Luxury watchmaker Breitling takes pride in its history of firsts.
It was the first Swiss wristwatch in space when it journeyed on the Mercury 7 mission. Breitling’s Navitimer was the first wristwatch for pilots to feature a circular slide rule. Innovation has been part of the company’s history since 1884, when Léon Breitling began the work leading to his patented designs.
Today, Breitling is ranked among the top 10 Swiss watchmakers, according to Morgan Stanley research. Being a global icon also made the company a target of trademark litigation faced by industry leaders for more than a decade.
Ongoing Challenge for Watchmakers
Beginning in 2011, a Los Angeles-based jeweler and watchmaker, Solid 21 filed lawsuits against several luxury brands, such as Rolex, Movado and LMVH’s Hublot. The plaintiff claimed that its 2003 trademark of the term “red gold” prohibited others from using it to describe the metallic alloy of their products.
Many legacy watchmakers had long used the terms red gold, rose gold and pink gold in their descriptions of various colors of the alloy.
Over years of litigation, several watchmakers quietly settled infringement claims, while others fought back. After Hublot’s victory on its motion for summary judgment was reversed, it settled with Solid 21 in 2018. Not long after, the plaintiff renewed its efforts against Breitling and filed suit in the U.S. District Court for the District of Connecticut in 2019.
Breitling, confident of its longtime lawful practices, asked Gordon Rees Scully Mansukhani to defend the company against the unfounded infringement claims.
The company believed our firm’s strength in IP litigation, particularly in trademark infringement claims, and trial-ready approach were the right match to vindicate Breitling’s position of its lawful use of the term “red gold.”
Following a thorough case evaluation, Breitling filed a comprehensive motion for summary judgment, led by GRSM Partner Hazel Mae Pangan, Deputy National Chair of our Intellectual Property practice, and GRSM Senior Partner Craig Mariam.
Our motion explained the generic history of “red gold,” and we pulled in key experts. We also put forth the Lanham Act’s fair use defense, which allows use of a term registered as a trademark if the use is descriptive and in good faith.
Judge Michael Shea initially denied the motion. Undeterred, we were certain of the fair use argument and pushed boundaries to ask for a reconsideration, a request rarely granted. But Judge Shea did.
Pangan, Mariam, and their team refined arguments to turn the judge’s attention to areas that were overlooked. Ultimately satisfied with our good faith argument and that our client has used “red gold” descriptively, Judge Shea granted summary judgment in 2022.
Appealed and Upheld
Defeated, Solid 21 still did not go quietly into the night.
It appealed before the U.S. Court of Appeals for the Second Circuit. Pangan and Mariam, with assistance from Partner Lara Garner, defended Breitling on appeal, and were again victorious in an appellate ruling issued March 2024, and that affirmed summary judgment in favor of Breitling. Other cross-office, cross-disciplinary team members included Partner Thomas Blatchley, who served as local counsel in Connecticut.
Breitling was pleased with its win, especially since it was not often in IP litigation. The disruption of trial was avoided by following a trial-ready strategy from the start.
And in another first, Breitling became the first in the industry to prevail on the merits and have its victory upheld on appeal in litigation hanging over watchmakers since 2011.
The global luxury watch market, valued at more than $40 billion dollars, now had legal precedent outlining the lawful use of a term widely used to describe their products.
Influence on Future Law
“In addition to protecting Breitling’s iconic brand, we are also proud that our arguments help define what fair use looks like and how to mitigate risks,” says Pangan. She believes the upfront time her team invested in learning Breitling’s business and their distillation of arguments helped achieve the breakthrough win.
Since the decision was issued, several IP law analysts have noted the ruling’s significance on what is permissible under the fair use doctrine.