This brief summary is to handle the troubles that Bertram Chemicals Company is facing in preserving home market position and Future growth in the global market Because of the hallmark infringement.
Bertram Chemicals is a family group business started out more that 45 years back again, it is rather well know product Siang Pure Engine oil a natural non-prescription natural product that has an excellent success in Thailand and greatly sent out in neighboring countries. The Siang Pure Oil Secret Blend was extracted from Traditional Chinese language prescription possesses basic things that are expanded in China, the prescription distributed by a Chinese Specialist, a pal of the Boonchua Eiampikul the daddy who started the business enterprise of producing the Sian Pure Petrol in 60s. The product was distributed locally and found successful, then was greatly sent out and gain the assurance of the neighborhood community in Asia for its effectiveness. The Product helped bring success to the company to reach 330 Million Bt.
Boonchua Eiampikul acquired Three Daughters who are currently Controlling The Bertram Company. Supeeya is Taking care of Development, Titima Managing fund and Human Learning resource and Suwanna controlling Director.
The Global Market shows a rise of using organic and natural medicine (Specially Chinese language Herbal Remedies) and Complementary Medication in Asia as well as in european countries and become more popular. Despite the fact that most of the folks who use the complementary medicine can be found outside European Countries, it is clear that prices in European countries and US are making significant value in the global market for those products.
Although Bertram Chemicals products have been efficiently distributing Sian Pure petrol, most of the target market are older get older people who recognized that product for very long time, the company began to adopt new strategy to attract young people to utilize its product, one of the methods was to improve the look, color, fragrance and dress of the merchandise to meet up with the market necessity. Bertram also started to expose new product that is more desired by the teenagers.
Bertram is facing the challenge of trademark infringement, local companies are producing product that appears just like Sian Pure Petrol with poor and attacking the using lower prices insurance plan. The faked product has effects on the merchandise reputation and appropriately sales figures. Others far away are also producing similar products and distributing them locally and in other counties saying they are genuine products.
This documents to recognize Intellectual property property of Bertram and guidelines the management on way onward to control these assets in line with the international standards
Intellectual property Statement:
Looking to the situation, Bertram chemicals need to have a listing for the IP resources used to be able to manage these belongings effectively and be in position to protect them and its investment to ensure future growth.
Bertram should remember to identify all the risks involved with violating the business Trademarks, that will adversely affect distributing and producing its herbal oil. It must be sure to benefit financially from preserving right of creation. That will undertaking in promoting Bertram to make other product as good as other successful product that is at production for a number of decades.
The structure of the Organic engine oil is a patent that may be protected under Patent regulation. Although regulations would protect the composition of the certain volume of year, you will see a risk when the registry expires and the trick mixture will be disclosed and will affect the documented business.
The Oil Box Design, condition and Color are part of the rights that might be protected by the IP rules. The Presentation design, shape, custom logo and color will be the most attractive item to the customer
Looking to the IP key points and the existing situation, it's important to Bertram Chemical to examine the IP belongings value to be able to protect investment trough making use of Paris convention, TRIPS contract and Berne convention to safeguard Intellectual property. Looking more to the situation we can highlight pursuing issues:
Trademark Enrollment: Bertram recorded the Siang Pure (oil, Balm and inhalers) with Thailand Regulators for a decade in 2004. The Brand selected contains the picture of the (Boonchua Eiampikul). Selection of the name appears distinctive and People would easily recognize the name. Selected Trademark identifies the amount of the quality of the product. It had been not brought up that Bertram needed any step toward registering the merchandise in other Asian countries or other counties.
Production process: The substances of the Bertram Chemical's product were expanded in China and the menu is a technique in itself. The process of incorporating and producing the petrol from the materials is exclusive, however Company didn't sign-up that under patent to ensure its secrecy as patents registry expires after some time and may expose the company to the risk of knowing its production secret.
The company Brand, Emblem and Design are one of the IP Possessions of Bertram; however Document didn't clarify the issue of registration of those as IP possessions.
The complementary drugs products are known in Asia, and usually don't require export qualifications, Regulatory approval. While, In Traditional western countries, those issues will be required to become able to start out distributing the merchandise to the client.
Having a product that is well sent out for 40 years shows a substantial high value for your IP. Moreover the merchandise is gaining local distribution which brings a local scope of the Hallmark value and eventually the Company reputation. Perhaps that what attracted others to opt for trademark infringement, thru good deal policy to replicate the gown of the product with very small changes and keeping the appearance as similar possible to be able to sell similar product with less quality ingredient to gain money fast. That may also affect the initial product reputation especially for many who aren't regular users of this product.
