2018 (2) TMI 236 - AT - Service Tax

Intellectual Property Service - transactions of transfer of right to use trade mark or brand name - liability of VAT or service tax? Held that - there are no universal tests for testing of levy of Sales Tax or Service Tax and each contract is to be examined with respect to its own terms. It is apparent from the agreement that, (i) No exclusive right to use the trade mark Swastik has been given to M/s New Sahyadri Industries Ltd. The appellants are free to give this trade mark to other even in the same territory. (ii) M/s New Sahyadri Industries Ltd. are not free to permit use of the trade mark to anybody else i.e. they cannot sub-license. If M/s New Sahyadri Industries Ltd. wish to permit to any other support for use then they have to seek permission of the appellant. The trade mark cannot be assigned to anybody by M/s New Sahyadri Industries Ltd. While the agreement is for a period of 10 years, both parties have option to terminate the agreement by giving the notice of three months - The agreement in the instant case is an agreement of permissive use of the trade mark Swastik and no transfer of right to use of the said trade mark - the said transaction is liable to Service Tax under Finance Act, 1994. Extended period of limitation - Held that - It is a fact that in their Service Tax-3 returns for the relevant period, the Appellant had willfully mis-stated that they have received zero amount towards provision of this service - willful mis-statement on the part of the appellant stands established and thus extended period has been correctly invoked. Penalty - Held that - the elements for imposing the penalty are identical to those necessary to invoke the extended period of limitation. In these circumstances, no separate specific findings are needed for imposition of penalty under Section 78 of the Finance Act, 1994 - penalty upheld. Appeal dismissed - decided against appellant.

Summary

Issues Involved:
1. Confirmation of demand of Service Tax along with interest.
2. Imposition of penalty under Section 78 of the Finance Act, 1994.
3. Applicability of VAT versus Service Tax on the transfer of the right to use a trademark.
4. Interpretation of agreements concerning the transfer of intellectual property rights.
5. Invocation of the extended period for demand and penalty imposition.

Issue-wise Detailed Analysis:

1. Confirmation of Demand of Service Tax along with Interest:
The appellant, M/s Poonam Roofing Products Pvt. Ltd., had entered into an agreement with M/s New Sahyadri Industries Ltd. for permitting them to use the trade name "SWASTIK." The Revenue treated the amount received as consideration for taxable service under Intellectual Property Service and demanded Service Tax. The appellant argued that they paid VAT on this receipt, treating the brand name as goods, and therefore, no Service Tax should be levied. The Tribunal examined the terms of the agreement and found that the agreement was a permissive use of the trademark and not a transfer of the right to use. Therefore, the transaction was liable to Service Tax under the Finance Act, 1994.

2. Imposition of Penalty under Section 78 of the Finance Act, 1994:
The Tribunal found that the appellant had obtained registration under the category of Intellectual Property Service but had been filing Nil returns. The Department discovered the non-discharge of Service Tax liability during an audit. The Tribunal held that the appellant willfully misstated their Service Tax returns, establishing willful misstatement and justifying the imposition of penalties under Section 78 of the Finance Act, 1994.

3. Applicability of VAT versus Service Tax on the Transfer of the Right to Use a Trademark:
The appellant relied on the decision of the Hon'ble High Court of Mumbai in Tata Sons Ltd. and Mahyco Monsanto Biotech (India) Pvt. Ltd., arguing that VAT is payable on transactions involving the transfer of the right to use a trademark. However, the Tribunal noted that each case must be examined based on its terms. The Tribunal found that the agreement in question did not grant an exclusive right to use the trademark "SWASTIK" and was similar to the agreement examined in the Subway case, which was held to be permissive use and liable to Service Tax.

4. Interpretation of Agreements Concerning the Transfer of Intellectual Property Rights:
The Tribunal examined the terms of the agreement between the appellant and M/s New Sahyadri Industries Ltd. and found that the agreement did not grant an exclusive right to use the trademark, did not allow sub-licensing, and could be terminated by either party with notice. The Tribunal concluded that the agreement was for permissive use and not a transfer of the right to use, making it subject to Service Tax.

5. Invocation of the Extended Period for Demand and Penalty Imposition:
The Tribunal upheld the invocation of the extended period for demand, noting that the appellant had willfully misstated their Service Tax returns. The Tribunal found that the elements necessary for imposing the penalty were identical to those for invoking the extended period of limitation, justifying the imposition of penalties under Section 78 of the Finance Act, 1994.

Conclusion:
The appeals were dismissed, confirming the demand of Service Tax along with interest and the imposition of penalties. The Tribunal held that the agreement was for permissive use of the trademark and liable to Service Tax, and the appellant's arguments regarding VAT payment and non-taxability were not upheld. The Tribunal also justified the invocation of the extended period for demand and penalties.