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Rolex on solid legal footing in lawsuit accusing watch customiser of counterfeiting

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News that a customisation specialist in California is being sued by Rolex for creating counterfeits of its watches when it alters their appearance with non-Rolex approved parts, such as dials, crystals and straps, has caused outrage among collectors who say they have the right to do what they want with the watches they own.

An article on WatchPro last week described the case against laCalifornienne, a company founded three years ago in Los Angeles by Courtney Ormond and Leszek Garwacki, that customises watches from Rolex and other Swiss brands.

In court documents, reported by The Fashion Law, Rolex says it is enforcing its long-standing policy that the alteration of its timepieces to include non-authentic Rolex parts (or parts otherwise approved by Rolex) transforms an authentic watch into a counterfeit.

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It also re-states that alterations “render Rolex’s warranty [on its watches] null and void [because] Rolex can no longer assure the quality or performance of such watches.”

Rolex claims that laCalifornienne’s watches no longer attain the aesthetic of original pre-owned Rolex watches and no longer perform or function to the same quality standards as unaltered pre-owned Rolex watches.

 

Rolex calls custom watchmaker a counterfeiter in landmark court case

 

There have been 31 comments on the story, the majority of which criticise Rolex for heavy-handed tactics and defend watch owners that want to have their timepieces altered.

If the case goes to court, we will hear some of these arguments tested. But, there is every chance laCalifornienne will look to settle the case before it reaches court because this is not the first time Rolex has taken on a Californian customiser. In 2013, a federal judge ordered Melrose.com and founder Krishan Agarwal to pay Rolex $8.5 million in damages in an almost identical case and Mr Agarwal later said he had left the industry.

Melrose.com was a specialist in customising luxury watches and selling them online.

Rolex alleged Melrose made unauthorised use of the Rolex trademark crown image in several places on its website, and made false or misleading statements, including in Google search ads, which read, “Rolex watches for sale at USA’s #1 Rolex store.”

In 2013 a federal judge in California ruled that Melrose was guilty of using “marks identical to or substantially indistinguishable from one or more of the Rolex Registered Trademarks on altered Rolex watches. Such unauthorized use is likely to cause consumers and the public to mistakenly believe that Melrose’s altered Rolex watches are genuine Rolex watches or are authorized, sponsored, or approved by Rolex, when, in fact, they are not.”

Rolex investigators had purchased three watches from Melrose prior to the trial and found that many parts of the watches were not genuine, and that Melrose’s watches bore counterfeit copies of the Rolex trademark.

The judge ruled that Melrose’s actions constituted trademark counterfeiting and  ordered Melrose and its founder to permanently take down the Melrose.com web site and any others containing the term Melrose. The company was also ordered to pay Rolex $8.5 million in damages; hand over the domain name Melrose.com and all international versions of the site; and deliver to Rolex all watch heads bearing its name.

It remains to be tested in court whether laCalifornienne is guilty of the same “trademark counterfeiting”, but the Melrose case is certain to be carefully studied by the firm’s lawyers.

 

21 Comments

  1. I think people are missing the point. You can do whatever you want to what you own. What you cannot do is buy something, change it fundamentally, then sell and advertise it as an authentic product. Rolex is going to win and they should win. It would be completely different if people were sending them watches to customise. They are buying watches, customizing then, then reselling them. If you can’t see something wrong with that, Google ‘American Gangster, brand name’.

    1. Na…I think you’re missing the point. There’s no “solid legal footing here” because the cases are completely different. The previous company’s [watches bore counterfeit copies of the Rolex trademark].

      No one says you can’t buy a product and modify it for sale with non-genuine parts. Perhaps you should take a look at the automative industry. Ever heard of Shelby? What the hell do you think they did for most of the last 50 years? How about Singer for Porsche.

      You’re the one that’s obviously completely clueless and missing the point.

      .

      1. I think you’ve missed the point. These customised watches clearly have counterfeit copies of the Rolex trademark. It’s right there on the dial. The company strips the dial, re-paints it and then re-applies the Rolex logo and brand name. This is what makes it Counterfeit. It’s not like they sent the refinished dials back to Rolex and asked them to re-apply their log for them. At this time, Rolex is more brand than it is watch maker and I don’t blame them for trying to protect their brand, especially if they don’t like the end result and they receive no financial benefit. I suspect companies like Artisans De Geneve get away with it because their products are highly respected pieces of watch making using new Rolex pieces rather than vintage models that have been dropped in a bucket of paint. I fully expect Rolex to win this case but I guess we’ll see.

    2. I disagree. No one states he sold them as factory rolexes. He bought them and can do what he wants to them and sell them. Look at it in any other industry and it’s ok. Car customizing shops buy new cars and sometimes chip them all to hell. Swap motors add body kits, interior alterations, wheels ect. And then resell them and still call them a Ferrari, challenger, Mustang, ect. Don’t see the cry baby car manufacturers going after them saying the can customize their cars because they aren’t factory anymore. If anything Rolex should be happy because it’s just more watches being purchased.

