Argentina: Licensing Trademarks And The Benefits From Recording Such Agreements In Argentina

Last Updated: 14 December 2016
Article by Mariano Municoy

License agreements have become an important legal tool available for business partners located in the same or in different countries to appropriately secure their own economic interest and legal rights involved in their transactions. Given the growing importance of licensing of intellectual property rights (IPR) and particularly the value of trademarks in a world dominated by intangible assets, in this column we are going to tackle some of the most relevant factors to bear in mind when dealing with these sorts of agreements in Argentina, which may also include other agreements such as franchising, and distribution agreements. Although the terms of a license are mostly set up and binding for the parties who agree to it, we also will discuss some of the issues related to the agreement's enforcement against third parties that may be infringing those rights.

No Mandatory Formalities in Argentina

According to the Civil and Commercial Code (CCC) as well as Argentine trademark law No. 22,362 (TM law), the license of a trademark is an agreement "per se" and not subject to any specific formal requirement in order to be valid and binding for the parties. It is worth pointing out that the CCC became effective in August 2016 and has no provision similar to Article 1193 of the former Civil Code, which: (1) established that with regard to proving the validity of the agreement, agreements having a commercial value higher than $10,000 had to be solidified in writing, and (2) prohibited the use of witnesses in order to prove the existence of the agreement. Therefore, a current license agreement is binding for the parties as of the date of its execution without the need to comply with any other requirement in Argentina.

License of Unregistered Trademarks

In Argentina, as it happens in most other civil law jurisdictions, trademark rights are acquired based on the first-to-file system instead of the first-to-use system in place in the United States and other common law jurisdictions.

Unregistered or "de facto" marks, however, have been increasingly protected by federal judges for the past couple of decades but the scope of such protection varies according to the particular legal standards that are applied on a case by case basis. Thus, although licensing unregistered trademarks is an uncommon legal strategy, in certain cases, it may be an unexpected consequence imposed by business realities, especially considering today's exponential growth of commercial digital activities on the Internet and such.

Overall, it is worth pointing out that for most industries there is no local general or particular law prohibiting the license of unregistered trademarks. The risks and problems of doing so, however, clearly outweigh the benefits so at least filing a trademark application before entering a license agreement is preferred from both the legal and business points of view.

Recordal of Licenses with INPI

Recording a trademark license agreement with Instituto Nacional de Propiedad Industrial (INPI), which is the Argentine Trademark and Patent Office, is not necessary for the contract to have full effects for its parties. Regarding whether such recordal would provide "erga omnes" or "towards all" effects against third parties taking into account resolution No. 114 issued by INPI in 2014, most scholars and practitioners believe that it is still not possible to enforce the content of a recorded license against third parties with no relationship with the parties. This is a major difference from some other Latin American countries where this sort of recordal is necessary for them to have "erga omnes" consequences.

The situation is different regarding the recordal of assignment or transfer of marks, which, according to Article 6 of the TM Law, is necessary in order for that act to have "erga omnes" effects and thus to be enforceable against third parties. Despite the limited benefits of recording a license agreement with INPI, it still provides certain benefits, such as facilitating the proof of its existence as well as the date of its execution.

In any event, the most important benefit derived from the recordal of a license agreement arises in cases of license agreements between foreign and local parties, as then they may be able to claim important tax benefits. The tax treatment of payments to non-residents originating from international transactions with intangible assets is regulated by Sections 13 and 93 of local Income Tax Law (hereinafter ITL) as well as by the Law of Transfer of Technology (hereinafter LTT) dated from 1981 (Law No. 22,426). [Section 13 ITL regulates the nonrebuttable presumptions applying to determine the local net income originated in the exploitation of: movies, video and audio works recorded abroad; radio and TV transmissions originated abroad; as well as any foreign means to broadcast, reproduce, transmit and diffuse images and sounds.]

