Taxation of Income from Transfer of Intangible Assets between Non-Residents

[The following guest post is contributed by Shailendera Singh, who is a lawyer practising in Delhi. He can be reached at shailenderasngh@gmail.com]
A judgment of the Delhi High Court rendered on July 25, 2016 in CUB Pty Limited (Formerly Known as Foster’s Australia Ltd) v. Union of Indiahas held that the situs of an intangible property is where the owner of the property resides, and a transfer of such property by a non-resident owner to another non-resident would not be taxable in India. This poses interesting questions following the arguably settled controversy around the retroactive amendments to Section 9 of the Income Tax Act, 1961 (“ITA, 1961”).
Facts of the case and arguments presented:
In 1997, the parent company (Foster’s Australia Limited) entered into a brand licence agreement with its subsidiary two levels below (i.e., Foster’s India Limited) granting it the right to use its trademarks. The trademarks were registered in India. In 2006, Foster’s Australia Limited executed a composite agreement with SAB Miller for sale of shares of the holding company of Foster’s India Limited, and sale of its trademarks and brand intellectual property. The matter was on appeal before the High Court against the ruling of the Authority for Advance Ruling, which had ruled that Foster’s Australia Limited’s income which accrued from transfer of the intellectual property was taxable in India.
Foster’s Australia argued before the High Court that the situs of an intangible property is where the owner of the property resides (mobilia sequuntur personam – a common law principle) and therefore the income from the transfer of the capital asset cannot be deemed to accrue or arise in India (fourth limb of Section 9(1)(i) of the ITA, 1961).
The Union of India, in response, submitted that the trademarks were registered in India with no value at its time of registration, gaining appreciable goodwill and value over time through the concerted efforts of the appellant and Foster’s India Limited. Therefore, the principle of mobilia sequuntur personam must be discarded to hold the situs of the property in India.
Decision and analysis:
The Court allowed the appeal solely on the basis that the legislature while introducing Explanation 5 to Section 9(1) of the ITA, 1961 (a retrospective amendment pursuant to the Finance Act, 2012) has chosen to not provide for the location of intangible capital assets, in the absence of which the common law principle shall apply.
It is interesting to note that while the Union did adopt the argument that the property (capital asset) derives its value from India, it did not argue that Explanation 5 being a mere clarification, the principle of source based taxation, inherent in Sections 5 and 9 of ITA, 1961, should prevail over a principle laid down by English Courts – as it did in the case of Vodafone v Union of India ((2012) 6 SCC 613). Readers may remember that the arguments in Vodafone by the Union was precisely this in order to get over another judicial principle (shares are situated where the company is incorporated), where it was argued that since the share is only a mode and derives its value from the assets in India, it must be held to be situated in India. A question also arises: would a transfer of any capital asset between non-residents – other than share or interest in a company – not be taxable in India as long as its situs can be argued to be located outside India? A question, most likely, to be answered by the addition of another Explanation!

– Shailendera Singh