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Taxing the Trade of the Trade Mark


Affiliations
1 J Sagar Associates, Gurugram — 122 009, Haryana,, India
2 Saikrishna & Associates, Delhi — 110 003,, India
3 University School of Law and Legal Studies, GGSIP University, Dwarka, Delhi — 110 078,, India
 

Trade marks generate recognition to businesses by providing and protecting their distinctive features, among others, in a competitive market. Trade marks, being intangible property, can be transferred to third parties by various modes like assignment/ transmission/license. Since, trade marks have the potential to be commercially exploited and thereby attract tax (direct and/or indirect) on its commercial exploitation. This paper highlights the various modes through which trade marks can be commercialised and the implication under both direct and indirect taxation of such commercialisation. The paper also discusses recent issues with respect to the taxation of the income generated from the transfer of trade marks.

Keywords

Trade mark, Economic Rights, Commercial Exploitation, Taxation, Royalty, Income Tax, GST.
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  • Meghraj Biscuits Industries Ltd v CCE, (2007) 3 SCC 780.
  • Ramdev Food Products Pvt Ltd v Arvind bhai Rambhai Patel & Ors, (2006) 8 SCC 726.
  • Section 2(m) of the TM Act.
  • Taj Mahal Palace Hotel and the BSE Building.
  • Mary Cohr Store Layour.
  • Yahoo’s yodel.
  • Section 2(1)(e) of the TM Act.
  • Section 2(1)(g) of the TM Act.
  • Section 2(1)(zg) of the TM Act.
  • CS(COMM) 133/2022, dated 26 July 2022.
  • Section 2(1)(zc) of the TM Act.
  • (2008) 36 PTC 131 (IPAB).
  • BDA Ltd v State of Uttar Pradesh, (1996) IPLR 93.
  • Section 37 of the TM Act.
  • Section 39 of the TM Act.
  • (1859) 28 LJ Ch 841.
  • (1970) 1 SCC 248.
  • (1981) 2 SCC 460.
  • (2002) 3 SCC 65.
  • Section 42 of the TM Act.
  • Section 43 of the TM Act.
  • Section 44 of the TM Act.
  • Section 40 of the TM Act.
  • Section 41 of the TM Act.
  • Singhal S, Agrawal A & Sakthivel M, Commercializing Copyright–A Taxing Event for the Copyright Owner? Journal of Intellectual Property Rights, 27(4) (2022) 290.
  • Section 2(24) of the IT Act.
  • Section 4 of the IT Act.
  • Section 2(31) of the IT Act.
  • Section 5 of the IT Act.
  • Section 6 of the IT Act. For instance: A company is a resident in India under the IT Act in a FY when either (a) it is an ‘Indian company’; or (b) its ‘place of effective management’. The phrase ‘place of effective management" means ‘a place where key management and commercial decisions that are necessary for the conduct of business of an entity as a whole are, in substance made’.
  • Section 5(1) of the IT Act.
  • Section 5(2) of the IT Act.
  • Section 2(45) of the IT Act.
  • CIT vBhagwan Broker Agency [1995] 212 ITR 133 (Rajasthan).
  • CIT v Manmohan Das [1966] 59 ITR 699 (SC).
  • Section 2(13) of the IT Act.
  • Section 37(1) of the IT Act.
  • Section 43(6)(c) of the IT Act.
  • Section 2(11) of the IT Act. It means a group of assets falling within a class of assets comprising either (a) tangible assets, or (b) intangible assets, being know-how, patents, copyrights, trademarks, licences, franchises or any other business or commercial rights of similar nature, not being goodwill of a business or profession, in respect of which the same percentage of depreciation is prescribed.
  • Section 32(1)(ii) of the IT Act read with Rule 5(1) of the Income Tax Rules, 1962 (“IT Rules”) and Part B of Appendix I of IT Rules.
  • Section 56(1) of the IT Act.
  • Section 57(iii) of the IT Act.
  • Section 194J(1) of the IT Act.
  • Explanation 2 to Section 9(1)(vi) of the IT Act.
  • Section 115A(1)(b) of the IT Act.
  • Plus applicable surcharge and cess
  • As per Explanation (c) to Section 44DA of the IT Act, the term ‘permanent establishment’ is defined to include “a fixed place of business through which the business of the enterprise is wholly or partly carried on”.
  • Section 44DA of the IT Act.
  • Section 90(2) of the IT Act.
  • Section 48(1) of the IT Act.
  • Section 2(14) of the IT Act.
  • As per H. Mohmed & Co. v. CIT [1977] 107 ITR 637 (Gujarat), a ’stock-in-trade’ is “something in which a trader or a businessman deals; whereas his capital asset is something with which he deals. It is possible that one and the same commodity may in the case of one assessee be his stock-in-trade, whereas in the case of another assessee it may be his capital asset. For example, in the case of an assessee who carries on the business of buying and selling land, land may be his stock-in-trade but in the case of an assessee who has invested his savings in land and gets income from the land or the structures put up on the land, the land is his capital asset. Therefore, one of the indications for deciding as to what is stock in-trade is whether a particular assessee is buying or selling the commodity or whether he has merely invested his amount with a view to earn further income or with a view to carry on his other business. It may be pointed out that ‘trade’ means that particular business activity where the person engaged in the profession buys or sells. All businesses may be carried on for the purpose of earning a profit but that particular kind of business where the businessman buys and sells a commodity can only be designated as ‘trade'.” [Emphasis supplied]
