For more on this case, read our article “Hamilton v. Vortic heads to trial: Where we are and how we got here”.
Fort Collins, Colo.-based Vortic Watch Company has emerged victorious in its lawsuit with the Swatch Group’s Hamilton Watch. The victory may mark the end of the five-year legal battle between Vortic and Swatch Group. As I’ve covered before, Vortic is an American company that takes old railroad pocket watch movements and re-cases them in 3D-printed cases for wristwatches. Often, these watches will have the name of the original brand (Illinois, Waltham, and of course, Hamilton) on the dial or movement.
Hamilton brought a lawsuit against Vortic in 2013, claiming trademark infringement, counterfeiting, and unfair competition. In the February 2020 bench trial, Vortic argued that its business and product did not lead to any likelihood of consumer confusion, the standard in trademark cases such as this one.
However, when a case involves modified genuine products (such as the case here), courts have found that adequate disclosure as to the origin of the products has been dispositive. Here, the court found that Vortic’s advertisements, marketing materials, and the product itself provided “full disclosure”, and thus there is no consumer confusion and no trademark infringement. Vortic’s website and marketing materials do not convey any affiliation or sponsorship with Hamilton, but instead accurately convey the product as only containing restored movements and parts from those pocket watches. Importantly, the court also found that the watch itself provided full disclosure.
“The watch obviously presents to a viewer as restored antique pocket watch movement, face, and hands that have been reincorporated into a new wristwatch,” the court held. The court held that viewing the watch alone provides full disclosure of the watch as modified and restored; further, with Vortic’s engravings and serial number of the case back (and Hamilton only visible on the movement through the display case back), it is clear who the restorer was.
The court also pointed to Vortic founder RT Custer’s testimony as persuasive and his actions as in “good faith”.
“He did not intend to create consumer confusion but rather sought to preserve ‘American history’ by salving and restoring the hearts of antique pocket watches,” the court wrote. “Mr. Custer did intend to gain some benefit from displaying the Hamilton mark, albeit more so from Hamilton’s historical significance that its modern-day reputation.”
Last — and perhaps most importantly, the court mentions — the court finds the customer base at issue is “highly sophisticated”. Watches are expensive, the court points out, so consumers are highly attuned to the disclosures being made.
The court concluded that, together, these factors do not present a likelihood of confusion. The court also found in favor of the defendant on all other claims.
This is a huge win for RT Custer, Vortic, and the “upcycling” business model. There will certainly be conjecture about what it means for the watch industry more broadly (especially as compared to Rolex’s recent, resounding victory against customizer LaCalifornienne), but for now, it’s time for Vortic to celebrate and (finally) get back to work.
The case is Hamilton International Ltd. v. Vortic LLC, 17-CV-5575.