Where does 'rep' end and 'gen' begin

[Brightight]

I didn't wish to hijack the very interesting thread on taking a rep into an AD and the legalities thereto, but it struck me, where do Frankens fit in the 'counterfeit' scheme of things legally, so opened a new thread. I am building a couple of DJ Frankens at the moment, they have gen cases, crystal, crown, bezel, dial, an ETA movement and hands and a datewheel overlay. Given that I don't try to sell them misrepresenting them as 100% Rolex, are they legal or illegal? Am I actually guilty of counterfeiting? In the same way that I could have a Ford something and shoehorn a Rover V8 into it, it would not be illegal (as long as it met the relevant regulations), I could conceivably have an old DJ which got wet inside and wrote off the movement and couldn't afford the new Rolex part on such an old watch so fitted an ETA instead. What about an NDT case with a gen movement and dial, would that be illegal?

At what point is a watch a counterfeit and which a 'modified' gen? How would an AD view such a watch assuming they could tell the difference from the very slight differences in the non gen parts (which could of course be pattern Rolex parts on a gen, particularly on a 30 year old watch).

[TeeJay]

Interesting question...

Personally, I would think it would be along the same lines (legally speaking) as an artist who forges a masterpiece: They might not have manufactured every component part themself (ie mixing the paints, making the canvas) but they did 'arrange it in a way that resembles the original'...

Of course, that's just my .2c

A totally custom build, on the other hand, such as my planned GMTIICSubDweller project, I would be quite happy to stand up in court and challenge Rolex to prove that they ever made that model watch... Legally speaking, I think they'd be able to insist the watch was 'sterilized', but in terms of actual features and functions, I think I'd have them over a barrel

[Brightight]

Your painting analogy seems to me exactly the same as making a rep, the parts have all been made and marked to 'resemble' the original. To me the Franken seems more like an artist who takes an original painting and maybe puts on a new frame, or paints in an extra character. That wouldn't be forgery. And of course what I am doing is the same effectively as Rolex did with Tudor. I wouldn't think Ford, in my example, would have any legal right to make me replace a Ford engine in my car with another the same, nor would Ford be able to stop me buying a scrap Ford and modifying it out of sight with all sorts of components but still wearing a Ford badge. In short I can understand a complete rep watch or Rolex marked parts such as dial or caseback being counterfeit but I can see no way genuine parts coupled with non genuine, but not 'Rolex' marked parts, can be described as a forgery. I would argue it is a Rolex watch which has been modified, not a fake Rolex.

It's an interesting dilemna.

Oh while I think of it your project could be considered either way, it depends what Rolex have rights on. For example, in the guitar world, Fender have rights on the Telecaster and Stratocaster headstock shape. Copy it, you'll get served a cease and desist notice followed by legal action if you don't change it. The Chinese of course ignore this I doubt Rolex have rights on anything that would stop you though, most of their features are common to other watches and not distinctive enough to be patented.

[mbjoer]

There are a few legal precedents defining the borderline between fake and original.

You are correctly identifying that the intent is an important aspect. If your intention is to deceive anyone for financial gain it will be illegal whatever the components. If however you make it clear that there are non-original components in the watch when selling it on the case becomes much less obvious.

There was a case some years ago where a Schiele painting was sold by a major auction house as an original. It was subsequently proved to have been "improved" on, although the basic painting probably was original. In this case the painting was deemed to be a forgery and the auction house had to pay damages. But no criminal charges were brought in this case.

If by contrast a VW was fitted with the Spirit of Ecstacy, no one would think it was Rolls-Royce and the worst that could be claimed would be trade-mark infringement. I am not aware of any cases where an infringement succesfully has been won against a party who did not infringe for financial gain. I may be wrong about this though, and the definition of financial gain could be rather wide (like when the improved VW is used for publicity).

So as long as you do not attempt to pass your franken on as a Gen my guess is that you might be OK.

In countries with strict trade-mark laws, it might require a substantial percentage of the total to be original. My guess is that any parts carrying the trade name or logo would have to be gen to pass such a test.

