INDIAN PHARMACEUTICAL INDUSTRY: AN OVERVIEW

 

Indian pharmaceutical industry is considered to be one of the largest and fast growing industries among the developing countries of this century. The industry is now much advanced from its initial stage and is currently the fourth largest producer of pharmaceuticals and thirteenth largest in terms of domestic consumption globally. This industry employs millions of people and ensures that essential medications are available at affordable prices to the plurality of the country's population. The industry has earned tremendous achievements in the complicated field of drug manufacturing and technology. Almost all types of drugs are manufactured now in India.

During 1947 Indian drug market was utilized by the multinational companies basically importing drugs manufactured in their country. This has been done mainly due to the Patent and Designs Act of 1911.  The act provided product patent for all inventions in India, but the MNCs being the patentees were controlling the industry's market in India.  Under these circumstances they began to import finished formulations of drugs into the local Indian markets.

After independence in 1948, India promulgated her first industrial policy resolution including pharmaceutical industry as an essential industry in the country thereby bringing it under the central regulations. It was during these years that the National Chemical Laboratory at Pune and the Central Drug Research Institute at Lucknow were formed. Moreover, the inadequacy of indigenous technology hindered the production of modern drugs locally. Therefore the government invited FDI to enhance production. This created a situation wherein several major foreign subsidiaries were instituted in India within a short time span. Nevertheless, these foreign entities did not bring major investments to the country to enhance productivity instead they started importing bulk drugs processing it to formulations.

1947 to 1957

During this period India was proceeding with the western type patent legislation and acknowledged product patents along with process patent on drugs. A major portion of the pharmaceutical patents in the country was vested with MNCs outside India. They were distinctly benefited by the patent law, technology, financial resources and their brand names which helped them to clearly establish their monopoly in Indian markets resulting in a situation where drug prices were so high in India when compared to the rest of the world. It was in 1954 that the government established Hindustan Antibiotic Ltd. which is the first public sector drug manufacturing company in India. Later, government established Indian Drugs and Pharmaceutical Limited. These ventures did help to increase drug production and improve manpower, but the size of the national sector continued to remain very small.

1970-1985

Due to some very important strategies initiated by the government the pharmaceutical industry had undergone drastic changes during this time. Furthermore, the introduction of Drug Price Control Order of 1970 was a major step to slow down the multinational control over the industry and helped to boost a self-reliant traditional market. In addition the Drug Policy of 1978 enhanced the availability of drugs at a relatively reasonable price.

Even though the bill was proposed in parliament in 1967 the Act was enforced only in 1972.  The Act did not allow product patent for chemicals, food and medicine. It provided process patents for 5 to 7 years and had helped the country to be self-sufficient in the manufacturing of basic drugs. Under these circumstances researches were done resulting in the development of new processes for numerous drugs and many manufacturing companies were established in India during that period. Besides, the DPCO limited the cost on drugs and was able to ensure that the lifesaving drugs were readily available in Indian market at affordable prices.

During the 1980s due to the introduction of some important industrial and trade policies by the government, India had become a major pharmaceutical producer meeting the country's domestic needs. Thereafter the domestic sector in the country had taken control of a considerable portion of the local market. Moreover it had become necessary that the indigenous drugs and pharmaceutical industry required reorientations to be more equipped with the situations arising out of the benefits of growing economy. Under these circumstances the government revised the Drug Policy and DCPO in 1986 and 1987 respectively. Later some important policy initiatives were declared in the Drug Policy of 1984.

India signed the general agreement on tariffs and trade on 1994 and became a party to the agreement on TRIPs joining the WTO.  India also was a signatory to the Uruguay Round of General Agreement of Tariff and Trade (GATT) during that period. This created a situation wherein India had to bring its patent laws in compliance with the TRIPs agreement. Later India had to make several amendments and was undergoing a transition period for several years for a complete compliance of TRIPs.

The IP legal regime over Indian pharmaceutical industry

In January 1 2005 India in compliance with the TRIPs agreement has made a major amendment in Indian patent laws allowing product patents.  This has had an important impact on the industry mainly on the pharmaceutical products and chemicals. This gave rise to serious issues effecting people's life and right of patent holders. After the amendment the industry had to face major competitions from multinational companies who manufactured patented drugs. Conventional branded generics which dominated the market had to face huge competitions from the multinational companies who produced patented drugs.

