Abuse of the brand name in "Homage"-Description on ebay

[RHJ]

Hello,

I see always sellers on ebay, which offer fakes under the descriprion "Homage"-$BRAND$. I hate it, because just someone interested in watches needs some time to understand, but all the other people get the brandname and buy ...

Also they use naming conventions of movements as "6497", this is intentionally feigning ..

I propose to write a letter signed by the forum members to ebay on behalf - what do you think? The real watch enthusiasts create a very high turnover for ebay ... So they have influence, do you agree?

I will post this also on omegaforums.net and http://forums.watchuseek.com/


Example: http://www.ebay.es/itm/Gruppo-Gamma-.../282048637521?

[GLADIATOR]

I think nothing illegal in this
watch does not have any trademarked logo, seller states "homage"
And indeed Amazon offer the same pieces.
A

[rozyd]

What's wrong with using 6497 if it has a Unitas 6497 in it? Or are you saying that it's a clone/fake movement as well?

[Old Expat Beast]

Originally Posted by RHJ

Hello,

I see always sellers on ebay, which offer fakes under the descriprion "Homage"-$BRAND$. I hate it, because just someone interested in watches needs some time to understand, but all the other people get the brandname and buy ...

Also they use naming conventions of movements as "6497", this is intentionally feigning ..

I propose to write a letter signed by the forum members to ebay on behalf - what do you think? The real watch enthusiasts create a very high turnover for ebay ... So they have influence, do you agree?

I will post this also on omegaforums.net and http://forums.watchuseek.com/


Example: http://www.ebay.es/itm/Gruppo-Gamma-.../282048637521?

I suggest you read Rule #12: www.rolexforums.com/showthread.php?t=23163

12. The forum will not get involved in any disputes between private members and/or third parties. Members are forbidden from expressly or impliedy stating that their opinions are those of or in any way indorsed by the forum, the moderators or administrators.

[brookish]

Homage is just another word for fake

[GLADIATOR]

Originally Posted by brookish

Homage is just another word for fake

Not true.
HOMAGE is purely "imitating" the genuine and is actually the highest form of flattery, it is NOT illegal where as "fakes" are.

[michael067]

Originally Posted by GLADIATOR

Not true.
HOMAGE is purely "imitating" the genuine and is actually the highest form of flattery, it is NOT illegal where as "fakes" are.

Agreed

[RHJ]

Originally Posted by rozyd

What's wrong with using 6497 if it has a Unitas 6497 in it? Or are you saying that it's a clone/fake movement as well?

no, it isn'T an Unitas, that is the point

[RHJ]

Originally Posted by Old Expat Beast

I suggest you read Rule #12: www.rolexforums.com/showthread.php?t=23163

12. The forum will not get involved in any disputes between private members and/or third parties. Members are forbidden from expressly or impliedy stating that their opinions are those of or in any way indorsed by the forum, the moderators or administrators.

Ok, sorry, I didn't know, that this was explicitly excluded, i rather thought that the forum could express a "shared opinion".
I have no personal dispute with a seller, so this was not based of a personal expereince, but about a general approach for being more correct to the possible buyers.

Apologies for having brokne the rule, it won't happen again.

[ShneaSIG]

Originally Posted by GLADIATOR

Not true.
HOMAGE is purely "imitating" the genuine and is actually the highest form of flattery, it is NOT illegal where as "fakes" are.

Actually, at least in the US, it commonly is illegal (at least in the sense of violating a statute under which an aggrieved party may seek a private right of action). The question is really whether or not any enforcement is practical, since the most likely remedy would only come from pursuing a private right of action.

The construction and sale of any "homage piece" by necessity is a direct case of "passing off", as well as infringes both trademarks and tradedress.

[GLADIATOR]

Originally Posted by ShneaSIG

Actually, at least in the US, it commonly is illegal (at least in the sense of violating a statute under which an aggrieved party may seek a private right of action). The question is really whether or not any enforcement is practical, since the most likely remedy would only come from pursuing a private right of action.

The construction and sale of any "homage piece" by necessity is a direct case of "passing off", as well as infringes both trademarks and tradedress.

