a century—Hamilton is deeply reliant on that American heritage.
But Hamilton’s reliance on the American heritage of the
brand is not a conclusive argument that Vortic Watches is in the
wrong here. Much of what matters is whether the US Federal
judge overseeing the case decides whether Vortic is in any way
misleading their customers. As one starts to investigate the rel-
evant US legal precedents, we wind up on a sinuous path that
digs up Rolex Watch, U.S.A., Inc. v. Michel Co, in which Rolex
sued for trademark counterfeit based on Michel Co. having re-
furbished older Rolex watches using unmarked non-Rolex parts.
This was a minor win for Rolex in which the judge demanded
that the non-Rolex parts be marked as such, and that receipts
indicate that non-Rolex parts were used, so as not to confuse
customers. That case was a significant reference in another
case that seems to be highly relevant to Hamilton International
Ltd. v Vortic LLC—a case involving golf balls.
In the 2003 case of Nitro Leisure Products v. Acushnet
Company, Acushnet sued Nitro for selling used and refurbished
golf balls from Acushnet’s various brands, including Titlist and
Pinnacle. Significantly, both the used and refurbished balls car-
ried the original trademarks. The judge ruled that, as long as it
was clear to consumers that these were either used and/or re-
furbished balls, selling them with the original trademark was fair
game because the used and refurbished balls are, effectively, a
different product. The parallels with Hamilton International Ltd. v
Vortic LLC seem clear enough: Vortic simply makes it absolutely
clear to consumers that the watches they are selling contain
refurbished used movements and dials, and all is good.
However, intellectual property is far more nuanced and
confusing than that one precedent suggests. Lawyers on both
sides will surely cite multiple precedents simultaneously, and
judges often withhold decisive perspectives until announcing
their ruling. As such, it remains impossible to predict the results
of Hamilton International Ltd. v Vortic LLC, let alone the potential
for this case to become a significant precedent in future battles
over the intellectual property involved in upcycling.
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