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What do you need to do?Carefully consider all options when trying to prevent the parallel importation of goods that feature your famous brand or logo.
Peter Selvay
Solicitor
Robert Cooper
Partner
T +61 3 9643 4405
Sydney
Scott Bouvier
Maurice Gonsalves
Patrick Gunning
Kim O'Connell
Katrina Rathie
Melbourne
Natalie Hickey
Cheng Lim
Wayne McMaster
Brisbane
John Swinson
A decision handed down by the Federal Court of Australia earlier this week demonstrates the many difficulties associated with trying to prevent the parallel importation of goods under the Copyright Act.
Lessons learnt
The case demonstrates that avenues such as misleading and deceptive conduct and passing off remain more likely to be effective in preventing parallel importation into Australia.
Background - importation of Ralph Lauren garments
In The Polo/Lauren Company v Ziliani Holdings [2008] FCA 49, Ziliani (the Respondent) purchased authentic, but heavily discounted, Ralph Lauren garments in the United States, and imported them for sale into Australia.
Polo/Lauren, the Applicant and assignee of copyright in the famous Ralph Lauren 'polo player logo' in Australia, alleged that Zilliani had infringed copyright by importing, without permission, garments into Australia which bore the polo player logo.
Defences to infringement - sections 44C and 77
Ziliani successfully relied upon two discrete (and complicated) defences to copyright infringement under the Copyright Act.
Firstly, the Court held that the polo player logo was a "non-infringing accessory" within the meaning of section 44C of the Copyright Act because it was a "label" embroidered (with the consent of the copyright owner in the United States) onto the imported garments. This meant that the importation of those garments did not infringe copyright.
Secondly, the Court held that the polo player logo was a "corresponding design" within the meaning of section 77 of the Copyright Act, which could be imported without infringing copyright, because it was a "shape or configuration" (as opposed to a "feature of pattern or ornamentation") embroidered in the garments.
In determining this case, the Court was clearly concerned to limit the scope and role of copyright law. In particular, the Court was concerned to prevent the "inappropriate use of copyright" to provide "exclusive market access" to distributors. These policy concerns are reflected in the outcome of the case.
Questions or further information
If you would like to know more about this decision, please contact Robert Cooper on (03) 9643 4405 or Peter Selvay on (03) 9643 4363.
A copy of the decision can be accessed here.