prior written notice to Licensee. However, for twelve (12) months from the date of EMVCo’s notice, such modification will not restrict Licensee from selling through any inventory of Licensed Products or otherwise distributing any physical Licensed Materials bearing the Contactless Indicator in accordance with this Agreement (including after the term of this Agreement) that had been ordered or manufactured prior to the date of EMVCo’s notice.
2.5 Modifications to Schedules
EMVCo may modify the Schedules to this Agreement at any time, effective as follows:
3. Quality Control
Licensee recognizes and understands the critical importance of EMVCo’s right to exercise quality control over the use of the Contactless Indicator so as to protect the goodwill associated with the Contactless Indicator. Accordingly, Licensee will take all reasonable steps to ensure that Licensee’s Licensed Products and Licensed Materials comply with the Permitted Uses, Reproduction Requirements, and one or more of the Approved Specifications. Upon reasonable notice from EMVCo or its agents, Licensee shall cooperate as reasonably requested by EMVCo to demonstrate that Licensee is using the Contactless Indicator in accordance with this Agreement. EMVCo will not request such cooperation from Licensee more than once per year, unless EMVCo has reason to believe that Licensee is violating the terms of this Agreement, including without limitation any provisions regarding quality control. Such cooperation may include submission of a reasonable number of samples of the Licensed Products and Licensed Materials and will be subject to EMVCo’s reasonable and customary confidentiality requirements.
4. Intellectual Property Rights
Licensee recognizes and acknowledges the value of the goodwill associated with the Contactless Indicator, and acknowledges and agrees that, as between the parties, EMVCo exclusively owns all right, title and interest in and to the Contactless Indicator. All goodwill arising out of Licensee’s use of the Contactless Indicator shall inure solely to the benefit of EMVCo.
Licensee shall not do any of the following:
Upon request, Licensee will execute all documents and provide samples of use and other materials as reasonably required by EMVCo to facilitate EMVCo’s registration, maintenance and enforcement of the Contactless Indicator in the jurisdictions where Licensee uses the Contactless Indicator. EMVCo will reimburse Licensee for its reasonable, out-of-pocket costs incurred by Licensee to provide such assistance to EMVCo, provided that EMVCo approves such costs in advance.
5.1 Indemnification Obligation
Licensee shall defend, indemnify and hold harmless EMVCo and its affiliates (including EMVCo’s members), and their respective officers, directors, employees and agents (collectively, “EMVCo Parties“), from and against all damages, losses, liabilities, costs and expenses (including reasonable attorneys’ fees) (collectively, “Losses“) incurred in connection with any third party claim, suit or other action arising out of or related to the Licensed Products, Licensee’s use of the Contactless Indicator, or any acts or omissions of Licensee relating to this Agreement. However, the foregoing indemnification obligations do not apply to the extent (y) the manufacturer of a Licensed Product is obligated to indemnify EMVCo for the same Losses, or (z) the Losses result from the EMVCo Parties’ gross negligence or willful misconduct.
5.2 Indemnification Procedure
Upon receiving notice of any third party claim, suit or other action which may reasonably be considered likely to give rise to Losses for which Licensee must indemnify the EMVCo Parties (each an “Claim“): (i) EMVCo shall, as soon as reasonably practicable, provide written notice of the Claim to Licensee, specifying the nature of the Claim in reasonable detail, provided that the right of EMVCo to indemnification hereunder shall not be adversely affected by a failure to give such notice, unless and only to the extent that Licensee is materially prejudiced thereby; (ii) neither Party make any admission of liability, agreement or compromise in relation to the Claim that may adversely affect the interests of the other Party without the prior written consent of the other Party, which consent shall not be unreasonably withheld or delayed; (iii) EMVCo shall give Licensee and its professional advisers reasonable assistance, at Licensee’s cost and expense, for the purpose of assessing the Claim; and (iv) Licensee shall promptly assume and diligently pursue the defense of the Claim and take such other actions as reasonably necessary to avoid dispute, compromise or defend the Claim, and EMVCo shall allow Licensee to do so. If Licensee fully assumes and diligently pursues the defense of a Claim pursuant to this Section, then EMVCo may, at its own cost and expense, participate through its attorneys or otherwise, in such defense of a Claim and any appeal therefrom, provided that such participation does not compromise Licensee’s ability to avoid, dispute, compromise or defend the Claim. If Licensee does not fully assume and diligently pursue the defense of a Claim pursuant to this Section, then (y) EMVCo shall have the right to assume control over and defend or settle such Claim in such manner as it may deem appropriate, at Licensee’s sole cost and expense, and (z) Licensee may, at its own cost and expense, participate through its attorneys or otherwise in EMVCo’s investigation, trial or defense of a Claim and any appeal arising therefrom, provided that such participation does not compromise EMVCo’s ability to avoid, dispute, compromise or defend the Claim. Licensee shall not settle any Claim without EMVCo’s prior written consent, which consent shall not be unreasonably withheld or delayed.
