In the business world, a trademark license is a key tool for expanding a brand’s market presence, allowing third parties to use a distinctive sign under previously agreed-upon conditions. In Argentina, a common concern is whether registering such agreements is mandatory and what benefits are associated with this registration. In this article, we analyze this issue in light of the Technology Transfer Law (Law No. 22.426) and Decision 117/2014 of the National Institute of Industrial Property (INPI).
Is It Mandatory to Register a Trademark License Agreement in Argentina?
Argentine legislation does not require the mandatory registration of trademark license agreements. This means that parties can execute and enforce the contract without registering it with INPI. However, registering it with INPI is highly recommended, particularly due to the tax benefits and legal security it may provide in certain cases.
Why Is It Advisable to Register a Trademark License Agreement with INPI?
Although it is not mandatory, registering the trademark license agreement with INPI offers some key advantages:
Tax Benefits
One of the main incentives for registering the agreement is the possibility of accessing income tax benefits. The Technology Transfer Law (Law No. 22.426) establishes that agreements involving the transfer of technology or licensing of industrial property rights from a foreign company to an entity domiciled in Argentina may qualify for tax deductions.
Enforceability Against Third Parties
Registration provides greater legal security for the parties. A registered agreement can be enforceable against third parties, protecting both the licensor and the licensee in potential disputes over trademark use.
Registration Procedure and Costs
To register a trademark license agreement, an application must be submitted to INPI along with:
- A signed copy of the agreement. If the contract was executed abroad, a duly apostilled copy must be submitted. If it is in a foreign language, a sworn translation by an Argentine public translator must be provided and legalized by the Colegio de Traductores Públicos de Buenos Aires.
- Sworn Declaration.
- Documentation proving the legal representation of the signatories.
- Payment of the applicable fees.
Conclusion
Although registering a trademark license agreement is not mandatory in Argentina, doing so can provide significant tax benefits. Registration with INPI, under the provisions of the Technology Transfer Law (Law No. 22.426) and Decision 117/2014, is a recommended practice for those seeking to optimize their commercial agreements and protect their trademark rights.
If your company is considering entering into a trademark license agreement or needs guidance on its registration, contact us.