2025 (10) TMI 499 - AT - Customs

License fees for software excluded from customs value under rule 9(1)(c), 1988 Valuation Rules; s.112(a) penalties set aside

CESTAT held that license payments for software were not includible in the customs value of the imported CD under rule 9(1)(c) read with the 1988 Valuation ... Valuation - Import of Software on CD - inclusion of license fee in the value of CD under rule 9(1)(c) read with rule 4 of the 1988 Valuation Rules. - Rejection of transaction value of CD under rule 10A of the Customs Valuation (Determination of Price of Imported Goods) Rules, 1988 - Confirmation of differential customs duty with interest by taking recourse to the proviso to section 28(1) of the Customs Act, 1962 - imposition of penalty u/s 112(a) of the Customs Act Whether the payments made by HCL to SAP India for the three invoices can be included in the transaction value of the CD? HELD THAT:- HCL and SAP India signed Appendix 1.4 on 16.05.2006 and Appendix 1.5 on 08.06.2006 to the R/3 Software End-User License Agreement to procure Software and additional licenses, respectively. These Appendices specifically provided delivery of Software through electronic mode. SAP India raised three invoices on HCL. The first invoice dated 23.06.2006 is for Rs. 8,57,808/-. The second invoice dated 26.06.2006 is for Rs. 1,59,40,000/-. The third invoice dated 27.06.2006 is for Rs. 18,00,000/-. The total amount of these three invoices is Rs. 1,85,97,808/- - Around the same time, as per the terms of maintenance contract between SAP India and HCL (Appendix 2.1), HCL received a CD containing SAP Software from SAP Germany under a courier Bill of Entry dated 29.06.2006 filed by DHL showing declared value of Rs. 2558/-. The Commissioner, in the impugned order, observed that payment of license fee of Rs. 1,85,97,808/- without having CD Software has no meaning and posed a question whether could CD be independently imported and effectively put to use when there was no EULA and the importer had not paid the license fee. The Commissioner answered this question by observing that unless the license fee is paid, the SAP Software contained in the CD could not have been accessed and used by the importer. The Commissioner, therefore, concluded that all the actions are integral part of one whole transaction for a consideration of Rs. 1,85,97,808/-. For this reason, the Commissioner rejected the transaction value of CD under rule 10A of the 1988 Valuation Rules and thereafter included the license fee in the value of CD under rule 9(1)(c) of the 1988 Valuation Rules. License fee which does not satisfy the four conditions set out in rule 9(1)(c) cannot be added to the value of the CDs. The first condition is that the license fee should relate to import of CD that contains the SAP Software - the license fee is not associated with the import of the goods, as the primary mode of delivery of the SAP Software is electronic, and delivery of goods is not specified in the Appendix. The license fee remains payable irrespective of the fact whether CD is obtained physically or not. Thus, the license fee is not related to the CD and, therefore, the value of the license fee paid by HCL is not includible in the value - The first condition contained in rule 9(1)(c) of the 1988 Valuation Rules is, therefore, not satisfied. The second condition of rule 9(1)(c) of the 1988 Valuation Rules that Buyer/importer is required to pay, directly or indirectly, is also not satisfied. HCL is not required to pay the license fee at the time of import of goods. SAP India provides about four weeks period during which HCL can test run the SAP Software. Up-to the expiry of four weeks, HCL will have limited access to the SAP Software and instance for the payment of the license fee arises only if the HCL decides to convert the Software into a full version, post-trial. Thus, HCL is not required to pay the license fee for the import of the goods. The third condition that the same is paid as condition of the sale of the goods, of rule 9(1)(c) of the 1988 Valuation Rules is also not satisfied - the payment of the license fee is a post-importation activity and is not a condition for sale for goods. This apart, right to use the Software is different from a sale of goods. In the present case, HCL is only provided a nonexclusive right to use the SAP Software. Article 6 clearly restricts the rights of HCL to only those permitted by SAP India and HCL does not acquire the title to the intellectual property in the SAP Software. Thus, the transaction between SAP India and HCL does not amount to sale of Software - Commissioner, therefore, committed an error in holding that the license fee is a condition of sale. The fourth condition that such license fee is not included in the price actually paid or payable, is also not satisfied as the payments made by HCL to SAP India are not liable to be included in the transaction value of the CDs. The inevitable conclusion, therefore, that follows is that license fee paid by HCL to SAP India cannot be included in the value of CDs under rule 9(1)(c) of the 1988 