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Income Tax Appellate Tribunal, DELHI BENCH: ‘D’ NEW DELHI
Before: SHRI G.S. PANNU, HON’BLE & SHRI SAKTIJIT DEY, JUDICAL MEMBER
The captioned appeal by the assessee arises out of the order dated 31.01.2018 of learned Commissioner of Income Tax (Appeals)-43, New Delhi, pertaining to assessment year 2014-15.
2. The grounds raised by the assessee are as under:
Based on the facts and in the circumstances of the case and in law, the Appellant respectfully craves leave to prefer an appeal against the order passed by the learned Commissioner of Income-tax (Appeals) - 43
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
[‘Learned CIT(A)’], under Section 250 of the Income-tax Act, 1961 (‘Act’), on the following grounds:
On the facts and circumstances of the case and in law, the learned CIT(A) has:
General ground
1. erred in upholding the total income of the Appellant at Rs 2,59,12,200 as against the returned income of Rs 9,17,792.
Taxability of sale of software products
2. erred in upholding that the income earned by the Appellant from sale of software products of Rs 1,30,74,292 is taxable in India as ‘royalty’ under Section 9(1 )(vi) of the Act and under Article 12 of the India- Singapore Tax Treaty.
Taxability of provision of software related support services
3. erred in upholding that income earned by the Appellant from provision of software related support services ofRs 1,19,20,121 is taxable in India as ‘Fees for Technical Services’ under Section 9(l)(vii) of the Act and under Article 12 of India-Singapore Tax Treaty. 4. erred in upholding that income earned by the Appellant from provision of software related support services of Rs 1.19220.121 is taxable in India as ‘royalty’ under Section 9(l)(vi) of the Act and under Article 12 of India-Singapore Tax Treaty.
Levy of education cess
5. erred in levying education cess amounting to Rs 77,737 without appreciating the fact that the tax rate under Article 12 of the India- Singapore Tax Treaty is inclusive of education cess.
Other grounds
6. erred in charging interest under section 234B of the Act amounting to Rs.20,196.
7. erred in initiating penalty proceedings under section 271(1)(c) of the Act.
Each of the above grounds of appeal is without prejudice to the independent of one another.
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
3. Ground no. 1 being a general ground does not require specific adjudication.
The core issue arising in the appeal is raised in ground nos.
2, 3 and 4 and concerns taxability of amount received by the assessee from sale of software and provision of software related support services as royalty and Fees for Technical Services (FTS) both under the provisions of Income-tax Act, 1961 as well as under India – Singapore Double Taxation Avoidance Agreement (DTAA).
Briefly the facts relevant for the purpose of deciding the issue are, the assessee is a non-resident company incorporated in Singapore and is a tax resident of that country. The assesse is a wholly owned subsidiary of Microstrategy Inc., a US based company. The core activity of the assessee is distribution and maintenance of software to customers in the Asian market.
Additionally, the assessee also offers consultancy, system integration and education services to its customers for sale of software products and provision of services. The assessee has entered into agreement with Indian distributors, partners (resellers) for sale of software products as well as related maintenance support services. The maintenance support services
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.) include upgradation of software version, addressing critical defect correction and resolving queries over telephone. During the year under consideration, the assessee has sold software products and rendered maintenance services to Indian customers against which it has received a consideration of Rs.2,59,12,204/-. An amount of Rs.26,09,576/- was withheld at source by the Indian customers towards tax. As could be seen, out of the aforesaid amount received, an amount of Rs. 9,17,792/- relating to training/education related services was offered to tax in India while filing the return of income for the impugned assessment year. Whereas, the balance amount of Rs.2,44,94,412/- was not offered to tax on the plea that it is neither royalty nor FTS. Hence, in absence of a PE, the amount, being in the nature of business income, is not taxable.
The Assessing Officer, however, did not accept the claim of the assessee. Relying upon certain judicial precedents, including, the decision of Hon’ble Karnataka High court in case of CIT Vs. Samsung Electronic Pvt. Ltd. he held that the amount received by the assessee towards sale of software products and provision of software related maintenance services is in the nature of royalty, both under section 9(1)(vi) of the Act as well under Article 12(3) of (AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
the India – Singapore DTAA. Further, he held that the amount received by the assessee towards provision of software related maintenance services, as otherwise, is also in the nature of FTS both under Section 9(1)(vii) as well as Article 12(4)(b) of the India – Singapore Tax Treaty. Accordingly, he added back the amount of Rs.2,59,12,204/- to the income of the assessee while completing the assessment.
