Licensing a trademark allows third parties to use your registered sign under agreed conditions. We explain the requirements, recordal with the INPI (Argentina’s National Institute of Industrial Property), and the essential clauses.
A trademark license agreement is the agreement under which the owner of a registered trademark authorizes another person or company to use it under specific conditions: certain goods or services, a territory, a term. It is a way to expand a brand’s commercial presence without opening your own branches or investing directly.
A license does not transfer ownership: the owner remains the legal holder and only grants rights of use to the licensee. If what you want is to transfer the trademark, that is an assignment.
Elements of the agreement
- Territorial and temporal scope.
- Authorized classes and goods/services.
- Product quality and licensor control.
- Royalty or other consideration.
- Sublicensing and assignment.
- Termination for breach.
Recordal with the INPI
Recording the license agreement is not mandatory in every case, but it is key to making the agreement enforceable against third parties and to ensuring that the licensee’s use benefits the owner in the event of cancellation actions for non-use.
Argentine law does not require the license to be recorded for the agreement to be valid between the parties: if both sign it and comply with it, the agreement is valid. But recording it with the INPI has concrete advantages.
Benefits of recording the license
- Legal certainty: a recorded agreement officially proves that the use is authorized and prevents disputes with other licensees or with third parties who challenge it.
- Transparency toward third parties: the relationship becomes public. If someone tries to register something similar or to use the trademark without permission, it is clear who has the right of use and under what conditions.
- Tax benefits for licenses from abroad: when an Argentine company pays royalties to a foreign licensor, recordal under Technology Transfer Law No. 22,426 is what allows those payments to be deducted for income tax purposes.
How a license agreement is recorded
It is a procedure before the INPI. The main requirements are:
- An agreement signed by both parties.
- If the agreement was signed abroad: an apostilled copy and a legalized certified translation by a sworn public translator.
- A sworn declaration.
- Documents proving who signs on behalf of each company.
- Payment of the corresponding fee.
An example
Suppose an Argentine coffee shop chain obtains a license for a foreign coffee brand to use it in the country for five years, in exchange for a percentage of sales. If they record the agreement with the INPI under Law No. 22,426, the local company can deduct the royalties it pays abroad from its income tax. And if another business starts using the trademark in Argentina, the recorded agreement serves as evidence to stop the unauthorized use.
Franchises
A franchise system combines a trademark license with know-how, an operations manual, and ongoing assistance. It is wise to address IP, competition law, and tie-in regulations from the outset.
We advise on agreements and recordals. Licensing and franchising →
So, is recordal mandatory?
It is not mandatory, but it is advisable: it protects both parties, provides transparency, and can generate tax advantages when there is a foreign licensor. If you are about to sign a license, it is best to draft it with professional advice and to evaluate recordal from the start.
Keep reading: Franchise agreements in Argentina · Software licenses · Trademarks for sale: a world in motion