Overall, Section 93 ITL establishes different non-rebuttable presumptions over the net income obtained by the non-resident transferring technology and trademarks to Argentina. Said presumptions also generate the effective withholding tax rates that are to be retained by the local party in regard to the payments to non-residents originating from:

  • Section 93 (a)(1)—technical assistance, engineering, or consultant services;
  • Section 93(a)(2)—licensing and/or assignment of patents and other industrial rights such as trademarks, industrial designs, etc, which are not included in Section 93(a)(1); and
  • Section 93 (c)—licensing and/or assignment of certain copyrights including software but not those mentioned in Section 13 ITL.

Briefly, when both parties (the local and the non-resident one) comply with the requirements set forth by the ITL and the LTT and a license agreement is recorded with INPI then they can obtain the benefits of a smaller effective rate regarding their due local income tax and the possibility to deduct certain expenses from their due local income tax.

Recordal of the Trademark Rights with Customs

Since 2007 it is possible to record granted trademark rights with the Argentine Customs under a system called "Asientos de alerta," which is a voluntary procedure to help trademark owners and public officials fight against international illicit trade and particularly counterfeiting. Once a trademark is recorded with Customs, the local representative (appointed by the trademark owner with Customs) is informed of any importation or export of goods bearing the same or a similar mark carried out by an unauthorized party and suspected of infringing the recorded trademark rights. Once notified about the transaction, the trademark owner is given the chance to inspect the goods, which in the meantime are retained for the term of three working days.

If trademark fraud is detected or suspected, the corresponding judicial and administrative procedures may be initiated by the trademark owner and/or by Custom's Officials (given that they have the public duty to denounce any illicit trade or goods that they know of). This procedure with Customs is independent from the act of recording license agreements with INPI, but in the real world there may be situations where their use overlaps. In any case, both provide trademark owners with maximum legal certainty and control over their business interest and legal rights, so their use should be carefully considered.

Importance of Entering into a License When Trademarks Are Owned by a Foreigner

If the licensed mark is owned by a foreign company or individual who exclusively licenses it in Argentina to another entity or individual, it may happen that a third party files a cancellation action alleging the lack of use of the mark by its owner. Then, depending on the terms of the license agreement, both the licensor and the licensee may be able to defend the trademark from the cancellation action by proving that the mark had been genuinely used in Argentina within the required period,1 as long as the licensee is authorized to do so, which might be assumed in cases of related companies (foreign parent and local subsidiary).

Thus, having a license agreement in writing is very useful in order to avoid the risks and costs of proving the existence and scope of such authorization. Likewise, according to local case law, the owner of a mark can benefit from the use performed by a licensee to repel a cancellation action as long as the registered and the used trademarks are the same (very small variations of the used mark may still benefit the owner of the registered and licensed mark attacked by a cancellation action for lack of use).

Last but not least, the authorization should be granted before the cancellation action is filed.

Observance of Antitrust Regulations When Drafting License Agreements

The compliance with local antitrust regulations, which are not set forth in trademark but in antitrust law No. 25.156, is a factor becoming more and more relevant due to growing numbers of antitrust actions brought up by local authorities as well as by third parties.

Although there has not been a case dealing directly with anticompetitive conduct directly involving the license of trademark rights, it is worth mentioning the existence of some cases that indirectly tackled transactions with such rights, particularly when conducting legal analysis of merger and acquisitions, which go beyond the space available herein.

Yet, bearing in mind the potential infringement of antitrust regulations is a must when drafting license agreements of trademark and other IPR.


For all of these reasons, keeping the terms of a license agreement in written form is always advisable in order to avoid eventual problems for the parties involved, including enforcing and defending trademark rights against third parties. In those cases in which a foreign entity or individual owing a trademark filed or registered in Argentina is interested in receiving tax benefits related to the local income tax, then the license agreement must be recorded with the Direction of Transfer of Technology that depends on the INPI. The same happens when a local licensee wants to enjoy certain accounting and tax benefits.


1. Anytime after the fifth year counted from the registration date but always before a cancellation action is filed

Originally published by The Licensing Journal, November/December 2016.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions