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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Trademarks

Ownership / licenses

Argentina

Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

Australia

A trademark registration grants exclusive rights in the trademark to use, license or sell the trademark within Australia for the goods and services for which it is registered. This means the owner of a registered trademark can prevent others from using the mark or a deceptively similar mark in relation to the same or similar goods or services.

Licenses need not be recorded to be effective, and there is no specific provision allowing recordal on the Trade Marks Office Register.

Austria

Trademark owners may grant licenses. A license may, but does not need to, be recorded in the trademark register.

Belgium

The exclusive rights conferred by a trademark are acquired by virtue of registration to the registration holder. Thus, no protection to trademark owners is guaranteed without registration, unless such unregistered trademarks are well-known. There are no specific provisions in Belgian law with respect to co-ownership of trademarks.

Independent of the transfer of all or part of a business, a trademark may be transferred with respect to all or some of the goods or services for which the trademark was filed or registered. A trademark may also be the subject of a license for all or some of the goods or services in respect of which the trademark was filed or registered.

Brazil

Ownership of a trademark is obtained when its registration is validly granted. The owner has the exclusive right to use the trademark in Brazil, to assign the rights of the trademark or license its use.

Trademark registrations or applications may be assigned or licensed provided the assignee fulfills the legal requirements to be the owner of the registration or application.

License agreements should always be recorded before the INPI, in case there are royalty payments made from a Brazilian entity to another entity abroad. In addition, local tax deductibility will be limited by 1 percent as set forth by Resolution No. 436/58.

Canada

Trademarks, whether registered or unregistered, can be assigned or licensed. There is no requirement for licenses to be registered.

Owners granting licenses to trademarks must include appropriate quality control language in order to preserve the distinctiveness of the mark and avoid possible loss of the mark. If trademark use is licensed, and public notice is given of the license and of the identity of the trademark owner, the Trademarks Act provides a rebuttable presumption that the trademark owner has control over the character and quality of the goods or services to which the trademark attaches.

Chile

Acts performed over Industrial Property rights shall be recorded in a private document, subscribed before a Notary Public, and a note should be included in the respective registry.

China

A trademark license agreement should be recorded with the China National Intellectual Property Administration. There are some clauses that must be included in trademark licenses, such as those in respect of quality control and indication of licensee's name and the place of origin.

Colombia

The Resolution foresees the impossibility of registering identical or similar trademarks representing the same goods or services when the owners enter into an agreement that allows the existence of trademarks in the same register. Such agreement is executed to prevent the confusion among the public and duly inform the consumers.

The registration of trademarks may be licensed but it has to be done in writing and registered with the SIC. In this regard, the owner may authorize third parties to use and exploit the registered trademark.

The registration of the trademark does not grant the right to the owner to prohibit third parties from using the trademark for publicity or comparative advertising, provided that it is used in good faith.

If the contact details of the owner change during the license, the SIC must be informed of the change.

Czech Republic

Joint ownership is permissible; license cannot be granted by one joint owner without consent of the other joint owner(s). The relationship between the co-owners can be amended by an agreement.

Denmark

Any natural or legal person can apply for and own a trademark or obtain a trademark through use.

Owners may grant an exclusive or non-exclusive license to a registered mark for some or all of the goods or services for which it is registered and for the whole part or part of the country.

Licenses may be registered in the Danish trademark registry or in the European Union Intellectual Property Office EUIPO's register over European Union trademarks. However, registration of licenses regarding Danish trademarks is not compulsory and does not affect their validity (registration is necessary in relation to EU-trademarks).

Finland

Any natural or legal person can register a trademark. The registration owner has the exclusive right to use, transfer or license the trademark.

France

A trademark owner is free to transfer or license any and all of its rights under the trademark to a third party.

Joint ownership is possible.

A trademark may be used as a security (eg, mortgage).

Germany

Ownership can be transferred by contractual agreement. Joint ownership is possible. A transfer of ownership does generally not affect licenses that were granted before the transfer.

