This process is known as parallel importing and the case has helped define the limits of using copyright law to prevent parallel imports in Australia.
Ralph Lauren accused Ziliani Holdings, owned by Adam Ziliani, of infringing its copyright by importing and selling clothing with the Ralph Lauren logo embroidered into it in Australia.
Ziliani argued that the embroidered logo was a label and was therefore exempt from copyright protection under Australia’s Copyright Act. Section 44(C) of the Act states that copyright in a “non-infringing accessory” to an article is not infringed by importing that article. One of the definitions in the law of an accessory is “a label affixed to, displayed on, incorporated into the surface of, or accompanying, the article”.
On Tuesday last week Judge Rares of the Federal Court of Australia decided that the embroidered version of Ralph Lauren’s logo was a label, stating:
“[a] natural and ordinary English meaning of the word ‘label’ includes a brand name, trade mark and the name by which a design or fashion house, and its product, such as ‘Polo’ and ‘Ralph Lauren’ and ‘Polo Ralph Lauren’, is generally known”.
This is the first time a court has ruled on the definition of a label in a copyright case. The ruling was hailed as a “welcome decision” by Campbell Thompson, a partner of Freehills in Melbourne.
But brand owners who want to prevent so-called grey imports can take heart from the fact that the decision only applies to embroidered logos. The judgment states that in June 2007 Ralph Lauren and Ziliani Holdings agreed that Ziliani had infringed copyright by selling clothes in which the polo player logo was offered in a repeated pattern “which was printed, and not embossed, woven or stitched”.
Darron Saltzman, a partner for Davies Collison Cave, which acted for Ralph Lauren in the case, told Managing IP he was “surprised” by the decision. Ralph Lauren has 21 days from the date of the judgment in which to appeal.
Spanko Soulos & Co advised Ziliani Holdings.
The decision is available online here.
