June 30, 2025 • 35 mins
Dive headfirst into the surprisingly cutthroat world of luxury watch intellectual property battles where the stakes are as high as the price tags. From Swiss ateliers to Silicon Valley boardrooms, the gloves come off when horological heavyweights defend their creations against customizers, competitors, and counterfeiters alike.
When does personalization cross into infringement? The Rolex cases against Artisans de Genève and Becker Time reveal the fine line between owning a watch and owning its identity. We explore how courts have split hairs over modified dials, aftermarket bezels, and what it truly means for a timepiece to be "genuine" in the eyes of trademark law. Meanwhile, Vortic's vintage Hamilton restoration saga offers hope for artisans who respect heritage while creating something new.
The battlefield extends beyond physical watches into digital domains. Samsung faced Swatch Group's wrath over app store watch faces mimicking luxury dials, while Richemont convinced courts to make internet service providers block counterfeit websites altogether. Even tech giant Apple wasn't immune when Swatch cheekily registered "Tick Different" and "One More Thing" trademarks, leaving the Cupertino company with no choice but to rebrand their smartwatch.
Perhaps most fascinating is Audemars Piguet's global quest to protect their revolutionary Royal Oak design—a struggle revealing how difficult it is to claim exclusive rights to shapes that have defined entire categories. And as watches evolve into health monitors, AliveCor's patent war against Apple Watch's ECG feature shows us what happens when traditional horology collides with cutting-edge medical technology.
Whether you're a watch enthusiast, legal professional, or simply fascinated by the intersection of luxury and law, these cases illuminate five timeless principles governing intellectual property in the modern marketplace. Subscribe now for new episodes every Tuesday that decode the intangible yet invaluable assets behind the world's most coveted timepieces.
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Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:00):
TikTok, my intellectual rebels.
If you think the watch world isall elegance and engineering,
think again.
Behind every polished dial andperfectly calibrated secondhand,
there's a legal saga waiting toexplode Trademark tantrums,
copyright curveballs and patentface-offs so spicy they'd make a
terbilian sweat.
Speaker 2 (00:23):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:33):
And who better to walk you through it than us?
I'm Leticia, the AI versionthat is, and I'm a stand-in for
the real, leticia Caminero, thefabulous legal strategist,
podcast creator, creator andactual human who lives in
Switzerland, surrounded bychocolate, innovation and more
luxury watches than excuse forbeing late.
Speaker 1 (00:56):
Or, like her, digital doppelgangers, except we never
run out of time or sass.
Speaker 3 (01:01):
And just to keep things transparent, here comes
the AI disclaimer.
Ass.
And just to keep thingstransparent, here comes the AI
disclaimer.
This episode was created usingartificial intelligence for
storytelling and educationalpurposes.
Nothing you hear is legaladvice, Just delicious IP drama
freshly wound.
Speaker 1 (01:18):
So sit back, tight your watch strap and get ready
for the cases that made even themost silent tick go boom.
Because in the world ofhorological IP, elegance meets
enforcement and honey.
The courtrooms are never offthe clock.
Let's begin.
Speaker 3 (01:35):
Let's kick things off right here in Switzerland,
where the air smells likeprecision and the lawsuits are
as finely tuned as the movementsprecision and the lawsuits are
as finely tuned as the movements.
In Rolex Sasek B's Artisans deGenève, we saw one of the most
fascinating battles betweenbrand control and creative
freedom.
Speaker 1 (01:54):
Imagine this you buy a Rolex not just any Rolex, a
Daytona, then you send it off toArtisans de Genève, a private
Swiss company that turns yourclassic into a custom
masterpiece Skeletonized dial,transparent case back, a pop of
color that says this isn't yourgrandfather's chronograph.
Speaker 3 (02:14):
It sounds dreamy, right?
Except Rolex wasn't dreaming,they were steaming.
Speaker 1 (02:18):
Boiling.
In fact, because while Artisansde Genève insisted they only
modify watches owned by clientsand never sell anything directly
, those one-of-a-kind piecesstarted popping up online,
featured in interviews, exhibitsand collector blogs, still
sporting the Rolex logo.
Speaker 3 (02:34):
That's where the line got blurry.
Rolex filed suit in 2023,claiming trademark infringement.
Their argument when youdrastically modify a product but
keep the Rolex name visible,you're misleading the public.
It looks like Rolex made it orendorsed it, and they didn't.
Speaker 1 (02:55):
Rolex doesn't do collaborations.
If you see a skeleton Daytona,it wasn't born that way and
Rolex does not want its branddiluted or associated with
anyone else's design decisions.
Speaker 3 (03:09):
Artisans the genuine fire bag.
Hey, we don't sell watches, weoffer a private service.
The client already owns theRolex.
They're just hiring us topersonalize it.
Speaker 1 (03:22):
But here's the rub.
The Swiss Federal Supreme Courtsplit the matter down the
middle.
The ruling in 2024 said yes,modifying your own watch
privately.
That's fine.
Personal use, personal taste,personal joy.
Speaker 3 (03:35):
But if you put that custom Rolex on display, sell it
on the secondary market or evenpost it online in a way that
looks like Rolex was part of thedesign, thus an authorized
commercial use, and that, myfriends, crosses into trademark
infringement.
Speaker 1 (03:54):
In other words, you can commission a skeleton dial
and dance with diamonds all day,Just don't parade it around as
if Rolex blessed your wildestdesign dreams.
Speaker 3 (04:03):
It's a classic case of post-sale confusion.
Even if the original buyerknows it's been modified, what
about the next person or thecollector in Tokyo who sees a
photo and thinks Rolex justdropped a limited edition
see-through?
Speaker 1 (04:19):
That confusion, real or potential, is enough to
trigger trademark protection,especially when we're talking
about a brand like Rolex, whichbuilds its entire identity on
consistency, exclusivity andquality control.
Speaker 3 (04:33):
Since the ruling, artisans de Geneva has had to be
extra cautious no Rolex logosin public facing materials, no
interviews implying partnershipand certainly no marketing that
blurs the origin story.
Speaker 1 (04:50):
The message is clear you can own the watch, but the
brand that's still Rolex'sterritory and they'll protect it
like it's made of solid gold.
Speaker 3 (04:58):
Now let's head across the Atlantic to the United
States, where Rolex took anotherswing, this time not at a Swiss
artisan, but at a Texas-basedeBay power seller, becker Time.
Speaker 1 (05:11):
Oh, Becker Time, they weren't cracking open Rolexes
in some underground lab.
They were buying pre-ownedRolex watches, replacing a few
parts maybe a dial here, a bezelthere, even throwing in some
diamonds for that weekend inDubai feel and reselling them
online as, wait for it, genuineRolex watches.
Speaker 3 (05:31):
And here's where the tick meets the tock.
Rolex argued if you changeenough of the original parts,
especially with aftermarketnon-Rolex pieces, it's no longer
genuinely Rolex, even if thebase movement is legit.
Speaker 1 (05:46):
Eckertine was like what we're just improving the
classics.
But the court didn't agree.
Modifying a Rolex withunapproved parts, then branding
it as genuine, that's trademarkinfringement, plain and simple.
Speaker 3 (05:59):
The Fifth Circuit said yes, these watches were
originally Rolex, but theadditions made them materially
different from what consumersexpect when they hear Rolex.
So selling them under that namewithout clarification that's a
misrepresentation.
Speaker 1 (06:15):
Here's the twist, though.
The court also said Rolexwaited too long to bring this
suit.
Becker Time had beencustomizing and selling these
watches since at least 2010, andRolex only sued in 2020.
That's a whole decade ofticking tolerance.
Speaker 3 (06:33):
That delay triggered detortion of laches, which is
legal.
Speak for if you snooze, youlose.
The court said Rolex was toolate to claim damages.
No money for you.
Speaker 1 (06:45):
So, yes, Rolex won the legal argument, but not the
payout.
Becker Time had to change theway they described their watches
, but they didn't have to handover a cent.
The courtroom equivalence ofyou're right, but go to your
room anyway.
Speaker 3 (06:58):
This case matters because it highlights something
crucial for all luxury brands.
It's not enough to be right.
