image: Rolex
“There are more fake Rolex watches on this planet than all other fakes combined,” Benjamin Clymer, the founder of influential watch magazine and website, Hodinkee, wrote in 2014. He was referring, at least in part, to an Oyster Black Dial Paul Newman Daytona that went up for auction at Christie’s, noting that the watch “has some traits that are commonly believed to not be authentic.” Clymer further noted that we “can multiply [the] number [of fake Rolex watches in existence] by 100 if we include the ones that have been modified in some way after they left the factory.”
The sheer number of counterfeit Rolex watches is partially due to the way the 113-year old watch brand distinguishes between real and fake. Unlike nearly every other product on the market, which can be altered freely by its owner without losing its status as an authentic good, Rolex is different.
In the eyes of the Swiss-transplant brand, which was founded by Hans Wilsdorf and Alfred Davis in London, England in 1905, the distinction between real and fake is much more stringent: Replace a part from an authentic watch with a non-Rolex approved part – this includes any non-brand custom additions – and your otherwise legitimate watch is automatically a counterfeit good.
This is the premise underlying the lawsuit that Rolex filed in an Arizona federal court earlier this month against Vintage Watchmaker LLC and its owner Jensen Dinh. According to Rolex’s complaint, Vintage Watchmaker is in the business of selling what Vintage Watchmaker describes as “quality-made replacement parts for high end vintage watches and custom vintage watch builds,” including “watch parts and other merchandise bearing counterfeit copies of the Rolex registered trademarks.” The parts, according to Rolex’s complaint, are “falsely advertised and offered for sale [as] ‘Rolex’ watch parts in a manner calculated to mislead consumers.”
Rolex further alleges that Vintage Watchmaker’s acts “are deliberately calculated to confuse and deceive the public and are performed with full knowledge of Rolex’s rights. Said acts constitute willful and deliberate infringement of Rolex’s rights in the Rolex’s registered trademarks,” to the detriment of the Swiss watch company, because “Rolex is not able to monitor, enforce, or maintain its quality control standards on the counterfeit Rolex products that [Vintage Watchmaker] assembles, offers for sale, and sells.”
Such counterfeiting also brings a significant disadvantage to consumers, who may have been “caused … to believe that [Vintage Watchmaker’s] counterfeit watch parts are genuine, or that [Vintage Watchmaker’s] products are authorized, sponsored or approved by Rolex, when they are not.”
In addition to “unfairly benefiting from Rolex’s advertising and promotion and profiting from the Rolex reputation and Rolex’s registered trademarks,” [Vintage Watchmaker] is causing “substantial and irreparable injury [to] the public,” which, if mislead as to the authenticity of [Vintage Watchmaker’s] parts, may have unknowingly transformed authentic Rolex watches into counterfeit goods by replacing authentic parts with counterfeit ones.
As a result of Vintage Watchmaker’s “willful trademark counterfeiting,” Rolex is seeking a monetary sum of “three times [its] damages and/or the defendants’ profits, whichever is greater,” in addition to injunctive relief that would require Vintage Watchmaker to immediately and permanently cease all uses of Rolex’s various trademarks.”
* The case is Rolex Watch U.S.A., Inc. v. Vintage Watchmaker LLC and Jensen Dinh, 2:18-cv-02308-DMF (D. Ariz.).
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