06.12.2020 - Rolex

Legal wrangling over as Rolex defeats La Californienne and its colourful creations

Rolex has come up trumps in a court ruling against luxury watch customiser La Californienne over alleged counterfeiting.

We reported on the 2019 lawsuit which saw the Californian company, which customises vintage Rolex watches, come under fire for infringing copyrights and the Rolex trademark.

But a new ruling means that La Californienne has been stopped from using the Rolex name, its crown logo or any of its symbols.

The LA-based company reinvents its watches in several ways including refinishing (or removing Rolex trademarks) dials, changing the paintwork, perhaps adding accessories like diamonds and then reapplying Rolex trademarks. 

The result is bold candy-coloured creations with vivid straps which have a celebrity fan base including Gwyneth Paltrow.

Customising can continue

The settlement, which does not appear to have been settled financially, means that the company can no longer use any of the Rolex registered trademarks or any reproduction, counterfeit, copy or colourable imitation of the Rolex registered trademarks. This includes on its website, as a keyword, metatag or in any descriptive part of the site, in connection with the advertisement, promotion, offering for sale, or sale of its altered Rolex watches.

In its claim, the Swiss watch giant argued that swapping out the watch parts means the new La Californienne timepieces no longer “attained the aesthetic” of the originals. This would mean any service warranty would be void, as Rolex would no longer assure the quality of said watches.  

But the bizarre ruling added that customisation work could continue on Rolex watches and if asked, the company can say that their altered Rolex watches “were formerly vintage Rolex watches, now modified.”

In essence, the customising of Rolex watches can continue – they simply can’t refer to the heritage on the watches or on any form of advertisement.

Limited offerings

A visit to La Californienne’s website today just reveals a simple landing page. But as for their current offerings on Instagram, it only appears to be offering modified Cartier watches, using the brand’s trademarks on the watches and in the descriptions. In the Rolex case, La Californienne deemed this ‘fair use’.

However, the terms of the parties’ agreement did give La Californienne 10 days to “take all steps necessary to remove from its websites, or any other website containing content [it has] posted … offering for sale altered Rolex watches,” which is why its Instagram is now free of any Rolex offerings.  

Cartier is not believed to have taken any legal action against the defendant.

Meticulous reinventions

The defending company was created just four years ago by Courtney Ormond and Leszek Garwacki. On its website, it claims to give meticulous detail to all reinventions. The ‘Rolex’ watches are then sold for between £5,000 and £10,700.

But on the company’s website is a clear disclaimer explaining the company is an independent watch dealer and states it isn’t endorsed, authorised, sponsored by or affiliated with Rolex or Cartier. It actually suggests people seeking new Rolex watches to visit the brand’s official website.

*The case is Rolex Watch U.S.A., Inc. v. Reference Watch LLC d/b/a La Californienne; Courtney Ormond; and Leszek Garwacki, 2:19-cv-09796 (C.D.Cal).