A clause in the TRIPs agreement permits the governments to exercise control over patents and provide indispensable drugs to the poor in certain circumstances. The government had introduced adequate legal provision to make sure the availability of medicines at a reasonable price through compulsory licenses. India's provisions for the compulsory licensing of drugs have been considered relatively broad when compared to most of the world's patent systems.[1] While the government was making every effort to comply with the TRIPs the availability of lifesaving drugs at a reasonable price in the local domestic market was even high. Furthermore, the MNCs have started their campaign to protect their rights from the emerging situations. 

The impact of TRIPS agreement in Indian pharma industry basically involves two questions.

(a)    The effect of IPR legislation under this agreement on public health.

(b)   Its effect on the industry and the economy of the country.

The first question may give rise to a situation wherein the patent drugs would increase the cost of medicines in local markets and would lead to the non-availability of essential drugs to the common public and could damage public health. A counter argument would suggest that this may lead to encouraging research and production of new drugs through international investment.

The industry being highly fragmented involving numerous small investors who were very much depended on making generic drugs were more concerned about having the required capital and technology to support an invention of a new patented drug by themselves.  As a result they apprehended that the market will divide in favor of foreign multinationals or major companies within the country.  But the larger companies in the country were in support of the patent hoping that it will bring more foreign investment and stimulate joint activities. This was supported by the fact that the larger companies started initiating several R&D proceedings and have already started to attain patents. Under the present scenario within TRIPS, whether it’s an MNC or an Indian company, success or benefit depends on their continuous efforts and initiatives put forth in the field of developing innovative products and introducing new technologies.

India's new patent rule allows for both post opposition and pre-opposition procedures. Pre-grant opposition may be based on virtually all patentability criteria that can be challenged, including the lack of novelty, inventive step, utility, non-eligible subject matter, the failure to disclose the source of biological material used for the invention, and inventions which are considered traditional knowledge.[2] However, most MNCs consider this as a lengthy procedure in patent prosecution process which leads to uncertain outcomes. On one side Indian generic pharmaceutical manufacturers regarded pre-grant opposition to the new Patent's Act helps to prevent unwanted litigation and was using the procedure more frequently.

During the March 2005 debates of the 2005 Patent Amendments in the Indian Parliament, the issues regarding patentability of micro-organisms and the definition of 'pharmaceutical substance' were raised.[3] The Commerce and Industry Minister referred these issues to a technical expert group (TEG) for detailed examination.[4] The TEG issued its report in December 2006 and concluded that: (1) it would not be TRIPS-compliant to limit granting of patents for pharmaceutical substances to new chemical entities (NCEs) only; and (2) excluding micro-organisms per se from patent protection would be in violation of the TRIPS Agreement.[5] With regards to NCEs, the report stressed that every effort must be made to provide drugs at affordable prices to the people of India and to prevent the grant of frivolous patents and 'ever-greening'.[6] The TEG defined 'ever-greening' as 'an extension of a patent monopoly, achieved by executing trivial and insignificant changes to an already existing patented product' [7] Ever-greening' was to be distinguished from 'incremental innovation', which was 'encouraged by the Indian patent regime', and defined as 'sequential developments that build on the original patented product'[8].

In response to the report, public health groups voiced unease that the recommendations would encourage frivolous patents and threaten access to medicines [9]. On the other hand, many of the MNCs found that the report vindicated many of their concerns. However, the report was later withdrawn amid accusations that it had been plagiarized [10].

NOVARTIS'S CHALLENGE TO SECTION 3(d)

In 2006 the Swiss pharmaceutical company Novartis AG filed a complaint in Madras High Court seeking an order against the rejection of its patent application under s3(d) for its anti-cancer drug Glivec. The petition also challenged the constitutionality of s3(d) in breach of India's  TRIPS obligations. The Madras High Court dealt with the issue of constitutionality and the issue related to the question of patentability was referred to the Intellectual Property Appellate Board. The Madras High Court ruled against Novartis holding that: (1) s3(d) is not unconstitutional; and (2) it did not have jurisdiction over the TRIPS issue, and the WTO would have to decide whether s3(d) is TRIPS-compliant [11]. The decision has precipitated a favorable reaction from India's generic pharmaceutical manufacturers and the world's public health community who feel that if the judgment had gone the other way, there would have been a dearth of affordable drugs in other nations [12]. However, Novartis have now moved the Supreme Court for refusing patent protection for its new drug Glivec following the footsteps of Roche. [13]

A panoramic view of Indian generic pharmaceutical industry reviles the changes through which it has emerged in the past years after the 2005 Patent Amendments and the pharmaceutical patent protections. As a result of that many of the Indian pharmaceutical industries have reinforced the IP legal system and have been constantly increasing their R&D efforts investing in new innovations. While 10 years ago Indian companies invested only about 1% of their revenue on research and development, many of those companies are now contributing much more capital to this goal, typically spending 6-8% of their turnover on R&D [14].   