Really?
How do Amazon US, manage to offer the likes of Panerai and other "homage" pieces. Like here:
http://www.amazon.com/Fanmis-St3600-.../dp/B00KL70XRW

Or a Rolex here:
http://www.amazon.com/Technos-T2134S.../dp/B006WH5GWM

Or read here. I do not think there is any law in imitating others as long as you do not use there registered name, logos or trademarks!
http://gearpatrol.com/2013/08/13/opi...omage-watches/

Finally US (America) is a big place, and different states may have different laws - that said, I am a Horologist, not a lawyer
A

[ShneaSIG]

Great questions, Gladiator. Let me get my little one fed and tucked in for the night, and I'll do my best to offer an explanation.

[GLADIATOR]

Originally Posted by ShneaSIG

Great questions, Gladiator. Let me get my little one fed and tucked in for the night, and I'll do my best to offer an explanation.

LOL - I am IMPRESSED!

[watch royal]

At least that seller is upfront. Seen much more scrupulous sellers on the bay that's for sure. I understand your point as a newbie to Rolex may be confused but buyers should be informed to some degree I'd hope

[ShneaSIG]

Originally Posted by GLADIATOR

Really?
How do Amazon US, manage to offer the likes of Panerai and other "homage" pieces. Like here:
http://www.amazon.com/Fanmis-St3600-.../dp/B00KL70XRW

Or a Rolex here:
http://www.amazon.com/Technos-T2134S.../dp/B006WH5GWM

Or read here. I do not think there is any law in imitating others as long as you do not use there registered name, logos or trademarks!
http://gearpatrol.com/2013/08/13/opi...omage-watches/

Finally US (America) is a big place, and different states may have different laws - that said, I am a Horologist, not a lawyer
A

Gladiator,


Thanks for your patience. First, I’m not seeking to be contrary, and I'm aware that my first post may have came off as such.

Second, I must say that I've already learned something in this thread – before this thread, I equated "homage" watches to all the other junky fakes, but now I see the distinction. The "homage" watches being those watches which emulate everything about the original, but stop short of including obvious trademarks, while the crummy fakes are the watches we see over and over again which include (often badly imitated) trademark content. However, there is still an issue that could face the "homage" watches – trade dress.

As a matter of introduction, I am a lawyer in the Midwest of the United States, and a novice WIS. While my primary area of law practice is not in the intellectual property fields, I have enough knowledge of IP law to be dangerous.


While true that all 50 states have their own laws, the vast majority of intellectual property law has been pre-empted by federal statutes. The heart and soul of trademark law is the Lanham Act (15 U.S.C. § 1051 et seq.). The Lanham Act also covers trade dress. Additionally, most states have their own trademark and trade dress laws, although these laws are, in practice, seldom used and are often entirely pre-empted by federal statute.

My discussion will focus on two distinct parts of U.S. intellectual property law: trademarks and trade dress.


I think we all know what trademarks are – they're words, icons, images, etc., used in trade or commerce, to identify the source and origin of a product. The name "Rolex", the five-point coronet, and "oyster perpetual", for example, are all Rolex trademarks.

Trade dress, on the other hand, is the special look and feel of a product that is has acquired a sufficient secondary meaning as to be inseparable from the identity of the product and its source. If the design can be separated from the functionality of the feature, then there's a very strong argument that the design is trade dress. The shape of Coca-Cola's bottle is a great example of trade dress. Rolex's fluted bezel is another example of trade dress. Each of these two examples is an execution of a design component that is done in such a peculiar way as to embody form over function, and are instantly recognizable as unique product and brand-specific features.

Trademark and trade dress infringement occurs when consumers or the public are likely to be confused about the identity, source, or origin of a product. Confusion can happen in a variety of ways, such as point of sale confusion (think of the complete fakes) where the buyer thinks they're getting an authentic product but are actually buying a counterfeit product ("passing off"), or, secondary confusion, which is more likely to occur with the "homage" watches, and occurs when the buyer of the product knows they aren't purchasing an authentic product, but a later member of the public, when they see the purchased product, will be likely to mistake that product as being of another make or source.