Edited October 2, 2009 by mbjoer

[TeeJay]

Your painting analogy seems to me exactly the same as making a rep, the parts have all been made and marked to 'resemble' the original. To me the Franken seems more like an artist who takes an original painting and maybe puts on a new frame, or paints in an extra character. That wouldn't be forgery. And of course what I am doing is the same effectively as Rolex did with Tudor. I wouldn't think Ford, in my example, would have any legal right to make me replace a Ford engine in my car with another the same, nor would Ford be able to stop me buying a scrap Ford and modifying it out of sight with all sorts of components but still wearing a Ford badge. In short I can understand a complete rep watch or Rolex marked parts such as dial or caseback being counterfeit but I can see no way genuine parts coupled with non genuine, but not 'Rolex' marked parts, can be described as a forgery. I would argue it is a Rolex watch which has been modified, not a fake Rolex.

It's an interesting dilemna.

Oh while I think of it your project could be considered either way, it depends what Rolex have rights on. For example, in the guitar world, Fender have rights on the Telecaster and Stratocaster headstock shape. Copy it, you'll get served a cease and desist notice followed by legal action if you don't change it. The Chinese of course ignore this I doubt Rolex have rights on anything that would stop you though, most of their features are common to other watches and not distinctive enough to be patented.

Ahh, I see what you mean. I think the intent of the end look for the project would be the determining factor. (as well as 'personal use' v resale intent) A completely fantasy project (such as mine), I think would probably be allowed in so much as it was not copying any existing specific model of watch, but, Rolex would probably be able to order the watch 'sterilized' (and certainly so if it was to be sold ) as it would be a misappropriation of their trademark. If it was a case of only using sterilized parts, then the watch would be in the same legal status as Alpha Watches. It would be a homage, not a replica. The inclusion of the brand-name would be what would determine replica or homage. If it was a franken built from 100% gen pieces (no aftermarket stuff at all) and to an existing design (DJ or Sub) then I think it would come under the 'forgery' classification, so tolerated for 'personal use' but not at attempted sale...

Artistically speaking, some forgers will deliberately include 'flaws' into their works, so people who truly appreciate the works, will understand that they are not by the 'copied artist'

[Brightight]

Some good clarification there mbjoer. I would guess I will be OK with my Franken Datejusts. I have to travel throughout Europe and beyond on occasion so it might be important some day, particularly in Italy or possibly France, where it is actually illegal to own a rep.

Tee-Jay I suppose the only danger, and it is highly unlikely, is if Rolex objected and it came to court, they court may order the offending parts destroyed rather than just made sterile.

[TeeJay]

Some good clarification there mbjoer. I would guess I will be OK with my Franken Datejusts. I have to travel throughout Europe and beyond on occasion so it might be important some day, particularly in Italy or possibly France, where it is actually illegal to own a rep.

Tee-Jay I suppose the only danger, and it is highly unlikely, is if Rolex objected and it came to court, they court may order the offending parts destroyed rather than just made sterile.

I knew reps were illegal to own in Italy, but didn't realize they were illegal to own in France as well... Interesting

I think it would depend on if the parts were indeed genuine Rolex issue, or aftermarket copies. In theory, I could build my project out of 100% genuine parts, I'm just not comfortable calculating how much I would have to spend to obtain said parts Indeed, rep parts, they possibly could order destroyed, due to their counterfeit nature, but, I would suspect that a compromise of 'sterilizing' the parts, might be accepted rather than outright destruction. Of course, purely hypothetical, as I can't see my project landing me in a court room

[Brightight]

I knew reps were illegal to own in Italy, but didn't realize they were illegal to own in France as well... Interesting

I think it would depend on if the parts were indeed genuine Rolex issue, or aftermarket copies. In theory, I could build my project out of 100% genuine parts, I'm just not comfortable calculating how much I would have to spend to obtain said parts Indeed, rep parts, they possibly could order destroyed, due to their counterfeit nature, but, I would suspect that a compromise of 'sterilizing' the parts, might be accepted rather than outright destruction. Of course, purely hypothetical, as I can't see my project landing me in a court room

Yes there was a post recently on this subject regarding France. Fortunately the UK takes the view that it is the manufacturers and sellers they have to target. What the situation will be eventually as far as European law goes is anybody's guess as far as I know. I think it's probably likely we'll see more, rather than less, clamping down on counterfeit products in future, though I think watches are far down the list which starts with counterfeit drugs, counterfeit aircraft parts, etc.