  • Section 2(42A) of the IT Act.
  • [2011] 11 taxmann.com 374 (Delhi).
  • Second proviso to Section 48 of the IT Act.
  • Plus applicable surcharge and cess. Section 112(1) of the IT Act.
  • [1987] 168 ITR 733 (Bombay).
  • Section 55(2)(a) of the IT Act.
  • Section 50 of the IT Act.
  • Explanation 2 to Section 9(1)(vi) of the IT Act.
  • ‘GST laws collectively refers CGST Act and Integrated Goods and Services Tax Act, 2017 (“IGST Act”).
  • Section 9(1) of the CGST Act and Section 5(1) of the IGST Act.
  • Section 7(1) of the CGST Act.
  • Section 2(52) of the CGST Act.
  • Section 2(102) of the CGST Act.
  • Schedule II to the CGST Act.
  • Entry 5(c) of Schedule II to the CGST Act.
  • Serial No. 452P of Notification No. 1/2017 Central Tax (Rate), dated 28-6-2017 read with Notification No. 13/2021 Central Tax (Rate), dated 27-10-2021.
  • Serial No. 17 item (ii) of Notification No. 11/2017 Central Tax (Rate) dated 28-6-2017 read with Notification No. 6/2021 Central Tax (Rate), dated 30-9-2021.
  • USV (P.) Ltd., In re, [2021] 133 taxmann.com 296 (AAR - MAHARASHTRA), the question of classification of transfer of registered trademarks as either supply of goods or supply of services under GST law was raised. However, based on the certain procedural the application for advance ruling was rejected as being not maintainable under section 95 of CGST Act.
  • Union of India v CUB Pty Ltd. (SLP(C) No. 19060/ 2017).
  • [2016] 71 taxmann.com 315 (Delhi)
  • CIT v Sony Mobile Communications India Pvt. Ltd. (SLP(C) No. 12971/2020) against the decision of Hon’ble Delhi High Court decided on 16th March 2015. CIT v Maruti Suzuki India Ltd. (SLC (C) No. 22181/2016) against the decision of Hon’ble Delhi High Court decided on 11th December 2015.
  • Chapter X of the IT Act.
  • Raffaele Petruzzi, GiammarcoCottani and Michael Lang, Fundamentals of Transfer Pricing: Industries, Regions, New Technologies, and Other Topics, Chapter 25 (Kluwer Law International BV 2022).
  • OECD (2022), OECD Transfer Pricing Guidelines for Multinational Enterprises and Tax Administrations 2022, OECD Publishing, Paris, https://doi.org/10.1787/0e655865-en.
  • Section 92 of the IT Act.
  • Section 92B(1) of the IT Act.
  • Section 92A(1) of the IT Act.
  • Section 92A(2) of the IT Act.
  • Some of the instances of such deeming fiction are: a. one enterprise holds, directly or indirectly, shares carrying not less than 26% of the voting power in the other enterprise; or b. any person or enterprise holds, directly or indirectly, shares carrying not less than 26% of the voting power in each of such enterprises; or c. more than half of the board of directors or members of the governing board, or one or more executive directors or executive members of the governing board of one enterprise, are appointed by the other enterprise; or d. more than half of the directors or members of the governing board, or one or more of the executive directors or members of the governing board, of each of the two enterprises are appointed by the same person or persons; or e. the manufacture or processing of goods or articles or business carried out by one enterprise is wholly dependent on the use of know-how, patents, copyrights, trademarks, licences, franchises or any other business or commercial rights of similar nature, or any data, documentation, drawing or specification relating to any patent, invention, model, design, secret formula or process, of which the other enterprise is the owner or in respect of which the other enterprise has exclusive rights.
  • United States Court of Appeals, Ninth Circuit decided on April 11, 2002 (Nos. 99-71580, 00-70008, 99-71592 and 99- 71675).
  • 2013 SCC OnLine ITAT 483.
  • Maruti Suzuki India Ltd. v CIT, [2015] 64 taxmann.com 150 (Delhi).
  • Para 6.34 to the OECD Transfer Pricing Guidelines.
  • Para 6.71 to the OECD Transfer Pricing Guidelines.
  • ITA No. 7194/Mum/2017 decided on 23rd August 2019.
  • Karol Dziwinski, The DEMPE Concept and Intangibles: Definition, Practical Approach and Analysis in the Context of Licence Model (Chapter 3, Section 3.3.4) (Kluwer Law International BV 2022).
  • [2014] 52 taxmann.com 215 (Delhi).

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  • Taxing the Trade of the Trade Mark

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Authors

Shiv Singhal
J Sagar Associates, Gurugram — 122 009, Haryana,, India
Anjali Agrawal
Saikrishna & Associates, Delhi — 110 003,, India
M Sakthivel
University School of Law and Legal Studies, GGSIP University, Dwarka, Delhi — 110 078,, India

Abstract


Trade marks generate recognition to businesses by providing and protecting their distinctive features, among others, in a competitive market. Trade marks, being intangible property, can be transferred to third parties by various modes like assignment/ transmission/license. Since, trade marks have the potential to be commercially exploited and thereby attract tax (direct and/or indirect) on its commercial exploitation. This paper highlights the various modes through which trade marks can be commercialised and the implication under both direct and indirect taxation of such commercialisation. The paper also discusses recent issues with respect to the taxation of the income generated from the transfer of trade marks.

Keywords


Trade mark, Economic Rights, Commercial Exploitation, Taxation, Royalty, Income Tax, GST.

References