According to the Picture provided for the hallmark infringement, rival produced the faked product to take advantage of the well reputed product of Siang Pure essential oil. The Red color of the Package and the picture of the Asian face for senior person on the offer while making very slight changes to protect them self from being replicating the look as it is. Non-regular Customer will be easily mis-leaded by the similarity between your original design and the faked design, those similarity of color, picture and size will
Appellation of Source: Lisbon contract addresses the security of appellation of source and their international registration. Bertram Substance product ( Siang Pure Essential oil) is recognized as good product in the neighborhood 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 that may helped customer identify the indication of source and Geographical indication as a result. Furthermore, Color can't ever be found to be inherently distinctive for a make, but it can get a secondary meaning, which then makes it available for enrollment on the Trademark Office rule register.
The Box design is not unique in shape that wouldn't help people recognize that product is genuine or not. Company could reap the benefits of IP Hague contract which helps to protect the intellectual property form replicating the shapes without written consent. Furthermore the same design is available in the market that may confuse the client which product that basically is genuine.
The company has over 140 employees and three locations for creation. It is not clear if the responsibility/process of mixing the ingredients and how secure it is. It is not clear what exactly are the security procedures taken, operation procedures to secure the intellectual property property included. Perhaps some information were exceeded to the competitors and that brought the risk of making similar formulation with less price.
The Chinese treatments can be an old tradition and available since 3000 years, Bertram was only able to increase that product through the dedicated work to create high quality essential oil and the successful plan adopted in the past 4 decades to get the confidence. Furthermore, the western countries began to realize the importance of the Chinese medication thru emigrants who contributed to talk about the Asian culture to the traditional western community
Trademark Dilution: some rivals opted for by using a trade mark it doesn't have to exactly match Siang Pure Petrol. This work is harming the trustworthiness of the Bertram Chemical substance Hallmark by creating an association in the mind of the consumer that arises because of the similarity between a faked draw and trade name of Siang Pure Essential oil.
Initial calculation for the IP Resources 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, Syndication networks, Raw Material Network and Loyal customers.
Due Diligence Statement:
Due Diligence statement will provide the information on the Spaces that Management need to bridge to keep IPR. The article is the best way to discover everything that could be hidden and can help to determine IPR and what the near future looks like is by conducting exhaustive analysis that by describes current business and future opportunities.
The Bertram Chemical substance must create an IP Section that will maintain an IP strategy for the company, look after the following information and records to be submitted 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, duplicate of Patent request happening;
List of signed up trademark in Thailand and far away, duplicate of the subscription application on keep or in process along with short description of the merchandise and the procedure. An archive of applications happening with detailed time frame of application time and status of these application to follow up;
List of trademarks that not yet documented in Thailand neither globally;
List for trademarks that company is exporting to other countries that aren't listed yet;
Copy of most permit including (trademark, Patent or other IP belongings). Expired license with brief information;
Copy of contracts to export last products or import basic element to Thailand;
Copy of agreements or contract with companies dependable of producing the packaging material and producing the product container;
Copy of agreement with companies in charge of logistics procedures of moving Goods over the borders/port and their obligations;
Copy of correspondence with global Pharmaceutical development companies and relationship offers to spread products in European countries and Usa;
Copy of subscription process started or around to start to use Herbal petrol far away;
Registration paperwork for authorization of export and transfer goods;
Detailed list of authorized marketers inside Thailand and local distributor along with energetic contracts.
That can help the IP section in Bertram Chemicals to:
Identify all assertions of Hallmark infringement, Trade Dress infringement, Dilutions or unfair competition;
Review all materials trademark renewal files;
Obtain results of brand searches conducted by the target company;
Confirm ownership and clear title to Bertram Chemical company hallmark, trade labels;
Identify and handle any potential product name disputes;
Identify any marks of the Bertram Chemical substance that not being utilized since a while;
Identify procedures employed for quality control monitoring of license use of trademarks;
Conduct independent searches for trademarks of special interest.
Recommendation
Below is a list of suggested action to help Bertram handling the situation and ensure Future Progress through different cases like:
Stopping the hallmark infringement following a Berne convention for enforcement of privileges:
Inside the united states:
Working thru the neighborhood distributors to recognize the companied that producing the faked product.
Send a Notice of demand of Trademark infringement to any office of IP in Thailand to lay claim the Trademark infringement.
Take legal action against those companies.
Approaching the trading government bodies (Customs) and export Slots to notify those to consider any products that being exported that violates the trade mark of Bertram.
