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Vortic watches with antique Hamilton parts don't infringe trademarks

3 minute read

REUTERS/Arnd Wiegmann

  • Vortic made clear its watches were restored antiques
  • Watches unlikely to cause customer confusion
  • District court properly used trademark analysis for refurbished goods

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(Reuters) - The 2nd U.S. Circuit Court of Appeals on Tuesday said that Vortic Watch Co's use of antique Hamilton pocketwatch parts in its wristwatches does not amount to trademark infringement.

Vortic's use of the parts wasn't likely to cause confusion because the company had fully disclosed that its watches were made from refurbished antiques and were not associated with Hamilton International Ltd, the court held.

The decision affirmed a 2020 ruling by U.S. District Judge Alison Nathan in Manhattan.

U.S. District Judge John Cronan of the District Court for the Southern District of New York, sitting by designation, wrote for a unanimous three-judge panel.

Vortic attorney Jin-Ho King of Milligan Rona Duran & King said in an email that the ruling "reaffirms something that the law has long made clear: trademark law is not a sword to be used indiscriminately — there must be a likelihood of consumer confusion."

Hamilton and its attorney Michael Aschen of Abelman Frayne & Schwab didn't immediately respond to a request for comment.

Vortic is a Colorado-based watchmaker that specializes in restoring antique pocketwatches and turning them into wristwatches. It created "The Lancaster" – named for the Pennsylvania city where Hamilton was originally based – using Hamilton pocketwatch parts.

Hamilton, now owned by Swiss luxury watchmaker Swatch Group Ltd, sued Vortic for trademark infringement in 2017, arguing The Lancaster was likely to cause customer confusion. Nathan ruled last year that customers wouldn't think the watch was affiliated with Hamilton.

Nathan applied the 1947 U.S. Supreme Court case Champion Spark Plug Co v. Sanders, which relates specifically to when sales of used goods infringe trademarks, before analyzing the traditional likelihood-of-confusion factors for infringement.

Nathan found that under Champion, Vortic had fully disclosed that the watch was restored from vintage parts and wasn't likely to cause confusion.

On appeal, Hamilton argued that Champion wasn't on point because The Lancaster was a new watch with Hamilton parts instead of a "modified genuine Hamilton product."

But Cronan, joined by U.S. Circuit Judges Raymond Lohier and William Nardini, said there was "ample" evidence that Vortic's watch was a genuine refurbished product, and that Nathan had correctly applied Champion.

Vortic fully disclosed in its marketing that the watches weren't affiliated with Hamilton, and the watch itself "obviously presents" as being made of antique parts, the court wrote.

The case is Hamilton International Ltd v. Vortic Watch Co, 2nd U.S. Circuit Court of Appeals, No. 20-3369.

For Hamilton: Michael Aschen and Anthony DiFilippi of Abelman Frayne & Schwab

For Vortic: Robert Lantz of Castle Lantz Maricle; and Jin-Ho King of Milligan Rona Duran & King

Read more:

Watchmaker Hamilton’s trademark infringement lawsuit winds up heading to trial

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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