This summary is to address the challenges that Bertram Chemicals Company is facing in maintaining home market position and Future growth in the global market Due to the trademark infringement.
Bertram Chemicals is a family business started more that 45 years back, it’s very well know product Siang Pure Oil a homeopathic non-prescription herbal product that has an excellent success in Thailand and widely distributed in neighboring countries. The Siang Pure Oil Secret Combination was taken from Traditional Chinese prescription and contains basic ingredients that are grown in China, the prescription given by a Chinese Practitioner, a friend of the Boonchua Eiampikul the father who started the business of producing the Sian Pure Oil in 60s. The product was distributed locally and found successful, then was widely distributed and gain the confidence of the local community in Asia for its effectiveness. The Product brought success to the company to reach 330 Million Bt.
Boonchua Eiampikul had Three Daughters who are currently Managing The Bertram Company. Supeeya is Managing Production, Titima Managing finance and Human Resource and Suwanna managing Director.
The Global Market shows a growth of using herbal medicine (Specially Chinese Herbal Medicine) and Complementary Medicine in Asia as well as in western countries and become more popular. Despite the fact that most of the people who use the complementary medicine are located outside Western Countries, it is clear that prices in Europe and US are making substantial value in the global market for those products.
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Although Bertram Chemicals products have been successfully distributing Sian Pure oil, most of the target market are older age people who knew that product for long time, the company started to adopt new strategy to attract young people to use its product, one of the approaches was to change the design, color, scent and dress of the product to meet the market requirement. Bertram also started to introduce new product that is more desired by the young people.
Bertram is facing the challenge of trademark infringement, local companies are producing product that looks similar to Sian Pure Oil with low quality and attacking the using lower prices policy. The faked product is affecting the product reputation and accordingly sales figures. Other companies in other countries are also producing similar products and distributing them locally and in other counties claiming that they are genuine products.
This documents to Identify Intellectual property assets of Bertram and advices the management on way forward to manage these assets according to the international standards
Intellectual property Report:
Looking to the situation, Bertram chemicals need to have an inventory for the IP assets being used to be able to manage these assets effectively and be in position to protect them and its investment to ensure future growth.
Bertram should make every effort to identify all the risks involved in violating the company Trademarks, that will negatively affect distributing and producing its herbal oil. It must ensure to benefit financially from maintaining right of production. That will endeavor in supporting Bertram to make other product as good as other successful product that was in production for several decades.
The composition of the Herbal oil is a patent that can be protected under Patent law. Although the law would protect the composition of the certain number of year, there will be a risk when the registry expires and the secret combination will be disclosed and will affect the registered business.
The Oil Container Design, shape and Color are part of the rights that could be protected by the IP law. The Packaging design, shape, logo and color are the most attractive item to the customer
Looking to the IP principles and the current situation, it is important to Bertram Chemical to assess the IP assets value to be able to protect investment trough making use of Paris convention, TRIPS agreement and Berne convention to protect Intellectual property. Looking more to the situation we can highlight following issues:
Trademark Registration: Bertram registered the Siang Pure (oil, Balm and inhalers) with Thailand Authorities for 10 years in 2004. The Trademark selected consists of the picture of the (Boonchua Eiampikul) .Selection of the name looks distinctive and People would easily recognize the name. Selected Trademark identifies the level of the quality of the product. It was not mentioned that Bertram took any step toward registering the product in other Asian countries or other counties.
Production process: The ingredients of the Bertram Chemical’s product were grown in China and the recipe is a secret in itself. The process of combining and producing the oil from the ingredients is unique, however Company didn’t register that under patent to ensure its secrecy as patents registry expires after a while and might expose the company to the risk of knowing its production secret.
The company Brand, Logo and Design are among the IP Assets of Bertram; however Document didn’t clarify the issue of registration of those as IP assets.
The complementary medicines products are known in Asia, and usually don’t require export certification, Regulatory approval. While, In Western countries, those issues are required in order to be able to start distributing the product to the customer.
Having a product that is well distributed for 40 years shows a significant high value for that IP. Moreover the product is gaining regional distribution which brings a regional scope of the Trademark value and ultimately the Company reputation. Perhaps that what attracted other companies to opt for trademark infringement, thru low price policy to replicate the dress of the product with very minor changes and keeping the look as similar possible to be able to sell similar product with less quality ingredient to gain money fast. That will also affect the original product reputation especially for those who are not regular users of that product.
