Nuheara, Perth, Australia, has announced a worldwide Trademark License Agreement to develop, manufacture and market its hearing aid products under the leading HP brand trademarks through the end of 2027. The initial focus with these trademarks will be in the US market, pending NuHeara’s 510(k) clearance, which it submitted to the US Food and Drug Administration (FDA) in April 2022. Nuheara says it is positioning itself to take advantage of the FDA enactment of the final Over-the-Counter (OTC) Hearing Aid Rule following the completion of the National Acoustic Laboratories (NAL) Clinic Study completed in January 2022 which reportedly demonstrated exceptional results.
HP Inc, headquartered in Palo Alto, Calif, is the world’s second-largest personal computer company, and manufactures laptops, Chromebooks, monitors, printers and related supplies, as well as 3D printing solutions.
Nuheara is a public company listed on the Australian Stock Exchange (ASX: NUH) that develops, manufacturers, and markets smart hearable devices, deemed by some to be among the best in class. In 2020, Nuheara released its third-generation hearable, the IQbuds² MAX (shown above). In 2021, Nuheara transformed its operations to include medical device manufacturing for its hearing aid products to meet global demand for mild-to-moderate hearing loss. In 2022, Nuheara established its US headquarters in Bellevue, Wash, and appointed hearing industry veteran John Luna as its new Chief Revenue Officer and President Americas. Nuheara products are now sold Direct to Consumer (DTC) and in major consumer electronics retailers, professional hearing clinics, pharmacies, and speciality retailers around the world.
The trademark license granted to Nuheara by HP Inc is worldwide and effectively exclusive within the field of regulated hearing aids. “This Agreement marks a significant achievement for Nuheara’s growth as a medical device company,” said Nuheara CEO Justin Miller in a press statement. “Leveraging the global brand of HP as a leading technology company to sell our regulated hearing devices, is a significant step in both Nuheara’s future and the de-stigmatization of hearing aids. We are delighted to partner with such a well trusted and leading global brand.”
Nuheara reports it will pay a “market competitive” royalty fee to HP for products sold under the agreement, while retaining the right to sell any product under its own brand and manufacture product for other third-party brands. Additionally, the agreement is separate and does not impact the 3-year OEM HP Elite Buds manufacturing agreement with HP consumer products, nor other potential OEM provider agreements. In December, NuHeara secured a 3-year global supply agreement with Sonova AG to supply their products to Sonova and its worldwide affiliates.
“This Agreement allows the proven legacy of the HP brand to instill consumer confidence and brand recognition with Nuheara’s proven safe and effective hearing technology,” says Luna. “Having the HP brand name on our hearing products will open significant mainstream retail opportunities for our OTC hearing aids aligned with our omnichannel commercialization strategy in the U.S. We are proud to represent the HP brand.”
Details of the Licensing Agreement
- HP grants Nuheara a non-exclusive, non-assignable, non-transferable, royalty-bearing, personal and limited license to use, reproduce and display the following Licensed Trademarks worldwide until 31 December 2027, on Licensed Products distributed by Nuheara to distribution partners or end-user customers and on the packaging and advertising materials used by Nuheara in connection with the manufacture, distribution, marketing, advertising, and sale of Licensed Products. Licensed Trademarks include:
- Words: HP
- Logos for products, advertising and packaging (see HP logo).
- Logos for advertising and marketing collateral only (see “Official Licensee” logo).
- During the term, HP agrees not to grant any new licenses to use the Licensed Trademarks in connection with Licensed Products, subject to Nuheara’s compliance with all terms and conditions of the Agreement (including royalty performance). This means that despite the “non- exclusive” scope, it is effectively exclusive with respect to new licenses;
- During the term, Nuheara is prohibited from marketing, advertising, distributing, or selling products under other brands acquired through a license or otherwise within the field of regulated hearing aids (the Field);
- Nuheara retains the right to sell any product under its own brand and manufacture product for other third-party brands within the Field;
- The term of the Agreement is until 31 December 2027 unless terminated earlier;
- In consideration for the grant of the license to use the Licensed Trademarks, Nuheara will pay a license fee and market competitive royalty fee to HP for HP branded products sold under the Agreement;
- Nuheara and HP have mutually agreed performance standards and targets;
- HP may, at its sole discretion, eliminate any countries or jurisdictions if it determines that use of the Licensed Trademarks in such countries or jurisdictions may subject HP, its affiliates or Nuheara to legal liability. Upon receipt of written notice from HP, Nuheara will cease all use of the designated Licensed Trademarks in such countries or jurisdictions;
- HP can terminate the Agreement:
- For payment or compliance defaults, or use of unauthorized distributors, amongst other events, which are not cured within 10 days of notice;
- On a government non-compliance notice or late provision of results, amongst other events, which are not cured within 30 days of notice;
- Immediately due to, amongst other things, Nuheara’s inability to meet royalty performance, misuse or change of control;
- Either party can terminate by giving 60 days’ notice for a very significant force majeure; and
- Nuheara can terminate the Agreement by giving 90 days’ notice in the event of claims made against HP for intellectual property infringement in certain circumstances.
Source: NuHeara