Producers and sellers of direct counterfeits are subject to federal criminal liability in the U.S. primarily because the counterfeits intentionally violate registered trademarks. The "homage" watches are likely "legal" in this sense because they avoid using any registered trademarks, and because the legal test for determining when a product is a counterfeit as compared to merely an infringement of a trademark is a far stricter test.

It's important to note that the vast majority of trademark and trade dress protection and enforcement is not conducted by the U.S. Government. It actually occurs through civil litigation by the aggrieved trademark or trade dress owners. The law literally places a burden on a business to enforce the protection of their trademarks and trade dress to avoid "dilution" of its marks or risk losing the ability to prevent others from using their marks.

Civil trademark infringement and trade dress infringement is a more forgiving standard for a plaintiff. Generally speaking, such a plaintiff only needs to prove that the alleged infringer is likely to cause confusion as to the source or identity of the product (which is, itself, a multi-faceted legal test, the details of which I'll spare you). That's where I take issue with the "homage" watches. The examples pointed out by Gladiator are easily identifiable instances of the direct imitation of trade dress that would certainly be actionable under the Lanham Act. The whole point of an "homage" watch is to emulate the look and feel of these otherwise distinct and easily recognizable watches.

Would they be likely to confuse the initial buyer? Probably not – the homage watches don't say "Panerai" or "Rolex," and they aren't displaying the trademarked logos.

What about secondary confusion? I believe these homage watches would not pass muster under a secondary confusion analysis. Any member of the public who views one of these watches on the wrist of another would almost certainly, at least at first, mistake the watch for a genuine article. That kind of confusion is significant to determining trade dress infringement. Cutting against the imposition of liability would be all of the alternative branding and lack of using any other registered marks, but that very well may be (and in my personal opinion, certainly is) too little to avoid infringement liability. A slam dunk? Well no – those don't really exist when you have a jury, but certainly enough of a case to make it worth litigating.

So, why are these "homage" watches allowed in the marketplace? That's something I don't have an answer for, other than to say that the sellers and producers haven't been sued yet. As I mentioned earlier, they aren't so badly infringing as to be subject to seizure or criminal liability as counterfeits, but they would almost certainly be actionable under the Lanham Act's civil remedy provisions.

The decision to litigate or not is, literally, up to the owners of the marks. To hazard a guess, perhaps they don't want the bad publicity that often comes with initiating I.P. litigation. Maybe they consider these products as such a de minimus level of infringement that they don't consider them a risk to their trademarks or their brands. If, on the other hand, Omega started making an "oyster perpetual datejust" with a fluted bezel, then we might see some fireworks.

As for the gearpatrol article, well, it's long on the writer's editorializing, and short on any actual law or facts. In short, yes, making imitations, even "homage" pieces, can certainly be illegal, and subject the maker and seller to civil liability and injunctions, at a minimum, especially if these imitations are of products that are contemporaneously in production.

[Fredrik]

ShneaSIG, thank you for the explanation.

Regarding trade dress, I assume any Panerai homage with its distinct case shape is more likely to be found illegal than say a Submariner homage?
I also realize it must be a grey area in general. How about bracelets? The aftermarket oyster bracelets definitely passes of as the real stuff at a quick glance.

[RHJ]

Thanks a lot, ShneaSIG, for explaining so clear trademark and trade dress! Surely many try to sail along the borderline of the trade dress, also a lot of lower brands do so: There is a whole world of Pepsi-Bezels for example.

[ShneaSIG]

Originally Posted by Fredrik

ShneaSIG, thank you for the explanation.

Regarding trade dress, I assume any Panerai homage with its distinct case shape is more likely to be found illegal than say a Submariner homage?
I also realize it must be a grey area in general. How about bracelets? The aftermarket oyster bracelets definitely passes of as the real stuff at a quick glance.

My pleasure! I would agree that Panerai's distinctive case design would quite likely qualify as trade dress. I think there is sufficient secondary meaning in its case - you see the shape and you immediately associate it with Panerai.

The imitation bracelets are an easier determination, since the commonly include attempts at copying the authentic brand's trademarked logos.