Licenses may be granted on an exclusive or a non-exclusive basis, also to multiple parties. In joint ownership situations, licenses may generally only be granted with the consent of the other co-owners. Licenses may be granted for a certain part of the registered goods or services or, in case of Union Trademarks, parts of the protected territory only. Licenses do not have to be registered.

Hong Kong

Joint ownership is permissible. Subject to agreement in the contrary, each of the co-owners is entitled to an equal, undivided share in the trademark and is entitled to exploit the trademark for his own benefit. A license can only be granted with the written consent of all co-owners unless they have agreed otherwise. A license, which may be general or limited, is not effective unless it is in writing and is signed by or on behalf of the grantor.

Hungary

Any and all legal or natural persons are entitled to obtain trademark protection irrespective of whether they carry out business activity. It is also possible to obtain trademark protection jointly.

In case more persons apply for the application of a trademark jointly, the trademark protection belongs to them – unless otherwise indicated – in equal proportions.

In case more persons are entitled to a trademark, they are entitled to dispose over their portion individually. Co-owners are entitled to pre-emption rights regarding the portion of another party towards third persons.

India

A registered trademark may be assigned or transferred, with or without the goodwill of the business concerned, and in respect either of some or all the goods or services with regard to which the trademark is registered. Associated trademarks may only be assigned or transmitted as a whole.

Indonesia

Trademark law acknowledges the priority right as long the applicant has filled the trademark application in the country which is a member of Paris Convention for the Protection of Industrial Property or Agreement Establishing the World Trade Organization. The holder of the trademark may grant a license permitting a third party to use the mark under a license agreement. The law stipulates that all licenses granted by the holder of the trademark must be recorded in the General Register of Marks and published in the Official Gazette of Marks.

Trademark license agreement can be duly recorded and the application for recording can be made electronically or in paper format. Recording is valid for a duration of 5 years and can be renewed. Minister Regulation No. 8 requires that copy of the trademark license agreement, copy of the trademark registration certificate, original power of attorney and proof of payment to be submitted. Applicant is also required to provide a statement letter stating that the object of the license agreement is still valid, shall not cause any losses to the national economy, shall not inhibit the development of technology and not in conflict with the laws and regulations, morality and public order.

Ireland

Joint ownership of trade marks is permitted. It is possible to licence trade marks on either an exclusive or non-exclusive basis.

There are some recordal requirements in relation to  assignments, licences and certain other instruments affecting registered trademarks under Irish trade mark law.

Israel

The ownership is determined by the identity of the registrant with the Israeli Trademarks Office.

For a license to be binding, it must be recorded with the Israeli Trademarks Office. Sub-licenses are not recognized by the Trade Marks Ordinance (New Version) 1972, but the Israeli Trademarks Office has indicated that sub-licenses can also be registered.

Italy

Anyone, being a natural person or a legal entity, who uses or proposes to use a trademark for products and services, can obtain the registration of a trademark (non-use of the trademark within five years from the date of registration can cause the trademark to lapse).

The trademark can be transferred without the company or without a branch thereof, provided that no deception is caused to the consumer; trademarks can be the object of a license (including non-exclusive licenses) for all or part of the products or services for which it was registered.

Japan

Exclusive and non-exclusive licenses and transfers of trademark are recognized.

Joint ownership is permissible. Exclusive or non-exclusive licensing of the trademark, transferring or establishing pledge on the share of the trademark requires consent from all joint owners of the trademark.

Luxembourg

The exclusive rights encompassed by a trademark are obtained by registration. An application for registration can be filed by anyone (private persons, public authorities, companies) and does not need to be filed by the enterprise that will commercialize the trademark.

No protection to trademark owners is guaranteed without registration, unless such unregistered trademarks are well-known.

No specific provisions are foreseen in Luxembourg law with respect to co-ownership of trademarks.

Independently of the transfer or all or part of a business, a trademark may be transferred for all of some of the goods or services for which the trademark was filed or registered. A trademark may also be the object of a license for all or some of the goods or services for which the trademark was filed or registered.

Mexico

In order to perfect the title, registration of the trademark is required before the IMPI.

Trademark registrations and registrations in process may be encumbered, transmitted or licensed pursuant to commercial general provisions. Registration of the agreement is required before the IMPI to perfect the encumbrance, transmission or license.

