MSI's New York City law firm member Moses & Singer discusses the recent decision in a federal case in Texas, where the court held that the defendant's altered genuine Rolex watches were counterfeits as a matter of law.
Mostly everyone knows what a counterfeit watch is. And if asked for a specific example, you may well be pointing toa $15 "Rolex" watch being sold on a Canal Street street corner in New York. Translating that into legalese, the foregoing scenario relates to an item made by somebody not authorized by the trademark owner, which item has an identical or virtually identical copy of the trademark on it.
However, in a recent decision in a federal case in Texas, Rolex Watch U.S.A. Inc. v. BeckerTime LLC, the court held that the defendant's altered genuine Rolex watches were counterfeits as a matter of law.
Defendant BeckerTime is an online retailer specializing in buying, selling and trading pre-owned luxury timepieces. The BeckerTime Website states as of this writing that "We have been in business since 1998 and have NEVER sold a fake watch. . . AUTHENTICITY IS GUARANTEED!"
BeckerTime refurbishes Rolex watches with both Rolex and non-Rolex parts and identifies the watches as "Genuine Rolex." BeckerTime adds diamonds as hour markers to refinished dials a process that involves drilling holes in the dials and placing aftermarket diamonds or other stones and settings in the holes. In the process of refurbishing the dials, BeckerTime strips them down to bare metal, and, after the refurbishing process is complete, reapplies the Rolex name. BeckerTime has also applied aftermarket bezels not made by Rolex to Rolex watches, including bezels with added diamonds and sometimes applies aftermarket bands or straps on watches that sometimes include a genuine Rolex clasp or buckle displaying Rolex's trademarks.