MNCs initially had been reluctant to set up their company in India inter alia due to the lack of patent protection. The present scenario adapted by the government in granting strong patent protection maybe one of the factors that changed the prior reluctance. Furthermore, the presence of MNCs in India with their research and technologies is growing day by day.

Conclusion

The commencement of pharmaceutical product patent recognition in 2005 has brought tremendous changes in the pharmaceutical industry in India. From the early stages of the post-patent period the industry had a long way to run up to the present stage. Research and development starting from reverse engineering paved the way to the development of new novel drugs and discovery of new research and technologies which are highly essential to safeguard the general health of the public, especially in a developing country like India.

Presently the Indian companies are trying to put a hand on the high profile generic market of the developed countries taking advantage of the favorable position accorded by the intensity in which several drugs in the US drug markets going off patent. The market has become the most remunerative markets for the Indian companies at present. The industry’s US FDI compliant also creates a favorable circumstance in the arena of contract manufacturing and R&D among other things which will certainly lead to tremendous growth and new technology innovations within the industry.  

 Sources:

[1] Mueller, supra note 4, at 107.

[2] 5 India Patents Act 1970 (2005) ss25(1)(a-k).

[3] RA Mashelkar, Report of the Technical Expert Group on Patent Law Issues, s1.1, Dec 06.

[4] Ibid.

[5] Ibid at ss5.16; 5.28 (emphasis in original).

[6] Ibid at s5.16.

[7] Ibid at s5.10.

[8] Ibid.

[9] www.hindu.com/2007/02/22/stories/2007022206751200.htm

[10]http://timesofindia.indiatimes.com/NEWS/India/Mashelkar_takes_back_report_after_plagiarism_row/articleshow/1653926.cms

[11] www.ip-watch.org/weblog/index.php?p=582&res=1280&print=0

[12]www.nytimes.com/2007/08/07/business/worldbusiness/07drug.html?ex=1187064000&en=3ecaa558b34ed0fa&ei=5123&partner=BREITBART

[13] Novartis challenges Glivec patent decision in Indian Supreme Court

[14] Mueller, supra note 4,at 7 nn 11-12.

http://www.scribd.com/doc/14803040/Industry-Analytics-Indian-Pharmaceutical-Industry 

http://74.125.153.132/search?q=cache:8Q6RAmFGnSEJ:www.ris.org.in/Dp80_pap.pdf+%221704+drugs%22&cd=9&hl=en&ct=clnk&gl=in&client=firefox-a

http://www.managingip.com/Article/2282181/Multinationals-and-generics-fight-for-pharmaceutical-market.html

http://nopr.niscair.res.in/bitstream/123456789/3661/1/JIPR%2010(4)%20269-280.pdf

http://books.google.co.in/books?id=CeHdvmpVwdgC&pg=PA98&lpg=PA98&dq=social+effects+of+IP+regime+in+pharmaceutical+industry+india&source=bl&ots=B5l-DuXPAE&sig=SVkPmf5tVaps4ZGsbCxy24hD3bA&hl=en&ei=tS7tSqikBoLVkAWS1vGZDw&sa=X&oi=book_result&ct=result&resnum=8&ved=0CB4Q6AEwBw#v=onepage&q=&f=false

http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=24cedda7-28a3-4ac0-b100-ed9974123e67

LANHAM ACT: THE SCOPE OF TRADE DRESS PROTECTION

Lanham Act, a popular name for the Federal Trademark Act of 1946 is the Act which deals with the federal statutes of trademark law in the United States. The Act inter alia precludes various sphere of action in the area of trademark usage like trademark infringement, trademark dilution etc. Among these comes another concept called "trademark dress." This is a concept which originated from the way a product is packed or a product's total image or appearance. It is distinctive, non-functional, and distinguishes a trader's or manufacturer's products or services from those of others.

