Rolex has won its case against luxury watch customiser La Californienne, which is no longer permitted to use the Swiss watchmaker’s name or any of its symbols even when it is treating vintage Rolex watches.
The ruling by the U.S. District Court for the Southern District of New York is designed to prevent La Californienne — and by extension any other customisation business — from marketing or any other activity that profits from the use of Rolex’s intellectual property.
There does not appear to have been any financial settlement or attribution of legal costs.
laCalifornienne was launched in 2016 in Los Angeles by Courtney Ormond and Leszek Garwacki and its customised watches are sold around the world by partners such as Farfetch and Goop.
Today, its website has only a holding page. Its Instagram is still live, but displays only customized Cartier watches.
In the original case, filed in a Californian court, the customiser was accused of “benefiting and profiting from [Rolex’s] outstanding reputation for high quality products and its significant advertising and promotion of Rolex watches and the [company’s] trademarks” and giving the impression that the watches are “authorized, sponsored, or approved by Rolex when they are not.”
Rolex also claimed that La Californienne’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.
The New York court’s ruling says La Californienne is subject to a final judgment for trademark counterfeiting, trademark infringement, and false designation of origin and unfair competition, and permanently barred from engaging in an array of specific conduct, namely, “using any of the Rolex registered trademarks or any reproduction, counterfeit, copy or colourable imitation of the Rolex registered trademarks in connection with the advertisement, promotion, offering for sale, or sale of its altered Rolex watches.”
It is also prevented from, “engaging in any course of conduct likely to cause confusion, deception, or mistake, or dilute the distinctive quality of the Rolex registered trademarks.” And banned from using Rolex marks on its “website, the Internet (either in the text of a website, or as a keyword, search word, metatag, or any part of the description of the site) or in any promotion or advertising in connection with its altered Rolex watches or any goods or services not authorized by Rolex.”
The only wriggle room for La Californienne is that it can keep customizing Rolex watches, but anything protected by Rolex cannot be used. This would include the Rolex crown on its crown, dial and bracelet.
Little wonder the business has immediately started promoting only customized Cartier watches.
Cartier is not believed to have begun any legal action against the business.