TaxTMI 
TaxTMI 
2012 (4) TMI 198
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....'Hero Honda 40T' on the containers of the products manufactured by them, for the purposes of marketing and promoting their said products. Further M/s. Hero Honda has reserved their right to grant the said use of the trade mark to any other manufacturer. Similarly, the other parties of the agreement also reserved their rights to market their range of products under the brand name/trade name of other manufacturers. All the three parties with whom the appellant entered into a contract were engaged in processing, branding and compounding of oils. In terms of the said agreement the appellants were receiving royalty as per terms and conditions of the said agreement. 3. On perusal of the said agreement, so procured by the Revenue from the appellant, Revenue entertained a view that the appellant has rendered taxable services falling under the category of "Intellectual Property Services". The above view was entertained by the Revenue on the following basis 6 (1) Hero Honda are the holders of Trade marks "Hero Honda" and "Hero Honda 4T plus"; (2) The said trade marks falls within the ambit of the definition of 'intellectual property right' under Section 65 (55)(a) of....
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....lates registered trade marks and not unregistered trade marks which are not governed by any Indian Legislation and are, therefore, "not covered by Indian law", as explained by the said CBEC Circular. Section 27(1) of this Act expressly states. "No person shall be entitled to institute any proceeding to prevent or to recover damager for, the infringement of an unregistered trade mark". Unregistered trade marks therefore do not give rise to any taxable services. (iii). A trade mark is registered only in respect of a specific class of products and not generally. The trade mark is treated as an unregistered trade mark in respect of all other classes of products, even though such other products may have some connection with the class of products for which the trade mark is registered. In the present case, the Appellant's trade marks are registered only in respect of "Motor Cycles and parts thereof (in clause 12) and not in respect of oils, lubricants and greases which are an altogether different class of product. Consequently, in respect of oils, lubricants and greases, the Appellant's trade marks have to be considered to be unregistered trade marks, which are not IPRs within....
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....id trade name on, the oil manufactured by them there was no need to enter into agreement with the appellants for using the name registered in their companies name and pay royalty for use of the said trade name. He submits that the trade mark "Hero Honda" indicates the connection between the two wheeler vehicle being manufactured by the appellants and the use of the same in the oils being manufactured by the other parties to the agreement. It is admittedly Intellectual Property Right of the appellant and they have allowed the use of the same to the other parties and as such have admittedly provided the services, liable to Service Tax. 7.1 As regards the limitation, he reiterates the findings of the adjudicating authority that inasmuch as the show cause notice was issued within a period of 5 years from the relevant date, the same is legal and proper. The noticee had an obligation to comply with the statutory provisions and to furnish the information as required therein which they did not do. Failure in compliance of the obligation cast upon them by the statute tentamount to suppression of facts i.e. justifying invokation of longer period of limitation. 8. After appreciating the....
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....tual Property emerges from application of intellect, which may be in the form of invention, design, product, process, technology book, goodwill etc. In India, legislations are made in respect of certain Intellectual Property Rights (i.e. IPRs) such as patents, copyrights, trademarks and designs. The definition of taxable service includes only such IPRs that are prescribed under law for the time being in force. As the phrase 'law for the time being in force implies such laws as are applicable in India, IPRs covered under Indian law in force at present alone are chargeable to service tax and IPRs like integrated circuits or undisclosed information not covered by Indian law would not be covered under taxable services. 10. Based upon the above, it stands contended before us that the trade mark belonged to M/s. Hero Honda only in respect of vehicles manufactured by them and was not in respect of oils, lubricants and greases. As such, the said trade mark is required to be considered as unregistered trade mark, which is not a Intellectual property falling within the meaning of section 65(55a). As such, the agreement to use the same on oils being manufactured by the other parties to....
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....licitly state that a registered trade mark is infringed, if- (a) the mark is identical and is used in respect of similar goods or services; or (b) the mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or (c) the trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark. This clause further lays down that in cases falling in category (c) above, there will be a legal presumption of likelihood of confusion on the part of the public. Sub-clause (4) seeks to lay down that a registered trade mark is infringed by a person, if he uses a mark which is identical or similar to the trade mark, but on goods or services which are not similar, provided the registered trade mark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. Sub-clause (5) seeks to prevent a person from adopting someone e....
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....heir right in terms of the sub-clause (4) of the Trade Mark Act. This explains the need to enter into an agreement with the appellant and for payment of royalty to them. As such, we do not agree with the learned advocate that their permission to use the said trade mark to the oil companies is not covered by the definition of Intellectual Property right and intellectual property services as appearing in the Finance Act. 15. .However, we find that the demand stands confirmed for the period October, 2004 to January, 2006 by way of issuance of SCN dated 31.8.2006 i.e. by invoking the longer period of limitation. While dealing with the above contention of the appellant, the Commissioner has observed as under: "20.....So far as suppression of facts is concerned, the phrase implies that with-holding of information is suppression of facts. P. Ramanatha Aiyar's Concise Law Dictionary [1997 Edition Reprint 2003 -page 822] defines the phrase very lucidly and accurately as - Where there is an obligation to speak, a failure to speak will constitute the "suppression of fact" but where there is no obligation to speak, silence cannot be termed "suppression". The Noticee had an obligation....