Typically, trademark consists of only a set of words or a logo. On the other hand, Trade Dress includes appearances like size, color or combinations of color, shape, a product's packaging or atmosphere inside a store, restaurant etc. Moreover, trade dress encompasses both packaging and design of products.

The Act which was enacted in 1946 precluded a product's “false description or representation” by a “person who shall with knowledge of the falsity” put the product on trade.  This Act did not refer to trade dress protection as such.  Later on the courts extended protection granted under Section 43(a) of the Lanham Act to trade dress also basically creating a federal law to enhance fair trade practices.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) is a landmark case in the history of trademark dressing in US. In 1987, Taco Cabana sued Two Pesos in the United States District Court of the Southern District of Texas for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982 ed.) and for theft of trade secrets under Texas common law. The case was then put forward to a jury. The jury was asked to put forth its verdict by answering five questions promulgated by the trial judge. The answers to these questions were as follows:

1)      Taco Cabana has a trade dress;

2)      Taken as a whole, the trade dress is nonfunctional;

3)      The trade dress is inherently distinctive;

4)      The trade dress has not acquired a secondary meaning in the Texas market; and

5)      The alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services. [1]

In view of this verdict Taco Cabana's trade dress was safeguarded as it either was naturally unique or had derived a meaning which resulted in granting damages to Taco Cabana. Additionally, while calculating damages the court held that Two Pesos had intentionally and deliberately infringed Taco Cabana's trade dress.[2]

In Qualitex v Jacobson Products, 514 U.S. 159 (1995) court discussed trade dress protection in a different way. Qualitex's cleaning pads sold to dry cleaning establishments many years were green-gold in color. Jacobson Products started to sell pads of an identical color. The color was already registered by Qualitex as their trademark and they sued against Jacobson for infringement.

While considering the case the court took an opinion that color alone could be registered as a trademark. Furthermore, it was noted by the court that anything that could differentiate a provider can be registered which includes shape (of a bottle), sound (chimes or music), and odor (a particular fragrance). While presuming the above view the Court observed that color was nothing other than a distinguishing factor of a product and there was no reason to exclude color from that purview.  To register color it must be distinctive and non-functional. As there is nothing essentially distinct about color, secondary meaning is a requisite to build up distinguishing element based on the aspect of color.

In order to make a color registrable it must be non-functional. If it has a function, inclusive of aesthetic function it will not be registrable.  An example quoted by the Court was that of the competitors of John Deere farm equipment allowing painting their equipment green in spite of John Deere's trademark because farmers want their equipment to match. In addition the court enunciated a list with regard to the trademarks that stands above the trade dress protection. Those are:

     
     1.  § 1124 (ability to block importation of confusingly similar goods).       

     2.  § 1072 (constructive notice of ownership).         

     3.   § 1065 (incontestable status)

     4.   § 1057(b) (prima facie evidence of validity and ownership. [3]

The decision was reviewed by the Supreme Court of United States in Wal-Mart Stores v Samara Bros., Inc. (99-150) 529 U.S. 205 (2000). The Court decided on the circumstances under which a product’s design can be distinctive, and conditions under which it is entitled for protection where an action for infringement of unregistered trade dress under §43(a) of the Trademark Act of 1946 (Lanham Act) take place. Court held that product design, like color, is not inherently distinctive.

The Lanham Act provides for the registration of trademarks, which it defines in §45 to include:

 “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods … from those manufactured or sold by others and to indicate the source of the goods … .” 15 U.S.C. § 1127.

 Registration of a mark under §2 of the Act, 15 U.S.C. § 1052 enables the owner to sue an infringer under §32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see §7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see §15, 15 U.S.C. § 1065.

 In addition to protecting registered marks, the Lanham Act, in §43(a), gives a producer a cause of action for the use by any person of “any word, term, name, symbol, or device, or any combination thereof . . . which … is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . …” 15 U.S.C. § 1125(a). [4]

The Supreme Court held that "the breadth of the definition of marks registrable under §2, and of the confusion-producing elements recited as actionable by §43(a), has been held to embrace not just word marks, such as “Nike,” and symbol marks, such as Nike’s “swoosh” symbol, but also “trade dress”–a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (CA4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (CA2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (CA8 1995)." [5]

