In the recent decision of Polo/Lauren Company LP v Ziliani Holdings Pty Ltd [2008] FCA 49, the Federal Court has closed off the capability of trade mark owners to shut down parallel importation of a genuine product using our Copyright Act.

Ziliani purchased genuine out-of-season clothing bearing Polo/Ralph Lauren's polo player logo at heavily discounted prices in the US and imported the clothing into Australia for retail sale. Polo/Ralph Lauren attempted to shut down Ziliani's actions by arguing that the importation amounted to an infringement of their copyright in the polo player logo.

Both Australia's Trade Mark and Copyright Acts had been amended to provide for a specific exemption to infringement in this case in that the Act provided, for example: "The copyright in a work a copy of which is, or is on, or embodied in, a non-infringing accessory to an article is not infringed by importing the accessory with the article". The judge found that Ziliani's conduct came directly under this provision and an exemption applied.

The judgment is one of the first cases to deal with 1998 legislative amendments which were designed to free up the ability of independent third parties to "parallel import" products into Australia. The judge appears to have effectively given teeth to the amendments.

Peter Treloar

Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000
Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
email@shelstonip.com  
www.shelstonip.com