You also have to be right.
You also have to be timely.
Trademark rights have to beenforced consistently and
promptly, Otherwise courts maylet the clock run out on your
claims and for resellers.
Speaker 1 (07:17):
a makeover doesn't make a watch a fraud, but you
better disclose, disclose,disclose.
No shady sparkle, no pretendingit's stock when it's souped up.
Speaker 3 (07:25):
It's a case about boundaries between originality
and modification, betweenclarity and confusion, and
between protecting your brand orletting it slowly slip into the
aftermarket wild.
Okay, so we've seen whathappens when you modify a Rolex,
but what if you don't startwith a watch at all, just with?
Speaker 1 (07:49):
its heart.
Enter Vortec, a small Americancompany with big vintage energy.
Their specialty Salvagingantique Hamilton pocket watch
movements, some over 100 yearsold, and turning them into
beautiful handcraftedwristwatches.
Speaker 3 (08:05):
Now here's the catch those movements still sit
Hamilton on them, years old andturning them into beautiful
handcrafted wristwatches.
Now here's the catch thosemovements still said Hamilton on
them and when Vortig cased themin custom designs and sold them
as restored Hamilton watchesthe Swatch Group, which owns the
Hamilton brand, today said ahah, trademark infringement.
Speaker 1 (08:27):
But Vortig wasn't trying to pass off new watches
as official Hamiltons.
They were super transparent.
They made it clear these werevintage American movements
repurposed with love and oftenbore both names, vortig and
Hamilton, not trying to fakeanything.
Speaker 3 (08:40):
Still Hamilton sued in 2015.
The case dragged on for yearsand it went deep into what
trademark law calls likelihoodof confusion.
Basically, would the averagebuyer think this was a new
Hamilton product made orendorsed by Swatch.
Speaker 1 (08:59):
Spoiler.
The court said no In 2021,.
The Second Circuit backedVortec.
The judge was like thesewatches are what they say they
are.
There's no deception here.
Vortig disclosed the origin ofevery part.
No mystery, no funny business.
Speaker 3 (09:18):
This was a big deal because, unlike the Becker Time
case, where the modificationsweren't clearly explained,
vortig made the lineage of itswatches part of the story.
The court even said the use ofthe Hamilton mark was fair use
because it referred to theactual origin of the movement.
Speaker 1 (09:34):
I mean, come on, that's like restoring a vintage
Ferrari engine and putting itinto a custom chassis.
You'd still say this is aFerrari engine, not.
Oh no, I can't mention the Fword.
Speaker 3 (09:46):
Ha exactly.
Trademark law isn't there topunish people who respect
heritage and tell the truth.
It's there to prevent deception.
Speaker 1 (09:55):
And Vortex Wind showed that small businesses
with good faith and gooddocumentation can go toe-to-toe
with big brands and come outticking.
Speaker 3 (10:02):
This gave hope to the entire restoration community.
It drew a crucial line betweenhonest reuse and brand dilution.
Speaker 1 (10:12):
So if you're an artisan, a rebuilder or a
creative reuser, here's yourgold rule Be clear, be truthful
and never pretend you'resomething you're not.
Speaker 3 (10:21):
Portici Purazzi proved that honoring the past
doesn't have to infringe on thepresent.
Now let's rewind the dial to acase that made every luxury
brand raise its eyebrows andprobably its retail prices Omega
, de Sebi, costco, wasn't justabout watches.
It was about control overmarkets, over margins, over a
(10:46):
tiny logo.
You'd need a magnifying glassto even see.
Speaker 1 (10:51):
Oh, this one is delicious.
Omega, the Swiss maker of JamesBond's favorite wrist candy,
was furious that Costco wasselling genuine Omega watches in
the US for a lot less thanOmega's boutique prices.
Speaker 3 (11:05):
And, to be clear, costco wasn't selling fakes.
These were real Omega watchesimported from authorized
distributors abroad, but Omegahadn't authorized those specific
watches for sale in the US.
Speaker 1 (11:18):
So what did Omega do?
They didn't file a trademarksuit, no no, they got creative.
They registered the tiny Omegaglobe design etched into the
back of each watch as acopyrighted work.
Speaker 3 (11:30):
You heard that right, not the dial, not the case.
A minuscule engraving on theunderside of the watch became
their weapon of choice.
Why?
Because copyright law has thislovely clause the first sale
doctrine doesn't always apply togoods manufactured abroad.
Speaker 1 (11:50):
Translation.
Omega argued that because thewatches were made outside the US
, their copyright gave them theright to block unauthorized
import and resale, even if thewatch itself was genuine.
Speaker 3 (12:03):
And for a moment it worked.
In 2010, the Ninth Circuitagreed with Omega Costco, took
it all the way to the US SupremeCourt, which split 4-4.
That meant the Ninth Circuit'sruling stood, but without
setting a national precedent.
Speaker 1 (12:21):
But then came the plot twist the case got sent
back to the lower court for moreproceedings and that court said
Omega's entire strategy waswait for it.
Copyright misuse.
Speaker 3 (12:36):
Basically, the judge looked at Omega and said you're
not really trying to protect art, You're trying to manipulate
copyright law to controldistribution and that's not what
copyright is for.
Speaker 1 (12:50):
Boom.
Copyright misuse is like thelegal version of don't play
games with us.
It's the doctrine that slapsback when rights holders push
the law too far.
Speaker 3 (13:00):
So Costco wins, omega's clever little backdoor
maneuver shut down, and theSupreme Court, in a different
case shortly after Kirtzang vSwiley, confirmed that the first
sale doctrine does apply togoods made abroad, to goods made
abroad.
Speaker 1 (13:17):
So what's the big picture?
You can't use copyright as asneaky tool to control genuine
goods in the gray market.
If the product is real and yousold it somewhere in the world,
you may have to live with theresale this case was a wake-up
call for luxury brands.
Speaker 3 (13:31):
It said copyright protects expression, not your
global pricing strategy.
Speaker 1 (13:38):
So if you're a brand trying to block resellers with a
logo no one sees and anargument no one buys, maybe
think again.
Speaker 3 (13:46):
And if you're Costco, pass the popcorn.
You just save gray marketseverywhere.
All right, let's talk about alegal face of Sobold.
It went beyond the Bezal.
This one's all about virtualdials, digital decor and what
happens when your smartwatch appstore starts looking a little
too.
Speaker 1 (14:06):
Swiss.
Imagine firing up your SamsungGalaxy Watch and browsing
through third-party downloadablefaces.
You see a moon swatch, a speedySunday, or maybe a dial that
looks suspiciously like an OmegaSeamaster.
All beautifully designed.
All definitely not licensed.
Speaker 3 (14:25):
Swatch Group, the parent company of Omega, tissot,
longines, reggae, you name.
It took one look at those facesand said, excuse you.
Speaker 1 (14:35):
Their lawyers probably didn't even blink
before filing.
In 2019, Swatch sued Samsungfor trademark infringement,
saying those watch face appswere direct copies of their
protected designs.
Even worse, Samsung's GalaxyApp Store was hosting and
distributing them.
Speaker 3 (14:54):
Now Samsung's first defense was classic hey, we
didn't make these apps, we'rejust the platform.
Don't shoot the messenger.
Speaker 1 (15:03):
But the UK courts weren't buying that.
The high court and later thecourt of appeal ruled that
Samsung wasn't just some passivebulletin board.
They curated the store, theyshared profits, they had notice
and they still did basicallynothing.
Exactly Once Samsung wasnotified that infringing apps
(15:24):
were available, they had a legalduty to act, not just remove a
few here and there, but preventrepeat infringements.
You can't just shrug and sayusers will be users while
collecting download revenue.
The ruling was clear Platformsthat profit from infringing
content can't hide behind safeharbor when they've been told
and shown that what they'rehosting is illegal.
Speaker 3 (15:47):
This case said a real precedent in Europe, because it
wasn't about counterfeits youcould touch.
It was about digital mimicry,downloadable knockoffs, and
courts said, virtual or not, atrademark is a trademark.
Speaker 1 (16:02):
What's especially juicy, swatch had receipts.
