A recent Federal Court case involving well known fashion house Polo Ralph Lauren demonstrates the difficulties in attempting to use intellectual property infringement actions to prevent parallel importation.
Parallel importation
Parallel importation occurs where a party imports genuine (non counterfeit) goods from one country for resale into another country without obtaining consent to the importation from the owner of intellectual property in those goods.
Parallel importers can circumvent the existing supply and distribution chains for goods and are often able to acquire goods at significantly discounted prices. Consequently parallel importation is a controversial issue for everyone from intellectual property owners, licencees and distributors to retailers and consumers.
The Polo Ralph Lauren case
In Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd (2008) FCA 49, a retailer imported items of genuine Polo Ralph Lauren clothing from the United States for resale at its stores in Sydney. A number of these items of clothing featured Ralph Lauren’s well known ‘polo player’ logo (the Polo logo).
Ralph Lauren commenced court proceedings against the retailer claiming that the importation of clothing featuring the Polo logo amounted to an infringement of Ralph Lauren’s copyright in the Polo logo.
However the retailer was able to successfully defend the action on the grounds that Polo logo had been applied to the clothing with Ralph Lauren’s consent. The court also held that the retailer would have established a separate defence under the complex copyright and design overlap provisions of the Copyright Act 1968 (Cth).
The Lessons
Recent legislative amendments have made it more difficult for intellectual property owners to use intellectual property infringement actions to prevent parallel importation. This case demonstrates some of the practical implications of these legislative amendments.
However the legality of parallel importation is still a complex area and anyone involved in or concerned about parallel importation should contact
Ben Hamilton or
James Deady.
For further information, please contact: