All About Upcycling: Rolex V. La Californienne

With an emphasis on sustainability within the fashion industry, many brands have gained their fame through upcycling. Whether it be luxury goods, or thrift store items reimagined, consumers are purchasing upcycled items for the chance to own unique and sustainable pieces. In fact, as I sit here writing this case brief, I am wearing a necklace that was upcycled from Chanel bag hardware.

Upcycling begs the question, are creators making new items which can be considered fair use? Or are they committing trademark infringement? Dive into this interesting case, focusing on trademark infringement, trademark counterfeiting, false designation of origin, false description and representation, and unfair competition.

WHO:

Plaintiff: Rolex: Luxury Watch Manufacturers

Defendant: La Californienne: Luxury Watch Customizers

WHEN:

Filed: November 15th 2019

Decided: May 28th, 2020

WHERE:

U.S. District Court for the Southern District of New York

ISSUE:

Rolex alleges American Luxury Watch Customizer, La Californienne, are participating in trademark infringement, trademark counterfeiting, false designation of origin, false description and representation, and unfair competition.

APPLICABLE LAW:

Nominative Fair Use Doctrine: the use of a protected trademark to describe or ‘name’ the protected trademark owner’s goods or services

Nominative Use 3-Prong Test:

1. Can the product or service be readily identified without using the trademark?

2. Is the user only using as much of the mark as necessary for the identification?

3. Does the user do nothing to suggest sponsorship or endorsement by the trademark holder?

ROLEX’S COMPLAINT:

Rolex complaints luxury watch customization brand, La Californienne, is replacing original watch crystals, refashioning bezels, altering dials and reinstalling all Rolex marks on their customized Rolex watches. Rolex alleges that the modified watches no longer obtain the original aesthetic or perform to the same standard as original Rolex watches. Rolex further complains that La Californienne is painting its name onto the dial of the altered watches so that their name appears in conjunction with the Rolex trademark. Rolex states that in October 2019, a customer sent a refurbished La Californienne watch to the Rolex repair center. They presented this as evidence of consumer confusion caused by La Californienne. Rolex goes on to say that La Californienne’s Instagram, Facebook and website falsely advertise Rolex watches in a manner calculated to mislead customers and that La Californienne’s acts are deliberately calculated to confuse and deceive the public and a performed with full knowledge of Rolex’s rights. Lastly, Rolex states that La Californienne’s act constitutes willful and deliberate infringement on Rolex’s rights, and the Rolex registered trademarks.

LA CALIFORNIENNE’S DEFENCE:

La Californienne entirely denies all of Rolex’s complaints. They claim they are not advertising or offering merchandise bearing counterfeit copies of the Rolex registered trademarks. They also deny that their watches no longer contain the original aesthetic of Rolex watches. They also state that the watches they refurbish still function to the same quality as original Rolex watches. La Californienne argues that Rolex’s arguments are precluded by the Nominative Fair Use Doctrine. La Californienne’s website also states that they are an independent watch dealer not endorsed, authorized, sponsored by or affiliated with Rolex. It also suggests people seeking new Rolex watches visit the brand’s official website.

RULING:

In the ruling from U.S. District Court for the Southern District of New York in May 2020, La Californienne is permanently prohibited from using or reproducing any Rolex trademark, including on its website. La Californienne is also barred from engaging in any conduct that is likely to confuse or delude Rolex’s trademarks, as well as is prohibited from using a description, including words or symbols representing its products as Rolex watches. Furthermore, La Californienne cannot provide any warranty or services on previously sold watches that bear the Rolex logo. Lastly, La Californienne had 10 days to “take all steps necessary to remove from its websites, or any other website containing content posted… offering for sale altered Rolex watches.”

OUR THOUGHTS:

This suit was very interesting as it didn’t necessarily revolve around the standard trademark definition. Instead, it used Rolex’s definition of a counterfeit, which encompasses any Rolex timepiece that includes non-Rolex parts. Based on the judge’s rulings, La Californienne is still allowed to customize the Rolex watches, but they can’t have the Rolex name, trademark or logo on the watch. It is odd that the customizing of the Rolex watches can continue. As this was a settled case, we do not get any new case law president, nor do we know if La Californienne had to pay any damages to Rolex. Will this trickle down into other luxury customization brands such as bag, jewelry or car customizers?

Sources:

Bates, Rob. “Rolex Sues La Californienne Over Altered Watches.” JCK, 4 Dec. 2019, www.jckonline.com/editorial-article/rolex-sues-la-californienne/.

Bruzos, Victor. “Rolex Sues La Californienne for Trademark Counterfeiting and Infringement - A Case for All Timepiece Customizers to Behold.” Malloy & Malloy, P.L., 11 Dec. 2019, malloylaw.com/rolex-sues-la-californienne-for-trademark-counterfeiting-and-infringement-a-case-for-all-timepiece-customizers-to-behold/.

Corder, Rob. “Rolex Wins Counterfeiting Case against Californian Customizer.” Watch Pro, 5 June 2020, usa.watchpro.com/rolex-wins-counterfeiting-case-against-californian-customizer/.

Grand, Jamie. “Legal Wrangling over as Rolex Defeats La Californienne and Its Colourful Creations.” Luxe Watches, 16 Nov. 2021, www.luxewatches.co.uk/legal-wrangling-over-as-rolex-defeats-la-californienne-and-its-colourful-creations/.

Mahaseth, Tulip. “Nominative Fair Use and Other Defenses to Trademark Infringement.” Red Points, 8 June 2022, www.redpoints.com/blog/nominative-fair-use-and-other-defenses-to-trademark-infringement/#:~:text=The nominative fair use doctrine,case in descriptive fair use.

Zebrowska Trauben, Kasia. “Rolex Reimagined.” Fashion Law Network Podcast, season 1, episode 12, 4 Aug. 2020.