They documented the exactnumber of infringing designs,
showed how close they were totheir own models, and even
caught developers naming themafter Swatch's own collections
Oof.
Speaker 3 (16:18):
That's not just inspiration, that's imitation
with extra pixels.
Speaker 1 (16:22):
After the ruling, samsung had to clean house and
fast.
Speaker 3 (16:27):
App Store started tightening submission guidelines
, especially for digital watchfaces and brand theme designs
and other platforms they tooknotes, because if you're
profiting from user-generatedcontent and you don't have a
decent IP enforcement mechanismin place, you're not an initial
tech platform, you're a legallyliable co-host.
Speaker 1 (16:50):
So what did Swatch win, aside from moral
vindication?
Speaker 3 (16:53):
A clear legal victory , an injunction and a hefty nod
to tech companies.
Digital trademarks matter anddesign rights don't disappear in
the cloud.
Speaker 1 (17:04):
And let's be honest, Swatch may be colorful and fun,
but when it comes to defendingits brands, they go full steel
bracelet.
Speaker 2 (17:14):
Intangiblia, the podcast of intangible law.
Plain talk about intellectualproperty.
Speaker 3 (17:20):
Now it's time for a trademark tango between two
heavyweights, apple and Swatch.
Or as I like to call it ThinkDifferent versus Tick Different.
Speaker 1 (17:34):
Ooh, yes, this case is peak drama.
Apple was planning the launchof their smartwatch empire and
wanted to trademark iWatch.
Makes sense, right?
Iphone, ipad, imac, iwatch.
Speaker 3 (17:47):
But Swatch had already filed eSwatch and said
very politely I'm sure nodarling.
Speaker 1 (17:54):
And so Apple had to pivot.
That's why we all wear Applewatches today, not iWatches.
Swatch blocked them in severaljurisdictions, including the UK
and EU.
Speaker 3 (18:03):
But Swatch wasn't done being cheeky.
They went on the offensive.
They filed a trademark forThink Different, a very thinly
veiled parody of Apple'slegendary Think Different
campaign.
Speaker 1 (18:16):
And not just that, swatch also filed for One More
Thing which, if you're a truetech fan, you know was Steve
Jobs' iconic phrase beforerevealing something game
changing on stage.
Speaker 3 (18:26):
So Apple was like excuse me, are you trolling us?
That's our legacy.
And they challenged the firings, arguing by faith that Swatch
was deliberately mocking Appleor filing defensively to block
them.
Speaker 1 (18:42):
But the UK Intellectual Property Office and
later the high court saidthat's not how trademark law
works.
Swatch may have had a playfulintent, sure, but unless Apple
could prove that Swatch filedsolely to block Apple or that
consumers were likely to beconfused, it wasn't bad faith.
Speaker 3 (18:58):
And here's the kicker .
The court even acknowledgedthat One More Thing had a pop
culture presence, but it wasn'tdistinctive enough in the UK to
belong to Apple legally.
Speaker 1 (19:08):
So Swatch kept both trademarks Tick Different.
One More Thing they even usedthem on watches, and Apple had
to swallow its pride with a sideof irony.
Speaker 3 (19:20):
What this case really highlighted is that being
famous isn't enough.
If you don't fight thetrademark, someone else might.
And parodies, even salty ones,can be totally legal if there's
no consumer confusion.
Speaker 1 (19:36):
I mean.
The slogan isn't trademarks orfeelings, it's function, no
confusion, no misrepresentation,no problem.
Speaker 3 (19:43):
Plus, Swash argued that their slogan referred to a
literal tick-ass in TikTok.
So cute.
Speaker 1 (19:53):
So calculated.
Speaker 3 (19:59):
So if you're a brand with iconic language.
File those trademarks yesterday, because if you wait, the other
side might just tick different.
All right, let's switch gears.
You've heard about platformsbeing held liable.
Now let's talk about whathappens when the internet
pipeline itself gets pulled intothe courtroom.
This case is about Cartier, butnot just Cartier, also
Montblanc, iwc and the rest ofthe Richemont squad All part of
(20:23):
the luxury Avengers.
Speaker 1 (20:25):
And who were they fighting?
Pirate websites, tons of themselling counterfeit watches,
jewelry, you name it.
But here's the twist Richemontdidn't go after the
counterfeiters directly.
They went after the internetservice providers Yep, bt, sky,
talktalk, eid the companiesliterally connecting users to
(20:46):
the internet.
Speaker 3 (20:47):
Bridgemore asked the court to order these ISPs to
block access to a bunch ofdomains pushing fake Cartier and
Montblanc goods.
Their argument you have thepower, Use it.
Speaker 1 (21:00):
Now let's be real.
The ISPs were not thrilled.
They were like we're just theroad, we don't drive the cars,
and also, are we supposed to payfor this blocking technology?
Speaker 3 (21:12):
But the UK High Court said yes, actually you are the
road and if there's a crashahead and we know it's coming,
you've got to put up a sign.
The court issued the blockingorders.
For the first time ever atrademark owner got a site
blocking injunction in the UK.
Speaker 1 (21:32):
Before that, site blocking was mainly a copyright
thing, like for movie piracy.
This extended that sameprinciple to trademark
infringement a massive win forluxury brands.
Speaker 3 (21:42):
But that didn't end the fight.
The ASP's appeal.
They argued that blocking wouldcost money, create a dangerous
precedent and put too muchburden on neutral intermediaries
.
Speaker 1 (21:57):
By 2018, the UK Supreme Court weighed in and
guess what?
They upheld the blocking orders, but they made one thing clear
the brands have to pay thereasonable costs of enforcement.
Speaker 3 (22:09):
In short, rights holders can ask ISPs to block
infringing sites, but they can'toffload the whole financial
burden.
Speaker 1 (22:20):
So what's the big takeaway here?
This case opened the floodgatesfor brand owners to protect
their IP upstream, beforeconsumers even reached the fake
goods.
Speaker 3 (22:29):
It also put ISPs on notice.
You can't just sit back andplay innocent.
If a court shows you a pirateside and you can block it
without causing chaos, you mightbe required to act.
Speaker 1 (22:45):
And for Richemont, this wasn't just about watches.
It was about preserving luxuryitself in the age of online
everything.
Speaker 3 (22:53):
They weren't just protecting logos.
They were protecting consumertrust, distribution models and
the meaning of the brand.
Speaker 1 (23:02):
And doing it with one of the boldest legal moves in
recent memory, from boutiques tobroadband.
Richemont made it clear ifyou're helping infringers, even
passively, you're part of theproblem.
Speaker 3 (23:11):
Okay, let's talk icons, not influencers, not
movie stars.
I'm talking about a watch theRoyal Oak by Audemars Piguet.
Speaker 1 (23:21):
Ugh, that octagonal bezel, the eight screws, the
tapisserie dial, the integratedbracelet.
You can spot it from across theroom and, if you're lucky,
across the yacht deck.
Speaker 3 (23:32):
Designed by the legendary Gerald Genta in 1972,
the Royal Oak changed everything.
It turned stainless steel intoluxury.
It blurred the line betweensport and horology.
It's a vibe and a half.
Designed by the legendaryGerald Genta In 1972, the raw
(23:53):
oak changed everything.
It turned stainless steel intoluxury.
It blurred the line betweensports and old horology.
It's a vibe and a half.
Speaker 1 (24:05):
So of course Audemars Piguet wanted to protect that
vibe.
But here's the thing aboutvibes they don't always play
well with IP law.
Speaker 3 (24:12):
They tried everything Design registrations in the EU,
3d trademarks in the US,configuration trademarks in
Japan, even unfair competitionclaims in China and spoiler
mixed results mostly losses.
Speaker 1 (24:35):
Let's start with Europe.
Ap filed for EU design rightsand 3D trademarks to protect the
look of the Royal Oak, but theEUIPO and later the general
court weren't convinced.
Why?
Because the design wasconsidered too established, too
iconic, too generic.
Speaker 3 (24:55):
Ouch.
The court said the Royal Oakwas part of the design corpus.
Basically, it was already sowell known it couldn't be
treated as distinctive or newenough to warrant exclusive
protection.