Absent trademarks on an imitation bracelet, a bracelet design could also qualify as trade dress. The jubilee bracelet, for instance, woukd likely do so - it's highly recognizable and probably is so to such an extent as to be immediately associated with Rolex, and its design is not a necessary result of its function .

[goldfixer21]

Just about every watch brand, Seiko, Citizen, and on and on, produce models that are nearly identical to Rolex models. Fluted bezels, President,Oyster, and Jubilee bands are all used. If this is a trade dress violation, why hasn't Rolex addressed it?

[Tony64]

Originally Posted by ShneaSIG

Gladiator,


Thanks for your patience. First, I’m not seeking to be contrary, and I'm aware that my first post may have came off as such.

Second, I must say that I've already learned something in this thread – before this thread, I equated "homage" watches to all the other junky fakes, but now I see the distinction. The "homage" watches being those watches which emulate everything about the original, but stop short of including obvious trademarks, while the crummy fakes are the watches we see over and over again which include (often badly imitated) trademark content. However, there is still an issue that could face the "homage" watches – trade dress.

As a matter of introduction, I am a lawyer in the Midwest of the United States, and a novice WIS. While my primary area of law practice is not in the intellectual property fields, I have enough knowledge of IP law to be dangerous.


While true that all 50 states have their own laws, the vast majority of intellectual property law has been pre-empted by federal statutes. The heart and soul of trademark law is the Lanham Act (15 U.S.C. § 1051 et seq.). The Lanham Act also covers trade dress. Additionally, most states have their own trademark and trade dress laws, although these laws are, in practice, seldom used and are often entirely pre-empted by federal statute.

My discussion will focus on two distinct parts of U.S. intellectual property law: trademarks and trade dress.


I think we all know what trademarks are – they're words, icons, images, etc., used in trade or commerce, to identify the source and origin of a product. The name "Rolex", the five-point coronet, and "oyster perpetual", for example, are all Rolex trademarks.

Trade dress, on the other hand, is the special look and feel of a product that is has acquired a sufficient secondary meaning as to be inseparable from the identity of the product and its source. If the design can be separated from the functionality of the feature, then there's a very strong argument that the design is trade dress. The shape of Coca-Cola's bottle is a great example of trade dress. Rolex's fluted bezel is another example of trade dress. Each of these two examples is an execution of a design component that is done in such a peculiar way as to embody form over function, and are instantly recognizable as unique product and brand-specific features.

Trademark and trade dress infringement occurs when consumers or the public are likely to be confused about the identity, source, or origin of a product. Confusion can happen in a variety of ways, such as point of sale confusion (think of the complete fakes) where the buyer thinks they're getting an authentic product but are actually buying a counterfeit product ("passing off"), or, secondary confusion, which is more likely to occur with the "homage" watches, and occurs when the buyer of the product knows they aren't purchasing an authentic product, but a later member of the public, when they see the purchased product, will be likely to mistake that product as being of another make or source.

Producers and sellers of direct counterfeits are subject to federal criminal liability in the U.S. primarily because the counterfeits intentionally violate registered trademarks. The "homage" watches are likely "legal" in this sense because they avoid using any registered trademarks, and because the legal test for determining when a product is a counterfeit as compared to merely an infringement of a trademark is a far stricter test.

It's important to note that the vast majority of trademark and trade dress protection and enforcement is not conducted by the U.S. Government. It actually occurs through civil litigation by the aggrieved trademark or trade dress owners. The law literally places a burden on a business to enforce the protection of their trademarks and trade dress to avoid "dilution" of its marks or risk losing the ability to prevent others from using their marks.

Civil trademark infringement and trade dress infringement is a more forgiving standard for a plaintiff. Generally speaking, such a plaintiff only needs to prove that the alleged infringer is likely to cause confusion as to the source or identity of the product (which is, itself, a multi-faceted legal test, the details of which I'll spare you). That's where I take issue with the "homage" watches. The examples pointed out by Gladiator are easily identifiable instances of the direct imitation of trade dress that would certainly be actionable under the Lanham Act. The whole point of an "homage" watch is to emulate the look and feel of these otherwise distinct and easily recognizable watches.

