Rolex wins key ruling in 'counterfeit' watch dispute

Rolex has won a round in its legal battle with Jewelry Unlimited (JU), a US company specialising in the sale of customised watches that are claimed in the lawsuit to infringe the Swiss brand's trademarks.

A federal court in Georgia has sided with Rolex in the dispute with JU and its owner Wafi Amin Lalani, granting a summary judgment that concluded the Atlanta-based business had committed trademark infringement, counterfeiting, and false designation of origin.

The case dates back more than 10 years to when Rolex sent a cease-and-desist letter to JU accusing the company of selling diamond rings and pendants that infringed Rolex's crown design trademark.

Subsequent investigation revealed that while JU was sourcing genuine watches from various sources, it was modifying them with non-Rolex approved parts such as bezels, dials and bracelets which, Rolex's counsel contends, meant they were transformed from a genuine timepiece into a counterfeit.

According to the lawsuit, JU advertises products that it does not have in its inventory, sources a watch similar to what is listed after an order is placed, assembles the watch with any customisations, and then delivers it with Rolex logo and branding. Rolex also claims that JU advertises the watches as "100% Genuine Pre-Owned" and "100% authentic as made by the manufacturer."

It's worth noting that Rolex settled an earlier legal dispute with another customiser of its products – La Californienne – which also took issue with its use of non-Rolex-approved parts in its "re-imagined" watches.

In his summary judgment, Judge Timothy Batten sided with Rolex in concluding that JU's business misled and created confusion among customers.

He was also unswayed by JU's argument that it did enough to inform consumers about the nature of its customisation approach, and that its items were "substantially different" because they are based vintage and used watches rather than new watches.

"Defendants' disclosures are confusing and contradictory," says the judgment. "They begin with "guarantees" that the product is a '100% Genuine Pre-Owned Rolex' and then continue to explain that the band and embellishment are 'after-market', without ever explaining what aftermarket means."