Yes I think you're safe with your project! Again it is an interesting hypothetical issue. But in future after the project is completed, when a noob asks who has the best sub, we'll be able to say you do, but it isn't a sub!!

[kbh]

I've actually wondered about what would happen if I (or someone) put a franken DJ on eBay. Suppose every part of it was gen from case to bracelet, except the movement. As long as it was stated gen Rolex with movement replaced to Swiss Eta. Doesn't the greater part take precedence over the small part that has been changed? As long as it is truthfully described with full disclosure.

There's actually a lot to be said for owning a franken over a gen in this case since it eliminates the $500 Rolex service that is required every 5 years or so on a gen.

[TeeJay]

Yes there was a post recently on this subject regarding France. Fortunately the UK takes the view that it is the manufacturers and sellers they have to target. What the situation will be eventually as far as European law goes is anybody's guess as far as I know. I think it's probably likely we'll see more, rather than less, clamping down on counterfeit products in future, though I think watches are far down the list which starts with counterfeit drugs, counterfeit aircraft parts, etc.

Yes I think you're safe with your project! Again it is an interesting hypothetical issue. But in future after the project is completed, when a noob asks who has the best sub, we'll be able to say you do, but it isn't a sub!!

I can't believe that I've had the project in planning for over a year now, and the only part I have for it so far, is the bezel insert... Funny how things can get in the way of a project

It'll certainly be interesting to see how things do change, especially with regards the UK's involvement in Europe... As you say though, much more important fish for them to be frying than a few moody bags and watches

[TeeJay]

I've actually wondered about what would happen if I (or someone) put a franken DJ on eBay. Suppose every part of it was gen from case to bracelet, except the movement. As long as it was stated gen Rolex with movement replaced to Swiss Eta. Doesn't the greater part take precedence over the small part that has been changed? As long as it is truthfully described with full disclosure.

There's actually a lot to be said for owning a franken over a gen in this case since it eliminates the $500 Rolex service that is required every 5 years or so on a gen.

I think with full disclosure, then such a sale should be permitted, but realistically speaking, it might well get pulled. Let's not forget though, that 'small part', is what turns a bracelet, into a functioning time-piece I think the context would be decided by if it was indeed a gen which had had to have an aftermarket movement installed, or if it was actually a self-assembled composite watch

[freddy333]

At what point is a watch a counterfeit and which a 'modified' gen? How would an AD view such a watch assuming they could tell the difference from the very slight differences in the non gen parts (which could of course be pattern Rolex parts on a gen, particularly on a 30 year old watch).

According to Rolex (& the US federal law), any watch fitted with a single non-Rolex part is a 'fake' & infringes on their trademark. So, while 1 may be more difficult to spot than the other, in the eyes of an AD, a franken is a rep & a rep is a franken. Period.

The only possible exception may be a true (gen) Frankenstein watch - A 100% gen Rolex watch that was cobbled together from 100% Rolex parts, but that did not leave the Rolex factory together (in the same watch).

[Brightight]

According to Rolex (& the US federal law), any watch fitted with a single non-Rolex part is a 'fake' & infringes on their trademark. So, while 1 may be more difficult to spot than the other, in the eyes of an AD, a franken is a rep & a rep is a franken. Period.

The only possible exception may be a true (gen) Frankenstein watch - A 100% gen Rolex watch that was cobbled together from 100% Rolex parts that did not leave the Rolex factory together.

Wow! Does that apply only to watches? I can see all sorts of problems if you fit for example a set of aftermarket wiper blades to your car and that makes it counterfeit.........................