Valuation Rules. Penalty, therefore, could not have been imposed upon the appellant, nor interest could have been charged - In this view of the matter, it may not be necessary to examine the contention raised by learned counsel for HCL that extended period of limitation contemplated under section 28(4) of the Customs Act could not have been invoked, nor is it necessary to examine whether interest could have been charged or penalty imposed in the absence of any machinery provisions under section 3(12) of the Customs Tariff Act. Penalty imposed upon SAP India under section 112(a) of the Customs Act - HELD THAT:- The Bills of Entry were filed prior to the self assessment regime and so the burden was on the department to examine and assess the duty. In the present case, the customs authorities had examined the description of goods and the value declared in the Bills of Entry. The order alleges that SAP India, under a carefully devised plan created Agreements which resulted in suppression of material facts which had a direct bearing on the value of CDs and thereby resulting in evasion of customs duty. There can be no suppression on the part SAP India as the customs authorities had allowed clearance after examining CDs and after examination of the papers. Penalty is, therefore, not imposable on SAP India - neither could the license fee paid by HCL to SAP India be included in the value of CDs under rule 9(1)(c) of the 1988 Valuation Rules nor could penalty have been imposed upon HCL or SAP India under section 112(a) of the Customs Act. The impugned orders are set aside - appeal allowed. ISSUES PRESENTED AND CONSIDERED 1. Whether licence fees paid to a local licensor for the right to use software are includible in the transaction value of an imported CD under rule 9(1)(c) of the Customs Valuation (Determination of Price of Imported Goods) Rules, 1988. 2. Whether the payments identified were (a) related to the imported goods, (b) required to be paid by the buyer (importer), (c) paid as a condition of sale of the imported goods, and (d) not already included in the price actually paid or payable - i.e., the four conditions under rule 9(1)(c). 3. Whether penalty under section 112(a) of the Customs Act could be validly imposed on (i) the importer and (ii) the local distributor/licensor, on the ground of suppression, mala fide design or evasion of customs duty. 4. Ancillary issues considered in the course of deciding the above: appropriateness of confiscation (Section 111), imposition of interest, invocation of extended limitation, and whether machinery provisions under the Customs Tariff Act are necessary for imposing penalty or interest (not finally decided as unnecessary to decide on merits once primary conclusion reached). ISSUE-WISE DETAILED ANALYSIS Issue 1 - Inclusion of licence fees in transaction value under rule 9(1)(c) Legal framework: Rule 9(1)(c) requires addition to transaction value of 'royalties and licence fees related to the imported goods that the buyer is required to pay, directly or indirectly, as a condition of the sale of the goods being valued', to the extent such fees are not already included. Precedent Treatment: Prior Tribunal decisions addressing inclusion where licence/royalty formed an integral condition of sale were invoked by the Department; those precedents were considered but not treated as controlling where facts show separation between import of physical media and grant/payment for intangible rights. Interpretation and reasoning: The Court examined the contractual matrix - the distribution agreement between principal and distributor and the end-user licence agreement between distributor and end-user - and the contemporaneous invoices and delivery modalities. Key factual and legal findings were: (a) the distributor-principal agreement and the end-user licence both contemplated electronic delivery as the primary mode and separate licensing relationships for right-to-use (intangible) distinct from physical delivery of CDs; (b) invoices relied upon by the Department corresponded to license fees for electronic supply and additional named-user licences, not to the specific importation event of the CD; (c) the CD physically imported bore a nominal declared customs value, and the licence invoices post-dated or related to electronic delivery or demo licence renewals; (d) importation of the CD did not require payment of the licence fee at entry - initial limited access and subsequent activation by keycode showed licence payment was a post-import commercial decision; (e) the licence fees were paid for use/sub-licensing rights, not for the import of the physical medium. Ratio vs. Obiter: Ratio - where contractual terms and contemporaneous evidence show licence fees relate to provision of intangible rights distinct from the physical import and are not a condition of sale of the imported goods, those fees cannot be added under rule 9(1)(c). Obiter - remarks on typical industry practice and on potential designs to evade duty where facts differ from the present record. Conclusions: The four conditions of rule 9(1)(c) were