Rolex Watch, U.S.A., Inc. v. Michel Co.

Micha Mottale, doing business as Michel Co. (“Mottale”), reconditions used Rolex watches with parts that are not provided or authorized by Rolex Watch, U.S.A., Inc. (“Rolex”), and sells the altered watches, as well as generic replacement parts fitting Rolex watches, to jewelry dealers and selected retail jewelers. In addition, Mottale provides the service of specially reconditioning used Rolex watches. The district court held that Mottale’s retention of the original Rolex trademarks on the altered “Rolex” watches that he sells constituted trademark counterfeiting under section 32(l)(a) of the Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. § 1114 (l)(a), as interpreted by our decision in Westinghouse Electric Corp. v. General Circuit Breaker & Electric Supply Inc., 106 F.3d 894, 899-900 (9th Cir.), cert. denied, - U.S. -, 118 S.Ct. 155 , 139 L.Ed.2d 101 (1997). On that basis, the district court permanently enjoined Mottale from selling such altered watches without (1) adding permanent independent marks on the non-Rolex parts, and (2) including a written disclosure concerning the generic replacement parts on tags, invoices, promotions, and advertising.

Rolex appeals, principally…