OWENS CORNING COMPOSITE MATERIALS LLC,MUMBAI vs. DY CIT (IT)- CIRCLE-3(2)(2), MUMBAI

Shri Sandeep Bhalla appearing on behalf of the assessee submits that the consideration received for the software is not in the nature of ‘Royalty’ as has been alleged by Dispute Resolution Panel (DRP) and the Assessing Officer. The assessee or any of its AEs has not been granted any right in the underlying copyright of the software. The assessee has purchased a ‘copyrighted article’ and not a right to exploit the copyright in a software. The assessee acquired software at the total cost of USD 7.56 lakhs. The cost of acquisition of software was equally recovered from each of its plants having particular manufacturing line across the world i.e. USD 1.08 lakhs without any mark up. The ownership/title of the copyrighted software vests with the assessee. OCIPL has only right to use the software for a plant. The consideration paid by OCIPL is for the use of copyrighted article and not for the use of copyrights.

Per contra, Smt. Mahita Nair representing the Department vehemently supported the impugned assessment order and prayed for dismissing the appeal of the assessee. The ld.Departmental Representative submits that in submissions before DRP, the assessee claimed that the payments are capital receipts. The ld.Departmental Representative referred to the submissions of assessee at page – 5 of the DRP directions. The ld.Departmental Representative further submits that the payments received by the assessee from its Indian AE are in the nature of royalty as defined in section 9(1)(vi) of the Act. The ld.Departmental Representative submits that the case of the assessee does not fall in any of the categories as mentioned in Para-4 of the Hon'ble Supreme Court decision in the case of Engineering Analysis (supra).

The ld. Authorized Representative of the assessee rebutting the arguments raised on behalf of the Revenue submits that in so far as reference to capital expenditure in the submissions before the DRP, the expenditure towards reimbursement of software expenditure is in the nature of capital expenditure in the hands of OCIPL. The ld. Authorized Representative of the assessee asserted that with reference of category as mentioned in the case of Engineering Analysis (supra), the assessee falls in category (i) or (iii) as a reseller. The ld. Authorized Representative of the assessee further pointed that Explanation -4 was inserted by Finance Act, 2012 with retrospective effect i.e.from 01/06/1976, therefore, it would have as much application to the assessment year 2001-02 as it is relevant for the assessment year in appeal. The ld. Authorized Representative of the assessee further submits that Hon'ble Supreme Court of India in the case of Engineering Analysis (supra) has considered Explanation -4 and has thereafter held that amount paid by Indian entity to non- resident computer software manufacturer/suppliers for resale /use of computer software, the payment thereof for use of copyright in computer software is not a payment of royalty, hence, the same is not taxable in India.

In respect of ground No.2 of appeal, the ld. Authorized Representative of the assessee submits that the Assessing Officer has erred in granting short credit of TDS. As against TDS of Rs.80,31,823/- claimed by the assessee in its return of income, the Assessing Officer has granted TDS credit of Rs.75,98,194/-. The ld. Authorized Representative of the assessee prayed that a direction may be given to the Assessing Officer to grant credit of balance TDS.

We have heard the submissions made by rival sides and have examined the orders of authorities below. The solitary contentious issue in the appeal is with respect to the amount paid by Indian AE of the assessee towards software charges, held to be “Royalty” by the Department. Whereas, the claim of assessee is that it is reimbursement of cost. The assessee has allegedly developed software SAP-MII with the help of a third party. The aforesaid is used by Owens Corning facilities worldwide. The assessee is having eight such facilities. A perusal of the impugned order reveals that the software is web based software and not installed on individual machines. This implies that Owens Corning facilities worldwide will have access to the software from their respective facilities, whereas the software is located on the server located in USA. The contention of the assessee is that SAP-MII held by the assessee is a copyrighted article and it has been purchased for the use and the assessee has merely purchased a copy of the copyrighted article. We are in agreement with the arguments of the assessee that where the payment is made for the use of copyrighted article, such payment is not in the nature of ‘Royalty’, hence, the same is not taxable under the provisions of section 9(1)(vi) of the Act.

The Hon’ble Apex Court in the case of Engineering Analysis (supra) while dealing with bunch of appeals has grouped assessee’s in four categories as under:- “4. The appeals before us may be grouped into four categories: (i) The first category deals with cases in which computer software is purchased directly by an end-user, resident in India, from a foreign, non-resident supplier or manufacturer. (ii) The second category of cases deals with resident Indian companies that act 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. (iii) The third category concerns cases wherein the distributor happens to be a foreign, non-resident vendor, who, after purchasing software from a foreign, non-resident seller, resells the same to resident Indian distributors or end-users. (iv) The fourth category includes cases wherein computer software is affixed onto hardware and is sold as an integrated unit/equipment by foreign, non-resident suppliers to resident Indian distributors or end-users.”

In the facts of the case, the assessee can be bracketed in category (iii) (supra) as reseller. It is an unrebutted fact that the assessee has not charged any mark up on the cost of the software allocateed to Indian entity. The assessee has not reflected software ‘SAP-MII’ in its books nor has claimed any depreciation on the same. Thus, in the facts of the case and in the light of the law expounded by the Hon’ble Supreme Court of India we hold that payment made by OCIPL to the assessee for providing copyrighted software would not fall within the definition of ‘royalty’ and is merely reimbursement of cost allocated to OCIPL. The ground No.1 of the appeal is thus, allowed.

In ground No.2 of appeal, the assessee is seeking direction to grant full credit of TDS as claimed. We deem it appropriate to restore this issue as well to the file of Assessing Officer to re-examine and allow TDS credit after verifying the documents on record.

In the result, appeal by the assessee is partly allowed, in the terms aforesaid.