Brands are trying to stop upcycling movements but the whack-a-mole nature of enforcement makes it impossible

Trademark Infringement in Upcycled Products on the Secondary Markets

Rolex Watch U.S.A., Inc. v. BeckerTime is a good example of the intersection of secondary markets and trademark infringement in upcycled products.27 BeckerTime is a company that now only sells preowned watches, but at the time they upcycled watches, creating hybrid watches using Rolex and third-party parts, marketing them as “genuine Rolex” watches.28 However, because Rolex had never certified or endorsed BeckerTime, by marketing the watches as “genuine Rolex’s” was an infringement on Rolex’s IP.29 In 2020, Rolex sued BeckerTime, alleging counterfeit and infringing use of Rolex’s trademark in connection with the advertising, promotion, service, and sale of unauthorized watches and watch parts.30

The Northern District of Texas ruled in favor of Rolex, granting a permanent injunction against BeckerTime.31 The court found that BeckerTime had violated Rolex’s trademarks by upcycling and selling the watches, crafted in part from Rolex watches, and selling them as “genuine Rolex” watches.32 Again, like Louis Vuitton33, this is one example of hundreds of people infringing on dozens of brand’s IP.34 It is a “whack-a-mole” situation because as one upcycling infringer is taken down, a new one pops up.35

What Is a Brand’s Best Option for Protection?

Unfortunately, the burden is on the brand to police the internet for the multitude of upcyclers across many different platforms.36 This is less of a burden for large brands like Louis Vuitton that have more of a bandwidth to regularly police the downstream use of its trademarks, however, smaller brands may find protecting their trademarks to be burdensome.37 Typically, brands resort to a bevy of tools to protect their IP.38 The first step is low lifting enforcement, such as cease and desist letters, take-down requests, or casual discussions between the two companies.39 If there is no response, then brands will often resort to court involvement, looking for injunctions and/or will attempt to obtain orders requiring the destruction or forfeiture of the remaining infringing articles.40