Distinctiveness is the most important aspect of the trade dress protection. It can be either acquired or inherent. It is pertinent to have distinctiveness of trade dress in claiming a "secondary meaning” where it is can be associated with not more than one specific brand. A design to be inherently distinctive should be unusual in shape, color etc when introduced in the market that is essentially distinct from others. Whereas, acquired distinctiveness is something that is acquired by a design through marketing, advertising, promotions etc. It is a "look" that consumers associate with a particular product's brand identity. Demonstration of such association by a consumer survey or other means can provide the "look" a secondary meaning. [6]

It can be concluded from the above discussions that while implementing trademark and related rights such as trade dress one must constantly be aware of the necessity to trade successfully and to maintain proof of ones marketing. By doing so one may acquire secondary meaning, which is the key aspect of trade dress protection. The more distinctive is the selection of mark and packaging design is, the better will be ones chances to claim protection to trade dress.

                                                                                                                                     Submitted by

Vinitha Prasannan

 

http://yarbroughlaw.com/Publications/pubs%20patent2%20Recent%20Developments%20in%20Trade%20Dress.htm

 

PARODY: HOW FAR A PROTECTED SPEECH

“You can parody and make fun of almost anything, but that does not turn the universe into a caricature”[1]

Unlike other forms of freedom of speech guaranteed under the First Amendment, parody and satire plays a paramount role in dome of trademark and copyright. The dichotomy of the terms “parody” and “satire[2]” has been considered and defined by various jurists under enormous circumstances.

Parody and its meaning:

Black’s law dictionary defines the word “parody” as “A transformative use of a well-known work for the purposes of satirizing, ridiculing, critiquing, or commenting on the original work, as opposed to merely alluding to the original to draw attention to the later work.” The origin of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson’s Court of Appeals dissent, as “a song sung alongside another.” [3] Dictionaries has been describing parody as a “literary or artistic work the imitates the characteristic style of an author or a work for comic effect or ridicule” or as a “composition in prose or verse in which the characteristics turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous.”[4]

In spite of its criticizing or ridiculing characteristics, a parody is guaranteed constitutional protection of free speech under the First Amendment of the US constitution. In Constitutional Law, a parody is protected as free speech. When considering parody under copyright law, a particular work is required to come under the definition of a parody and at the same time shall be a fair use of the copyrighted material, if not, it may constitute an infringement. This article provides an insight on the aspects related to the use of parody as a defense under free speech and the consequential rulings by various courts in the subject matter.

Legitimacy of parody:

It is a fact that a parody can claim legitimacy to some extent regardless of its copying and commenting nature, but this does not give either the parodist or a jurist about an idea as to the invisible line to be drawn that makes it illegitimate. For example, book reviews necessitates quoting of a copyrighted material for the purpose of criticizing, whereas a parody may possibly be a fair use considering the context and elements that constitute it. While considering a case,[5] the court declined the petitioner’s contention that any parodic use is presumably fair and stated that this has no more justification in law or on fact than the equally hopeful claim that the use for news reporting should be presumed fair.[6] 

The Act does not provide any proposal of favoritism over the victim for the parodists when it comes to evidence, and no practical presupposition for parody could be taken into account of the fact that a parody typically shadows into satire whilst the public is ridiculed by its inventive artifacts, or that such artifacts may have both parodic and nonparodic essentials. For that reason, like any other use, parody has to toil its line of attack through its pertinent features, and be adjudicated on a case by case basis, under the realm of trademark and copyright law.

Elements of parody:

In order to constitute parody there shall be certain distinguishing elements to the action of the parodists. The important features include an original work that is famous or familiar to a certain class of public. The parodists shall use only that much of the original work that is indispensable in the context in order to bring in the minds of the public the original work. Further, the parody shall subsequently become a fresh and original work.

When a work aims another work in a hilarious or satirical way, it constitutes a new creative work. This new creative work is capable to fight with other creative works in identical market even though they possess common characteristics.  But the fact that a parody is an independent innovative work can be established only when it "make some critical comment or statement about the original work which reflects the original perspective of the parodist—thereby giving the parody social value beyond its entertainment function." Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F. Supp. 351, 357 (ND Ga. 1979).          

