Rolex has nabbed a partial win in a case over artwork that makes use of its name and crown logo, among other well-known trademarks. In a newly-issued decision, the Paris Judicial Court found that while artistic expression remains protected, the unauthorized use of famous trademarks for promotional purposes – particularly on social media and in marketing videos – can constitute both trademark infringement and parasitism under French law.
The Background in Brief: Rolex filed suit in March 2023, accusing French artist Johann Perathoner of trademark infringement and parasitism as a result of his use of the Rolex, GMT-Master, Yacht-Master, and Milgauss trademarks, among others, without authorization. In furtherance of its suit, Rolex pointed to a series of Perathoner’s works in his “3D Watches” collection, which feature cityscapes embedded into watch faces, several of which feature the Rolex brand name and crown logo. According to Rolex, Perathoner’s use of its marks, which have been exhibited publicly and promoted online via Instagram, Facebook, and YouTube, dilutes the distinctiveness of its luxury brand and has allowed the artist and his works to benefit commercially from its reputation.
Perathoner argued in his defense that his works were protected under the right to artistic freedom, arguing that his references to Rolex fell squarely within the Pop Art tradition, which often incorporates iconic consumer brands.
Creative or Commercial Use?
In a decision on April 2, the Paris Judicial Court focused primarily on whether Perathoner’s use of the Rolex marks constitutes “use in the course of trade” and whether the work takes undue advantage of Rolex’s trademarks’ reputation without just cause, as articulated in both French IP law (Art. L713-3) and EU trademark regulations.
Rolex produced evidence of brand reputation rankings, survey data, and long-term advertising expenditures, as well as consistent use of its marks in France, to establish that the “Rolex” name, crown logo, and other word marks enjoy wide recognition among consumers. The court accepted this for the core “Rolex” trademarks but declined to extend the same protection to the “GMT-Master,” “Yacht-Master,” and “Milgauss” sub-brand marks, finding insufficient evidence that these marks are independently known to a significant portion of the public.
The court also examined the nature of Perathoner’s use of the Rolex trademarks. While the inclusion of Rolex references within the artworks, themselves, was not deemed to be problematic per se, the court took issue with their use in external promotional activities, such as on social media and in a YouTube video promoting the artworks. On this front, the court found that Perathoner had ventured beyond artistic commentary and into the realm of commercial exploitation, thereby, infringing upon Rolex’s rights.
In addition to trademark infringement, the court held that Perathoner had engaged in acts of parasitism by leveraging the Rolex name and reputation to create an implicit association between his work and the luxury watchmaker. This, the court found, allowed him to benefit from Rolex’s prestige and market power without bearing the corresponding marketing costs. Evidence that several buyers of Perathoner’s artworks were Rolex collectors bolstered this conclusion, as did the artist’s own admission that those same collectors were drawn to the pieces due to the Rolex theme.
While Rolex had initially sought over €100,000 in damages, the court awarded the Swiss watchmaking giant a more modest sum: €2,500 each to Rolex SA and Rolex France for trademark infringement, €1,500 each for parasitism-related harm, and €3,000 each under Article 700 of the French Code of Civil Procedure (covering legal costs).
The court also issued injunctions prohibiting Perathoner from using the Rolex name and crown logo in any medium – digital or physical – for promotional or commercial purposes and ordered him to remove the infringing content from his social media accounts and YouTube channel. Failure to comply within 30 days of service would trigger a penalty of €100 per day, up to 180 days. The court also dismissed Perathoner’s counterclaims of abusive litigation and refused to include investigatory costs incurred by Rolex in the recoverable legal expenses.
THE BIGGER PICTURE: This decision affirms that while French and EU trademark law do not seek to curtail genuine artistic expression, they do not permit artists to freely use protected marks as promotional tools. The ruling sends a clear signal that brand owners can succeed on claims of trademark infringement and parasitism when unauthorized use shifts from cultural commentary or expression to commercial self-promotion.
Reflecting on the outcome, Jérôme Tassi, a partner at Paris-based firm AGIL’IT, stated that the decision makes for an important tool for luxury brands, whose trademarks are “increasingly being taken up by artists invoking creative freedom.”
The case is Rolex SA and Rolex France v. Perathoner Paris Judicial Court, N° RG 23/04114.
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