The leasing agreement as an instrument to purchase trademark.
In recent years several countries around the world–Argentina in a more limited way–have begun to use certain intangible and intellectual property rights as instruments of business/commercial financing. Though previous securitization operations have existed, it might be said that securitization of intellectual property began in 1997 with the issuance of the “Bowie Bonds” (supported by the royalties from 25 albums of singer David Bowie). Currently, this technique has been extended to film rights, artistic and literary expressions, trademark, and patents. The increased improvement and acceptance of the methods of valuation of intellectual property by authorities and investors, as well as the growth of the global royalties market, has increased the potential of these operations.
The trademark leasing agreement:
In the present article, I discuss some considerations related to one of the modalities of securitization that has taken off in our country with regards to trademarks: the leasing agreement. Art. 2 of Act 25.2481 foresee, specifically, the possibility of celebrating a leasing agreement for trademarks. However, it is not always useful or convenient under this agreement to purchase trademarks.
I believe that the leasing agreement of a trademark would have more relevance and interest if used in acquisitions of a trademark that is found to be related, associated, and/or linked to a product or certificate or authorization. In this case, the advantages of the contractual figure are the possibility of acquiring an intangible good (trademark) and a certificate or authorization of the product or service, without having to pay immediately the agreed amount.
Generally, the value for the combined acquisition of trademarks, certificates, and/or authorizations of products or services is not low. Subsequently, the demand is often for the total payment of the amount, which is an impediment for the realization of the business. Likewise, the buyer incurs the risk to pay an amount of money for a product, service, certificate, and/or authorization without
guaranteed success in that endeavor.
Accordingly, the leasing modality allows for payments in stages while the product or service is generating its own income. At the same time, there is a final date of
purchase for the mark and the certificate/authorization.
Furthermore, nothing prevents the existence of an internet domain as a complement of the mark and the certificate/ authorization linked to the agreement.
It is possible that the lessee will pay a larger amount than if he or she had purchased the good or service in one payment, but financially, it may be more convenient for him or her to make lower payments. This also allows him or her at the same time to be generating income for the development and sale of the product or service
The Leasing Agreement, with the option to purchase, protects (with regards to an ordinary license to use agreement) everything that had been invested and developed in publicity and the advertising of
the product. The lessee’s investment in the good (trademark, certification/authorization, domain, etc.) will not be in vain because later, it could become exclusively his property.
An agreement with the aforementioned characteristics should consider the object, the mark, the certificate, the domain, etc. Even though the lessee can develop and commercialize the good during the term of
the agreement and until he or she exercises the option to purchase or the term of the agreement expires, the property is still the lessor’s. The lease amount can be established as a percentage of the profit’s sales of the goods or services identified with the mark, which can vary from time to time.
In addition, with regards to the lease amount, it is convenient to determine precisely and clearly who will be in charge of the maintenance costs of the “good” and if said costs will be discounted from the established lease amount. Regarding the “good,” the lessee acquires the right to its exclusive use and possession and it would be necessary to determine the territory (nationally or internationally). The lessee would be responsible for the administration of the trademark or any of its variants.
The fact that there is a possibility that the lessee may register new trademarks and/or variants of the existing one with the collaboration of the lessor is important for the development of the business and the possibility of the launch of new products or services. The contract must establish that those new variants and/or formulations of the product or service that the lessee develops are part of the same one. Further, the lessee assures the possibility to use exclusively the good to promote and commercialize the product or services.
Likewise, and in order to comply with article 14 of Act 25.2482, the lessee should be able to exercise the option to purchase the good (as well as object of this leasing agreement) in a determined term. As part of this clause, the leasing agreement must establish the term in which the lessee may exercise the option to purchase and the subsequent price of the good.
In case the lessee decides not to exercise the option to purchase, he or she must cease the use of the good and return the good when the agreement term expires or immediately after its termination. This return of the good includes the other trademarks variants or alternatives that the lessee realized during the term of the agreement.
Registration is necessary to give the contract publicity not only because of what is established in art.11 of the Act but because it is the way the lessee can maintain the agreement and obtain privilege in case the lessor declares bankruptcy as established in art.11 of Act 25.2483. It is necessary to emphasize that the last part of this article has been eliminated in the Civil and Commercial Code of the Nation (art. 1237).
Currently, a series of instruments, mechanisms, forms, and agreements exist and are in use in other countries for the financing of companies and for the purchase of goodsof intellectual property and other goods. The leasing of trademarks is not an agreement developed in our country and I think that many opportunities exist for it to turn out to be a very ductile instrument to orchestrate and to perfect
the purchase of products and/or associate trademarks.
I believe that there is much to develop with the use of intellectual property goods in Argentina and it will be a great challenge in years to come to find new mechanisms and instruments that will allow business
and financial institutions to obtain credit, acquisition of trademarks and products, over these valuable and underappreciated goods.
But this development in the use of intellectual property rights in the operations of securitization will be possible when the legal framework provides the protection to the legitimate holders of these important
rights over the unscrupulous third parties that wrongfully use them.