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Surrendering Trade Name – Key to Concession under GST?

Introduction  : The famous Shakespeare quote, “What’s in a name?” has lost its’ relevance in the present day scenario with a highly compet...
Introduction  :The famous Shakespeare quote, “What’s in a name?” has lost its’ relevance in the present day scenario with a highly competitive environment. The new game of name- Trademark has gained significance. Trademark is one of the most important intellectual property (IP) right which protects a brand. The goodwill attached to brands has now become the guiding factor for consumer’s decision to purchase such branded products. IP rights, though in an intangible form, substantially increases the value of products and also provides various rights and remedies for protecting its’ position in a competitive market. If a brand name is registered, the person gets exclusive rights to use such brand name and can file a suit for infringement of his registered trademark/brand name. However, there are certain equitable rights attached to unregistered brand names as well that can be enforced in a court of law like that of remedy against passing off, which prevents one person from misrepresenting his goods or services as that of another. 




Gradually, due importance of the value of such IP is being recognized under the GST regime as well. However, the GST regime has ushered perplexity regarding the difference in the rates of tax levied on the supply of branded and unbranded goods. It is also to be noted that no such distinction has been created between branded and unbranded services even though a brand name for services can be registered as a trademark. 

Position under GST 

As per Notification No. 01/2017-Central Tax (Rate) dated 28.06.2017, various goods such as paneer, honey, wheat, rye, barley, oats, rice, maize, etc were categorized in the 5% rate slab if the following conditions were satisfied – 

  • · Products were packed in a unit container; and 
  • · Products were bearing a registered brand name. 
On the other hand, as per Notification No. 02/2017- Central Tax (Rate) dated 28.06.2017, if these products were not packed in a unit container or were not bearing a registered brand name, these products were exempted from tax. 

As per the above mentioned notifications, a registered brand name was described to mean- 

A brand name or trade name, that is to say, a name or a mark, such as symbol, monogram, label, signature or invented word or writing which is used in relation to such specified goods for the purpose of indicating, or so as to indicate a connection in the course of trade between such specified goods and some person using such name or mark with or without any indication of the identity of that person, and which is registered under the Trade Marks Act, 1999. 
Further, a press release dated 05.07.2017 clarified that Section 2(w) read with Section 2(t) of the Trade Marks Act, 1999 provides that a registered trademark which is actually on the Register of Trade Marks and is remaining in force. It was reiterated that only if the brand name or trade name is actually on the Register of Trade Marks and is in force under the Trade Marks Act, 1999, the exemption benefit will be applicable on the supply of such goods. 

Post-Mortem of Exemption Benefit – Current Position 

It was being reported that all the businesses selling branded food were deregistering their brands to get the exemption benefit, thereby surrendering their registered brand names without giving due weightage to the value of their IP rights. Consequently, when the GST Council met on 09.09.2017 to discuss the issues persisting after GST implementation, tax rates applicable on 134 products were reviewed and certain changes were made to the rate notifications with respect to branded and unbranded products. As a result, vide Notifications No. 27/2017 and 28/2017-Central Tax (Rate) dated 22.09.2017, the condition of the product bearing a registered brand name was amended to the following – 

  • · Should bear a registered brand name; or 
  • · Bear a brand name on which an actionable claim or enforceable right in a court of law is available (other than those where any actionable claim or any enforceable right in respect of such brand name has been voluntarily foregone, subject to the conditions mentioned at Annexure to Notification No. 27/2017-Central Tax (Rate) dated 22.09.2017. 
Moreover, the following meaning of brand name was added – 

The phrase brand name means brand name or trade name, that is to say, a name or a mark, such as symbol, monogram, label, signature or invented word or writing which is used in relation to such specified goods for the purpose of indicating or so as to indicate a connection in the course of trade between such specified goods and some person using such name or mark with or without any indication of the identity of that person. 