6.1 No Warranties
THE CONTACTLESS INDICATOR AND LICENSE ARE PROVIDED TO LICENSEE “AS IS.” TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, EMVCO MAKES NO WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE CONTACTLESS INDICATOR, LICENSE OR OTHER MATTERS UNDER THIS AGREEMENT, AND EXPRESSLY DISCLAIMS ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT.
6.2 Responsibility for Use of Contactless Indicator
The Parties acknowledge and agree that Licensee is responsible for all liability arising from Licensee’s use of the Contactless Indicator, even if such use is in accordance with this Agreement. Accordingly, TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW IN NO EVENT WILL LICENSEE OR ANY OF THE EMVCO PARTIES BE LIABLE FOR ANY INCIDENTAL, INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, ANY DAMAGES FOR LOSS OF BUSINESS, LOSS OF PROFITS, BUSINESS INTERRUPTION, OR OTHER LOSS) ARISING OUT OF OR RELATED TO THE CONTACTLESS INDICATOR, THE LICENSE, OR OTHER MATTERS UNDER THIS AGREEMENT, HOWEVER CAUSED, WHETHER UNDER A THEORY OF CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, EVEN IF AN EMVCO PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW THE EMVCO PARTIES’ AGGREGATE LIABILITY FOR DIRECT DAMAGES WILL NOT EXCEED ONE HUNDRED DOLLARS (US$100). FURTHER, THE EMVCO PARTIES SHALL HAVE NO LIABILITY OF ANY NATURE FOR ANY TERMINATION OF THIS AGREEMENT OR ANY TERMINATION OR SUSPENSION OF THE LICENSE. Licensee understands and acknowledges that this Section 5.2 has been included as a material inducement for EMVCo to offer and enter into this Agreement, and that EMVCo would not have entered into this Agreement but for the limitations of liability as set forth in this Section 5.2.
6.3 Uses in Certain Jurisdictions
EMVCo has no duty or obligation to investigate, analyze or otherwise conduct trademark searches regarding the potential infringement of third party rights arising out of or related to the use or license of the Contactless Indicator. As between the Parties, any such investigations, searches or analyses are solely the responsibility of Licensee, and Licensee should not rely on EMVCo’s registration of the Contactless Indicator in a jurisdiction as assurance that Licensee may use the Contactless Indicator in such jurisdiction in accordance with this Agreement without risk of infringing a third party’s rights.
7. Term and Termination
This Agreement shall be effective upon your receipt of a confirmation from EMVCo that EMVCo has received your registration for the License and shall continue until terminated in accordance with this Agreement.
7.2 Termination without Cause
Either party may terminate this Agreement at any time, without cause, upon twelve (12) months’ prior written notice to the other party.
7.3 Termination for Cause
EMVCo will reasonably consider, based on the circumstances of such breach and other breaches that may have occurred, to limit any termination of this Agreement under this Section 7.3 to the specific jurisdictions to which the breach relates, provided that any such limitation on the scope of termination of this Agreement will be at EMVCo’s discretion.
7.4 Cessation of Use After Termination
Upon termination of this Agreement for any reason, except to the extent Licensee is expressly permitted in this Agreement to continue using the Contactless Indicator after such termination, (i) the License will terminate, (ii) Licensee shall cease all use of the Contactless Indicator, (iii) Licensee shall dispose of all materials bearing the Contactless Indicator which are in Licensee’s possession or control at the time of the termination, and (iv) Licensee shall take all steps necessary to cease the distribution of Licensed Products and Licensed Materials displaying or causing the display of the Contactless Indicator.
7.5 Permitted Use After Termination
Further, for twelve (12) months after the termination of this Agreement, such termination will not restrict Licensee from selling through any inventory of Licensed Products or otherwise distributing any physical Licensed Materials bearing the Contactless Indicator in accordance with this Agreement (including after the term of this Agreement) that had been ordered or manufactured prior to the date of the applicable Party’s notice of termination, subject to the provisions of Section 2.3 and any changes to the Restricted Jurisdictions; provided that the termination of this Agreement is not due to the breach of this Agreement by Licensee.
Sections 4.2, 5, 6, 7.4, 7.5, 7.6, 8 and 9 shall survive termination of this Agreement for any reason.
8. Compliance with Laws
In performing its obligations under this Agreement, neither party will be required to undertake any activity that would conflict with the requirements of any applicable law. Licensee shall ensure that all Licensed Products and Licensed Materials (including its use of the Contactless Indicator thereon) comply with applicable law, including with respect to the manufacture, packaging, promotion, sale, distribution and use of such products and materials.
