Legal status of homages?

[TeeJay]

Another thread just got me thinking about this... Reps are reps, and contraband due to their obvious misuse of an existing brandname. I get that, but I was wondering, what about unbranded homage watches? For example, Helena Rou sells an unbranded clone of the DSSD. Sure, it doesn't have any Rolex brandings, but the design itself is still patented (I believe ) Rolex intellectual property, so would that make it just as much an infringement say to a country like Italy or France, as its branded replica cousin? I've never really been a fan of homages or self-branded clones, as I always felt they were just evading the counterfeit title by either slapping on their own brand, or omitting one entirely, yet still really 'want to be' that brand model. Reps are at least 'honest in their dishonesty', in that they make no pretense about trying to be anything other than what they are trying to be. But the legal aspect of the IP of the design itself never really crossed my mind till now, so I just wondered if anyone might know the legal side of things? Not really concerned if anyone has traveled safely with a homage (or a rep), as evading the law is still breaking it, just not getting caught, and I wanted to know if the homage would be breaking the law, in any actionable sense, from a purely legal perspective

TIA for a good discussion, let's keep it clean and above the belt

[blazed7]

I think they might but it may not be worth the trouble for brands the big brands to do anything .

But Ken at RXW was sued by Pamerai for his remarkable homages. I cannot find what specifically he got sued for but he lost and had to stop production.

They also sued this guy:

http://anton-c.blogspot.com/2008/10/officine-panerai-sues-naples-watch.html

One of the comments on that Page brings up that designs are only protected for 25 years in some European nations. I think that's for artistic works and Idk if watch design counts.

Edited September 9, 2012 by blazed7

[milhouse]

You have to be nearly spot on, and the originator has to have legal IP (trademark, patent) claims. If they don't patent an idea, and it's just "out there" in the marketplace, it's going to be tough for them to come after you.

IMO, most "legit" homages, aren't infringing, or aren't worth the attention/expense of the original. Your comment about "rep honesty" touches on the reason many despise homage watches.

[panerai153]

What the big companies like the Richmont Group, LVMH.Swatch,Rolex SA have on their side, is deep.deep pockets. It's absolutely impossible for a little homage watchmaker to go head to head with them. It really doesn't matter who's right, it boils down to the who has the wherewithal to be the last man standing. Obviously the Homage makers have to tread a very thin line in order to stay out of trouble.

I believe what got Ken Trading in trouble was the use of "Marina Militaire" which is a public domain name (Naval forces),but somehow Panerai got a trademark application passed in the USA in 2005. Also copying of some of Panerai's patented watch parts got their attention. The fliplock crown guard is definitely a patented part. Another thing that happened, I believe the Richmont group scared some of the genuine watch forums as well. WUS doesn't allow the sale of Marina Militaire homage watches in their sales forum,

[blazed7]

WUS doesn't allow the sale of Marina Militaire homage watches in their sales forum,

yeah now they actually wont allow any pictures of homages that have trademarked text, like that or superlative chronometer

[TeeJay]

Thanks for the comments, amigos, always good to get other's viewpoints

[imajedi]

Utillity patents - protect functionality - are good for 20 years and design patents - protect asthetic design - are good for 14 years in most countries. However, trademarks may be maintained forever. Trademarks include things like brand names but may also include particular shapes and designs if the company can prove that the public associates that shape with their brand. For example, Panerai has trademarked the shape of their crown guard - many of the old body styles even have Reg T.M. written on the CG. If you make a watch that has a similar crown guard to their trademarked one, and Panerai can prove that there is "market confusion" with respect to your watch - market confusion means the public may mistake your brand for a Panerai - than Panerai can win in court. Market confusion is a nebulous standard, how do you prove or disprove whether the public was confused, so if you're even close the trademark owner will likely sue you. Actually, under the law, the trademark owner is almost forced to intervien because there is a duty to police the market and protect your TM or you could lose it. To this end, homage watch makers that make a product that looks too similar to a trademarked design may be sued by the trademark owner. For the most part patents don't play into this because any patents that were obtained have long expired. Panerai is a unique example however, because their CG is so different and well known to Panerai. You can imagine how difficult it would be for Rolex to try and obtain a trademark for their sub design because there are so many subs out there. What about the Rolex sub other than the name is uniquely Rolex (you'll get sued for TM infringement for sure if you use the name) - I'm sure members will chime in here and for each thing they think of I bet Rolex probably has a TM on that unique feature. If your homage watch were to incorporate one of the things that is uniquely Rolex and they have TM'd than you can bet Rolex will come after you. All the none trademarked feature are fair game and as we know there are thousands of sub designs out there so it's a pretty crowded space. Hope this helps, I'm an intellectual property attorney so feel free to ask other questions and I will try and answer them.

[gasebah]

An intellectual property attorney in a rep forum. How far have we come.:-) Excellent post.

[imajedi]

Quick correction to my comments above. While design patents likely don't play a role in older designs like PAM and Rolex Subs, any new watch design almost certainly has a design patent protecting it. Homage watches that come to close to that design would be infringing under the design patent.

[gasebah]

I dont know about other parts of the world but in Germany a design patent needs novelty and a unique distinguishing impression. However the design patent is granted without any examination of the two. Meaning you would have to challenge at least one of the two if you defend yourself against a design patent. Years ago I learned that in order to infringe a design patent you would have to make an almost slavish copy. But looking at the Samsung-Apple case I am not sure about that anymore.