The Federal Court of Lausanne had to rule on a question relating to the legality of the customisation of luxury watches, mainly ROLEX watches, carried out by the company ARTISANS DE GENEVE.
ARTISANS DE GENEVE offers a customisation service for luxury watches, in particular ROLEX watches, transforming the ROLEX DAYTONA into a skeleton version with the “artisans de Genève” trademark.
The Court noted that it had “never had to rule on whether the activity of personalising, for remuneration, a trade mark product at the request of its owner, without the agreement of the proprietor of the trade mark concerned, is lawful or not…. The question to be resolved is far from trivial in practice, given that the customisation of branded objects is a booming business and is not limited to the watchmaking industry, but also concerns many other sectors, including the fashion and automotive industries. “
The Court of First Instance drew a distinction between personalisation carried out at the request of the owner of the watch, for his or her personal use, without (re)marketing, and considered that this activity did not infringe the exclusive right of use of the owner of the trade mark concerned; and found in favour of ARTISANS DE GENEVE, whose business model consisted solely of personalisation at the request of customers.
On the other hand, the Court noted that marketing modified watches that still bear the third party’s trademark without its authorisation is an act of infringement “since the trademark is used on the market and no longer fulfils its identification function because it no longer designates the original article, which has been modified without the consent of the trademark owner”.
The Court referred back to the cantonal court the question of whether the way in which ARTISANS DE GENEVE offered its watch customisation services and promoted its activities, by quoting luxury brands, in particular ROLEX, infringed trademark law and/or constituted unfair competition.
This question is therefore still open.
