The US Court of Appeals for the Fifth Circuit vacated a district court’s amended final judgment and reinstated its prior final judgment, finding that the district court overstepped its narrow mandate on remand, directly contradicting the Fifth Circuit’s earlier decision. In that earlier decision, the Fifth Circuit upheld the district court’s finding of trademark infringement but modified the scope of the injunction, approving it only in part. Rolex Watch USA, Incorporated v. BeckerTime, L.L.C., Case No. 24-10415 (5th Cir. Nov. 20, 2024) (Douglas, King, Willett, JJ.)

BeckerTime modified and sold Rolex-branded watches by adding diamonds, aftermarket bezels, and bands not authorized by Rolex. Rolex sued BeckerTime for trademark infringement, seeking an injunction and disgorgement of profits. While the district court found that BeckerTime infringed Rolex’s trademark, it declined to order disgorgement because of BeckerTime’s laches defense. In the first appeal, the Fifth Circuit upheld the infringement finding, noting that BeckerTime’s modifications of diamonds and aftermarket bezels went beyond mere repairs and restoration. However, the Fifth Circuit partially modified the district court’s injunction and issued a limited remand to clarify certain language in the injunction. On remand, Rolex and BeckerTime agreed on revised language for that portion of the injunction, which the district court approved. The district court, however, went further by amending other sections of the injunction. This appeal followed.

Both parties agreed that the district court had exceeded its mandate. The amendments permitted BeckerTime to advertise and sell Rolex watches with customized dials under certain conditions, requiring disclosures and inscriptions reading “CUSTOMIZED BY BECKERTIME.” Rolex contended – and the Fifth Circuit agreed – that this language conflicted with the prohibition (in the injunction) of all non-genuine dials, including those bearing original Rolex trademarks.

The Fifth Circuit vacated the district court’s amended judgment and reinstated its prior judgment with modifications, incorporating its earlier decision and the parties’ stipulation.

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