According to the Picture provided for the trademark infringement, competitor produced the faked product to benefit from the well reputed product of Siang Pure oil. The Red color of the Package and the picture of the Asian face for senior person on the package while making very minor changes to protect them self from being replicating the design as it is. Non-regular Customer will be easily mis-leaded by the similarity between the original design and the faked design, those similarity of color, picture and size will
Appellation of Origin: Lisbon agreement addresses the protection of appellation of origin and their international registration. Bertram Chemical product ( Siang Pure Oil) is known as good product in the local market and the neighboring countries, the product trademark , design and Red dress color point that product is from China. And didn’t capture that element in the name which will helped customer identify the indication of source and Geographical indication as a result. Furthermore, Color can never be found to be inherently distinctive for a mark, but it can acquire a secondary meaning, which then makes it available for registration on the Trademark Office principle register.
The Container design is not unique in shape that wouldn’t help people recognize that product is genuine or not. Company could benefit from IP Hague agreement which protects the intellectual property form replicating the shapes without written consent. Furthermore the same design is available in the market which will confuse the customer on which product that really is genuine.
The company has over 140 employees and three locations for production. It is not clear if the responsibility/process of mixing the ingredients and how secure it is. It is not clear what are the security measures taken, operation procedures to secure the intellectual property assets involved. Perhaps some information were passed to the competitors and that brought the risk of making similar formula with less price.
The Chinese medicine is an old tradition and available since 3000 years, Bertram was only able to raise that product through the dedicated work to produce high quality oil and the successful strategy adopted in the past 4 decades to gain the confidence. Furthermore, the western countries started to realize the importance of the Chinese medicine thru emigrants who contributed to share the Asian culture to the western community
Trademark Dilution: some competitors opted for using a trade mark that doesn’t have to exactly match Siang Pure Oil. This act is harming the reputation of the Bertram Chemical Trademark by creating an association in the mind of the consumer that arises because of the similarity between a faked mark and trade name of Siang Pure Oil.
Initial calculation for the IP Assets cost shows that Bertram have the following Internal Assets
Trademark (s) around (400,000 USD)
Design(s) around (200,000 USD)
Recipe(s) around (180,000 USD)
The company also has external assets like
Brand(s) around (500,000 USD)
In Addition to three locations/Factories, Distribution networks, Raw Material Network and Loyal customers.
Due Diligence Report:
Due Diligence report will provide the information on the Gaps that Management need to bridge to maintain IPR. The report is the way to discover everything that might be hidden and will help to determine IPR and what the future looks like is by conducting exhaustive investigation that by describes current business and future opportunities.
The Bertram Chemical must establish an IP Section that will maintain an IP strategy for the company, look after the following information and documentation to be filed properly and keep track of Renewal as well as follow up on new issues arises as follows:
List of Patents and patent applications in Thailand, copy of Patent application in Progress;
List of registered trademark in Thailand and in other countries, copy of the registration application on hold or in process along with brief description of the products and the process. A record of applications in Progress with detailed time frame of application date and status of those application to follow up;
List of trademarks that not yet registered in Thailand neither globally;
List for trademarks that company is exporting to other countries that are not registered yet;
Copy of all license including (trademark, Patent or other IP assets). Expired license with brief description;
Copy of contracts to export final products or import basic ingredient to Thailand;
Copy of contracts or agreement with companies responsible of printing the packaging material and producing the product container;
Copy of contract with companies responsible of logistics operations of transporting Goods across the borders/port and their obligations;
Copy of correspondence with global Pharmaceutical production companies and partnership offers to distribute products in Europe and United states;
Copy of registration process started or about to start to use Herbal oil in other countries;
Registration papers for authorization of export and import goods;
Detailed list of authorized distributors inside Thailand and regional distributor along with active contracts.
That will help the IP section in Bertram Chemicals to:
Identify all assertions of Trademark infringement, Trade Dress infringement, Dilutions or unfair competition;
Review all material trademark renewal records;
Obtain results of trademark searches conducted by the target company;
Confirm ownership and clear title to Bertram Chemical company trademark, trade names;
Identify and resolve any potential product name disputes;
Identify any marks of the Bertram Chemical that not being used since a while;
Identify procedures employed for quality control monitoring of license use of trademarks;
Conduct independent searches for trademarks of special interest.
Below is a list of suggested action to help Bertram controlling the situation and ensure Future Growth through different scenarios like:
Stopping the trademark infringement following the Berne convention for enforcement of rights:
Inside the country:
Working thru the local distributors to identify the companied that producing the faked product.
Send a Letter of demand of Trademark infringement to the Office of IP in Thailand to claim the Trademark infringement.
Take legal action against those companies.
