Appeals Court Finds for Rolex

[askdanny]

An appeals court on Friday published a decision in a lawsuit filed by Rolex Watch U.S.A. against BeckerTime.

It affirmed the lower court that parts replaced, such as the bezel, dials, and bracelets “are integral and necessary,” and therefore BeckerTime infringed on Rolex’s trademarks despite dealer's disclosures to customers.

This affirmation of the lower court means Rolex U.S.A. can sue and will win against any dealer using after-market parts in the U.S. It won against La Californienne in 2020. Ateliers de Genève is not based in the U.S.

The Appeals Court made it worse for Rolex customizers and its dealers in the U.S.: an aftermarket bezel is now included in the list of integral components triggering a copyright infringement ... which was not included by the lower court.

My story: https://coron.et/

—Danny

[fskywalker]

Thanks for sharing


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[Patekfinder]

Good, maybe this means less gauche iced out Rolexes now?


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[drrd]

Originally Posted by askdanny

[B]The Appeals Court made it worse for Rolex customizers and its dealers in the U.S.: an aftermarket bezel is now included in the list of integral components triggering a copyright infringement ... which was not included by the lower court.

Why worse?

Clarifying that franken ≠ Rolex is a good thing.

‘Aftermarket’ =Fake.

[Carguy87]

Great write up!

[INC]

Originally Posted by askdanny

https://coron.et/

Thanks for sharing, it's quite interesting, and that's why I have a question:

I read the story and I don't understand one point: Why would a repainted but otherwise original dial violate any copyright? This justification cannot be legal, since it would follow that, for example, no one, except for the manufacturer's own service center, could ever repaint a damaged car, because this alone would result in a lawsuit?

Moreover, would this mean that a restoration of an antique Rolex would be a crime in the future??

[askdanny]

Originally Posted by INC

Thanks for sharing, it's quite interesting, and that's why I have a question:

I read the story and I don't understand one point: Why would a repainted but otherwise original dial violate any copyright? This justification cannot be legal, since it would follow that, for example, no one, except for the manufacturer's own service center, could ever repaint a damaged car, because this alone would result in a lawsuit?

Moreover, would this mean that a restoration of an antique Rolex would be a crime in the future??

It's a good question, and I'm not sure why to be honest. I think it has to do with the method employed by BeckerTime. I reviewed both the lower court's and Appeals court's opinions. Maybe a lawyer can chime in.

According to the lower court ("district court"):

In the process of refurbishing dials, BeckerTime strips the dial down to bare metal, then, after the refurbishing process is complete, reapplies Rolex’s trademarks. Rolex does not perform or authorize these modifications.

According to the Appeals court:

However, we reject Rolex’s argument that the district court erred by excluding all non-genuine dials from parts 1(a) and (b) of the injunction.

The district court enjoined “dials where the dial is stripped of the original paint/coating and markings, then repainted/recoated, . . . or to which other words have been added.”

It specifically excluded customized dials that do not involve the removal or reapplication of Rolex’s trademarks, and which may have added diamonds, stones, or other embellishments.

First, under Champion, there is a difference between adding diamonds to a dial and refinishing a dial—the former is customization, the latter restoration...

Further, the district court’s order is supported by the fact that BeckerTime’s refinishing process necessarily required removing and reapplying Rolex’s trademarks. As Rolex concedes, “[t]here was no evidence that BeckerTime ‘customized’ dials in a manner other than using a refinishing process that involved removing and reapplying Rolex’s trademarks.” The district court here appropriately enjoined BeckerTime from doing what it was doing, not what it could do.

I hope this helps...

—Danny

[Driver8]

Originally Posted by drrd

Why worse?

Clarifying that franken ≠ Rolex is a good thing.

‘Aftermarket’ =Fake.

It says worse for customisers - i.e. people who customise/franken watches. Thus good for us consumers, bad for customisers.

[brandrea]

Originally Posted by INC

Thanks for sharing, it's quite interesting, and that's why I have a question:

I read the story and I don't understand one point: Why would a repainted but otherwise original dial violate any copyright? This justification cannot be legal, since it would follow that, for example, no one, except for the manufacturer's own service center, could ever repaint a damaged car, because this alone would result in a lawsuit?

Moreover, would this mean that a restoration of an antique Rolex would be a crime in the future??

I’m assuming it just means that Rolex wants genuine factory replacement parts to be used

[seabreeze]

what about that company (brain freeze) thak makes all the blacked out models? Seems like a weird Fast and Furious kind of concept

[INC]

Originally Posted by askdanny

It's a good question, and I'm not sure why to be honest. I think it has to do with the method employed by BeckerTime. I reviewed both the lower court's and Appeals court's opinions. Maybe a lawyer can chime in.

