A Champion Spark plug re-conditioned goods case involving ROLEX watch parts. From the Fifth Circuit decision:
This is a trademark infringement dispute involving allegations of counterfeit and infringing use of Rolex’s marks by BeckerTime. Rolex is a luxury watch seller with a legally protectable interest in numerous trademarks. BeckerTime sells primarily decades-old preowned watches containing Rolex branded parts. The at-issue watches in this case are watches sold by BeckerTime that are identified as “Genuine Rolex,” but contain both Rolex and non-Rolex parts. The watches specifically considered by the district court contained additional diamonds, which were added “as hour markers to the refinished dials by drilling holes in the dials and placing aftermarket diamonds or other stones and settings in the holes.” To refinish dials, BeckerTime “strips the dial down to bare metal, then, after the refurbishing process is complete, reapplies Rolex’s trademarks.” These “modifications” are not performed or authorized by Rolex. BeckerTime lists the retail prices of their modified watches with comparison prices to new Rolex watches, but for the watches considered, the district court found that “Rolex has never sold a watch matching the description” provided by BeckerTime.The at-issue watches contain “at least one Rolex trademark” and “aftermarket bezels (not made or endorsed by Rolex) . . . including bezels with added diamonds.” BeckerTime further applies “aftermarket bands or straps (not made or endorsed by Rolex)” that “sometimes include a genuine Rolex clasp or buckle displaying Rolex’s trademarks.” The parts BeckerTime adds to the at-issue watches “do not bear any markings indicating BeckerTime is the source.” Further, the district court found that the parts replaced, such as the bezel, dials, and bracelets, “are integral and necessary to the at-issue watches.”
Text of decision in Rolex v BeckerTime, 5th Circuit, Jan 26 2024