The legal equivalent of yeah,you invented the trend, but now
it's fashion history.
Speaker 1 (25:15):
In Japan, AP took another swing, trying to
trademark the shape.
The Japan Patent Office andlater the IP High Court said
nope, the features were toofunctional or decorative and
Japanese consumers apparentlydon't link the watch shape alone
to Audemars Piguet.
Same song, different country.
Then came the United States.
(25:37):
Audemars Piguet triedregistering the shape and
configuration of the Royal Oakas trade dress, but the USPTO
said show us the proof.
You need evidence thatconsumers see that shape as a
source identifier, not just apretty face.
Speaker 3 (25:52):
They couldn't do it, the TT abrogated the application
in 2025.
Again, too functional, too hardto isolate was distinctive.
What's just good watchmaking.
Speaker 1 (26:04):
But in China, a bright spot In 2021,.
Ap successfully sued a Shenzhencompany that was selling
knockoffs under the name RoyalOne with identical design cues.
The court ruled in favor of APnot just on trademark grounds,
but also under unfaircompetition law.
Speaker 3 (26:21):
Finally, China recognized the Royal Oak's
overall look as a commoditydecoration with influence in the
market.
The cup cat was fine and thewatch was pulled Big win.
Speaker 1 (26:34):
So what does all this mean?
It's hard, really hard, to lockdown a product's shape under
trademark law, especially whenthat shape becomes beloved,
copied or referenced overdecades.
Speaker 3 (26:47):
Courts are wary of giving permanent monopoly over
forms that others might need tocompete.
You want protection.
File early as the design patent.
Don't try to trademark your wayinto eternity.
Speaker 1 (27:01):
Still AP isn't backing down.
They're pursuing enforcementunder unfair competition, using
brand heritage and design legacyas weapons.
But they've learned that IP lawdoesn't always reward fame.
Speaker 3 (27:12):
Because being iconic doesn't mean being exclusive, at
least not in the eyes of theregistry.
Speaker 1 (27:18):
So next time you see a Royal Oak or a very convincing
tribute, just remember.
It may be unmistakable, but notalways unprotectable.
Speaker 3 (27:28):
Let's close our case file with a futuristic twist,
because in the battle betweenclassic horology and high tech
wearables, the legal landscapehas moved straight to the heart,
literally.
Speaker 1 (27:42):
That's right.
Enter AliveCore, a US healthtech company known for
developing portableelectrocardiogram at ECG Tech.
And they weren't just makingmedical gadgets, they had
patents, lots of them.
Speaker 3 (27:56):
Then came Apple With the launch of the Apple Watch
Series 4 in 2018, it introducedbuilt-in ECG features that let
you monitor your heartbeat rightfrom your wrist.
Consumers loved it.
Alivecore not so much.
Speaker 1 (28:14):
They sued Apple for patent infringement, claiming
the Apple Watch's heartmonitoring features violated
their exclusive rights to theunderlying technology and
algorithms.
But they didn't stop at onecourt, oh no.
Alivecore filed with the USInternational Trade Commission,
ITC, and brought separatelawsuits in federal court.
Speaker 3 (28:33):
The ITC case Wild.
In 2022, an administrative lawjudge actually found that Apple
had infringed AliveCore'spatents.
The ITC moved to issue anexclusion order, meaning Apple
watches with ECG features couldbe banned from being imported
into the US.
Speaker 1 (28:51):
Can you imagine one of the most popular wearables in
the world potentially pulledoff American shelves because of
a heart monitoring patent?
War?
Speaker 3 (29:00):
But Apple didn't sit still.
They filed inter-partnersreviews with the US Patent
Office challenging the validityof AliveCourse patents.
And guess what?
In 2023, the patent trial andappeal board, ptab, invalidated
several of AliveCourse keypatent claims.
Speaker 1 (29:18):
That gave Apple ammunition.
They told the ITC, hey, thesepatents not even valid.
And a federal court inCalifornia also ruled in Apple's
favor, dismissing part of thecase and freezing the import ban
before it could take effect.
Speaker 3 (29:33):
Meanwhile a live court appeal.
So while the IDC said Appleinfringed the patent office, and
other courts said the patentsthemselves were shaky, the case
became a legal see-saw, bouncingbetween agencies.
Speaker 1 (29:49):
The result as of 2025 , there's no import ban.
Apple's ECG feature is stillpulsing strong, but the
litigation isn't over.
It's still beating away in theappellate courts.
Speaker 3 (30:01):
So why does this case matter for the watch world?
Because it draws a line betweenhorology and health tech.
When your smartwatch startsoffering medical functions, you
enter a regulated, highlypatented space.
Speaker 1 (30:17):
And patents in that space?
Oh, they're vicious.
One patent can block an entireproduct line.
The stakes are sky high becauseit's not just about keeping
time anymore, it's about keepingyou alive.
Speaker 3 (30:30):
Also, this case reminds us that IP battles
aren't fought in one arenaanymore.
You've got district courts, theITC, the patent office, all
dancing to different legalrhythms.
Speaker 1 (30:43):
And don't forget the drama public relations, consumer
trust, developer morale whenyour flagship feature is at risk
of disappearing eventemporarily.
Speaker 3 (30:51):
You've got a legal and business headache rolled
into one, so here's the finaltick If you're innovating in the
smartwatch or medtech space,you'd better trickle check your
freedom to operate and yourpaperwork, because even giants
like Apple can find themselvesone heartbeat away from a
courtroom crisis Literally, fromRolexes on the bench to Apple
(31:18):
watches in courtrooms.
We've covered a lot of legalground today, but if you've been
timing us, then we know some ofyou have.
Speaker 1 (31:26):
Let's stop the cloud right here and break it all down
Because, no matter how shinythe case or iconic the dial, at
the heart of it all is strategy,and five core legal principles
kept popping up like atourbillon on overdrive kept
(31:46):
popping up like a tourbillon onoverdrive.
Speaker 3 (31:47):
So here they are, our five most timeless legal
takeaways.
Takeaway one trademark lawprotects more than logos.
It's not just about names orcrowns or word marks.
Trademarks protect the identityand impression a product gives
before, during and after thesale.
Speaker 1 (32:04):
That means if you're modifying, reselling or remixing
a luxury watch, you're wordingbetter match reality.
Genuine isn't a vibe, it's alegal claim.
Speaker 3 (32:13):
Takeaway two shape is not enough.
Audemars Piguet found this outthe long hard way.
Courts around the world toldthem your watch may be iconic,
but it doesn't mean your designis distinctive enough for a
trademark, especially if it'sfunctional.
Speaker 1 (32:31):
Form must follow function, but if function
swallows the form, kiss yourtrademark dreams goodbye.
That's why early design patentfilings are a brand's best
friend.
Speaker 3 (32:41):
Takeaway three If you wait too long, the law might
not wait for you.
Rolex Visbecker time was theultimate reminder.
Enforcement delays can cost youmoney, even if you're right.
Speaker 1 (32:56):
It's the polite, legal way of saying should have
spoken up sooner, sweetie.
Speaker 3 (33:00):
Takeaway.
Four Platforms are not off thehook.
Samsung learned that the hardway Posting infringing apps or
ignoring takedown warnings makesyou liable.
We didn't know.
Doesn't cut it if you're makingmoney.
Speaker 1 (33:15):
Digital infringement is real infringement.
Watch face fakes, still fakes.
Speaker 3 (33:19):
Takeaway bi-tech is a legal minefield.
Protect your patents or prepareto defend your turf Alive.
Core v Apple wasn't just aboutECGs.
It showed how competitive andlitigious the smartware space
has become.
Speaker 1 (33:36):
If your feature might save lives, there's probably
someone out there with a patenton it.
Innovate smart and file smarter.
Speaker 3 (33:42):
So what did we learn today?
Listeners Watches aren't justaccessories, they're status
symbols.
Engineering fits digital healthcompanions and, most
importantly, legal battlegrounds.
Ip defines who owns the design,the function, the face and
sometimes even the tick.
Speaker 1 (34:03):
And while time may be , universal brand protection
definitely is not.
You need the right filings, theright timing and the right
legal arguments to survive inthis world.