The aforesaid decision of the Assessing Officer was also upheld by learned Commissioner (Appeals) while deciding assessee’s appeal.
Learned counsel for the assessee submitted, the amount received on sale of software and provision of software related maintenance services cannot be treated as royalty under Article 12(3) of the India – Singapore Tax Treaty, as, what the assessee has sold is a copyrighted article and not copyright.
Drawing our attention to the sample copy of reseller agreement with the Indian distributors placed in the paper-book as well as sample copy of invoices raised, he submitted, the assessee and its holding company exclusively own intellectual property rights in and on the software. He submitted, the assessee merely grants the Indian distributors/resellers the right
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.) to distribute a copyrighted article and not the copyright.
Therefore, the Indian distributors/resellers do not use or have right to use the copyright in the software product. He submitted, there is nothing on record to suggest that the assessee has transferred its right over the copyright to the Indian distributors.
He submitted, the definition of royalty under Article 12(3) is narrower than section 9(1)(vi) of the Act. He submitted, since reciprocal amendment in conformity with the provisions contained in the Act has not been made in Article 12(3), the definition of royalty as given in the domestic law cannot be imported to the Treaty provisions. He submitted, going by the definition of royalty under Article 12(3) of the Treaty, only in case of transfer of copyright the amount received can be treated as royalty. Whereas, if the amount received is in respect of sale of copyrighted article simplicitor, it cannot be regarded as royalty under Article 12(3).
He submitted, the ratio laid down in case of CIT Vs. Samsung Electronics Pvt. Ltd. (supra) relied upon by the departmental authorities is no longer good law in view of the decision of the Hon’ble Supreme Court in case of Engineering Analysis Centre of Excellence (P) Ltd. Vs. CIT, [2021] 125
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.) taxmann.com 42 (SC). He submitted, the ratio laid down by the Hon’ble Supreme Court in the aforesaid decision would squarely apply to assessee’s case as the facts are, more or less, identical.
To buttress his contention, learned counsel for the assessee furnished before us a chart showing the comparative analysis of the facts in assesee’s case and in case of Engineering Analysis Centre of Excellence (P.) Ltd.(supra). For better appreciation, the comparative analysis is reproduced hereunder:
Sl. Engineering Analysis No. Microstrategy Singapore Centre of Excellence (P.) Ltd.
Parties involved: • MSTR Singapore is a wholly The appeals has been owned subsidiary of MSTR US grouped into four categories, and is responsible for out of which the below two distribution and maintenance are relevant: (upgrading, defect correction • The first category deals and hotline) of MSTR software with cases in which for customers in Asian computer software is markets. It also offers purchased directly by an consulting, system integration end-user, resident in India, and education services to its from a foreign, non-resident customers. supplier or manufacturer. • MSTR Singapore enters into • The second category of agreements with Indian cases deals with resident distributors/ partners on Indian companies that act principal to principal basis. as distributors or resellers, by purchasing computer software from foreign, non- resident suppliers or manufacturers and then reselling the same to resident Indian end-users.
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2. Relevant extracts from Agreement: MICROSTRATEGY END USER Category 1: LICENSE AGREEMENT: “1. GRANT OF LICENCE. “4. RIGHTS AND RESTRICTIONS Samsung grants you a 4.1 Subject to Licensee's limited non-exclusive compliance with this Agreement licence to install, use, MicroStrategy grants Licensee a access, display and run nonexclusive, non-transferable one copy of the Samsung license, without the right to Software on a single grant sublicenses, (a) to install Samsung Mobile Device, and use the Products according local hard disk(s) or other to this Agreement solely for permanent storage media Licensee's internal business use, of one computer and you for the DSI specified on the may not make Samsung Order in the Territory, and (b) to Software available over a make one copy, for Non- network where it could be Production Use in the Territory used by multiple solely as an offline archival computers at the same backup, of each Product. The time. You may make one right of use is granted only for copy of the Samsung the Products ordered, even if Software in machine such Products are delivered on readable form for backup media containing other Products. purposes only; provided that the backup copy must 4.2 Licensee shall not, directly include all copyright or or indirectly: other proprietary notices contained on the original. (a) copy, display, distribute, or ….. otherwise use the Products or 2. RESERVATION