If you've ever travelled and shopped, you'll
know that it is often cheaper to buy that irresistible Chanel
handbag overseas and bring it back with you, than it is to buy
it at home. But what's stopping a wholesaler or
retailer from doing the same thing in bulk?
The Polo/Ralph Lauren Company v Ziliani Holdings
In the recent case of The Polo/Ralph Lauren Company v
Ziliani Holdings, Ziliani travelled to the US and purchased
genuine Polo/Ralph Lauren clothing bearing the famous
embroidered polo player logo, which he intended for resale in
Australia. The Polo/Ralph Lauren company, as copyright owner,
had not licensed or consented to the importation or sale of the
clothing bearing the logo.
The company commenced proceedings against Ziliani, alleging
that it had infringed the copyright in the logo, a well
established argument which, prior to 2000, had been extensively
relied upon to prevent parallel importation of goods into
The non-infringing accessory defence
As part of its defence, Ziliani claimed that the polo player
logo embroidered on the clothing was a 'label'
and, therefore, a 'non-infringing accessory' -
the importation of which escaped liability under the Copyright
The defence, introduced in 2000, permits the commercial
importation of 'non-infringing accessories'
with articles, even if those accessories are copyright
protected. Relevantly, a non-infringing accessory includes
copyright protected labels affixed to, displayed on, or
incorporated into the surface of an article as long as the
labels were made in an authorised country and with the consent
of the copyright owner.
Although it had been made in an authorised country and with
the consent of the copyright owner, the question before the
court was whether the embroidered polo player logo, itself,
could constitute a 'label' within the meaning
of the Act. Polo argued that it wasn't just a label.
The court held that it was, and the claim against Ziliani
Some important issues
The Polo case underlines the reality that the owners of
designer labels don't have the legal means they once
had to protect their local monopolies. Polo or Chanel can
exclusively license the sale of their brands in Australia, but
they cannot use the fact that they own the copyright in their
distinctive logos as a way of preventing the importation by
others of genuine articles.
From the consumer's point of view, that has to be a
t +61 2 9931 4864
t +61 2 9931 4805
t +61 2 9931 4789
t +61 7 3114 0146
t +61 7 3231 1507
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should
be sought about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).