Speaker 3 (34:14):
Remember, we're just your AI co-hosts.
The real Leticia, the oneliving in Switzerland surrounded
by precision and fondue, is thebrilliant mind behind
Intangiblia.
She built this podcast toexplore the intersection of law,
creativity and the future.
Speaker 1 (34:35):
And speaking of the future, new episodes drop every
Tuesday in English and Spanish.
Tuesday in English and Spanish.
So, whether you're rocking aCasio, a Cartier or a custom
smart band, just know thatbehind every dial lies a drama.
Speaker 3 (34:49):
Thanks for listening.
Until next time.
Protect your ideas, watch yourrights and never let the legal
plug run out on your brilliantThank you for listening to
Intangiblia, the podcast ofintangible law playing.
Speaker 2 (35:03):
talk about intellectual property.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
(35:27):
All rights reserved.
This podcast is provided forinformation purposes only.
TikTok, my intellectual rebels.
If you think the watch world isall elegance and engineering,
think again.
Behind every polished dial andperfectly calibrated secondhand,
there's a legal saga waiting toexplode Trademark tantrums,
copyright curveballs and patentface-offs so spicy they'd make a
terbilian sweat.
Speaker 2 (00:23):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:33):
And who better to walk you through it than us?
I'm Leticia, the AI versionthat is, and I'm a stand-in for
the real, leticia Caminero, thefabulous legal strategist,
podcast creator, creator andactual human who lives in
Switzerland, surrounded bychocolate, innovation and more
luxury watches than excuse forbeing late.
Speaker 1 (00:56):
Or, like her, digital doppelgangers, except we never
run out of time or sass.
Speaker 3 (01:01):
And just to keep things transparent, here comes
the AI disclaimer.
Ass.
And just to keep thingstransparent, here comes the AI
disclaimer.
This episode was created usingartificial intelligence for
storytelling and educationalpurposes.
Nothing you hear is legaladvice, Just delicious IP drama
freshly wound.
Speaker 1 (01:18):
So sit back, tight your watch strap and get ready
for the cases that made even themost silent tick go boom.
Because in the world ofhorological IP, elegance meets
enforcement and honey.
The courtrooms are never offthe clock.
Let's begin.
Speaker 3 (01:35):
Let's kick things off right here in Switzerland,
where the air smells likeprecision and the lawsuits are
as finely tuned as the movementsprecision and the lawsuits are
as finely tuned as the movements.
In Rolex Sasek B's Artisans deGenève, we saw one of the most
fascinating battles betweenbrand control and creative
freedom.
Speaker 1 (01:54):
Imagine this you buy a Rolex not just any Rolex, a
Daytona, then you send it off toArtisans de Genève, a private
Swiss company that turns yourclassic into a custom
masterpiece Skeletonized dial,transparent case back, a pop of
color that says this isn't yourgrandfather's chronograph.
Speaker 3 (02:14):
It sounds dreamy, right?
Except Rolex wasn't dreaming,they were steaming.
Speaker 1 (02:18):
Boiling.
In fact, because while Artisansde Genève insisted they only
modify watches owned by clientsand never sell anything directly
, those one-of-a-kind piecesstarted popping up online,
featured in interviews, exhibitsand collector blogs, still
sporting the Rolex logo.
Speaker 3 (02:34):
That's where the line got blurry.
Rolex filed suit in 2023,claiming trademark infringement.
Their argument when youdrastically modify a product but
keep the Rolex name visible,you're misleading the public.
It looks like Rolex made it orendorsed it, and they didn't.
Speaker 1 (02:55):
Rolex doesn't do collaborations.
If you see a skeleton Daytona,it wasn't born that way and
Rolex does not want its branddiluted or associated with
anyone else's design decisions.
Speaker 3 (03:09):
Artisans the genuine fire bag.
Hey, we don't sell watches, weoffer a private service.
The client already owns theRolex.
They're just hiring us topersonalize it.
Speaker 1 (03:22):
But here's the rub.
The Swiss Federal Supreme Courtsplit the matter down the
middle.
The ruling in 2024 said yes,modifying your own watch
privately.
That's fine.
Personal use, personal taste,personal joy.
Speaker 3 (03:35):
But if you put that custom Rolex on display, sell it
on the secondary market or evenpost it online in a way that
looks like Rolex was part of thedesign, thus an authorized
commercial use, and that, myfriends, crosses into trademark
infringement.
Speaker 1 (03:54):
In other words, you can commission a skeleton dial
and dance with diamonds all day,Just don't parade it around as
if Rolex blessed your wildestdesign dreams.
Speaker 3 (04:03):
It's a classic case of post-sale confusion.
Even if the original buyerknows it's been modified, what
about the next person or thecollector in Tokyo who sees a
photo and thinks Rolex justdropped a limited edition
see-through?
Speaker 1 (04:19):
That confusion, real or potential, is enough to
trigger trademark protection,especially when we're talking
about a brand like Rolex, whichbuilds its entire identity on
consistency, exclusivity andquality control.
Speaker 3 (04:33):
Since the ruling, artisans de Geneva has had to be
extra cautious no Rolex logosin public facing materials, no
interviews implying partnershipand certainly no marketing that
blurs the origin story.
Speaker 1 (04:50):
The message is clear you can own the watch, but the
brand that's still Rolex'sterritory and they'll protect it
like it's made of solid gold.
Speaker 3 (04:58):
Now let's head across the Atlantic to the United
States, where Rolex took anotherswing, this time not at a Swiss
artisan, but at a Texas-basedeBay power seller, becker Time.
Speaker 1 (05:11):
Oh, Becker Time, they weren't cracking open Rolexes
in some underground lab.
They were buying pre-ownedRolex watches, replacing a few
parts maybe a dial here, a bezelthere, even throwing in some
diamonds for that weekend inDubai feel and reselling them
online as, wait for it, genuineRolex watches.
Speaker 3 (05:31):
And here's where the tick meets the tock.
Rolex argued if you changeenough of the original parts,
especially with aftermarketnon-Rolex pieces, it's no longer
genuinely Rolex, even if thebase movement is legit.
Speaker 1 (05:46):
Eckertine was like what we're just improving the
classics.
But the court didn't agree.
Modifying a Rolex withunapproved parts, then branding
it as genuine, that's trademarkinfringement, plain and simple.
Speaker 3 (05:59):
The Fifth Circuit said yes, these watches were
originally Rolex, but theadditions made them materially
different from what consumersexpect when they hear Rolex.
So selling them under that namewithout clarification that's a
misrepresentation.
Speaker 1 (06:15):
Here's the twist, though.
The court also said Rolexwaited too long to bring this
suit.
Becker Time had beencustomizing and selling these
watches since at least 2010, andRolex only sued in 2020.
That's a whole decade ofticking tolerance.
Speaker 3 (06:33):
That delay triggered detortion of laches, which is
legal.
Speak for if you snooze, youlose.
The court said Rolex was toolate to claim damages.
No money for you.
Speaker 1 (06:45):
So, yes, Rolex won the legal argument, but not the
payout.
Becker Time had to change theway they described their watches
, but they didn't have to handover a cent.
The courtroom equivalence ofyou're right, but go to your
room anyway.
Speaker 3 (06:58):
This case matters because it highlights something
crucial for all luxury brands.
It's not enough to be right.
You also have to be right.
You also have to be timely.
Trademark rights have to beenforced consistently and
promptly, Otherwise courts maylet the clock run out on your
claims and for resellers.
Speaker 1 (07:17):
a makeover doesn't make a watch a fraud, but you
better disclose, disclose,disclose.
No shady sparkle, no pretendingit's stock when it's souped up.
Speaker 3 (07:25):
It's a case about boundaries between originality
and modification, betweenclarity and confusion, and
between protecting your brand orletting it slowly slip into the
aftermarket wild.
Okay, so we've seen whathappens when you modify a Rolex,
but what if you don't startwith a watch at all, just with?
Speaker 1 (07:49):
its heart.
Enter Vortec, a small Americancompany with big vintage energy.
Their specialty Salvagingantique Hamilton pocket watch
movements, some over 100 yearsold, and turning them into
beautiful handcraftedwristwatches.
