National Jeweler Network

Brand Profiles

Audemars nets Royal victory in trademark case

By Michelle Graff

January 09, 2014


Audemars Piguet won a federal trademark infringement case against a company that it said was selling a watch too similar in design to the Royal Oak, pictured here.

New York--A watch company has been ordered to pay Audemars Piguet more than $9 million in damages for selling a watch that was deemed to be a knockoff of the luxury watchmaker’s “Royal Oak.”

Court papers show that on Monday, New York District Court Judge Harold Baer Jr. ruled in favor of Audemars Piguet in its lawsuit against Swiss Watch International Inc. (SWI) and executive Lior Ben-Shmuel. SWI operates the website WorldofWatches.com and sells its watches via other online retailers, including Amazon.com.

In the suit, filed in July 2012 in federal court in New York, Audemars Piguet said the defendants’ Swiss Legend Trimix watches for both men and women, which debuted between 2010 and 2012 and sell for $79 to $249, were too similar in design to the Royal Oak, a model that has been around since 1972 and sells for $15,000 and up.

Audemars accused SWI of federal trademark infringement, common law unfair competition and trademark dilution under New York law.

SWI countered with a claim calling for cancellation of Audemars Piguet’s trademarks for the Royal Oak, arguing that the “octagonal shape is one of the few shapes available for a watch and thus is functional,” meaning that it cannot be protected by trademark, court papers state.

In his ruling issued Monday, which followed a four-day bench trial in June, Judge Baer came down on the side of Audemars Piguet, noting that the “similarities between these watches remains striking.”

“The court finds that the defendant’s Trimix watches are indeed quite similar to the Royal Oak design, in their octagonal bezel with eight flat screws spaced out around the bezel,” court papers state.

He awarded treble damages totaling $9.8 million in the case, noting that it is “more likely than not that defendants intentionally used plaintiffs’ marks with the knowledge that these marks were counterfeit,” court papers state.

In an emailed statement, SWI said it respectfully disagrees with the court’s ruling and plans to appeal.

“We at SWI take tremendous pride in and stand by the integrity, quality, and originality of our watches and other products,” the company stated.

Baer noted several times in his ruling that SWI continued to sell, and profit from, its Trimix watches even after being confronted at the Baselworld show in 2011 and asked to remove the timepieces from display, signage and promotional materials, receiving a cease-and-desist letter from Audemars Piguet in May 2012. The filing of the lawsuit took place in July 2012.

In addition to damages, SWI has been permanently enjoined from selling the men’s and women’s Swiss Legend Trimix and must recall any Trimix inventory from other retailers.

This is not the first time Audemars Piguet has gone to court to protect the Royal Oak. The Swiss watchmaker settled a trademark infringement suit with Tommy Hilfiger USA Inc. and Movado Group Inc. in October over Hilfiger’s Eton watch. Movado produces and distributes Tommy Hilfiger-branded watches through a licensing deal.

In addition, according to court papers, fashion brand Michael Kors took an allegedly infringing watch off the market after being confronted by Audemars Piguet.