An IPR dispute triggered by a trademark TELEMATRIX recently came to an end with Cetis, Inc.'s success over its OEM company Shandong Bittel Electronics Co., Ltd. The Trademark Review and Adjudication Board under the State Administration for Industry and Commerce (SAIC) officially revoked TELEMATRIX as a trademark filed from Bittel, on products like telephones.

A 3-year battle

Established in 1993 by Dr. Bing N.Sun, Cetis (formerly Jisc Cetis) specializes in providing network communications and wireless local area network (LAN) solution for hotels, hospitals, Colleges and universities, goverments etc. Cetis had purchased TeleMatrix in 2006, and merged Teledex in 2009, it designed and manufactured a broad range of analog, and VoIP telephone and high-speed Internet products. In 2009, Cetis set up their Beijing office, trying to open up Chinese markets.

Cetis telephones are always preferred by major hotel brands, namely Hilton, Inter Continental etc. Up to now, Cetis telephones have been installed in more than 20 million guest rooms for 150,000 hotels.

In 1998, the Yankuang Shandong Bittel Electronics started their business with Cetis as an OEM manufacturer. One year after the contracts expired, Bittel filed TELEMATRIX as a trademark on telephones in 2004, in May 2007, the trademark was registered.

In June 2006, Bittel sued Beijing Cetis to Beijing Chaoyang People's court on the ground because Cetis has produced and sold telephones with the TELEMATRIX trademark without authorization.  

Beijing Cetis fought back. It held that all the dispute trademark have been legally authorized from their parent company, Beijing Cetis highlighted that all these phones had been made by American TeleMatrix, Inc. or  by Scitec Teledex & TeleMatrix, Inc., no infringement had been constituted.

Cetis alleged that Bittel was the real infringer. Up to now, TELEMATRIX has gained popularity and awareness among the consumers globally; Bittel's behavior should be deemed squatting. In September 2010, Cetis appealed to the Trademark Review and Adjudication Board and sought rejection.

No one compromises

Cetis held that as a hotel phone supplier, Cetis and the TELEMATRIX have gained awareness among consumers even before Bittel's filings. In its promotions, Bittel had admitted the fact that TELEMATRIX was a real world-known trademark. Taking into consideration of these factors, Bittel's filings should be affirmed squatting.

Meanwhile, Cetis tried to reverse the battle on the ground of unfair competition. Cetis has been regarded as Bittel's strong competitor in the Chinese market, Bittel attempted to disturb or restrict Cetis's business by registered TELEMATRIX as a trademark on the similar products.

Public information from Chinese Trademark Online under SAIC shows that Bittel has filed TELEDEX as a trademark on telephones on Class 9 and filed TELEDEX as a trademark on fax machines on Class 9. These two trademarks are pending. Earlier than Bittel's filings, TELEMATRIX has filed TELEMATRIX as a trademark in EU and America etc.

The Trademark Review and Adjudication Board ruled in favor of Cetis's appealing and rejected Bittel's trademark. The Trademark Review and Adjudication Board held the trademark TELEMATRIX had won popularity among consumers globally even before it entered into Chinese market. Being aware of this, Bittel filed TELEMATRIX as a trademark on same products, unfair competition has been affirmed.

Disgruntled Bittel brought this case to Beijing No.1 Intermediate People's Court. We will keep close attention to the development of the case.

(China IP News)