Country Index: Licencing Special Originally published on www.country-index.com
License agreements are the main legal tool available for business partners located in different countries to appropriately secure their own economic interest and legal rights including the enforcement of the licensed trademarks against infringing third parties.
In this brief we are going to mentioned some of the most relevant factors to bear in mind when dealing with these sorts of agreements, which may be included in others like franchising, distribution and the like.
Mandatory formats of licensing agreements.
According to the locals Civil Code and trademark law, license agreements of trademarks "per se" are not subject to any specific formal requirement in order to be valid and binding for the parties.
However, Article 1193 of Civil Code, firstly, establishes that, in relation to proof purposes, agreements having a commercial value higher than $10,0001 must be done in writing, and, secondly, prohibits the use of witnesses in order to prove the existence of the agreement.
Therefore, a license agreement is binding for the parties since the date of its execution without the need to comply with any other requirement but proving its existence is indeed subject to certain limitations.
License of unregistered trademarks.
In Argentina, where as it happens in almost all other countries worldwide trademark rights are acquired based on the first to file system, unregistered or "de facto" marks have been increasingly protected by case law since a couple of years ago but the scope of such protection varies according to particular legal standards to be applied in each particular case.
Thus, although licensing unregistered trademarks is an uncommon legal strategy, in certain cases it may be an unexpected consequence imposed by business reality, especially considering today's global economy and the exponential growth of commercial activities on the Internet.
Overall, it is worth pointing out that for most industries there is no local general or particular laws prohibiting the license of unregistered trademarks. Yet, the risks and problems of doing so clearly outweighs its benefits so at least filing a trademark application before entering a license agreement is must from both legal and business points of view.
Recordal of licenses with INPI2.
Recording a trademark license agreement with INPI is not necessary for the contract to have full effects for its parties nor does...