Would they be likely to confuse the initial buyer? Probably not – the homage watches don't say "Panerai" or "Rolex," and they aren't displaying the trademarked logos.

What about secondary confusion? I believe these homage watches would not pass muster under a secondary confusion analysis. Any member of the public who views one of these watches on the wrist of another would almost certainly, at least at first, mistake the watch for a genuine article. That kind of confusion is significant to determining trade dress infringement. Cutting against the imposition of liability would be all of the alternative branding and lack of using any other registered marks, but that very well may be (and in my personal opinion, certainly is) too little to avoid infringement liability. A slam dunk? Well no – those don't really exist when you have a jury, but certainly enough of a case to make it worth litigating.

So, why are these "homage" watches allowed in the marketplace? That's something I don't have an answer for, other than to say that the sellers and producers haven't been sued yet. As I mentioned earlier, they aren't so badly infringing as to be subject to seizure or criminal liability as counterfeits, but they would almost certainly be actionable under the Lanham Act's civil remedy provisions.

The decision to litigate or not is, literally, up to the owners of the marks. To hazard a guess, perhaps they don't want the bad publicity that often comes with initiating I.P. litigation. Maybe they consider these products as such a de minimus level of infringement that they don't consider them a risk to their trademarks or their brands. If, on the other hand, Omega started making an "oyster perpetual datejust" with a fluted bezel, then we might see some fireworks.

As for the gearpatrol article, well, it's long on the writer's editorializing, and short on any actual law or facts. In short, yes, making imitations, even "homage" pieces, can certainly be illegal, and subject the maker and seller to civil liability and injunctions, at a minimum, especially if these imitations are of products that are contemporaneously in production.

ShneaSIG, thank you for this information. I can't remember when I've read a posting with such analysis and clarity. I think that your post represents what makes this forum great - members with diverse backgrounds and experiences willing to contribute their knowledge to the collective benefit of their fellow watch enthusiasts.

[Tony64]

Originally Posted by goldfixer21

Just about every watch brand, Seiko, Citizen, and on and on, produce models that are nearly identical to Rolex models. Fluted bezels, President,Oyster, and Jubilee bands are all used. If this is a trade dress violation, why hasn't Rolex addressed it?

I think the answer is explained here:

" The decision to litigate or not is, literally, up to the owners of the marks. To hazard a guess, perhaps they don't want the bad publicity that often comes with initiating I.P. litigation. Maybe they consider these products as such a de minimus level of infringement that they don't consider them a risk to their trademarks or their brands. If, on the other hand, Omega started making an "oyster perpetual datejust" with a fluted bezel, then we might see some fireworks. "

Rolex simply doesn't consider these to be legitimate threats to their brand. Omega doing the same could be a different story.

[GLADIATOR]

Originally Posted by Tony64

ShneaSIG, thank you for this information. I can't remember when I've read a posting with such analysis and clarity. I think that your post represents what makes this forum great - members with diverse backgrounds and experiences willing to contribute their knowledge to the collective benefit of their fellow watch enthusiasts.

From my side, I have to concur with this statement.

I am a Horologist, with no legal knowledge, therefore it is pointless for me to debate this issue.

Only to say, it seems MIGHTY strange no company has taken ANY action to stop this "homage" activity against them, not Rolex, not Omega, not Panerai nou IWC - really no one.
Makes me think that ultimately in a court of law, they would not win much!

adam

[Tony64]

Originally Posted by GLADIATOR

From my side, I have to concur with this statement.

I am a Horologist, with no legal knowledge, therefore it is pointless for me to debate this issue.

Only to say, it seems MIGHTY strange no company has taken ANY action to stop this "homage" activity against them, not Rolex, not Omega, not Panerai nou IWC - really no one.
Makes me think that ultimately in a court of law, they would not win much!

adam

I'm no lawyer either, but I assume they'd have to prove damages in addition to infringement. Hard to think that the sale of Casios is significantly cutting into the profits or brand repetition of Rolex.

No disrespect at all intended or implied toward Casio. It's just a different market and a different consumer. Hard to see how that would take business away from a brand like Rolex.