Netherlands

The exclusive rights conferred by a trademark are acquired by virtue of registration to the registration holder. Thus, no protection to trademark owners is guaranteed without registration, unless such unregistered trademarks are well-known to the public. However, if the owner of an unregistered trademark is confronted with the registration by a third party of a similar sign for similar goods or services, he can annul the registration on grounds of bad faith if the applicant had knowledge of the previous use.

No specific provisions are in the laws of the Netherlands with respect to co-ownership of trademarks. However, it is generally understood that the exercise of the right of co-ownership of trademarks is governed by the rules regarding community (which is regulated in the Dutch Civil Code).

Independently of the transfer of all or part of a business, a trademark may be transferred in respect of all or some of the goods or services for which the trademark was filed or registered. A trademark may also be the subject of a license for all or some of the goods or services in respect of which the trademark was filed or registered as well as for a specific territory. To be valid against third parties, the license will need to be recorded in the register. However, if a license has been recorded, registration of the trademark may be surrendered only at the joint request of the holder of the trademark and the licensee. The same applies for cancellation of the license in the register.

New Zealand

Trade mark owners can assign or license their trade mark rights. It is advisable to include appropriate quality control language when licensing a trade mark in order to avoid dilution (or loss) of the mark and to preserve the mark's reputation, although licenses are not required to be written.

Norway

Any natural or legal person can apply for and own a trademark or obtain a trademark through use.

The owner of the trademark has the exclusive right to use, transfer or license the trademark.

Poland

Under Polish law, there are three types of joint trademark ownership:

  • Simple joint ownership by several commercial entities (such use must not create confusion for the public)
  • A collective trademark (registered in the name of an organization and its affiliated companies)
  • Certification trademark (registered in the name of organization that may grant the right to trademark use to entities that meet established requirements)

For all types of trademark ownership, the rules of trademark use should be filed with the trademark application.

A trademark owner may transfer or license the ownership rights. This must be done in writing otherwise it will be null and void.

Licenses may be granted on an exclusive and non-exclusive basis. However, only the holder of an exclusive license (which has to be recorded in the trademark register- this applies in the case of Polish trademarks) may pursue claims for the infringement of the trademark, unless the license agreement provides otherwise. A licensee may grant a further license only upon the consent of the licensor (further sublicensing is prohibited). A license that does not limit the scope of trademark use is regarded as a license granting full rights as exercised by the trademark owner.

Portugal

Trademarks can be transferred in writing, wholly or partially, whether for financial reward or not.

Trademarks may also be licensed in writing, wholly or partially, whether for financial reward or not, on an exclusive or non-exclusive basis.

Transfer of ownership and licenses must be recorded in the Portuguese Institute of Industrial Property to be effective against third parties.

Romania

Owners may grant licenses to third parties, but there are no statutory requirements regarding specific clauses referring to appropriate quality control language in order to preserve and avoid dilution (or loss) of the mark.

Russia

A trademark can be transferred to a third party (legal entity or individual entrepreneur) by way of trademark assignment. A trademark can be the object of a license (including non-exclusive licenses) for all or part of the goods or services for which it was registered. The transfer of rights under both trademark assignment and licenses must be registered with the Rospatent.

Saudi Arabia

A trademark may be sold or licensed to a third party by the registered owner, in accordance with the requirements of the GCC Trademark Law.

Singapore

The owner of a trademark may authorize others to use their trademark by way of license or assignment. The licensing or assignment may be granted for all or only some of the goods or services covered by trademark registration or application.

Slovak Republic

The owner is a legal or natural person registered in the trademark register of the Industrial Property Office. The joint ownership of a trademark is allowed and governed by the Civil Code and the Act on Trademarks.

The trademark owner has the exclusive right to use the trademark in connection with the goods or services for which it is registered. The owner is entitled to use the sign ® together with the trademark. The owner may grant another person a license to his/her trademark. A license shall have legal effects towards third parties upon registration in the register of the Industrial Property Office.

