Bulova Watch Co. v. Allerton Co.

Summary

The court considered whether defendants infringed Bulova’s trademarks and engaged in unfair competition by removing Bulova watch movements from their original cases, placing them in defendants’ diamond-decorated cases, and selling the recased watches through catalogs. It concluded that the recasing constituted a new construction and that defendants’ catalog presentation was misleading because it did not sufficiently identify Allerton’s role or disclose the relationship between the Bulova movement and the new case. The court therefore found trademark infringement and unfair competition.

Holdings

1. Defendants infringed Bulova's trademark by removing Bulova movements from their original cases, placing them in defendants' cases, and selling the resulting watches with the Bulova trademark standing alone on the face of the watch.
2. Defendants' catalog page constituted unfair competition because its presentation was misleading and created the probable impression that a purchaser was buying a Bulova, Hamilton, or Elgin watch in a diamond case, rather than an Allerton-assembled watch containing a movement made by another company.
3. Plaintiff's delay in objecting did not bar an injunction against defendants' continued future use of the infringing presentation.
4. Plaintiff was not entitled to damages for past infringement because it had not given defendants notice to desist after learning of the practice, and the record showed no substantial impairment, intentional fraud, or intent to deceive.

Questions Presented

1. Whether defendants' removal of Bulova watch movements from Bulova cases and installation of the movements in non-Bulova cases, while retaining the Bulova trademark on the dial, constituted trademark infringement.
2. Whether defendants' catalog presentation and product labeling constituted unfair competition by misleading purchasers about the source, sponsorship, assembly, or guarantee of the completed watches.
3. Whether plaintiff's delay in objecting to defendants' practice barred injunctive relief or otherwise affected the remedy.
4. Whether plaintiff was entitled to damages for past infringement absent notice to defendants to desist.

Disposition

other