9. General Provisions
9.1 Relationship of Parties
Nothing in this Agreement shall be deemed to create a joint venture, partnership, or agency relationship between the Parties. Neither Party has the right or authority to assume or create any obligation or responsibility on behalf of the other. Each party is an independent contractor to the other.
Licensee may not assign or transfer this Agreement or any of its rights or obligations hereunder without the prior written consent of EMVCo, and any attempted assignment by Licensee without such consent will be void and have no effect; provided no consent is required in the event of a merger, reorganization or reincorporation of Licensee, or sale of all or substantially all of Licensee’s assets, so long as the surviving or successor entity specifically assumes in writing all of Licensee’s obligations under this Agreement. EMVCo may freely assign this Agreement without the prior consent of Licensee. Subject to the foregoing restriction on assignment, this Agreement shall be binding upon and shall inure to the benefit of the Parties and their successors and assigns.
9.3 Entire Agreement
This Agreement (including the Schedules to this Agreement) contain the entire agreement between the parties relating to the subject matter hereof, and all prior proposals, discussions or writings are superseded hereby. Notwithstanding the foregoing, this Agreement will not amend or supersede the terms of any written agreement that Licensee may have with EMVCo, a payment network, a contactless product manufacturer, or any other third party regarding the licensing of the Contactless Indicator.
Except as otherwise stated in this Agreement, any notices required or permitted by this Agreement shall be in writing and shall be delivered as follows, with notice deemed given as indicated: (i) by electronic mail; (ii) by personal delivery when delivered personally; (iii) by overnight courier upon written verification of receipt; (iv) by certified or registered mail, return receipt requested, upon verification of receipt; or (v) by a facsimile transmission with electronic confirmation of receipt. All notices to Licenseewill be sent to the address, email address or facsimile number specified by Licensee when registering for the License. All notices to EMVCo will be sent to the following:
901 Metro Center Boulevard
Foster City, California 94404
Attn: Legal Secretariat
A Party may change its address, email address or facsimile number for notices by sending written notice to the other Party in accordance with this Section.
9.5 Modification; Waiver
Except as otherwise set forth in this Agreement, no modification of this Agreement shall be binding unless it is in writing and agreed to by the party against whom the modified terms are to be enforced, which may include, without limitation, agreement by email or through other writings. Any waiver of a breach by either Party is not a waiver of any subsequent or other breach. No person or entity other than Licensee and EMVCo shall be deemed to have acquired any rights by reason of anything contained in this Agreement.
If any provision of this Agreement or portion thereof should be declared invalid for any reason, the invalid provision or portion thereof shall be deemed omitted and the remaining terms shall nevertheless be carried into effect.
9.7 Choice of Law
This Agreement will be interpreted, construed and enforced in accordance with the laws of the State of Delaware, USA without regard to its choice of law principles to the contrary. Each party hereby irrevocably consents to the exclusive jurisdiction and venue of any state or federal court located in Delaware with regard to any legal or equitable action or proceeding relating to this Agreement.
9.8 EMVCo’s Remedies
Licensee acknowledges that its failure to comply with the terms of this Agreement, including those that survive termination of this Agreement, may result in immediate and irreparable damage to EMVCo, and EMVCo may seek equitable relief by way of temporary and permanent injunction and such other further relief as any court with jurisdiction may deem just and proper. Resort to any remedies referred to herein shall not be construed as a waiver of any other rights or remedies to which EMVCo may be entitled under this Agreement or otherwise.
9.9 Attorneys’ Fees
In the event of a dispute between the Parties regarding the enforcement or interpretation of any terms of this Agreement, the non-prevailing Party shall pay the reasonable costs and attorneys’ fees of the prevailing Party, including the reasonable costs and attorneys’ fees incurred in the appeal of any final or interlocutory judgment.
Last updated: November 27, 2014
The most recent version of the following specifications are “Approved Specifications,” as they may be amended or replaced from time to time by their respective owners, and including all applicable technical bulletins to such specifications:
1. EMV Contactless Communication Protocol Specification published by EMVCo
2. The applicable NFC specifications published by NFC Forum
3. The applicable MiFARE protocols published by NXP Semiconductors NV
4. The applicable FeliCa protocols published by Sony Corporation
Last updated: November 27, 2014
The License allows the use of the Contactless Indicator on or in the following Licensed Products only in the manner and for the purposes as follows (“Permitted Uses”):
As used in this Schedule, “Contactless Payment Transaction” means a contactless transaction between a Licensed Device and another contactless device that facilitates the payment or receipt of money or money equivalents (e.g., prepaid credits).
Last updated: November 27, 2014
Contactless Indicator Reproduction Requirements (available at http://www.emvco.com/best_practices.aspx?id=117)
Last updated: November 27, 2014