South Korea

Joint ownership of trademarks is recognized. Both exclusive and non-exclusive licenses are available.

Spain

The registration of a trademark confers on its owner the exclusive right to use it in economic transactions.

Both an application and a trademark may be licensed for all or some of the goods and services for which the trademark is registered and for all or part of Spanish territory. The licenses may be exclusive or non-exclusive.

Sweden

Any natural or legal person can apply for and own a trademark.

The owner has the exclusive right to use or permit others to use the trademark.

Licenses may be registered in the Swedish trademark registry or in the European trademark office EUIPO's register over European Union trademarks. However, registration of licenses is not compulsory and does not affect their validity.

Switzerland

Co-ownership as well as collective trademarks are possible (marks for collective associations). Licenses for collective marks must be registered.

Taiwan

A trademark may be exclusively or non-exclusively licensed by the trademark owner for all or some of the designated goods or services for which it is registered and in a particular territory.

Joint ownership of a trademark is permissible and, unless the joint owners agree otherwise, each of the joint owners is entitled to exploit the trademark for his or her own benefit. However, any single owner of a trademark is not entitled to assign, entrust, license, pledge, abandon the trademark or to assign, entrust or establish a pledge on his or her own share of such trademark without the unanimous consent of all joint owners. If a joint owner abandons his or her share of a trademark, the abandoned share shall be allocated to the other joint owners according to the percentage of their respective shares in such trademark.

Ukraine

The exclusive rights with respect to a trademark may be subject to joint ownership. Relations between co-owners are regulated by an agreement between them. When there is no such agreement, each co-owner may use the trademark at its own discretion, however, all co-owners must consent to the grant of the license to the co-owned trademark.

The rights holders may grant or assign their rights to other parties through a license or an assignment agreement, which should be in writing.

The assignment of patent rights is subject to a mandatory registration with the Ukrainian IP Office.

United Arab Emirates

The UAE operates a mono-class system which means that a separate application must be filed for each trademark in each class of goods or services. The UAE follows the 10th Edition of the Nice Classification of Goods and Services. Applications for Class 33 are not accepted.

As a contracting party of the Paris Convention, the UAE is bound to follow the minimum standards that it sets. As such, in the UAE, a trademark owner has the right to claim priority from an earlier filed application. The priority period is six months from the filing date of the first application.

Article 17 Trademark Law grants trademark owners a higher level of protection of their rights when the following conditions have been satisfied:

  • The owner has used the mark continuously for no less than five years from the date of registration
  • No decision has been issued in which it is decided that the registered owner is not the owner of the mark

The protection that is granted is that no dispute may be raised against the ownership of the mark.

The court can make an order for the cancellation of a mark for non-use. The party/ies must prove that the mark has not been used for five consecutive years. Use of the trademark by a licensee is deemed to be “use” for the purposes of disproving a non-use claim.

Trademarks may be licensed in the UAE and any user of the trademark should be recorded as such at the Ministry of Economy. For recordal purposes, licenses must be made pursuant to a written and legalized contract. This means that the contract must be witnessed by a notary public. If the contract is made in the UAE it must be witnessed by a UAE notary. Licenses exercised outside of the UAE must be legalized up to the UAE embassy in that country and then stamped by the Ministry of Foreign Affairs in the UAE. If the license is not in Arabic it must be translated either by a UAE licensed translator or a foreign translator and legalized up to the UAE embassy before it can be used for official purpose in the UAE.

The term of the license must not exceed the term of the registration. All licenses are non-exclusive unless expressed to be otherwise.

United Kingdom

Both the UK registry (UKIPO) and EUTM registry (EUIPO) have a "first to file" system, though the registration may be refused or revoked if it conflicts with prior rights including unregistered rights.

There are certain advantages to be obtained from registering assignments or assignations and licenses, eg, binding third-party acquirers of the mark, but there is no strict requirement to do so.

When granting licenses, it is generally advisable to include quality control provisions to preserve the mark's reputation and distinctiveness, and controls on sublicensing.

United States

Owners granting licenses to trademarks must include appropriate quality control language in order to preserve and avoid dilution (or loss) of the mark.