A recent decision of the Federal Court of Australia has re-ignited the debate concerning parallel importing of goods there.  While brand owners in Europe benefit from “fortress Europe”, in Australia parallel importing seems to be more of a grey area.

The case in question, The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd, concerned the importation of genuine Ralph Lauren items from the USA for sale in Australia.  The case hinged on whether the importation of shirts, sweaters and other items bearing Ralph Lauren’s polo player logo constituted an infringement of Australian copyright law.  It was held that the embroidered logo on the items constituted a “label” and, as such, was a “non-infringing accessory”; accordingly the importation of the items in question was not an infringement of Ralph Lauren’s copyright.
Interestingly, Honourable Justice Rares commented that “the polo player logo conveys to anyone who looks at the garment a message of its provenance: ie, it is a product of the Ralph Lauren design or fashion house or ‘label’”.  The Australian Court considered that use of copyright law to prevent importation of goods bearing marks that merely served to guarantee the origin of those goods was an “inappropriate use” of the relevant legislation.

The situation would be very different here in the UK.  In the recent Court of Appeal case of Mastercigars Direct Ltd v Hunters & Frankau Ltd, Lord Justice Jacob criticised the policy of fortress Europe whereby “even though the trade mark tells the truth, its use can be prevented without [the brand owner’s] consent” and claimed the rule to be “self-evidently rather anti-competitive and protectionist”.  However, fortress Europe remains the current position and can be an extremely valuable tool for brand owners trying to prevent the flooding of the European market with cheaper foreign (yet genuine) imports.

© Davenport Lyons 2008. All rights reserved.
This document reflects the law and practice as at March 2008. It is general in nature, and does not purport in any way to be comprehensive or a substitute for specialist legal advice in individual circumstances.