OF the metadata created by the RIGHTS AND OWNERSHIP. Products in any manner or for Samsung reserves all any purpose not expressly rights not expressly authorized by this Agreement. granted to you in this (b) create derivative works of or EULA. The Software is otherwise adapt, modify, or protected by copyright and translate the Products or the other intellectual property metadata created by the laws and treaties. Products, Samsung or its suppliers (c) rent, lend or transfer a own the title, copyright and Product or a Product license to other intellectual property an Affiliate of Licensee. rights in the Samsung (d) reverse engineer, reverse Software. The Samsung compile, or disassemble the Software is licenced, not Products or the metadata sold. created by the Products or otherwise obtain or derive the 3. LIMITATIONS ON END source code of the Products. USER RIGHTS. You shall
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(e) rent, lease, or lend the not, and shall not enable or Products or a Product license, permit others to, copy, purport to sell or resell the reverse engineer, Products, purport to grant any decompile, disassemble, or license or sublicense in the otherwise attempt to Products, use the Products or discover the source code or the metadata created by the algorithms of, the Software Products for outsourcing, or (except and only to the provide any persons with access extent that such activity is to the Products or the metadata expressly permitted by created by the Products through applicable law a service bureau, timesharing, notwithstanding this or ASP arrangement, or limitation), or modify, or (f) use any Product or other disable any features of, the Confidential Information to Software, or create create any computer program or derivative works based on user documentation that is the Software. You may not substantially similar to any rent, lease, lend, sublicense Product. or provide commercial hosting services with the 4.3 Licensee acquires no Software. You may not ownership rights in or title to the transfer this EULA or the Products. The Products are rights to the Samsung licensed and not sold. Micro Software granted herein to Strategy and its licensors retain any third party unless it is all ownership rights in and title in connection with the sale to the Products. Licensee shall of the mobile device which not at any time during or after the Samsung Software the term of this Agreement accompanied. In such assert or claim any interest in, event, the transfer must or assert or do anything that include all of the Samsung may adversely affect Software (including all MicroStrategy's ownership of, or component parts, the media the validity of, the intellectual and printed materials, any property and proprietary rights upgrades, this EULA) and of MicroStrategy in or relating to you may not retain any the Products. copies of the Samsung Software. The transfer may not be an indirect transfer, such as a consignment. Prior to the transfer, the end user receiving the Samsung Software must agree to all the EULA terms. Where Samsung Mobile Device is being used by your employee or other person using the Samsung Mobile
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
Device as part of your undertaking ("Your Staff'), that member of your Staff is licenced to use the Samsung Software as if it were you and must comply with these terms on the same basis. Any failure to comply with these terms by your Staff shall be deemed [to be a] failure to comply with these terms by you." RESELLER AGREEMENT Category 2:
“1.1 Subject to receipt by "Other Responsibilities MicroStrategy of all fees owed You agree: by Reseller, MicroStrategy ….. grants Reseller a non-exclusive, non-transferable license, during 2. that your rights under the Term, to: this Agreement are not property rights and (a) distribute Products to any therefore, you can not Approved Opportunity in the transfer them to anyone Territory according to the terms else or encumber them in and conditions of this any way. For example, you Agreement; can not sell your approval (b) market and demonstrate the to market our Programs or Products to any Approved your rights to use Opportunity in the Territory Trademarks; according to the terms and conditions of this Agreement.
Not to assign or Reseller shall delete any otherwise transfer this demonstration copies of the Agreement, your rights Products upon completion of any under it, or any of its demonstration at an Approved approvals or delegate any Opportunity site; duties, other than to a (c) distribute copies of the Related Company, unless Products to any Approved expressly permitted to do so Opportunity in the Territory under this Agreement." solely for Evaluation, according …. to the terms and conditions of "7. Patents, Copyrights and this Agreement and the Intellectual Property Rights. applicable clickwrap license You agree that you do not agreement included with the and shall not own any Products, and.....” right, title or interest in and to any and all patents, “1.4 Reseller shall not directly or copyrights and intellectual indirectly: property rights.
