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

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News that a customization specialist in California is being sued by Rolex for creating and promoting 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 customizes 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 drags Californian customizer into court on charge of being a counterfeiter

 

There has been a flurry of people commenting on the news, the majority of which criticize 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 customizer. 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 customizing luxury watches and selling them online.

Rolex alleged Melrose made unauthorized 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.

 

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Tags : customizationlaCalifornienneRolex
Rob Corder

The author Rob Corder