Rolex Watch, U.S.A., Inc. v. Michel Co.

179 F.3d 704, 50 U.S.P.Q. 2d (BNA) 1939, 99 Cal. Daily Op. Serv. 4236, 99 Daily Journal DAR 5359, 1999 U.S. App. LEXIS 11234, 1999 WL 351108
CourtCourt of Appeals for the Ninth Circuit
DecidedJune 3, 1999
DocketNo. 97-55877
StatusPublished
Cited by48 cases

This text of 179 F.3d 704 (Rolex Watch, U.S.A., Inc. v. Michel Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 50 U.S.P.Q. 2d (BNA) 1939, 99 Cal. Daily Op. Serv. 4236, 99 Daily Journal DAR 5359, 1999 U.S. App. LEXIS 11234, 1999 WL 351108 (9th Cir. 1999).

Opinion

TASHIMA, Circuit Judge:

Micha Mottale, doing business as Michel Co. (“Mottale”), reconditions used Rolex watches with parts that are not provided or authorized by Rolex Watch, U.S.A., Inc. (“Rolex”), and sells the altered watches, as well as generic replacement parts fitting Rolex watches, to jewelry dealers and selected retail jewelers. In addition, Mottale provides the service of specially reconditioning used Rolex watches. The district court held that Mottale’s retention of the original Rolex trademarks on the altered “Rolex” watches that he sells constituted trademark counterfeiting under section 32(l)(a) of the Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. § 1114(l)(a), as interpreted by our decision in Westinghouse Electric Corp. v. General Circuit Breaker & Electric Supply Inc., 106 F.3d 894, 899-900 (9th Cir.), cert. denied, - U.S. -, 118 S.Ct. 155, 139 L.Ed.2d 101 (1997). On that basis, the district court permanently enjoined Mottale from selling such altered watches without (1) adding permanent independent marks on the non-Rolex parts, and (2) including a written disclosure concerning the generic replacement parts on tags, invoices, promotions, and advertising.

Rolex appeals, principally arguing that the relief ordered by the district court is inadequate because the changes that Mot-tale makes to used Rolex watches are so basic that they result in a different product. We agree, and accordingly direct the district court to enjoin Mottale from retaining Rolex’s trademarks on the altered watches he sells. In addition, we reverse the district court’s denial of Rolex’s request for its attorney’s fees on this claim and remand that request for consideration under section 35(b) of the Lanham Act, 15 U.S.C. § 1117(b). We reject, however, Rolex’s contentions that it is entitled an award of damages greater than the district court ordered, and that Mottale’s sale of generic replacement parts fitting Rolex watches constitutes contributory trademark infringement.

I. FACTUAL AND PROCEDURAL BACKGROUND

Rolex is the exclusive distributor of new Rolex watches in the United States. It spends in excess of $15 million a year to advertise and promote Rolex watches. Rolex watches are known by the purchasing public as being of high quality and have a correspondingly high resale value. Rolex watches are sold under numerous of its registered trademarks including, “Rolex,” “President,” “Crown Device,” “Date-just,” “Day-Date,” “Oyster,” “Oyster Perpetual,” “GMT-Master,” “Cosmograph,” and “Submariner,” all of which became incontestable as of May 1997, except for Submariner. See 15 U.S.C. § 1065 (providing that mark that has been in continuous use for five years subsequent to registration has become incontestable subject to specified conditions). There is no dispute as to the strength of the Rolex name and its Crown Device logo.1

Rolex sells new Rolex watches exclusively through official Rolex jewelers. Rolex and official Rolex jewelers service Rolex watches. Rolex watches have a one-year warranty from Rolex; the addition of parts that are not provided or authorized by Rolex voids the watch’s warranty. Rolex also will not service watches that have been modified with non-Rolex parts.

Mottale sells jewelry and used luxury watches at wholesale, primarily to jewelry dealers at jewelry trade shows. In addition, Mottale reconditions used luxury [707]*707watches in response to orders from retail jewelers, typically on behalf of a retail customer. Mottale’s gross receipts were over $2.5 million for 1995.

Mottale sells the following products related to Rolex watches: (1) used Rolex watches; (2) used Rolex watches that have been “reconditioned” or “customized” with non-Rolex parts, which we call “altered ‘Rolex’ watches;” (3) used Rolex watch replacement parts; and (4) generic replacement parts fitting Rolex watches. Mottale customizes used Rolex watches by replacing their bezels (the ring that surrounds the crystal and affixes it to the watch casing), dials, and bracelets, and/or by inserting diamonds into their dials. These replacement parts are not authorized or provided by Rolex. The altered “Rolex” watches retain their original Rolex trademarks on their dials and bracelets, except when Mottale replaces the bracelet. Some examples of the replacement bracelets used by Mottale bear an imitation of the Crown Device logo. The other replacement parts added by Mottale bear no independent mark.

Rolex brought suit against Mottale alleging trademark counterfeiting and infringement under section 32(l)(a) of the Lanham Act, 15 U.S.C. § 1114(l)(a); use of false designations of origin and false description under section 43(a) of the Lan-ham Act, 15 U.S.C. § 1125(a); trademark dilution under the Federal Trademark Dilution Act, 15 U.S.C. §§ 1125(c) & 1127; trademark dilution under California law, Cal. Bus. & Prof.Code § 14330; and unfair competition under California law, Cal. Bus. & Prof.Code § 17203. After a bench trial, the district court issued a detailed decision and permanent injunction.

The district court held that Mottale’s sale of altered “Rolex” watches constituted counterfeit trademark use under section 32(l)(a) as construed in Westinghouse, 106 F.3d 894. In Westinghouse, we held that retaining the original Westinghouse trademarks on used, reconditioned circuit breakers sold by circuit breaker vendors constituted trademark counterfeiting under section 32(l)(a). See id. at 899-900. We rejected the vendors’ suggestion that duplication of a trademark is necessary for trademark counterfeiting:

[A] copy of a mark is no more likely to confuse the public than is the original; in fact, the public is more likely to be deceived by an original mark because it serves as a perfect imitation. In short, the distinction between using a duplication versus using an original has no relevance to the purposes of trademark law. When an original mark is attached to a product in such a way as to deceive the public, the product itself becomes a “counterfeit” just as it would if an imitation of the mark were attached.

Id. at 900.

Here the district court found that retention of the original Rolex marks on altered “Rolex” watches, in the absence of adequate disclosures that the altered watches contain non-Rolex parts, was deceptive and misleading as to the origin of the non-Rolex parts, and likely to cause confusion to subsequent or downstream purchasers, as well as to persons observing the product. Accordingly, under Westinghouse, the district court concluded that this confusing use of Rolex’s trademarks in connection with the sale of altered “Rolex” watches constituted a counterfeit use of the trademarks.2

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179 F.3d 704, 50 U.S.P.Q. 2d (BNA) 1939, 99 Cal. Daily Op. Serv. 4236, 99 Daily Journal DAR 5359, 1999 U.S. App. LEXIS 11234, 1999 WL 351108, Counsel Stack Legal Research, https://law.counselstack.com/opinion/rolex-watch-usa-inc-v-michel-co-ca9-1999.