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
(a) copy, display, distribute, or otherwise use the Products or You shall not alter, deface, the metadata created by the remove, cover, mutilate, or Products, in any manner or for add to, in any manner any purpose not expressly whatsoever, any patent authorized by the Agreement notice, copyright notice, (b) reverse engineer, decompile, trademark, service mark, translate or disassemble the trade name, serial number, Products or the metadata model number, brand name created by the Products or legend that we may (c) rent, lend or transfer a attach or affix to the Product or a Product license to Programs. an Affiliate or Resseler (d) use the Products or the "2. License Grant metadata created by the The Program is owned by Products for outsourcing, or IBM or an IBM supplier, provide any access to the and is copyrighted and Products through a service licensed, not sold.... Assimil bureau, time-sharing or ASP Limited grants Licensee a agreement nonexclusive license to (e) Market or demonstrate any (1) use the Program up to pre-release Software(“Beta”) in the Authorized Use the Territory. specified in the PoE (2).... 1.5 Reseller and End Users (3) a).... acquire no ownership rights in b).... or title to the Products. The e) Licensee does not: Products are licensed and not (i) use, copy, modify, or sold. No use of the terms "sell" or distribute the Program "resell" in or in connection with except as expressly this Agreement shall be deemed permitted in this agreement; to imply otherwise. (ii) reverse assemble, MicroStrategy and its licensors reverse compile, otherwise retain all ownership rights in translate, or reverse and title to the Products.” engineer the program, except as expressly permitted by law without the possibility of contractual waiver; (iii) use any of the Program's components, files, modules, audio-visual content, or related licensed materials separately from that program; or (iv) sublicense, rent, or lease the Program;"
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
End-user licence agreements and distribution agreements: • What is granted to the • Indian distributors/ partners do not use or have any right to distributor is only a non- use the copyright in the exclusive, non-transferable software products and MSTR licence to resell computer Singapore merely grants a software, it being expressly right to distribute the software stipulated that no copyright in India. in the computer programme • It is mentioned in the EULA and is transferred either to the reseller agreement that no distributor or to the ultimate further right to sublicense or end-user. • Similarly, no further right to transfer, nor is there any right to reverse-engineer, modify, sub-license or transfer, nor reproduce in any manner is there any right to reverse- otherwise than permitted by the engineer, modify, reproduce licence to the end-user. in any manner otherwise than permitted by the licence to the end-user.
Thus, he submitted, the issue is squarely covered in favourte of the assessee by virtue of the aforesaid decision of the Hon’ble Supreme Court.
As regards treatment of software related maintenance services as FTS, learned counsel for the assessee submitted, while providing such services, the assessee has not made available any technical knowledge, skill, knowhow or experience which would enable the party to use it independently without requiring the aid and assistance of the assessee. He submitted, the provision of Article 12(4) of India – Singapore Treaty are identical to Article 12(4) of India – USA Treaty. He submitted, in the Memorandum of (AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
Understanding to the Indian – USA Tax Treaty, it has been explained that Article 12(4), includes only certain technical and consultancy services. He submitted, technical services, in this context, have been interpreted as service requiring expertise to a particular technology; consultancy services have been interpreted to mean advisory services. He submitted, while explaining Article 12(4)(b) in the Memorandum of Understanding to the Indian – USA Tax Treaty, it has been said that only those services, which make available experience, skills, know-how or processes or consist of the development or transfer of the technical plan or technical design qualify as included services or technical services.
He submitted, Memorandum of Understanding explaining the provision of section 12(4) of India – USA Tax Treaty can also be used as a guide to interpret Article 12(4) of India – Singapore DTAA. Thus, he submitted, when the Revenue has failed to demonstrate that the ‘make available’ condition has been satisfied, the amount received cannot be treated as FTS in terms with Article 12(4)(b) of the Treaty. In support of his contention, he relied upon the following decisions: • DIT vs Guy Carpenter (346 ITR 504) (Delhi HC) • Interteck Services [307 ITR 418]. The decision has been followed in the case of M/s Invensys Systems Inc [AAR No 796 of 2009].
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
• Anapharma Inc [305 ITR 405]. The decision has been followed in the case of M/s BharatiAxa General Insurance Co Ltd [AAR No 845 of 2009 • CIT v. De Beers India Minerals (P.) Ltd. (346 ITR 467) (Karnataka HC) • Raymond Ltd vs DCIT (Mumbai Tribunal) (86 ITD 791) • Boston Consulting Group (Mumbai Tribunal) (280 ITR 1) • DDIT v Preroy AG (Mumbai Tribunal) (309 SOT 187) • Mark & Spencer Reliance India Pvt. Ltd. (38 taxmann 190) (Mumbai Tribunal) • Anapharm Inc (305 ITR 394) (AAR) • ITO vs Nokia India Pvt. Ltd.(Delhi Tribunal) (44 CCH 314) • Intertek Testing Services India Pvt Ltd (307 ITR 418) (AAR) • Hughes Systique India (P) Ltd. vs DCIT (50 Taxmann.com 25) (Delhi Tribunal) • ACIT v Viceroy Hotels Ltd (60 DTR 1) (Hyderabad Tribunal) 13. Insofar as the taxability of the amount received by the assessee as royalty is concerned, learned Departmental Representative fairly submitted that the issue now stands covered in favour of the assessee in view of the ratio laid down by the Hon’ble Supreme Court in case of Engineering Analysis Centre of Excellence (P.) Ltd. (supra). However, insofar as the issue of taxability of the amount as FTS, learned Departmental Representative submitted, while providing such services the assessee has made available technical knowledge, skill, knowhow etc. to the distributors/resellers to enable them to use such technical knowledge, skills, know-how etc. Therefore, the consideration received for provision of such services has to be treated as FTS.