Sounds a bit like software licences, they will 'sell' you the watch but it is not yours to do what you will with it. Very strange. It's amazing that the law upholds the manufacturer's rights to the product after sale.

This is the law as it applies in the UK -

"What does the law say?

It is unlawful to apply a registered trade mark to goods, or to make an exact copy of goods which have the benefit of a registered trade mark registration, without the permission of the trade mark owner.

Even where goods are not subject to a trade mark registration, it is sometimes still possible to bring an action against someone making copies of goods, or attaching marks to goods, without the permission of the person already trading in those goods and associated marks. This is called a 'passing-off' action.

You may still be able to use your statutory rights against the seller

[Nanuq]

Let's extend the analogy: take your father's Deuce Coupe with the flathead Ford v8 and replace the engine with a small block Chevy (a travesty, I know).

Is it still a Deuce Coupe?

Let's consider other brands... on the Doxa forum you see people all the time who have repainted dials green, or applied logos, or changed out bezels, or replaced hands sets. In their eyes those are still Doxas.

If you tried any of this on VRF, even the smallest detail changed from "factory delivered", you'd be called out.

[TeeJay]

Let's extend the analogy: take your father's Deuce Coupe with the flathead Ford v8 and replace the engine with a small block Chevy (a travesty, I know).

Is it still a Deuce Coupe?

Let's consider other brands... on the Doxa forum you see people all the time who have repainted dials green, or applied logos, or changed out bezels, or replaced hands sets. In their eyes those are still Doxas.

If you tried any of this on VRF, even the smallest detail changed from "factory delivered", you'd be called out.

I like the sound of a green-dialled Doxa

As you say, that's the kind of thing which would get someone called out on a forum, but, those doing the calling out, would be missing the point of how cool the modification actually is

[Brightight]

Let's extend the analogy: take your father's Deuce Coupe with the flathead Ford v8 and replace the engine with a small block Chevy (a travesty, I know).

Is it still a Deuce Coupe?

I'm not familiar with the car, but terminology is not the question. Is it a counterfeit and therefore is it illegal and will the manufacturer take action against you. It comes down to your rights of ownership. I had a friend years ago who had an old Ferrari with a blown engine. While he saved up to buy the parts he needed, he slotted a Ford V6 in there so he could use the car. Was it still a Ferrari? Well it did have all the badges and it looked like a Ferrari. It might have been a travesty and certainly did not perform or sound like a Ferrari. But was it a counterfeit? And would Ferrari have taken him to court over it? To both of those questions my answer would be no.

It's all hypothetical anyway and Freddy has clarified the law in the US, I just find it amazing that Rolex can insist on the owner maintaining a watch in original condition with genuine Rolex parts fitted on every occasion.

[freddy333]

Wow! Does that apply only to watches?

Not watches, Rolex watches. Rolex Watch USA is unique in that a number of US trademark laws have been written specifically for or with them in mind. Love them or hate them, Rolex sells far more high end watches in the US than any other luxury watch brand & many of these end up on the wrists of America's legislators. Of course, I am not suggesting any type of connection.

[Brightight]

As a matter of interest, and just to show the differences in law, the European Union outlawed the practice where car manufacturers would only honour a warranty if the car was serviced by Authorised Dealers. The law now says the warranty is upheld as long as the car is serviced according to the manufacturer's service schedule. I tend to think that's a little unfair as the dealers have to maintain a stock of special tools, spare parts, and have properly qualified personnel, which of course does not apply to the independent who you get to do your servicing at half the price, but that's the law such as it is!

[Brightight]

Not watches, Rolex watches. Rolex is unique in that a number of US trademark laws have been written specifically for or with them in mind. Like them or not, Rolex sells far more high end watches in the US than any other luxury watch brand & many of these end up on the wrists of America's legislators. Of course, I am not suggesting any type of connection.

Interesting! However I'm sure legislators would not distort the law for the bribe of a watch, must be another reason...............

[kbh]

A couple of other examples: There is a company that specializes in kits to replace Jaguar engines with small block Chevy motors and transmission. (This is certainly not a travesty when you consider the quality of the Jaguar engines prior to Ford's takeover.) These re-powered cars are bought and sold legally.