Trademark parodies

As the court observed in Anheuser-Busch, Inc. v. Balducci Publications 1993, p.794-5) "trademark parody is a subspecies of the genre that pokes fun at or criticizes a business entity by spoofing the entity's trademark. Trademark parody is only effective if the mark is well-known and the parody is enough like the original to invoke an association.... Thus, trademark parodies raise a legal tension not unlike that addressed by the fair use doctrine of copyright law; a tension between the legitimate property rights of the trademark owner and the rights of the parodist to free expression"

While putting forward the above mentioned view, the Court considered the case Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) and concluded that the opinion of U.S. Supreme Court in the copyright case was an important guide for cases related to trademark parody. The court further stated that for a trademark parody to be successful, it must call up the original. "A parody must convey two simultaneous--and contradictory--messages: that it is the original, but also that it is not the original and is instead a parody" (Elvis Presley Enterprises v. Capece 1998, p. 199).

Furthermore, it is an established fact that "Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.).  For the purpose of good defense in a case alleging infringement, a trademark parody needs to be used properly.

In re Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) (Souter, J.) court stated as follows: "We do not, of course, suggest that a parody may not harm the market at all, but when a parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act. Because 'parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically,' the role of the courts is to distinguish between 'biting criticism that merely suppresses demand and copyright infringement, which usurps it.' "

Court had opined that trademark parodies convey a message even when they are offensive. It may remind us that trade and artifact metaphors are not required to be taken critically; for that matter a trademark parody remind us of the fact that “we are free to laugh at the images and associations linked with the mark."  L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.).

Parody and commercial speech:

While considering issues related to commercial speech, the courts had developed a four-part analysis. To start with, one must resolve whether the parodist’s expression gain protection under the First Amendment. To constitute commercial speech in that provision, the expression must not be misleading and it must relate to a lawful activity. Then, one must consider whether the declared interest of the government is substantial. When both these above mentioned aspects give affirmative answers, one must decide whether the law directly advances the declared interest of the government, and whether it is not more far-reaching than is required to provide that interest. 447 U.S. 557 100 S.Ct. 2343 65 L.Ed.2d 341 Central Hudson Gas & Electric Corporation, Appellant, v. Public Service Commission of New York.

Infringement criteria:

Both federal and state laws clearly establish the fundamentals for a successful trademark infringement claim. To sum up, when contesting a trademark case, a plaintiff has the burden to prove that the defendant’s act of using its mark has brought up a likelihood of confusion with regard to the In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the source of the defendant's goods or services.

To prove the above aspect, a plaintiff must initially establish that its trademark is protectable. Further, the plaintiff will have to show that the defendant’s use of the trademark is confusingly similar and creates likelihood of confusion, among public. In the case of parody, the parody and the original work have to have that distinction and the public has to distinguish between the original and the parodic element the parodist intend to convey. When there is confusion, it can make the public believe that the defendant’s artifacts are somehow associated, connected, approved or authorized with the plaintiff or it is the same as that of the plaintiff.

Likelihood of confusion:

The courts have put forward eight factors to determine the elements of likelihood of confusion. This aspect is applicable in the case of parody also. In order to analyze whether a certain incident constitute the indispensable elements of "likelihood of confusion," courts usually look into eight factors as described below:

1.      The resemblance or similarity created by two marks when taken as a whole. (this aspects include the look of the marks, phonetic similarities, and fundamental meanings);

2.      The goods and services involved and their similarities (this include a review of the advertising channels for the goods);

3.      The potential strength of the plaintiff's mark;

4.      Evidence of actual confusion by the consumers, if any;

5.      The defendant’s intent in adopting its mark;

6.      The goods and its physical proximity in the retail marketplace;

7.      The likelihood of the consumer in exercising a degree of care; and

8.      The possibility of growth of the product lines.

The courts usually examine the above mentioned first five aspects when considering a trademark infringement case. The last three factors are, for the most part, additional general factors that courts can be consider.

To conclude, there is "a need to evoke the original work being parodied.[7]" Nonetheless, a good parody clearly stay away from causing likelihood of confusion as its intent is to highlight the difference between the host work and it’s parody. If the parodist fails to establish a clear distinction as mentioned above, the parody is no more a parody and it miserably fails.

 

---

                 Bernard Berenson quotes (American art critic, 1865-1959)

                 Satire has been defined as a work “in which prevalent follies or vices are assailed with ridicule” 14, supra at 500 Oxford English Dictionary

                 972. F. 2d, at 1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975).

                 11 Oxford English Dictionary 247 (2d ed. 1989)

                 Harper & Row, 471 U. S., at 561

                 Ibid

                 Campbell v. Acuff-Rose, Inc. 1994