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
We have considered rival submissions and perused the materials on record. Undisputedly, during the year under consideration, the assessee had sold certain software products to customers in India and has also provided software related maintenance services. The first issue which arises for consideration is, whether the amount received by the assessee towards sale of software products and software related maintenance services can be treated as royalty under Article 12(3) of India – Singapore Tax Treaty. In case, it does not come within the ambit of royalty as defined under the Treaty, there is no need to go into the provisions of the Act. On a perusal of the assessment order it is noticed that the Assessing Officer has not factually examined the nature of transaction between the assessee and the Indian Customers. The Assessing Officer relying upon certain judicial precedents has straightway assumed that the assessee has sold a copyright. However, neither the sample agreement nor any other material available on record demonstrate that the assessee has transferred/sold the use or right to use a copyright and not copyrighted article.
On the contrary, the facts on record clearly demonstrate that what the assessee has sold is copyrighted article and not the (AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
copyright. It is also observed, while treating the payment received by the assessee as royalty, the departmental authorities have been greatly influenced by the decision of the Hon’ble Karnataka High Court in case of Samsung Electronics Pvt. Ltd. (supra).
However, the issue is no more res integra in view of the decision of Hon’ble Supreme court in case of Engineering Analysis Centre of Excellence (P.) Ltd. (supra). Since, the factual matrix clearly reveals that the assessee has sold a copyrighted article and not the copyright, the ratio laid down by the Hon’ble Apex Court in the decision referred to above would squarely apply. Accordingly, we hold that the amount received by the assessee from sale of software and provision of software related services cannot be treated as royalty under Article 12(3) of the India – Singapore DTAA.
Insofar as the issue of treating the amount received towards provisions of software related services as FTS, we have noticed that the Assessing Officer has not brought any cogent material on record to demonstrate that while providing the software related maintenance service, the assessee has made available any technical knowledge, knowhow, skill etc. so as to enable the recipient of such service to use it independently in exclusion of (AY: 2014-15) (Microstrategy Singapore Pte. Ltd.)
the assessee. Therefore, in our considered opinion, the conditions of Article 12(4)(b) of the Treaty are not satisfied. That being the factual position emerged on record, the amount received cannot be treated as FTS. Therefore, the addition made is deleted.
Accordingly, ground nos. 2, 3 and 4 are allowed.
In ground no. 5, the assessee has challenged the levy of education cess on the ground that as per the definition of tax under Article 2, being in the nature of surcharge, would be included in the tax rates prescribed in the Treaty. For such, proposition, he relied on the following decisions: • Soregam SA v DDIT (101 taxmann.com 94) (Delhi Tribunal) (referpage no. 370 to 382 of Legal Paperbook) • DIC Asia Pacific Pte Ltd v Assistant Director of Income Tax (18 ITR(T) 358) (Kolkata Tribunal) (refer page no. 383 to 386 of Legal Paperbook) • R.A.K. Ceramics, UAE v DCIT(IT) (176ITD 294)(Hyderabad Tribunal) • Sunil V Motiani v Income Tax Officer (International Taxation) (59 SOT 37) (Mumbai Tribunal)
Learned Departmental Representative submitted, the issue may be resorted back to the Assessing Officer for re-examination.
Having considered rival submissions, we are of the view that the issue has become, more or less, academic, since, we have deleted the additions made by the Assessing Officer. However, the Assessing Officer is directed to compute the tax liability strictly in terms with the Treaty provisions, keeping in view the ratio laid
(AY: 2014-15) (Microstrategy Singapore Pte. Ltd.) down in the decisions, referred to above. Ground nos. 6 and 7, being inconsequential, do not require adjudication.
In the result, the appeal is allowed, as indicated above.
Order pronounced in the open court on 29th April, 2022