not satisfied. The licence fees did not relate to the imported CD; payment was not required at the time of import; licence was not a condition of sale of the imported goods; and the fees were not part of the price actually paid or payable for the CD. Consequently, licence fees could not be included in the transaction value of the CD and the transaction value rejection under the valuation rules was unsustainable. Issue 2 - Whether the licence payments were a condition of sale / related to the imported goods Legal framework: Condition requirement under rule 9(1)(c) and the distinction between right-to-use (intangible licence) and sale of goods; customs valuation principles distinguishing goods' value from separate post-import services or licences. Precedent Treatment: The Court considered departmental reliance on earlier Tribunal rulings where licence/royalty was found to be a condition of sale; it declined to apply those rulings where the agreement and factual matrix demonstrated separability and electronic delivery as primary mode. Interpretation and reasoning: The agreements provided for electronic delivery and granted non-exclusive use rights; licence keycode mechanics permitted trial use prior to payment; the distributor did not transfer title to intellectual property. Thus, right to use was distinct from the physical CD; importation of CD alone did not grant usable software absent separate licence activation. That factual reality, together with contractual clauses, showed licence payment was not a precondition to import or clearance. Ratio vs. Obiter: Ratio - contractual terms and contemporaneous delivery/payment practice control whether licence payments are a condition of sale; where licence is separate and post-import, it is not includible. Obiter - discussion of hypothetical arrangements where licence could be inseparable. Conclusions: Licence payments were post-import obligations for enabling full use, not preconditions of sale or import; they were not related to the import in the sense required by rule 9(1)(c). Issue 3 - Imposition of penalty under section 112(a) on importer and distributor/licensor Legal framework: Section 112(a) penalises certain contraventions and suppression of facts leading to under-assessment or evasion; penalty imposition requires evidence of suppression, deceit or mala fide intent and causal link to evasion. Precedent Treatment: The Department relied on Tribunal decisions upholding penalties where deliberate concealment and devised mechanisms to evade duty were proved. The Court applied standard evidentiary and mens rea principles rather than adopting a presumption of mala fides from contractual complexity alone. Interpretation and reasoning: For importer - given the Court's factual conclusion that licence fees were not includible in the CD value under the valuation rule, imposition of penalty on that legal basis could not be sustained. For distributor/licensor - the adjudicating authority's finding of a deliberate scheme lacked corroborative evidence; deposits of duty by the distributor during investigation were plausibly explained as bona fide protective measures; customs authorities had earlier examined bills of entry and cleared the goods before the self-assessment regime, undermining an inference of concealment. Absent specific evidence that the distributor abetted or instigated suppression with mala fide intent, penalty was not justified. Ratio vs. Obiter: Ratio - penalty cannot be imposed without evidence of suppression/mala fide intent causally connected to evasion; mere existence of layered agreements or commercial structuring is insufficient. Obiter - comments on conduct such as deposit-and-refund filings that may be suspicious in other factual matrices. Conclusions: Penalty under section 112(a) could not be sustained against either importer or distributor on the record before the adjudicator; orders imposing penalties were set aside. Issue 4 - Confiscation, interest, extended limitation and machinery provisions Legal framework and reasoning: Confiscation under Section 111 was inapplicable because goods had been cleared and were not available; extended limitation and interest issues were not necessary to decide once primary valuation and penalty conclusions were reached; the Court observed that machinery provisions arguments need not be adjudicated in view of the principal findings. Ratio vs. Obiter: Obiter - remarks that confiscation cannot be ordered where goods are not available and that extended limitation/interest issues require separate consideration only if primary liability is established. Conclusions: No confiscation or redemption fine was ordered; the Court did not need to adjudicate extended limitation and machinery-provisions-based arguments because the principal grounds for relief were dispositive. Final Disposition All impugned orders were set aside on the ground that licence fees could not be included in the transaction value of the imported CDs under rule 9(1)(c), and consequentially penalties and related charges could not be sustained; the appeals were allowed.