Thank you for the additional details! Now this seems clear to me, that the court checked these cases:

- customisation: (OK)
- restoration: (OK)
- removal and reapply trademarks: NO!

So it seems to me, that the first two cases are legal, as these makes no changes in the trademarks. However the third case is different, and it seems absolutely correct to me: If only the steel will remain after the complete removal of the paint, so no one(!) will ever be able to figure out if it had been an original dial!

And this is the point: Of course BeckerTime is not allowed to paint back the Rolex logo or the texts to a dial even if these were there before the demolition of an original dial.

[askdanny]

Originally Posted by seabreeze

what about that company (brain freeze) thak makes all the blacked out models? Seems like a weird Fast and Furious kind of concept

Blaken is Germany based, so outside the ruling. The lawsuit was brought by Rolex USA, not Rolex SA.

Also, Blaken customizes Rolexes on customer's request, which is allowed by the court's ruling. A customer could ask BeckerTime to have his or her Rolex customized.

[powerfunk]

Originally Posted by INC

Why would a repainted but otherwise original dial violate any copyright?

I listened to the 40-minute bench trial (it's on YouTube) and Rolex's issue is that they strip down the whole dial to the base metal and then re-write "Rolex" while also modifying it i.e. adding diamonds. There is established precedent (a Champion Spark Plugs case) that in the process of restoring something with a trademark on it, re-writing a trademark is acceptable. But by adding diamonds, it's not just "restoring" and the court seemed to agree with that perspective.

[Rolex1982]

Thnx for sharing

[kilyung]

Seems identical to Ferrari’s argument.

[Andad]

Originally Posted by INC

Thanks for sharing, it's quite interesting, and that's why I have a question:

I read the story and I don't understand one point: Why would a repainted but otherwise original dial violate any copyright? This justification cannot be legal, since it would follow that, for example, no one, except for the manufacturer's own service center, could ever repaint a damaged car, because this alone would result in a lawsuit?

Moreover, would this mean that a restoration of an antique Rolex would be a crime in the future??

You can repaint a Rolex dial but only Rolex can apply the Rolex name or any other trademarks?

[Devildog]

Originally Posted by drrd

Why worse?

Clarifying that franken ≠ Rolex is a good thing.

‘Aftermarket’ =Fake.

Don't be silly.

Franken is generally a mismatch of OEM parts.

And aftermarket does not equal fake.

Seriously. Are you suggesting that sticking an aftermarket strap on a Rolex suddenly renders the entire watch as fake?

Or a Rolex with an aftermarket dial is suddenly a fake Rolex?

Its not. It's a Rolex with an aftermarket dial.

Fake would require all, or substantially all of the watch to be non OEM whilst purporting to be OEM.

[Devildog]

Originally Posted by Andad

You can repaint a Rolex dial but only Rolex can apply the Rolex name or any other trademarks?

In the USA, it appears, yes.

[BNA/LION]

Interesting. Thanks for sharing.

[INC]

Originally Posted by Andad

You can repaint a Rolex dial but only Rolex can apply the Rolex name or any other trademarks?

If you COUNTERFEIT a dial, then you have no right to apply a trademark.

If you are restoring a dial to it's pristine condition, then you do nothing else, except to get back the original stage. This statement is also valid, even if you have to make minor restoration works on the trademarks.

BUT if they create a non factory, never existed dial, then they have no right to apply a Rolex trademark for that, as Rolex never made such a shame looked dials. But if they add for example diamonds like are on the original one then these dials should be called as counterfeit.

Morover there is a huge difference if you intend to modify your own watch for your own sake, and between to establish a business for this. The latter is striclty against the law, as in this case a legal entity want to infridge another party's rigth to a trademark to make profit from their intellectual property. This is, what is not allowed even if the trademark infridger try to argue, that not them, but the customers wants this modifications.

[ltmgeller]

I can't wait to see how this plays out

[CarlOver]

Not surprising outcome. Buyer beware. There are so many dials that have been refinished, altered aftermarket. Aftermarket sounds nicer than counterfeit but I guess the point is they are counterfeit dials. Then you have service dials as well.

[askdanny]

Swiss Supreme Court says Artisans de Genève can't sell customized watches, only customization services. So, courts agree on both sides of the Atlantic.

Full story: https://coron.et

[77T]

I think the key passages in the two cases boils down to a difference in the purpose of customization.

A firm can not sell a customized Rolex watch. That is, customize a watch for the purpose of selling is as a product in the marketplace.

However, the same firm could customize a watch upon request by the owner. That is, after the Rolex had already been purchased.

The difference appears to be product confusion in the market (a classic test in trademark law) versus fair use of a product by an owner seeking to customize it for individual use.


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