    3. I Think you’re missing the point…..it is not illegal to buy a product, modify it, and then sell it as a “customised product”. They are not selling the item as a “genuine Rolex design”, the design is theirs. The movement is genuine, and I doubt very much they are changing any of the mechanical components of the watch. Google “Overfinch” or “Revere” car customisation companies or “Artisans de Geneve”.

    4. If they were advertising it as an authentic product why would you then call it customized !? The word customized means changed or modified …. so why would someone Buy the watch from someone whose openly advertised it as changed or modified and then think it’s the same as the original !?
      It’s a stupid argument by Rolex and they are being disingenuous because every watch that gets customized has to come originally from them …. so are they saying they are making different watches in different factories or is there more than one type of Rolex Brand …..
      the Melrose example is totally different in that Melrose was using false Rolex Logos and advertising “as if they am were an authorized Rolex brand dealer “
      This is NOT the case here as they openly state the watches are altered / changed
      If client s log into Rolex.com and go to “ authorized Dealers “ they can clearly see these guys aren’t authorized so whose hiding the facts ?

      1. This case reminds me of the Ship of Theseus paradox. I understand Rolex’s point of view when the parts of their watch are replaced it isn’t pure 100% Rolex product ( calling it a counterfeit product is a little bit overreacting on rolex’s part) but i think as long as the customizer informed the customers about which part isn’t genuine from Rolex and which part is genuine i think the customizer would be fine. In sneakers things like this has become a common practice by customizer to replace the material of the shoes with a better one or painted them at a point you’ll never know if it’s the same shoes that got customized or not

  2. So if I buy a BMW and the local garage has fitted generic brake pads or air oil filter etc, according to Rolex the car cannot be sold as a BMW. There may be a lot of owners going to court for incorrect description. Many Rolex repaired by independent technicians use generic parts as Rolex refuse supply

  3. Rolex have every right to safeguard their corporate identity and rightly so; Hartge are engine tuners, they don’t sell as BMW, they sell HARTGE, just like Alpina, so that californian firm should know to sell their brand Name per se, not Rolex. They use the Rolex name because it will always sell, those are aesthetically transformed watches neither to my taste nor Rolex. Rolex isn’t denying anyone else the ability to transform its watches, look at Bamford, they are smarter. They sell as transformed Rolexes, no trouble there.

    1. Bamford stopped customising Rolex watches when it became an official partner of LVMH brands Zenith, Hublot and TAG Heuer. That agreement gives Bamford access to all genuine parts for its watches, and they are all officially sanctioned by the brands.

    2. So does Hartge and Alpina deny that their vehicles are based on BMW ‘s ?
      Of course not , that would be misleading
      The fact is that the cars are made at BMW , the. Delivered to Hartge and Alpina who then modify / alter them and change the badges
      This doesn’t change the fact that they are still Bmw engines , bmw chassis , BMW instrumentation
      So when they say “ based on a BMW “ is this fraud … or is it a fact …. it’s a fact

      Just as this customizing company cannot commit fraud and deny their watches are based on ROLEX watches and modified

  4. Why would you ever ruin a perfectly good watch. Try and sell one on and see what happens, I think there ugly. And good luck to Rolex for keeping up appearances

  5. The rolex Paul Newman had the case, movement and dial made by various companies and rolex just assembled the pieces, were they faking their own watches? If you go way back to the rolex oyster pocket watch movements, they were made by Cortebert. I think Gruen made stuff for them as well in the past. Point being, rolex have done way way more of this sort of stuff than La Californian..

  6. Rolex isn’t even a company it pays no taxes in any country it sells its watches. They are internationally registered as a charitable foundation. Who benefits from this charity

    1. A quick fact check here: Rolex Watch Company Limited, the wholly-owned UK subsidiary and distributor for Rolex in the UK, made a profit of £55.5 million in this country in 2018 and paid corporation tax of £10.6 million, an almost perfect 20%, the current corporation tax rate. Unlike tech and financial giants, none of the profits were off-shored to countries with more generous tax regimes. This is in addition to employee and employer national insurance contributions and VAT. I wish I could give you such detail on the Swiss operation or other international markets, but I can say comprehensively that the assertion that Rolex pays no tax in any country in which it sells watches is false.

  7. One very simple fact- LaCaliforienne certainly has no legal right to print the name/logo/symbol “ROLEX” on their refinished dials. Other than that, the watches themselves are probably OK. When Shelby modifies Ford products, they only use a Ford oval due to being an authorized user of that logo…and they have paid quite dearly for that right. Ford has no obligation to allow Shelby’s competition to use that logo…nor does Rolex have any obligation here. They might choose to, but sounds like here they have chosen not to.

    Rolex watches being made by other vendors, or GRUEN? have no bearing here. Rolex owns the trademark, and MUST defend it against unauthorised use or possibly lose that trademark.

    If Bamford used the Rolex trademark on those (ugly) black watches, it was most assuredly with the permission of Rolex, or the stuff would have hit the fan then, too.

  8. What would rolex be saying if LaCalifornienne marked out a rectangle around the originally painted logo, leaving it untouched while they did their design outside of the rectangle? If they did go against that, rolex would damage their own reputation even more than they are now.

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Rob Corder

The author Rob Corder