The Fitment Committee also proposed to the GST Council to consider 15th May, 2017, as the cut-off date for considering a brand as registered for the purpose of levy of GST, irrespective of whether or not the brand is subsequently deregistered. Hence, the meaning of the phrase 

“registered brand name” was amended to mean – 
  • (A) A brand registered as on the 15th May, 2017 under the Trade Marks Act, 1999 irrespective of whether or not the brand is subsequently deregistered; 
  • (B) A brand registered on the 15th May, 2017 under the Copyright Act, 1957 (14 of 1957); 
  • (C) A brand registered as on the 15th May, 2017 under any law for the time being in force in any other country. 
Therefore, now, the person undertaking packing of goods in unit containers which bears a brand name shall have to file an affidavit before the jurisdictional Commissioner and print with indelible ink on the unit container, that he is voluntarily foregoing his actionable claim or enforceable right on such brand name. Moreover, vide Notification No. 34/2017-Central Tax (Rate) and 35/2017-Central Tax (Rate) dated 13.10.2017 provided the procedure for filing this affidavit where the person having an enforceable right or actionable claim over the brand name and the person undertaking packing of the goods are two different persons. 

It is relevant to highlight here that even if the brand is not registered, an enforceable right or remedy in the nature of passing off right is available to a prior user of such brand. However, clarification on the validity of the affidavit and for opting out of the exemption by cancelling the effect of the affidavit needs to be given by the GST Council. 

Saving GST or Registration of Trademark? 

Making only those goods taxable which bear a “registered” brand name had led to various small traders and companies apply for deregistration of their brands to the Trademark Registry Offices. For many traders, the decision to be taken was whether to save taxes or to retain the rights attached to it’s brand name. To an extent, this issue was addressed by the GST Council by providing that the traders can escape the 5% GST only if they choose to forgo any actionable clam or their brand name by filing an affidavit. But the problem still persists for traders to weigh the options of saving 5% GST or to forego its’ rights relating to the brand name. Further, the Commerce Ministry is also concerned that deregistering trademarks may lead to promotion of counterfeit products in the market that could create health hazards in the industry. The benefit of exemption of unbranded products also benefits those companies which have a boosting revenue but their brands are not registered. On the contrary, the benefit could be provided on the basis of packaged and loose food items irrespective of (?) branding of such products to avoid any such glitches. 

Can a Company/Manufacturer Name be a Brand Name? 

There is a possibility of a packaged product on which the name of the manufacturer is printed. This is in compliance with The Legal Metrology Act, 2009, FSSAI Act[The Food Safety and Standards Act, 2006 ], etc. The question that arises is whether printing of such name as a statutory compliance may require the person to submit the affidavit of foregoing its’ rights? This can only happen if such name of the manufacturer can be considered as a ‘brand name’. 

In the case of Tarai Food Ltd. v. Commissioner[2006 (198) E.L.T. 323 (S.C.)] the Apex Court observed that the words brand name connotes such a mark, symbol, design or name which is unique to the particular manufacturer which when used on a particular product would establish a connection between the product and the manufacturer. More importantly, it was pointed out that if the manufacturer’s name in each and every case can be considered as a brand name, then there will be no such thing as unbranded products since it is a legal compliance to affix the name of the manufacturer on the packaged item. The identity of the seller cannot be always equated to a brand name. 

Though the trademark law does not preclude any person from adopting his own personal name or surname as a trade mark in connection with his trade, prima facie, such a trade mark should be “capable of distinguishing the goods or services of the applicant from those of others having the same name or surname”. A manufacturer or trader normally desires to use as a mark something associated with his name. Generally he does not use as a trade mark his full personal or business name but a characteristic part of such name, an abbreviation or merely the surname. But this legitimate desire or interest on his part must be reconciled with the desire or interest of a competitor to use his own identical or similar personal or business name or abbreviation or surname. 

On the other hand, a trade name means a name under which goods are sold by a certain person and which, by established usage, has become known to the public as indicating that those goods are the goods of that person. In fact it is very common for trade names to be used as trademarks and the law permits registration of trade names as trademarks. However, the general test applied is: Is it a name which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use? 

Therefore, the purpose and intent of the provision cannot be such that all such persons who sell unbranded products are put to the inconvenience of submitting the affidavit merely because they are compulsorily supposed to affix their name and address. On account of this, a clear distinction has to be established between the name of the company/manufacturer and a brand name. 

Retrospective Operation for granting exemption benefit 

The insertion of the date of 15th May, 2017 for the purpose of examining the validity of the brand name registration has left many baffled. The insertion of this date has definitely resolved the problem of deregistering the brand names However, the legal validity of notifying a backdate in the month of September, 2017 comes into question. GST was implemented with effect from 01.07.2017 pan-India. For deciding the tax rate of certain goods, can the Government notify a date before the GST implementation date? Suppose a trademark registration is cancelled on 16.05.2017, then in that case how can it still come under the scope of “registered brand name” by the mere insertion of this arbitrary cut-off date? The amending notifications also do not cover those brand names which are registered after the said date. 

