Rolex branded Tudor dial

[nowzen]

Springer, you are right, this issue has been discussed to death here, but I’m sure that as the OP of this one and a prominent participant of the former discussions – there’s nothing wrong with that, right?

However, I think casual labels of ‘counterfeit’ or ‘infringements of the Lanham Act’ are both ill-considered and possibly defamatory to the seller. I have read the Lanham Act and tudorman’s assessment that “this is TRADEMARK INFRINGEMENT and violates the Lanham Act......period”. makes me wonder if we have read the same Act.

The last time I looked, ‘counterfeit’ includes the suggestion of an attempt to ‘deceive’. That might be a bit difficult to achieve here. The seller has clearly declared: “The dial on this watch is in great to excellent condition, yet someone has changed the dial to say Tudor Rolex when in fact its an Oyster Tudor made by Rolex.” And later “Dial Condition: Very good to excellent; someone has changed the dial of this watch to say Tudor Rolex when in fact its an Oyster Tudor made by Rolex”.

I think you might reference previous cases along these lines, especially this one: http://caselaw.findlaw.com/us-9th-circuit/1142365.html
While on the surface, Rolex was successful in that suit, it is interesting to note what they were not successful with. Specifically, the court said that the seller should have disclosed in advertising and on the invoice to the buyer that: “This watch contains non-Rolex parts which are not supplied by an official Rolex jeweler.”

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.

The district court found that the changes Mottale made to the used Rolex watches were not so extensive that Mottale should be completely enjoined from retaining Rolex's trademarks on the used Rolex watches he sells.

Also the court noted: “Rolex noted at oral argument that it did not seek, and had not sought in the district court, an injunction preventing individual owners of Rolex watches from altering their watches with non-Rolex parts. Neither the district court's injunction, nor the injunction we direct it to enter, enjoins Mottale (the seller) from altering Rolex watches at the specific request of an individual watch owner. I suggest someone selling an individual watch that has been altered (and declared to have been altered) is different from a mass-produced replica.

Ahhh! you say - the discussion here relates to the use of ‘Rolex’ on a ‘Tudor’ watch. True, but that is also contentious, given that Tudor is a Rolex owned and made brand and given that Rolex’s history of itself producing watches AND advertising in the past that were co-branded as well as Tudor watches bearing Rolex branded cases, crown AND bracelet.

You say “The dial should have been removed and replaced with the correct dial before the auction”. Come on, would Tudor stock dials from the 50’s. And “It is not unlike someone listing a counterfeit Submariner on ebay with a caveat that it is a replica”… which seems to ignore the fact it is not a replica, but exactly what it is listed as... a Tudor Oyster.