And also Seiko watches are often modded and traded legally and openly with custom dials, bezels and bezel inserts. These are not considered counterfeit as far as I've seen. Customization is the right of the owner. Rolex should have no more rights to ownership after the sale than any other company.

To follow The logic in Freddy's post any DJ with an aftermarket bezel or a dial that has had diamonds added would become a counterfeit, yet they are openly sold by legitimate jewelry stores.

[Bike Mike]

I've actually wondered about what would happen if I (or someone) put a franken DJ on eBay. Suppose every part of it was gen from case to bracelet, except the movement. As long as it was stated gen Rolex with movement replaced to Swiss Eta. Doesn't the greater part take precedence over the small part that has been changed? As long as it is truthfully described with full disclosure.

Go on step further. How about taking a brand that already uses a ETA movement? Breitling Chronomat for example. Say the COSC ETA7750 craps out and you replace it with a standard off the shelf ETA 7750 to save yourself some coin. The watch is still a Breitling. The movement is still a gen. ETA, that Breitling uses, less the Breitling balance, escapement, COSC Cert., etc. I would imagine you could sell the piece as long as you fully disclosed the generic ETA7750 as this would reduce the price of the piece greatly. I can guarantee Breitling would not touch it if the future owner ever sent it to them for service, unless they (Breitling) replaces it with another one of their movements. The line has to be drawn some where as you legally purchased the piece, it is yours to do with as you wish.

[Bike Mike]

A couple of other examples: There is a company that specializes in kits to replace Jaguar engines with small block Chevy motors and transmission. (This is certainly not a travesty when you consider the quality of the Jaguar engines prior to Ford's takeover.) These re-powered cars are bought and sold legally.

To follow The logic in Freddy's post any DJ with an aftermarket bezel or a dial that has had diamonds added would become a counterfeit, yet they are openly sold by legitimate jewelry stores.

Quality of Jags in general sucked until Ford took them over.

I think jewlers are allowed to do this as long as they sell the original bezel with the time piece. Don't know, be a good question.

[freddy333]

Let's consider other brands... on the Doxa forum you see people all the time who have repainted dials green, or applied logos, or changed out bezels, or replaced hands sets. In their eyes those are still Doxas.

If you tried any of this on VRF, even the smallest detail changed from "factory delivered", you'd be called out.

I think we are talking apples & oranges. Modifying your own watch or car for your own pleasure is up to you. In these cases, value is in the eye of the beholder or collector (assuming you plan to resell your modified item at some time in the future).

Some collectibles increase in value when a modification improves performance or corrects an OEM mistake or shortcoming, while others lose value when modified.

Doxas & many Chevys/Fords appear to fall into the former category (increasing value to collectors when modifications improve upon the original design), while Rolexes & Jaguars/Mercedes clearly fall into the latter (modifications reduce value).

I just find it amazing that Rolex can insist on the owner maintaining a watch in original condition with genuine Rolex parts fitted on every occasion.

Rolex cannot stop owners from modifying their watch in any way (& with whatever non-Rolex parts) they wish. However, Rolex is legally able to refuse ('at their discretion') to honor their warranty in the case of a watch that has been modified (this includes dial swaps with another gen Rolex dial if the replacement dial was not designed for that watch model). Rolex USA routinely refuses to service watches that have been fitted with gem-encrusted bezels (even in the case of a gen bezel fitted with gemstones by a non-Rolex agent) or non-Rolex crystals (they usually just replace springbars with gens during service, which the customer is charged for).

[Nanuq]

I like the sound of a green-dialled Doxa

As you say, that's the kind of thing which would get someone called out on a forum, but, those doing the calling out, would be missing the point of how cool the modification actually is

Feast your eyes on the IrishStar! Is this a counterfeit? Not according to the SFWIBB.

[slickdick]

Feast your eyes on the IrishStar! Is this a counterfeit? Not according to the SFWIBB.

Auch, the date/window is awful Cannot believe it left the factory with that issue.

Edited October 2, 2009 by slickdick