[ShneaSIG]

The decision to litigate or not is often a crap shoot, and it can be especially so when it comes to IP litigation. When a plaintiff brings an infringement suit, they usually are more interested in injunctive relief - stopping the infringement - than monetary damages. For statutory infringement, damages need not be specifically proved, they are presumed.

But, bringing an infringement suit can have a backlash - a plaintiff may lose, certainly, and they may actually have their mark invalidated! So, infringement suits are always a calculated risk, and it's important that a plaintiff pick the right battles.. Just because one can doesn't mean one should.

While I, too, am surprised that these homage pieces are out there, I can only guess as to why they haven't been sued. Or, perhaps, sued just yet.

As to an earlier question, like why do other watch makers get to make fluted bezels, etc., I'm at a loss to discuss or analyze an issue without specific examples. Just because Rolex uses fluted bezels doesn't automatically preclude all other watch manufacturers from ever offering a fluted bezel. Whether one design infringes on another's trade dress is a very situationally specific inquiry and test. The sum total of one execution compared to the other and it's impact on the consumer's ability to differentiate the two products is what matters in such a comparison.


Lastly, nothing I've discussed herein is news to Rolex or any other manufacturer. They know and understand better than I what their rights are. Why they do or don't pursue the homage watch sellers, or cross swords with one another is a decision made behind boardroom doors, but you can safely bet they are all astutely aware of their brands and potential infringers.

Another possibility, at least for the sophisticated companies, is that designs or certain shared trade dress elements are used under license, which wouldn't necessarily be public information.

In the past, I know for fact that both Omega and Rolex have brought infringement suits in the US, particularly in the 80s and early 90s. Omega actually lost a significant decision in the early 90s that I can remember reading about in law school

[GLADIATOR]

Why not ask ourselves why the major watch manufacturers take absolutely NO action against the counterfeit factories in China, and now in Vietnam and Korea.
They absolutely know where their fakes are being produced, but do absolutely nothing.

These are also interesting issues to address.
Kind Regards
Adam

PS
Omega lost the COSTCO action

[ShneaSIG]

Originally Posted by GLADIATOR

Why not ask ourselves why the major watch manufacturers take absolutely NO action against the counterfeit factories in China, and now in Vietnam and Korea.
They absolutely know where their fakes are being produced, but do absolutely nothing.

These are also interesting issues to address.
Kind Regards
Adam

PS
Omega lost the COSTCO action

Oh, we could have a rousing discussion on China's counterfeiting industry, indeed! The biggest hurdle, as I understand it, is China's laws and legal system. For starters, while the EU and the US have treaties in place that recognize and reciprocate certain intellectual property rights and recognitions, China is not party to these agreements. Rolex, for example, could sue a Chinese counterfeiter in US courts and win enough judgments to wallpaper their offices in Geneva, which would be about all those judgments would be good for (presuming the Chinese parties have no reachable assets within the US), because no Chinese court will recognize or enforce a judgment based upon US law or issued from a US court.

And, I presume that any efforts to pursue remedies under Chinese law and in Chinese courts have been, unsurprisingly, less than satisfactory.

I'm sure it's not a matter of will, rather, a matter of access and availability of a forum and legal system capable of offering redress of the wrongs.

[ShneaSIG]

And, I'm glad everyone has appreciated my posts,. You're all most welcome and I'm pleased to discuss this with you all.

[GLADIATOR]

Originally Posted by ShneaSIG

And, I'm glad everyone has appreciated my posts,. You're all most welcome and I'm pleased to discuss this with you all.

And I hope your "little" one got fed and tucked up!

[ShneaSIG]

Originally Posted by GLADIATOR

And I hope your "little" one got fed and tucked up!

Oh, she was well taken care of! Fed, played with, snuggled, bathed, bedtime stories read, closet checked for monsters, tucked in, and had a good night's sleep.

Being a dad is a wonderful thing.

[Chewbacca]

why is a homage topic/rant in this section?

there doesn't seem to be any TM infringement on the OP's link and its a general topic/term accepted by the watch world imho



everyone knows the whatchout is purely for items found under mattresses, garage sales and gifts left by departed family members.