India: Likely Preference: Tax Exemption Or Trademark Protection?

Last Updated: 20 July 2018
Article by S.S. Rana & Co. Advocates

 The Goods and Service tax regime covered different aspects of trade and commerce under its ambit and the intellectual property regime is no exception to it. Through a notification issued on June 28, 2017, the Central Government fixed a 5 per cent Goods and Services Tax (GST) rate on food items packaged in unit containers and bearing registered brand names.1 On July 5, 2017, the Ministry of Finance issued a clarification addressing the confusion about the phrase "registered brand names". It stated that,

"Unless the brand name or trade name is actually on the Register of Trade Marks and is in force under the Trade Marks Act, 1999, CGST rate of 5% will not be applicable on the supply of such goods"2

Further, with respect to the term "packaged", the Finance Ministry clarified that goods such as chhena, paneer, natural honey, wheat, rice, pulses and cereal flours are not taxed under GST. However, if these items are packaged in 'unit container' that carries a registered brand name, it will attract 5% GST.3 The ostensible rationale behind introducing the additional tax is to level the playing field between the high profit margin companies that benefit from their brand's established goodwill and the companies that sell non–branded goods in the market. However, due to a plethora of loopholes in the tax policy, the intended objective seems far from getting realized. This step is posing more of a problem than a solution. This exemption in a way is pulling down the culture of trademark protection which it is conscientiously trying to nurture. One of the crucial factors that governs the choice of the companies, irrespective of their operating size, is the high price elasticity of the basic food items covered under the provision.

Due to this, the choice between maintaining a registered trademark and have the consumers incur 5% addition cost, or getting the trademark registered is obvious.

The small traders are suffering. According to Confederation of All India Traders (CAIT) 'About 50 corporate houses are producing food grain, pulses and other agro commodities aggregating to nearly 15 per cent of the total market under their respective registered brand name whereas rest of the 85 per cent is being produced by SMEs out of which about 40 per cent SMEs are conducting their business operations with registered trade mark.' Thus, most of the SMEs have registered their brands in order to fall in the category of good quality product. Therefore, even the government target group is not getting the benefit of the decision as envisioned. This is just going to boost adulteration in market wherein even after giving good quality produce the poor farmers are going to earn way less than what they deserve.

Even the big established players of the market have been seen taking undue advantage of the provision to maintain their hold in the market. Although the provision was originally envisaged to incentivize the small traders, many established companies that dominates the rice market in India remains exempted from paying the GST since the brand name is unregistered under the Trade Marks Act, 1999. These practices not only dilute the intended benefit for the small traders but also expose the companies to the risk of enforcing their unregistered trademarks and protecting their goodwill.

While the common law remedy of passing off is available for the protection of unregistered trademarks against unscrupulous activities, there is evidently a higher degree of protection for the registered trademarks guaranteed under the Trade Mark Act. The stringent tests of passing off, for instance, increase the burden of proof on the Plaintiff which often becomes tedious to qualify and hence results in the denial of justice. Apart from establishing deceptive similarity of the two marks, the Plaintiff is also required to prove that deception causes confusion among the public and there is likelihood of injury to the Plaintiff's goodwill. The degree to which the Plaintiff's business has actually been damaged by passing off is requisite to decide the quantum

of damages. Contrastingly, the Trade Marks Act provides for actual damages to be paid where these can be shown, or, alternatively, for a "reasonable royalty" to be paid. Clearly, evaluating the actual impact of unlawful use of business' goodwill is a challenging job.

Furthermore, jurisdictional requirements for filing a suit can also be to the detriment of the Plaintiff in the case of passing off. In a case against passing off, the suit is required to be filed in the jurisdiction where the Defendant is residing, working for gain or carrying out its business or where the cause of action has arisen. This may put the Plaintiff in a position of disadvantage as he/she may lack familiarity with the Defendant's place of business and local Courts. Apart from the comparative ease in enforcement of the trademarks, other advantages like free assignability of the trade marks from one party to another also incentivize the proprietors to realize the full potential of their brand name in the market.

From the consumers' perspective, the GST policy is expected to increase the presence of the counterfeit products in the market. There will be a higher chance of a consumer getting misled about the origin and quality of the products in the absence of trademark. It would not only affect the goodwill of the established brand names but can also pose a health hazard due to lower quality and hygiene standard of the counterfeit goods.

However, due to the price factor, the provision discourages the MSMEs from registering their trademarks and hinders the development of a trade mark protected commerce in India. The effects of the provision not only defeat the objective of trademark protection but is also disruptive for the National IPR Policy 2016 which encourages commercialization of IP at the grass-root level. The ruling authority itself is bringing imbalance in the economy by defeating the strength of small scale industries by taking away their strongest weapon i.e. trademark. More than protecting just one segment of the market the focus should be on bringing homogeneity in the market for all the players as well as all the sectors of the market.

Footnotes

1 http://www.cbec.gov.in/resources//htdocscbec/gst/CGST%20rates%20for%20Goods%20under%20different%20Notifications%20%20as%20a mended%20from%20time%20to%20time.pdf

2 http://pib.nic.in/newsite/PrintRelease.aspx?relid=167146

3 https://www.financialexpress.com/economy/cgst-wont-apply-on-items-not-registered-under-trademarklaw/ 751422/

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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