tag:blogger.com,1999:blog-5949922529631180407.post950031410184503369..comments2024-03-11T01:35:38.553+05:30Comments on The Demanding Mistress: IP Licensing and Taxation: Reviewing the Bombay High Court’s Decision in the Tata Sons caseJ.Sai Deepakhttp://www.blogger.com/profile/08357301068067861565noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-5949922529631180407.post-31598645105808419192015-10-29T14:56:17.547+05:302015-10-29T14:56:17.547+05:30Tata Sons contended there had been no transfer of ...Tata Sons contended there had been no transfer of right to use, as no legal right had been transferred to one person to the exclusion of the transferor.Uptrahttp://uptra.in/sales-tax-registration-services/noreply@blogger.comtag:blogger.com,1999:blog-5949922529631180407.post-6583262304126565122015-06-04T14:09:21.192+05:302015-06-04T14:09:21.192+05:30Here's a comment I received via email from Pro...Here's a comment I received via email from Professor David Llewelyn, Deputy Dean of Singapore Management University's School of Law:<br />"Very interesting, and a problem that tax authorities are grappling with around the world. In my view, a trade mark licence is clearly not a transfer of a right in any meaningful sense: it is the grant of a contractual permission to do what would otherwise be an infringement. Indeed, the trade mark itself is only a negative right; as has been seen in the disputes about tobacco advertising using trade marks in Australia, there is no right to use a registered trade mark, even by its proprietor. However, the wording of the tax legislation dealt with by the court seems to me to catch the licensing transaction once one accepts that a trade mark is a good (and the Act was amended to make that clear) and (as the court did) that a licence gives to the licensee a right to use the mark, which to a non-specialist IP lawyer it does seem to."<br /><br />Here are the extracts from my reply to Prof.Llewelyn:<br />" ..here's the link to my latest post on the issue of "transfer" where I discuss the Supreme Court's views on what constitutes transfer. Even the Supreme Court has struck a distinction between a mere license to use and transfer of right to use. Unfortunately, the Bombay HC has not appreciated this distinction although the SC's decision was cited by Tata Sons. That being said, I agree that an exclusive license which creates an interest in favour of the licensee to the exclusion of the licensor falls within the catch all provision of "transfer of right to use goods". I have said so in the post as well. However, a non-exclusive license which has been granted to multiple parties (and does not exclude the right owner) may not rise up to the level of transfer of right. It is for this reason that I think the decision stands a good chance of being reversed."<br /><br />And his further comment:<br />"I agree with your comments on the meaning of “transfer”. The problem is that, once one accepts that intangibles can be ‘goods’ for the purpose of a sales tax, it seems difficult to a non-IP specialist to envisage giving a third party a right to do something without a “transfer” (in the broad sense of ‘something moving from A to B’, even though A may still have it too) being involved in some way."<br /><br />And my further reply:<br />"I understand where you are coming from Sir. Perhaps there's a greater need for clarity on the nature of creation of interest of any kind in incorporeal property in order for non-specialists to appreciate the distinction between interest creation in tangible goods and intangibles."J.Sai Deepakhttps://www.blogger.com/profile/08357301068067861565noreply@blogger.com