The registration of license agreements before Industrial Property Offices has different effects around the world. In many countries, this registration is required in order to grant the agreement of effectiveness against third parties. In order to prove the use of a trademark in a cancellation action by a local distributor, the agreement must be registered.
In Argentina, this registration, however, is not required in order to prove the existence of the agreement. Of course, it does give a date as of which we can be sure that said agreement was valid and in full effect, but this is not required.
What is the advantage of registering a license agreement before the IP Office, then? Is it really worth going through a procedure such as the registration?It is, at least from a purely economic point of view. The Argentinian law grants the registrant of a license agreement a significant tax exemption. Article 93 of the local Income Tax Law foresees an exemption of either 60 or 80% of what is paid for said tax, depending on what is licensed. This can be a considerable amount.
Below, a short list of what can be registered, as the law has some limitations:
- Only agreements regarding technical assistance, know-how, or Industrial Property rights (Trademarks, Patents, Industrial Models or Designs) licensing can be registered;
- Agreements for the acquisition of products or software license are excluded from registration;
- The agreements must include a consideration from the licensee. Gratuitous licenses are not registrable.
If the agreement complies with these requirements, it can be registered before the IP Office, which will issue the corresponding tax exemption certificate.
Consequently, in a country where the tax pressure is as high as in Argentina, it is recommendable to register these agreements, in order to diminish the tax burden and make the local operation more profitable, for both parties.