Speaker 3 (08:05):
Now here's the catch those movements still sit
Hamilton on them, years old andturning them into beautiful
handcrafted wristwatches.
Now here's the catch thosemovements still said Hamilton on
them and when Vortig cased themin custom designs and sold them
as restored Hamilton watchesthe Swatch Group, which owns the
Hamilton brand, today said ahah, trademark infringement.
Speaker 1 (08:27):
But Vortig wasn't trying to pass off new watches
as official Hamiltons.
They were super transparent.
They made it clear these werevintage American movements
repurposed with love and oftenbore both names, vortig and
Hamilton, not trying to fakeanything.
Speaker 3 (08:40):
Still Hamilton sued in 2015.
The case dragged on for yearsand it went deep into what
trademark law calls likelihoodof confusion.
Basically, would the averagebuyer think this was a new
Hamilton product made orendorsed by Swatch.
Speaker 1 (08:59):
Spoiler.
The court said no In 2021,.
The Second Circuit backedVortec.
The judge was like thesewatches are what they say they
are.
There's no deception here.
Vortig disclosed the origin ofevery part.
No mystery, no funny business.
Speaker 3 (09:18):
This was a big deal because, unlike the Becker Time
case, where the modificationsweren't clearly explained,
vortig made the lineage of itswatches part of the story.
The court even said the use ofthe Hamilton mark was fair use
because it referred to theactual origin of the movement.
Speaker 1 (09:34):
I mean, come on, that's like restoring a vintage
Ferrari engine and putting itinto a custom chassis.
You'd still say this is aFerrari engine, not.
Oh no, I can't mention the Fword.
Speaker 3 (09:46):
Ha exactly.
Trademark law isn't there topunish people who respect
heritage and tell the truth.
It's there to prevent deception.
Speaker 1 (09:55):
And Vortex Wind showed that small businesses
with good faith and gooddocumentation can go toe-to-toe
with big brands and come outticking.
Speaker 3 (10:02):
This gave hope to the entire restoration community.
It drew a crucial line betweenhonest reuse and brand dilution.
Speaker 1 (10:12):
So if you're an artisan, a rebuilder or a
creative reuser, here's yourgold rule Be clear, be truthful
and never pretend you'resomething you're not.
Speaker 3 (10:21):
Portici Purazzi proved that honoring the past
doesn't have to infringe on thepresent.
Now let's rewind the dial to acase that made every luxury
brand raise its eyebrows andprobably its retail prices Omega
, de Sebi, costco, wasn't justabout watches.
It was about control overmarkets, over margins, over a
(10:46):
tiny logo.
You'd need a magnifying glassto even see.
Speaker 1 (10:51):
Oh, this one is delicious.
Omega, the Swiss maker of JamesBond's favorite wrist candy,
was furious that Costco wasselling genuine Omega watches in
the US for a lot less thanOmega's boutique prices.
Speaker 3 (11:05):
And, to be clear, costco wasn't selling fakes.
These were real Omega watchesimported from authorized
distributors abroad, but Omegahadn't authorized those specific
watches for sale in the US.
Speaker 1 (11:18):
So what did Omega do?
They didn't file a trademarksuit, no no, they got creative.
They registered the tiny Omegaglobe design etched into the
back of each watch as acopyrighted work.
Speaker 3 (11:30):
You heard that right, not the dial, not the case.
A minuscule engraving on theunderside of the watch became
their weapon of choice.
Why?
Because copyright law has thislovely clause the first sale
doctrine doesn't always apply togoods manufactured abroad.
Speaker 1 (11:50):
Translation.
Omega argued that because thewatches were made outside the US
, their copyright gave them theright to block unauthorized
import and resale, even if thewatch itself was genuine.
Speaker 3 (12:03):
And for a moment it worked.
In 2010, the Ninth Circuitagreed with Omega Costco, took
it all the way to the US SupremeCourt, which split 4-4.
That meant the Ninth Circuit'sruling stood, but without
setting a national precedent.
Speaker 1 (12:21):
But then came the plot twist the case got sent
back to the lower court for moreproceedings and that court said
Omega's entire strategy waswait for it.
Copyright misuse.
Speaker 3 (12:36):
Basically, the judge looked at Omega and said you're
not really trying to protect art, You're trying to manipulate
copyright law to controldistribution and that's not what
copyright is for.
Speaker 1 (12:50):
Boom.
Copyright misuse is like thelegal version of don't play
games with us.
It's the doctrine that slapsback when rights holders push
the law too far.
Speaker 3 (13:00):
So Costco wins, omega's clever little backdoor
maneuver shut down, and theSupreme Court, in a different
case shortly after Kirtzang vSwiley, confirmed that the first
sale doctrine does apply togoods made abroad, to goods made
abroad.
Speaker 1 (13:17):
So what's the big picture?
You can't use copyright as asneaky tool to control genuine
goods in the gray market.
If the product is real and yousold it somewhere in the world,
you may have to live with theresale this case was a wake-up
call for luxury brands.
Speaker 3 (13:31):
It said copyright protects expression, not your
global pricing strategy.
Speaker 1 (13:38):
So if you're a brand trying to block resellers with a
logo no one sees and anargument no one buys, maybe
think again.
Speaker 3 (13:46):
And if you're Costco, pass the popcorn.
You just save gray marketseverywhere.
All right, let's talk about alegal face of Sobold.
It went beyond the Bezal.
This one's all about virtualdials, digital decor and what
happens when your smartwatch appstore starts looking a little
too.
Speaker 1 (14:06):
Swiss.
Imagine firing up your SamsungGalaxy Watch and browsing
through third-party downloadablefaces.
You see a moon swatch, a speedySunday, or maybe a dial that
looks suspiciously like an OmegaSeamaster.
All beautifully designed.
All definitely not licensed.
Speaker 3 (14:25):
Swatch Group, the parent company of Omega, tissot,
longines, reggae, you name.
It took one look at those facesand said, excuse you.
Speaker 1 (14:35):
Their lawyers probably didn't even blink
before filing.
In 2019, Swatch sued Samsungfor trademark infringement,
saying those watch face appswere direct copies of their
protected designs.
Even worse, Samsung's GalaxyApp Store was hosting and
distributing them.
Speaker 3 (14:54):
Now Samsung's first defense was classic hey, we
didn't make these apps, we'rejust the platform.
Don't shoot the messenger.
Speaker 1 (15:03):
But the UK courts weren't buying that.
The high court and later thecourt of appeal ruled that
Samsung wasn't just some passivebulletin board.
They curated the store, theyshared profits, they had notice
and they still did basicallynothing.
Exactly Once Samsung wasnotified that infringing apps
(15:24):
were available, they had a legalduty to act, not just remove a
few here and there, but preventrepeat infringements.
You can't just shrug and sayusers will be users while
collecting download revenue.
The ruling was clear Platformsthat profit from infringing
content can't hide behind safeharbor when they've been told
and shown that what they'rehosting is illegal.
Speaker 3 (15:47):
This case said a real precedent in Europe, because it
wasn't about counterfeits youcould touch.
It was about digital mimicry,downloadable knockoffs, and
courts said, virtual or not, atrademark is a trademark.
Speaker 1 (16:02):
What's especially juicy, swatch had receipts.
They documented the exactnumber of infringing designs,
showed how close they were totheir own models, and even
caught developers naming themafter Swatch's own collections
Oof.
Speaker 3 (16:18):
That's not just inspiration, that's imitation
with extra pixels.
Speaker 1 (16:22):
After the ruling, samsung had to clean house and
fast.
Speaker 3 (16:27):
App Store started tightening submission guidelines
, especially for digital watchfaces and brand theme designs
and other platforms they tooknotes, because if you're
profiting from user-generatedcontent and you don't have a
decent IP enforcement mechanismin place, you're not an initial
tech platform, you're a legallyliable co-host.
Speaker 1 (16:50):
So what did Swatch win, aside from moral
vindication?
Speaker 3 (16:53):
A clear legal victory , an injunction and a hefty nod
to tech companies.
Digital trademarks matter anddesign rights don't disappear in
the cloud.