Approaching the trading authorities (Customs) and export Ports to alert those to look for any products that being exported that violates the trade mark of Bertram.
Outside the country:
Assessing if the country is applying Registered trade mark or Common Law trademark (trademark established reputation of the product)
Register the Product as IP in those countries if not already done.
Seek the Import authorities in those countries to check if any faked products being imported and send letter of demand for trade mark infringement if found.
Seek the local distribution network to identify if trademark infringement occurred
If found, send a letter of demand o f trademark infringement to the IP office in the country
Seek the Court for civil remedies for the damages against the company involved in Importing infringed products
Maintaining the same trade mark but through introducing new measures to inform customers about quality. Bertram Chemical to start a campaign to tell customers on how to identify faked products through Advertisement or TV shows. The campaign should also cover neighboring countries and address Internet users .That can be achieved on:
each package and/or product have a unique serial number that can be verified to ensure it is genuine;
Customer if suspecting the quality could ask the shop to verify the quality;
Setup support telephone line to offer assistance;
Fix plastic seal with hologram on each seal that carries distinctive number for the batch to identify the source;
Announce that Bertram Company is not responsible of any harm happening form using Faked products that looks like the Siang pure oil.
Bertram to start a Campaign on educating customers about infringed products. Approach the Authorities to register complain and raise a case for unfair competition.
Benefit from WIPO approach for harmonizing and simplifying the regional system and utilize the (TLT) Trademark Law Treaty adopted in 1984 to register the brand regionally.
Introducing New Design for Trademark(s):
The Case clearly mentioned that trademark infringement is happening widely and affecting the company reputation, One option is to introducing new design that will slowly phase out the old design and taking the following steps:
The new design of the trademark should be registered in Thailand as well as other countries. This process will take time but will ensure that no infringement will take place in the Future
Benefit from the well reputation that Siang pure oil had in the past and try to re-invent the product to address the need of wider sector of community both locally and Globally
Design an attractive document or leaf left in each package that will help people to make the best use of the product effectively and highlights the original ingredients of the herbal oil and tell the story of how it was made.
Making use of Hague system, Make a new unique design for the ointment container that is unique shape, deposit the industrial design trough deposit file with the international bureau of WIPO that will help protecting the design of the container in several countries for 15-20 years which will give the product.
Adding the Seal option or using UPC code to track products and be able to conduct quality control on returned item
Opt for the acquire ISO quality standard that will help the item to be distributed widely.
Opt for seeking the right channels to gather the approval of distributing the product in Europe and United States that will substantially add to the company Revenue.
Trademark Dress: Bertram to revisit the trade dress to make it distinctive in a way that it embodies the design of a product, in order to acquire secondary meaning distinctiveness. The design could also include the Functional aspects to serve to the utilitarian purposes of the item in commerce.
Make the trade dress intrinsically distinctive to identify the Thai source of the product. That will help customers to become predisposed to regard intrinsically distinctive marks as indication of Bertram Chemicals from Thailand.
Revisit the Standard operations procedure for managing the Intellectual property in Bertram Chemicals Company thru:
Having an updated IP Audit report to assess the IP Assets value, work on Establishing IP strategy
Assign the task of following up proactively on the IP registry process and to maintain the IP renewal.
Undertake survey on Customer Satisfactory level.
Maintain the quality level of the Product as it is the main factor for the investment.
Study the local market trend and external market.
Identify potential market and customers.
Enhance the Customer loyalty program to ensure that product experience are passing from generation to another
Work on attracting new generation to the Products through highlighting Customer satisfactory levels.
Maintaining the company information secrecy, Manage the flow of information and ensure that confidentiality of trade secrets are protected
Orient Staff and educate them on the importance of the intellectual property standard.
Raise the awareness on how such irresponsible behavior will affect the company performance and lead to affect projects and by result staff employed in the Company.
Company might wish to register the Combination of Sian Pure Oil as patent, and proceeding with global registration, Perhaps that will protect combination globally. Bertram can benefit from awarding the production license to different companies in other countries. The Company will benefit from the Patent Cooperation Treaty which simplifies the patent registration for an inventor through registration the patent in EU regional, Patent office will conduct an international search ,International publication and then international preliminary Examination and then granting national or regional patent. That will help Bertram to award to production License to other companies and benefit financially from production overseas. Create partnership with other companies overseas and try to benefit from their presence in the ground and distribution network to introduce Bertram products to Europe and United states.
Bertram should explore other prescription from Chinese tradition al medicine to identify other products that help other type of pain. Explore the option of growing the ingredients locally in Thailand specially that will help cutting the cost of production.
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