End to the Confusion? 

Despite the public perception and the existing chaos regarding branded goods, to an extent, the situation is clearer that using reputed brands will attract taxes since the purchase of branded products by consumers gives them confidence and provides consistency of quality. By widening the definition of registered brand name, now, the benefit of exemption cannot be granted to a number of packaged food sellers who have a brand name but have yet not applied for a trademark by making them submit the affidavit. Moreover, big companies may not be willing to risk a brand by abandoning all rights attached to it to save 5% GST. On this account, the intent of law to provide level playing field to all the participants in the market is pretty clear. Having said that, the Finance Ministry still needs to resolve ancillary issues connected with this issue. Importantly, all the small scale traders who are claiming the exemption for their products can submit the affidavit as a precautionary measure in the format as prescribed.

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Acknowledgements

We thank Study Group at Jaipur for drafting this article and CA. Mandar Telang for reviewing the same. For any queries, you may connect with CA. Yash Dhadda at yashdhadda@gmail.com.

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TAX,1,profession tax,2,PROFIT RATE UNDER 44AF,1,provident fund dues,1,PROVISION OF FBT ON ESOP,1,provisioning of npa,2,PSPCL,1,PSTCL,1,PSU PAY HIKE,2,public limited company,2,public provided fund,9,PUBLIC SHARE HOLDING IN LISTED COMPANY,2,punjab govt arrear calculator,1,PUNJAB VAT,21,punjab vat notification,16,purchase of residential house,1,pure agent,1,qfi,1,quarterly statement status,3,QUIZ,9,rail freight,6,railway budget,12,railway budget 2012,2,railway ticket,9,RAILWAYS BUDGET 09-10,2,RAILWAYS BUDGET 11-12,1,rajiv gandhi equity saving scheme,13,RAJKUMAR S ADUKIA,4,ramalingam,15,Rate of return,1,RATES AFTER BUDGET,1,rates of service tax,3,rbi,83,RBI ACT,22,RBI Circular on e-payment of taxes,2,RBI FALSE CALLS,9,RBI FALSE MAIL,5,RBI INSTRUCTIONS GAR-7,1,RBI MONETARY POLICY,13,rbi monetary policy 2012,2,RBI NOTIFICATIONS,7,rbi report on customer services,2,ready reckoner income tax,4,REAL ESTATE,10,Real Estate Investments,4,REAL TIME GROSS SETTELEMENT,1,reason for mis 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139(5),1,Section 14,1,SECTION 145,3,section 154 return online income tax,4,section 16(iii),1,section 189,1,section 192,8,section 194-J,6,SECTION 194A,4,section 195,11,SECTION 195A,1,section 197,5,SECTION 2(37A),1,section 201(1A),3,section 203(3) section 206(C)(5),5,section 205,1,SECTION 24(b),8,section 269SS 269T,6,section 270A,5,section 271(1)(c),1,section 282B,1,Section 36(1)(vii),1,section 40(a)(ia),13,SECTION 40A(3),12,section 43(5),1,SECTION 44AB 2007-08 LAST DATE,4,section 44AB limit,14,SECTION 44AE,6,SECTION 44AF,2,Section 50,1,Section 50C,2,section 54,30,section 54f,9,SECTION 60,1,section 616(c),1,SECTION 64,1,section 66B service tax,4,section 68,2,Section 73,1,section 80 M,2,section 80c,3,section 80CCF,7,section 80D,18,section 80E,9,secured code master card,5,Securities and Exchange Board of India,1,security features,1,sehaj,1,self assessment tax,5,Seminar on service tax changes,1,Senior citizen,19,Senior Citizens Savings Scheme 2004,19,service charge,3,service ta,1,SERVICE TAX,45,service tax code,1,Service Tax (Removal of Difficulty) Order,1,SERVICE TAX 2010,1,service tax ac class,1,service tax accounting code,5,service tax