Speaker 1 (17:04):
And let's be honest, Swatch may be colorful and fun,
but when it comes to defendingits brands, they go full steel
bracelet.
Speaker 2 (17:14):
Intangiblia, the podcast of intangible law.
Plain talk about intellectualproperty.
Speaker 3 (17:20):
Now it's time for a trademark tango between two
heavyweights, apple and Swatch.
Or as I like to call it ThinkDifferent versus Tick Different.
Speaker 1 (17:34):
Ooh, yes, this case is peak drama.
Apple was planning the launchof their smartwatch empire and
wanted to trademark iWatch.
Makes sense, right?
Iphone, ipad, imac, iwatch.
Speaker 3 (17:47):
But Swatch had already filed eSwatch and said
very politely I'm sure nodarling.
Speaker 1 (17:54):
And so Apple had to pivot.
That's why we all wear Applewatches today, not iWatches.
Swatch blocked them in severaljurisdictions, including the UK
and EU.
Speaker 3 (18:03):
But Swatch wasn't done being cheeky.
They went on the offensive.
They filed a trademark forThink Different, a very thinly
veiled parody of Apple'slegendary Think Different
campaign.
Speaker 1 (18:16):
And not just that, swatch also filed for One More
Thing which, if you're a truetech fan, you know was Steve
Jobs' iconic phrase beforerevealing something game
changing on stage.
Speaker 3 (18:26):
So Apple was like excuse me, are you trolling us?
That's our legacy.
And they challenged the firings, arguing by faith that Swatch
was deliberately mocking Appleor filing defensively to block
them.
Speaker 1 (18:42):
But the UK Intellectual Property Office and
later the high court saidthat's not how trademark law
works.
Swatch may have had a playfulintent, sure, but unless Apple
could prove that Swatch filedsolely to block Apple or that
consumers were likely to beconfused, it wasn't bad faith.
Speaker 3 (18:58):
And here's the kicker .
The court even acknowledgedthat One More Thing had a pop
culture presence, but it wasn'tdistinctive enough in the UK to
belong to Apple legally.
Speaker 1 (19:08):
So Swatch kept both trademarks Tick Different.
One More Thing they even usedthem on watches, and Apple had
to swallow its pride with a sideof irony.
Speaker 3 (19:20):
What this case really highlighted is that being
famous isn't enough.
If you don't fight thetrademark, someone else might.
And parodies, even salty ones,can be totally legal if there's
no consumer confusion.
Speaker 1 (19:36):
I mean.
The slogan isn't trademarks orfeelings, it's function, no
confusion, no misrepresentation,no problem.
Speaker 3 (19:43):
Plus, Swash argued that their slogan referred to a
literal tick-ass in TikTok.
So cute.
Speaker 1 (19:53):
So calculated.
Speaker 3 (19:59):
So if you're a brand with iconic language.
File those trademarks yesterday, because if you wait, the other
side might just tick different.
All right, let's switch gears.
You've heard about platformsbeing held liable.
Now let's talk about whathappens when the internet
pipeline itself gets pulled intothe courtroom.
This case is about Cartier, butnot just Cartier, also
Montblanc, iwc and the rest ofthe Richemont squad All part of
(20:23):
the luxury Avengers.
Speaker 1 (20:25):
And who were they fighting?
Pirate websites, tons of themselling counterfeit watches,
jewelry, you name it.
But here's the twist Richemontdidn't go after the
counterfeiters directly.
They went after the internetservice providers Yep, bt, sky,
talktalk, eid the companiesliterally connecting users to
(20:46):
the internet.
Speaker 3 (20:47):
Bridgemore asked the court to order these ISPs to
block access to a bunch ofdomains pushing fake Cartier and
Montblanc goods.
Their argument you have thepower, Use it.
Speaker 1 (21:00):
Now let's be real.
The ISPs were not thrilled.
They were like we're just theroad, we don't drive the cars,
and also, are we supposed to payfor this blocking technology?
Speaker 3 (21:12):
But the UK High Court said yes, actually you are the
road and if there's a crashahead and we know it's coming,
you've got to put up a sign.
The court issued the blockingorders.
For the first time ever atrademark owner got a site
blocking injunction in the UK.
Speaker 1 (21:32):
Before that, site blocking was mainly a copyright
thing, like for movie piracy.
This extended that sameprinciple to trademark
infringement a massive win forluxury brands.
Speaker 3 (21:42):
But that didn't end the fight.
The ASP's appeal.
They argued that blocking wouldcost money, create a dangerous
precedent and put too muchburden on neutral intermediaries
.
Speaker 1 (21:57):
By 2018, the UK Supreme Court weighed in and
guess what?
They upheld the blocking orders, but they made one thing clear
the brands have to pay thereasonable costs of enforcement.
Speaker 3 (22:09):
In short, rights holders can ask ISPs to block
infringing sites, but they can'toffload the whole financial
burden.
Speaker 1 (22:20):
So what's the big takeaway here?
This case opened the floodgatesfor brand owners to protect
their IP upstream, beforeconsumers even reached the fake
goods.
Speaker 3 (22:29):
It also put ISPs on notice.
You can't just sit back andplay innocent.
If a court shows you a pirateside and you can block it
without causing chaos, you mightbe required to act.
Speaker 1 (22:45):
And for Richemont, this wasn't just about watches.
It was about preserving luxuryitself in the age of online
everything.
Speaker 3 (22:53):
They weren't just protecting logos.
They were protecting consumertrust, distribution models and
the meaning of the brand.
Speaker 1 (23:02):
And doing it with one of the boldest legal moves in
recent memory, from boutiques tobroadband.
Richemont made it clear ifyou're helping infringers, even
passively, you're part of theproblem.
Speaker 3 (23:11):
Okay, let's talk icons, not influencers, not
movie stars.
I'm talking about a watch theRoyal Oak by Audemars Piguet.
Speaker 1 (23:21):
Ugh, that octagonal bezel, the eight screws, the
tapisserie dial, the integratedbracelet.
You can spot it from across theroom and, if you're lucky,
across the yacht deck.
Speaker 3 (23:32):
Designed by the legendary Gerald Genta in 1972,
the Royal Oak changed everything.
It turned stainless steel intoluxury.
It blurred the line betweensport and horology.
It's a vibe and a half.
Designed by the legendaryGerald Genta In 1972, the raw
(23:53):
oak changed everything.
It turned stainless steel intoluxury.
It blurred the line betweensports and old horology.
It's a vibe and a half.
Speaker 1 (24:05):
So of course Audemars Piguet wanted to protect that
vibe.
But here's the thing aboutvibes they don't always play
well with IP law.
Speaker 3 (24:12):
They tried everything Design registrations in the EU,
3d trademarks in the US,configuration trademarks in
Japan, even unfair competitionclaims in China and spoiler
mixed results mostly losses.
Speaker 1 (24:35):
Let's start with Europe.
Ap filed for EU design rightsand 3D trademarks to protect the
look of the Royal Oak, but theEUIPO and later the general
court weren't convinced.
Why?
Because the design wasconsidered too established, too
iconic, too generic.
Speaker 3 (24:55):
Ouch.
The court said the Royal Oakwas part of the design corpus.
Basically, it was already sowell known it couldn't be
treated as distinctive or newenough to warrant exclusive
protection.
The legal equivalent of yeah,you invented the trend, but now
it's fashion history.
Speaker 1 (25:15):
In Japan, AP took another swing, trying to
trademark the shape.
The Japan Patent Office andlater the IP High Court said
nope, the features were toofunctional or decorative and
Japanese consumers apparentlydon't link the watch shape alone
to Audemars Piguet.
Same song, different country.
Then came the United States.
(25:37):
Audemars Piguet triedregistering the shape and
configuration of the Royal Oakas trade dress, but the USPTO
said show us the proof.
You need evidence thatconsumers see that shape as a
source identifier, not just apretty face.
Speaker 3 (25:52):
They couldn't do it, the TT abrogated the application
in 2025.
Again, too functional, too hardto isolate was distinctive.
What's just good watchmaking.
Speaker 1 (26:04):
But in China, a bright spot In 2021,.
