TMI Blog2010 (7) TMI 465X X X X Extracts X X X X X X X X Extracts X X X X ..... - 1668 - Supreme Court of India), again, the Hon’ble Supreme Court was granting the benefit of registration of a trade mark/brand name to the assessee. On the whole, we find that the cases cited by the learned counsel are either distinguishable on facts or inapplicable to the present case by virtue of the apex court’s ruling in Prince Valves Industry case (2006 -TMI - 47587 - SUPREME COURT OF INDIA). For the period prior to 18-8-1999, the assessee cannot claim the benefit, having regard to the relevant provisions of the Trade Mark Registered User Agreement dated16-11-1995(as amended by the supplement agreement dated 9-1-1996). These provisions of the agreement, as we have already noted, would go to show that any absolute right over the brand name was not transferred or assigned by the Licensor to the assessee. Therefore, the respondent cannot claim SSI benefit on the strength of the said agreement, though they can claim the benefit on the strength of the certificate of registration. It is ordered accordingly. - E/1858-1859/2003 - A/207-208/2010-WZB/C-II/EB - Dated:- 1-7-2010 - S/Shri P.G. Chacko, S.K. Gaule, JJ. REPRESENTED BY : Shri N.A. Sayyed, JDR, for the Appell ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2. The final order passed by this Bench in these appeals was set aside by the Hon ble High Court vide order dated 5-8-2009 in Central Excise Appeal No. 53 of 2009 and the case was remanded for de novo consideration. It appears from the Hon ble High Court s judgment that the assessee s submission that the true import of the agreement dated 9-1-1996 had not been considered by this Tribunal in the earlier order was accepted. The grievance of the party that certain judgments of the Supreme Court cited by them before this Tribunal in the earlier round of litigation was not considered was also taken in to account by the Hon ble High Court. A similar grievance relating to time-bar was also taken note of. Consequently, in the present proceedings, we are called upon to deal with all issues de novo. 3. Learned JDR reiterates the grounds of the appeals. He also claims support from the final order dated4-8-2008which was passed by this Bench in these appeals but subsequently set aside by the High Court. It is submitted that, for claiming the benefit of SSI notifications without the bar of the aforesaid para 5 /para 4, the assessee should establish that ownership of the brand name had been tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the trade mark did not involve the payment of any royalty or other consideration, other than the royalties payable under a certain Financial and Technical Know-How Agreement ( License Agreement) by USER to LICENSOR. As against all these provisions of the agreement, the parties concluded what is called Supplement Agreement to the Trade Mark Registered User Agreement, on9-1-1996. This agreement added clause 19 to the Trade Mark Registered User Agreement. Clause 19 reads as under : It is further clarified that Brand name Advance has been assigned by Licensor to USER are free to use it on their product and get it registered in their name in India. Licensor has not assigned their above brand name to any other party/person inIndiaand would not assign the same to any one in future for the duration of this agreement. Further Licensor would not manufacture inIndiaany goods bearing above brand name assigned to USER for period of the agreement. 4. It is the above provision which has been interpreted by the learned JDR to say that it does not materially alter the relevant terms and conditions of the Trade Mark Registered User Agreement dated16-11-1995. The learned JDR has also he ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dated18-8-1999for registration of the brand name in their favour under the Trade and Merchandise Marks Act was eventually allowed by the competent authority and consequently the assessee became the registered owner of the brand name. Learned counsel claims that, by virtue of the registration certificate issued by the competent authority under the above Act, the assessee became the registered owner w.e.f. 9-1-1996, the date on which the exclusive right to use the brand name in India had been transferred by the Licensor to them. The learned counsel has also relied on a plethora of decisions, which we will consider in the appropriate context while discussing the merits and demerits of the arguments made before us. The gist of arguments of the learned counsel is that the assessee is entitled to claim the benefit of the SSI notifications without the bar of para 5 or para 4, as the case may be, by virtue of the fact that the right to use the brand name in India was exclusively assigned by the Licensor to the assessee under the agreement dated 16-1-1995 as amended by the agreement dated 9-1-1996. According to the learned counsel, such assignment is enough to constitute ownership for the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The Licensor agreed not to assign the brand name to any other person inIndiaduring the tenure of the agreement. They also agreed not to manufacture inIndiaany goods bearing the brand name during the tenure of the agreement. The agreement was intended to be in force for 10 years from the date it was filed with the Reserve Bank ofIndia. Answering a query from the Bench, the counsel says, he is not aware of the date on which this agreement was filed with RBI. In any case, if it be assumed that the agreement was filed with RBI on the very date thereof (16-11-1995), it should continue in force up to15-11-2005. The period of dispute in the present case is prior to15-11-2005and hence covered by the relevant terms and conditions of the agreement. We have already given a brief account of the terms and conditions pertaining to trade marks. As per these terms and conditions as contained in the agreement prior to 9-1-1996, the assessee obtained non-exclusive right from the Licensor to use the trade mark in the territory (which includes India) as a registered user of the trade mark but did not acquire any ownership in the trade mark or in its registration. The assessee, under the original agre ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hown even to have bordered on ownership. 7. Nevertheless, with regard to registration of the trade mark, we have not found any inconsistency between the additional Clause 19 and the original clauses of the agreement. A right to get the brand name registered in the assessee s name inIndiawas intended to be transferred to them under the original provisions. This right has been reiterated or reaffirmed in the additional clause inserted on9-1-1996. The conduct of the party also has been in keeping with this purport of the agreement inasmuch as they applied for registration in August 1999 and obtained the same in 2005. We have seen a copy of the registration certificate issued to them by the competent authority under the Trade and Merchandise Marks Act. This certificate, on its face, says that it will have effect from the date of application, i.e.,18-8-1999. It cannot have retrospective effect farther into the past. The claim made by the learned counsel that the registration of the trade mark in favour of the assessee should take effect from9-1-1996is, therefore, unacceptable. We think, in this context, the Hon ble Supreme Court s judgment cited by the JDR is relevant. Their lordships ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (232) E.L.T. 69 (Tri.-Chennai) (v) Commissioner v. Bigen Industries Ltd. - 2006 (197) E.L.T. 305 (S.C.); and (vi) Commissioner v. Damnet Chemicals Pvt. Ltd. - 2007 (216) E.L.T. 3 (S.C.). The learned counsel submits that, amongst the above decisions, the one rendered by this Tribunal in MEL Systems and Services (supra) is squarely applicable to the facts of the instant case. On a perusal of the decision in MEL Systems and Services, we find that the exclusive right to use the brand name inIndiawas found to have been granted to the assessee by the brand name owner (foreign company) under an agreement in that case. It was also held in that case that such grant of exclusive right to use the brand name inIndiaamounted to assignment for the purposes of SSI notifications. That the ownership of the brand name vested with the foreign company or that the agreement was not registered was held to be immaterial. We find that the view taken by the Tribunal in the above case will not hold good in the wake of Supreme Court s decision in Prince Valves Industry s (supra) wherein the assessee was held to be not entitled to exemption under Notification 1/93-C.E. in respect of the goods cl ..... X X X X Extracts X X X X X X X X Extracts X X X X
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