Wednesday, 11 December 2019 17:10

Rolex Sues La Californienne for Trademark Counterfeiting and Infringement - A Case for all Timepiece Customizers to Behold

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For some, buying a Rolex or other high quality watch is a statement in self and brand identity in it of itself. For others, a need arises to truly distinguish such a purchase by means of customization. For these others, a range of deemed "watch customizers" exist to re-paint, re-fit, skeletonize, or otherwise modify high quality timepieces or watches. Recently, this customization has become a large trend and it seems that watch manufacturers are paying attention.

In watch manufacturers paying attention, such a watch customizer, La Californienne is now being sued by Rolex for trademark counterfeiting, infringement and false representation.

La Californienne markets themselves as a company that at least, replaces original watch crystals, refashions watch bezels and alters the (watch) dials by stripping the paint and finish from the original watch face dials, and repainting and refinishing them in various vibrant colors (reinstalling Rolex marks and original indicia). In interpretation, La Californienne obtains an original watch, such as a Rolex, and modifies portions of the watch, then re-sells the creation.

At the time of writing, examples of their creations can be found here and in the images below.

Rolex asserts, La Californienne modified watches (although derived and customized from original Rolex watches) should be deemed "Counterfeit." This deeming comes from at least examination of two separate La Californienne modified Rolex watches. In examination, Rolex was able to determine La Californienne had at least reprinted or re-attached some of Rolex's registered trademarks, and more subsequently, installed non-genuine products of Rolex on the watches such as a crystal, refinished the dial surface, which may lead to debris in the movement of the watch to affect time keeping ability, and improperly fitted a bezel, which may allow water to leak through the watch adversely affecting the watch. Importantly, Rolex also noted that La Californienne added their name to a dial on one of the watches. Rolex also utilized La Californienne’s web presence to determine how they modify Rolex watches.

In assertion, Rolex is claiming that La Californienne is confusing and deceiving the public because their use of Rolex Registered Trademarks tends to and does create the erroneous impression that La Californienne's products and services emanate or originate from Rolex and/or that the products and services are authorized, sponsored or approved by Rolex, even though they are not. In legal terms, Rolex is claiming that a likelihood of consumer confusion is created by La Californienne which may cause irreparable harm to Rolex and the Rolex Registered Trademarks.

As Rolex believes La Californienne is being unjustly enriched by illegally using and misappropriating Rolex's intellectual property for their own financial gain, Rolex seeks damages, La Californienne's profits, and attorney's fees.

 

 

More on the case can be found here: Rolex Watch U.S.A., Inc. v. Reference Watch LLC d/b/a/ La Californienne et al

 

Read 767 times Last modified on Wednesday, 11 December 2019 17:38
Victor Bruzos

Mr. Bruzos is a graduate of Purdue University, where he earned his Bachelor’s degree in Industrial Engineering, a minor in Statistics and a minor in Entrepreneurship. As a non-lawyer member of the Firm’s patent staff, Mr. Bruzos assists the Firm’s patent attorneys with patent research and application preparation.