A recent decision in Rolex Watch USA, Inc. v. Jewelry Unlimited shows how courts view modifications to luxury goods, and how consumer survey research is used in customization and counterfeit disputes.
Refurbished, Renewed, or Rolex
Jewelry Unlimited, a retail jeweler, sold pre-owned Rolex watches that had been customized with non-Rolex parts, including replaced dials, added diamonds, and modified bezels and bracelets. The watches retained the Rolex logo and were advertised as “100% authentic as made by the manufacturer” and “100% Genuine Pre-Owned.”
Rolex filed a lawsuit in the Northern District of Georgia, alleging counterfeiting, trademark infringement, false advertising, false designation of origin, and unfair competition. The court granted Rolex’s motion for summary judgment on liability, finding that the modifications rendered the watches counterfeit. In February of 2025, the court issued a permanent injunction prohibiting Jewelry Unlimited from manufacturing, advertising, or selling any products bearing counterfeit Rolex marks.
Custom Watches Require Custom Disclosures
This is not the first instance in which Rolex has defended its authenticity in the face of customization. In Rolex Watch USA, Inc. v. BeckerTime, LLC (5th Cir. 2024), the Fifth U.S. Circuit Court of Appeals affirmed that modifications, including adding diamonds or swapping parts, transform a genuine Rolex watch into a non-genuine watch. The court reasoned that these modifications extended beyond repair or refurbishment, and that by altering a product's physical design and performance while retaining Rolex’s marks, a reseller confuses consumers about the items’ origin.
The first-sale doctrine allows resale of genuine goods bearing a trademark, such as refurbished laptops. However, it does not protect sellers who materially alter goods in ways that mislead consumers. The line between “refurbished” and “reimagined” is one that the courts must discern.
Timeless Role of Consumer Perception
When a reseller advertises a modified luxury product as “authentic,” a court will ask: Would the average consumer believe that the manufacturer approved or created this version of the product? Consumer surveys provide reliable evidence of how consumers perceive these claims. In cases like Rolex v. Jewelry Unlimited, surveys can help quantify confusion by asking respondents:
- Who they believe made or authorized the customized watches.
- Whether they perceive a connection between Rolex and Jewelry Unlimited.
- How they interpret terms such as “genuine,” “authentic,” or “refurbished” when used in marketing materials.
If a statistically significant percentage of consumers believes that the modified watches originated from or are endorsed by Rolex, survey evidence can support claims of infringement or false advertising.
Confusion Surveys and Customization Claims
Likelihood of confusion survey evidence provides courts with data on how consumers interpret a relationship between a brand and a reseller. In the Jewelry Unlimited dispute, a properly designed survey could have measured whether consumers recognized the modifications as aftermarket alterations or instead assumed they were Rolex’s own designs.
Aside from measuring consumer confusion, consumer surveys can also measure allegedly false or misleading advertising, including how claims such as “100% authentic” might misrepresent the source or composition of a modified product. Accurate data about what consumers believe provides courts with evidence that can help them distinguish lawful resale from unlawful counterfeiting.
Protect Your IP with IMS
Customization is in fashion, but blurring the line between creativity and counterfeiting can put resellers at risk. IMS Legal Strategies designs and conducts litigation surveys in trademark infringement and false advertising disputes. Our surveys withstand judicial and regulatory scrutiny, providing clarity in complex intellectual property disputes where brand identity is at stake. Contact IMS Legal Strategies to learn how our strategies can protect your IP.
