What makes the difference even more stark is the fact that the enhanced tax rate will apply to only those brands with trademarks in force and not others. “The differential tax treatment between registered brands vis-a-vis brands for which registration applications are pending, brand names which are registered outside India or unregistered brands which spend substantial amounts on brand building and operate at similar commercial levels may lead to unequal treatment of equals, without any intelligible differentia,” says Sandeep Chilana, partner, Shardul Amarchand Mangaldas.
Prior to the GST
regime, branded food products were charged a standard central excise tax, regardless of whether they had trademarks. Sources say that this classification was not acceptable to the GST Council as it taxed even micro-brands, to the disadvantage of smaller manufacturers. To rectify this, the council decided to levy a tax only on trademark products. However, instead of providing an advantage to these smaller players, the distinction has led to severe uncertainty in the market and also raised issues of constitutional irregularity, note experts.
Although these affected manufacturers are said to be looking at alternate possibilities, any applications for deregistration of trademarks will be at the discretion of the trademark registry, according to Section 58 of the Trademarks Act, 1999. The request could also take a considerable amount of time as no time-period is prescribed to process the application. Until the registry confirms the request in writing, the mark will continue to remain as registered within the meaning of the Act and as a result could continue to be liable for the higher rate of GST, says Anil Dutt, partner, Lakshmikumaran & Sridharan.
According to Dev Robinson, national practice head, IPR, Shardul Amarchand Mangaldas, trademarks are representative of quality and origin. “The government’s decision to tax registered and unregistered brands differentially seems counterintuitive to developing brand worthiness in these highly competitive markets,” notes Robinson.
Experts have also raised health and quality concerns associated with de-registration of trademarks. Although the Food Safety and Standards (Food Products and Food Additives) Regulations 2011, which lay down safety standards for food products, do not differentiate between trademark and non-trademark goods, it could become harder for the authorities to ensure compliance of these requirements for non-trademark and imitation products.
According to Safir Anand, senior partner, Anand and Anand, any proposal that acts as a deterrent to registration of trademarks could have a negative effect on customer association and trust that a product is genuine. “Registration of trademarks is also a perquisite for recordal before customs, which tackles issues of counterfeit import and export. De-registration of a trademark can hamper such activities. If the government’s intent was to impose taxes, it should have been on brands per se but not targeted on registered marks,” adds Anand.
Although the de-registration of a trademark does not leave the owner of such a brand remediless against imitations, passing off actions under common law and Section 28 of the Act may require additional litigation and put larger manufacturers at an advantage. Passing off actions require a company to prove its position as a prior user with an established reputation, usually made through monetary investments. “Companies having registered trademarks abroad who choose not to obtain trademark registrations in India would also have stronger protection in case of such passing of actions,” says Chilana.
While experts are in agreement that the present scenario poses a unique challenge for the government and the affected industries, they also highlight that establishing an alternative approach may prove difficult. All eyes are on the Saturday GST Council meet in the hope of finding a viable solution to the issue.
The government had fixed a 5% GST rate on food items packaged in unit containers and bearing registered brand names
The move has affected the packaged rice industry the hardest
It has allowed the un-registered market leaders, India Gate and Daawat, to gain advantage
Registered brands such as Kohinoor and Lal Qilla are staring at a loss
Smaller players are even more worried with this enhanced rate of tax (against the otherwise ‘nil’ rate) on registered brands
Many of the manufacturers are even taking the drastic step of re-registering their trademarks