adjustment,1,service tax audit,10,SERVICE TAX CHANGES FROM 01.07.2012,46,service tax changes in budget,58,Service TAX CLARIFICATION,17,SERVICE TAX COMPLIANCE,1,SERVICE TAX DEPOSIT DUE DATE,9,SERVICE TAX DUE DATE,6,Service Tax excel pdf word,1,SERVICE TAX EXEMPTION LIMIT,9,Service Tax Form excel pdf word,3,SERVICE TAX FORMS,1,service tax internet banking,1,service tax notifications,5,SERVICE TAX ON LAW FIRM ADVOCATES,3,service tax on transportation of passengers by air,2,service tax on advocates,5,SERVICE TAX ON BROKERAGE,2,service tax on ca,2,service tax on coaching,4,service tax on construction services,23,service tax on director services,5,SERVICE TAX ON DISTRIBUTION OF ELECTRICITY,2,SERVICE TAX ON EDUCATIONAL SERVICES,4,service tax on gta,7,service tax on health services,4,service tax on hotel clarification,12,SERVICE TAX ON HOTEL ROOM RENT,10,service tax on invoice basis,5,service tax on lawyers,1,SERVICE TAX ON LEASING,1,SERVICE TAX ON PACKAGE SOFTWARE,1,service tax on railway freight,8,SERVICE TAX ON RENT,6,service tax on road,4,service tax on transmission distribution of electricity,4,service tax on work contract tax,9,service tax on wrong head,1,service tax onr eimbursements,1,SERVICE TAX PAYMENT,6,SERVICE TAX PROCEDURES,3,SERVICE TAX RATE CHART,12,service tax rate effective date,12,service tax rate reduced,5,service tax rates increased,21,SERVICE TAX REGISTRATION,12,SERVICE TAX REGISTRATION LIMIT,4,SERVICE TAX RETURN,34,SERVICE TAX RULES,11,service tax section 65(105)m,1,SERVICE TAX VOLUNTARY COMPLIANCE ENCOURAGEMENT SCHEME,17,SERVICES CHARGES OF BANKS,2,SERVICES TAXABLE,5,servicetax,1,set off in same head or other head.,10,sevice tax on associate enterprises,2,sez,6,share,3,share market,3,SHARE SHORT TERM Capital GAIN,10,share transfer,1,share your thoughts,1,SHOME COMMITTEE REPORT,3,Short term capital gain depreciable Assets,1,SHORT TDS,1,SHORT TERM ACCOMMODATION,1,short term capital gain 15 %,10,silver,1,SIM CARD,2,SIMPLE TAX CALCULATOR,2,single premium policy,2,sip,8,SIXTH COMMISSION,2,sixth pay commission,17,skimming,1,slider based EMI calculator,1,SLR,4,small saving schemes,18,small service provider,1,smart buying tips,1,software import,1,son eduction loan father,1,speak asia,3,speak asia fraud,2,speak asia online,2,speed clearing,3,spending habits,1,SPF,8,splitting of wages,2,Spreadsheet,2,SRVICE TAX CLARIFICATION,9,ss patta,1,ST-1 EXCEL,4,ST-2,2,ST-3,12,stamp duty,3,STANDARD DEDUCTION,6,standing committee,1,startup india,2,State Bank of India (SBI) Cards,1,status of return,1,STATUS OF TAX DEDUCTED,1,statutory audit,7,stay on demand notices,4,STCG 10% 15%,12,STGC,1,Stock,1,STOCK EXCHANGE,1,STOCK MARKET FROM 9.00 AM.,1,STOCK MARKETS,1,stp,1,STRUCTURE AND VALIDATION OF PERMANENT ACCOUNT NUMBER,2,stt,7,stt challan,1,sub contractor,3,SUBPRIME CRISES,2,success secrets,1,sugam,4,Suggestion on Budget-23,35,Sukanya Samriddhi Account,11,SUPREME COURT,2,SUPREME COURT RENT,7,sur name in pan,1,surcharge cess on tds,4,Surrender-Cancellation of Service Tax Registration,1,survey income tax,5,SWACHH BHARAT CESS,12,swiss bank,1,Systematic Investment Plan,6,tally 7.2,3,tally 9,5,tally easy,3,tally erp9,6,tally recycle bin,3,tally shortcut,10,tally simple,8,tally tips,5,TAN,3,TAN STRUCTURE,1,Tariff Value,1,Tax saving,4,tax accounting standards,4,TAX AMNESTY SCHEME,4,tax benefit from budget,2,TAX CALCULATION,4,TAX CALCULATION 2008-09,1,TAX CALCULATION FORMULA ADDIN EXCEL,2,TAX CALCULATOR,1,tax calculator 10-11,2,TAX CALCULATOR 2008-09,1,tax calculator 2010-11,2,tax calculator after budget 2011,1,tax