Outside the united states:
Assessing if the country is applying Documented trade mark or Common Regulation trademark (hallmark established trustworthiness of the merchandise)
Register the Product as IP in those countries if not already done.
Seek the Transfer specialists in those countries to check on if any faked products being imported and send letter of demand for trade draw infringement if found.
Seek the neighborhood distribution network to recognize if brand infringement occurred
If found, send a notice of demand o f brand infringement to the IP office in the country
Seek the Courtroom for civil remedies for the problems against the business involved with Importing infringed products
Maintaining the same trade draw but through introducing new measures to inform customers about quality. Bertram Substance to start a campaign to inform customers on how to recognize faked products through Advertising campaign or Television shows. The campaign should also cover neighboring countries and address Internet users. That may be achieved on:
each deal and/or product have a unique serial number that may be verified to make sure it is genuine;
Customer if suspecting the product quality could ask the shop to verify the quality;
Setup support cell phone line to offer assistance;
Fix clear plastic seal with hologram on each seal that carries distinctive amount for the batch to recognize the source;
Announce that Bertram Company is not liable of any damage occurring form using Faked products that appears like the Siang genuine oil.
Bertram to start out a Plan on educating customers about infringed products. Methodology the Authorities to join up complain and raise a case for unfair competition.
Benefit from WIPO strategy for harmonizing and simplifying the local system and make use of the (TLT) Trademark Rules Treaty used in 1984 to join up the brand regionally.
Introducing New Design for Trademark(s):
The Case clearly mentioned that hallmark infringement is happening widely and impacting the company reputation, One option is to presenting new design that will slowly level out the old design and taking the following steps:
The new design of the trademark should be authorized in Thailand and also other countries. This technique will need time but will ensure that no infringement will take devote the Future
Benefit from the well reputation that Siang genuine oil had before and make an effort to re-invent the merchandise to address the need of wider sector of community both locally and Globally
Design a good report or leaf left in each program that will assist visitors to make the best use of the merchandise effectively and shows the original substances of the natural and organic oil and notify the storyline of how it was made.
Making use of Hague system, Make a new unique design for the ointment container that is exclusive shape, deposit the industrial design trough deposit file with the international bureau of WIPO that will assist protecting the design of the box in several countries for 15-20 years that may supply the product.
Adding the Seal option or using UPC code to trail products and also conduct quality control on went back item
Opt for the acquire ISO quality standard that will assist that to be distributed widely.
Opt for seeking the right stations to gather the agreement of distributing the product in European countries and USA that will greatly add to the company Income.
Trademark Dress: Bertram to revisit the trade dress to make it distinctive in a way that it embodies the look of a product, in order to obtain secondary meaning distinctiveness. The look could also are the Practical aspects to provide to the utilitarian purposes of the item in commerce.
Make the trade dress intrinsically distinctive to recognize the Thai way to obtain the product. That will help customers to become predisposed to respect intrinsically distinctive marks as indicator of Bertram Chemicals from Thailand.
Revisit the typical operations process of taking care of the Intellectual property in Bertram Chemicals Company thru:
Having an kept up to date IP Audit are accountable to evaluate the IP Assets value, work on Building IP strategy
Assign the task of following up proactively on the IP registry process and to maintain the IP renewal.
Undertake review on Customer Satisfactory level.
Maintain the product quality level of the Product as it is the primary factor for the investment.
Study the neighborhood market trend and exterior market.
Identify potential market and customers.
Enhance the client commitment program to ensure that product experience are transferring from generation to another
Work on appealing to new era to the Products through highlighting Customer sufficient levels.
Maintaining the business information secrecy, Manage the flow of information and ensure that confidentiality of trade secrets are protected
Orient Personnel and instruct them on the value of the intellectual property standard.
Raise the understanding about how such irresponsible patterns will affect the company performance and lead to affect assignments and by effect staff employed in the Company.
Company might desire to register the Combination of Sian Pure Oil as patent, and proceeding with global registration, Perhaps that will protect combo internationally. Bertram can reap the benefits of awarding the creation license to different companies in other countries. The Company will take advantage of the Patent Assistance Treaty which simplifies the patent subscription for an inventor through sign up the patent in European union regional, Patent office will perform an international search, International publication and then international initial Assessment and then granting countrywide or local patent. That will assist Bertram to award to production License to others and benefit economically from production abroad. Create relationship with other companies overseas and try to benefit from their presence in the bottom and circulation network to create 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 choice of growing the elements locally in Thailand specially that will help cutting the price of production.