Ap successfully sued a Shenzhencompany that was selling
knockoffs under the name RoyalOne with identical design cues.
The court ruled in favor of APnot just on trademark grounds,
but also under unfaircompetition law.
Speaker 3 (26:21):
Finally, China recognized the Royal Oak's
overall look as a commoditydecoration with influence in the
market.
The cup cat was fine and thewatch was pulled Big win.
Speaker 1 (26:34):
So what does all this mean?
It's hard, really hard, to lockdown a product's shape under
trademark law, especially whenthat shape becomes beloved,
copied or referenced overdecades.
Speaker 3 (26:47):
Courts are wary of giving permanent monopoly over
forms that others might need tocompete.
You want protection.
File early as the design patent.
Don't try to trademark your wayinto eternity.
Speaker 1 (27:01):
Still AP isn't backing down.
They're pursuing enforcementunder unfair competition, using
brand heritage and design legacyas weapons.
But they've learned that IP lawdoesn't always reward fame.
Speaker 3 (27:12):
Because being iconic doesn't mean being exclusive, at
least not in the eyes of theregistry.
Speaker 1 (27:18):
So next time you see a Royal Oak or a very convincing
tribute, just remember.
It may be unmistakable, but notalways unprotectable.
Speaker 3 (27:28):
Let's close our case file with a futuristic twist,
because in the battle betweenclassic horology and high tech
wearables, the legal landscapehas moved straight to the heart,
literally.
Speaker 1 (27:42):
That's right.
Enter AliveCore, a US healthtech company known for
developing portableelectrocardiogram at ECG Tech.
And they weren't just makingmedical gadgets, they had
patents, lots of them.
Speaker 3 (27:56):
Then came Apple With the launch of the Apple Watch
Series 4 in 2018, it introducedbuilt-in ECG features that let
you monitor your heartbeat rightfrom your wrist.
Consumers loved it.
Alivecore not so much.
Speaker 1 (28:14):
They sued Apple for patent infringement, claiming
the Apple Watch's heartmonitoring features violated
their exclusive rights to theunderlying technology and
algorithms.
But they didn't stop at onecourt, oh no.
Alivecore filed with the USInternational Trade Commission,
ITC, and brought separatelawsuits in federal court.
Speaker 3 (28:33):
The ITC case Wild.
In 2022, an administrative lawjudge actually found that Apple
had infringed AliveCore'spatents.
The ITC moved to issue anexclusion order, meaning Apple
watches with ECG features couldbe banned from being imported
into the US.
Speaker 1 (28:51):
Can you imagine one of the most popular wearables in
the world potentially pulledoff American shelves because of
a heart monitoring patent?
War?
Speaker 3 (29:00):
But Apple didn't sit still.
They filed inter-partnersreviews with the US Patent
Office challenging the validityof AliveCourse patents.
And guess what?
In 2023, the patent trial andappeal board, ptab, invalidated
several of AliveCourse keypatent claims.
Speaker 1 (29:18):
That gave Apple ammunition.
They told the ITC, hey, thesepatents not even valid.
And a federal court inCalifornia also ruled in Apple's
favor, dismissing part of thecase and freezing the import ban
before it could take effect.
Speaker 3 (29:33):
Meanwhile a live court appeal.
So while the IDC said Appleinfringed the patent office, and
other courts said the patentsthemselves were shaky, the case
became a legal see-saw, bouncingbetween agencies.
Speaker 1 (29:49):
The result as of 2025 , there's no import ban.
Apple's ECG feature is stillpulsing strong, but the
litigation isn't over.
It's still beating away in theappellate courts.
Speaker 3 (30:01):
So why does this case matter for the watch world?
Because it draws a line betweenhorology and health tech.
When your smartwatch startsoffering medical functions, you
enter a regulated, highlypatented space.
Speaker 1 (30:17):
And patents in that space?
Oh, they're vicious.
One patent can block an entireproduct line.
The stakes are sky high becauseit's not just about keeping
time anymore, it's about keepingyou alive.
Speaker 3 (30:30):
Also, this case reminds us that IP battles
aren't fought in one arenaanymore.
You've got district courts, theITC, the patent office, all
dancing to different legalrhythms.
Speaker 1 (30:43):
And don't forget the drama public relations, consumer
trust, developer morale whenyour flagship feature is at risk
of disappearing eventemporarily.
Speaker 3 (30:51):
You've got a legal and business headache rolled
into one, so here's the finaltick If you're innovating in the
smartwatch or medtech space,you'd better trickle check your
freedom to operate and yourpaperwork, because even giants
like Apple can find themselvesone heartbeat away from a
courtroom crisis Literally, fromRolexes on the bench to Apple
(31:18):
watches in courtrooms.
We've covered a lot of legalground today, but if you've been
timing us, then we know some ofyou have.
Speaker 1 (31:26):
Let's stop the cloud right here and break it all down
Because, no matter how shinythe case or iconic the dial, at
the heart of it all is strategy,and five core legal principles
kept popping up like atourbillon on overdrive kept
(31:46):
popping up like a tourbillon onoverdrive.
Speaker 3 (31:47):
So here they are, our five most timeless legal
takeaways.
Takeaway one trademark lawprotects more than logos.
It's not just about names orcrowns or word marks.
Trademarks protect the identityand impression a product gives
before, during and after thesale.
Speaker 1 (32:04):
That means if you're modifying, reselling or remixing
a luxury watch, you're wordingbetter match reality.
Genuine isn't a vibe, it's alegal claim.
Speaker 3 (32:13):
Takeaway two shape is not enough.
Audemars Piguet found this outthe long hard way.
Courts around the world toldthem your watch may be iconic,
but it doesn't mean your designis distinctive enough for a
trademark, especially if it'sfunctional.
Speaker 1 (32:31):
Form must follow function, but if function
swallows the form, kiss yourtrademark dreams goodbye.
That's why early design patentfilings are a brand's best
friend.
Speaker 3 (32:41):
Takeaway three If you wait too long, the law might
not wait for you.
Rolex Visbecker time was theultimate reminder.
Enforcement delays can cost youmoney, even if you're right.
Speaker 1 (32:56):
It's the polite, legal way of saying should have
spoken up sooner, sweetie.
Speaker 3 (33:00):
Takeaway.
Four Platforms are not off thehook.
Samsung learned that the hardway Posting infringing apps or
ignoring takedown warnings makesyou liable.
We didn't know.
Doesn't cut it if you're makingmoney.
Speaker 1 (33:15):
Digital infringement is real infringement.
Watch face fakes, still fakes.
Speaker 3 (33:19):
Takeaway bi-tech is a legal minefield.
Protect your patents or prepareto defend your turf Alive.
Core v Apple wasn't just aboutECGs.
It showed how competitive andlitigious the smartware space
has become.
Speaker 1 (33:36):
If your feature might save lives, there's probably
someone out there with a patenton it.
Innovate smart and file smarter.
Speaker 3 (33:42):
So what did we learn today?
Listeners Watches aren't justaccessories, they're status
symbols.
Engineering fits digital healthcompanions and, most
importantly, legal battlegrounds.
Ip defines who owns the design,the function, the face and
sometimes even the tick.
Speaker 1 (34:03):
And while time may be , universal brand protection
definitely is not.
You need the right filings, theright timing and the right
legal arguments to survive inthis world.
Speaker 3 (34:14):
Remember, we're just your AI co-hosts.
The real Leticia, the oneliving in Switzerland surrounded
by precision and fondue, is thebrilliant mind behind
Intangiblia.
She built this podcast toexplore the intersection of law,
creativity and the future.
Speaker 1 (34:35):
And speaking of the future, new episodes drop every
Tuesday in English and Spanish.
Tuesday in English and Spanish.
So, whether you're rocking aCasio, a Cartier or a custom
smart band, just know thatbehind every dial lies a drama.
Speaker 3 (34:49):
Thanks for listening.
Until next time.
Protect your ideas, watch yourrights and never let the legal
plug run out on your brilliantThank you for listening to
Intangiblia, the podcast ofintangible law playing.
Speaker 2 (35:03):
talk about intellectual property.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
(35:27):
All rights reserved.
This podcast is provided forinformation purposes only.
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