calculator financial year 10-11,1,tax calculator fy 11-12,1,tax calculator income tax,1,tax collection,3,Tax credit,5,TAX DEDUCTED AT SOURCE CALCULATOR (TDS)2007-08,2,tax deducted at source return etds,3,Tax deduction,7,tax deduction at source chart,1,TAX EVASION,1,Tax free bonds,7,TAX ON ARRERS,1,tax on due date by cheque,2,tax on perquisite,4,TAX ON PROVIDENT FUND,2,tax payment by internet,1,tax payment from other's account,1,tax payment online,1,tax planning for salary,5,TAX RATES,2,tax rates changes in budget 2011,2,tax rates in new tax code,2,tax return preparer,1,tax saving capital gain,3,tax saving mutual funds,17,tax saving tips,1,TAX SLABS,7,tax through atm,2,tax yogi,3,taxable allowances,6,Taxation,1,Taxation in India,1,TAXES BY INTERNET,1,TAXMANN,4,TAXPRO CHALLAN,2,tcs on gold,11,tcs on jewellery,8,TCS ON MINERALS,2,tcs rate chart,5,TCS RATES,15,tds certificate,2,tds 194I Limit for deduction,7,tds at less rate,6,tds calculations,2,tds calculator,11,tds calculator after 1.10.2009,1,TDS CERTIFICATE,6,tds challan 281,5,tds chart,1,TDS CORRECTION,3,TDS CREDIT MORE TAN ONE YEAR,4,tds cut off limit changed,1,tds deducted in march,8,TDS DEFAULT BY EMPLOYER,2,tds deposited on time,2,tds due date,5,tds man,4,tds matching,5,tds 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car,5,valuation of perquisites,16,valuation of perquisities,11,valuation of rent free house accommodation,5,valuation of works contract 01.07.2012,11,VALUE ADDED TAX,5,VAT,8,vat 11 digit detail,2,VAT ACT,3,VAT AND SERVICE TAX ON SOFTWARE,2,VAT DEFULTERS,1,VAT FORMS,2,VAT LATEST RULES,3,VAT MEANING,1,VAT NUMBER PUNJAB,1,vat on petrol,3,vat rate 4 to 5 %,1,vat rate changes punjab,3,VAT RATES,2,VAT RULES,1,VAT SCHEDULE,1,VAT TDS ON WORK CONTRACT,4,VAT UP AT A GLANCE,1,VCES,7,verified by Visa,3,VERIFY EXCISE CODE,1,verify pan,2,VERIFY SERVICE TAX CODE,7,VERIFY YOUR SERVICE TAX DEPOSIT,1,video,14,VIEW 26AS,7,VIEW YOUR TAX CREDIT,6,view your taxes online,5,Visa,4,VISHAL-REHEJA,1,vodafone,2,WAGES,3,ward circle,2,wealth tax,8,WEBCAST OF BUDGET 2011 ON COMPUTER,2,weighted scientific research deduction,2,what do u mean by micr,2,what does 10 digits of pan card indicates,1,what does each letter in pan number indicate,1,WHAT IS CHEAPER,1,what is company code 0020,1,WHAT IS DEARER,1,what is micr code,2,what is neft,5,what is PAN,1,WHAT IS STC,3,what is the meaning of rtgs,3,whatsapp,1,WHEAT AND PADDY,1,white paper,1,who can file sahaj.,10,who can sign income tax return,2,who can use itr-2,4,WIFE'S POLICY PREMIUM,2,wifes name,2,WILL,5,window dressing,1,without consideration,1,work contract service tax,16,working capital,1,Workmens Compensation Act,3,WORKS CONTRACT,3,wrong accounting code in service tax,1,wrong assessment year in challan,4,wrong head on challan,2,wrong name error in e filing registration,7,WRONG NAME IN ETDS RETURN,2,wrong pan on challan,2,wrong pan while deposit,1,wrong section on challan,3,www.satyamevjayate.in,1,xbrl,5,XLSX,2,ynitya income tax calculator,22,YouTube,1,
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SIMPLE TAX INDIA: Surrendering Trade Name – Key to Concession under GST?
Surrendering Trade Name – Key to Concession under GST?
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SIMPLE TAX INDIA
https://www.simpletaxindia.net/2017/12/surrendering-trade-name-key-to-concession-under-gst.html
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https://www.simpletaxindia.net/2017/12/surrendering-trade-name-key-to-concession-under-gst.html
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