Odette Gourley

Partner. Sydney.

+61 2 9210 6066 |   |  vCard
Odette Gourley

At the top of her game, Odette is not only leading the field, she’s changing the rules.

With more than 20 years’ experience in intellectual property, regulatory law and commercial litigation, Odette has acted in landmark cases that have redefined distinct areas of trademark and patent law.

Her track record includes major cases for leading companies in IP-driven sectors, including pharmaceutical, medical devices and biotechnology, fast moving consumer goods, food and beverages, manufacturing and services including media and communications, R&D, financial services, advertising and market research.

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At the top of her game, Odette is not only leading the field, she’s changing the rules.

With more than 20 years’ experience in intellectual property, regulatory law and commercial litigation, Odette has acted in landmark cases that have redefined distinct areas of trademark and patent law.

Her track record includes major cases for leading companies in IP-driven sectors, including pharmaceutical, medical devices and biotechnology, fast moving consumer goods, food and beverages, manufacturing and services including media and communications, R&D, financial services, advertising and market research.

In addition to her prowess as a litigator, Odette has expertise in all areas of regulatory and administrative law and is an expert in brand strategy, trademark portfolio management, marketing and advertising law, and product liability issues affecting regulated products.

With a unique and deep understanding of the commercial drivers steering innovation, Odette assists her clients to realise opportunity.

“Smart, direct and effective. She knows her stuff - and, more importantly, how to win a case” World Trademark Review
Odette Gourley

Odette's Expertise

  • Landmark case: E&J Gallo v Lion Nathan Australia Acted for the successful applicant in this High Court case that re-established the orthodox position that trade mark use requires use as a badge of origin with the result that the trade marks of international brand owners are used when goods are sold to Australian consumers, even after circulation in international distribution channels and imported into Australia by a retailer not known to the brand owner.
  • International litigation: Aktiebolaget Hassle v Alphapharm Pty Ltd Acted as the team leader for the patentee in what became a landmark case in patent law. On appeal, the High Court reversed a judgment and, in so doing, re-set the standard for inventiveness of drug formulation patents in a decision of fundamental importance to global pharmaceutical companies.
  • Marketing law appellate court guidance: Johnson and Johnson v Unilever In this important decision for FMCG, the Federal Court of Australia ruled on challenges made by Unilever on superiority claims for tanning body moisturiser products first launched by Johnson & Johnson. The judgment provides guidance to advertisers and marketers on the standards to be applied in market research to justify comparative superiority claims of that kind for consumer products.
  • Global brands: Winnebago v Knott Investments Odette acted for the famous American manufacturer of recreational vehicles Winnebago Industries Inc in recovering its brand Winnebago more than 30 years after unauthorised use first started in Australia. The case is now an important authority on various aspects of IP law including the availability of damages for an infringer’s use of the owner’s IP on a notional licence basis, even where the IP owner would never have granted a licence.

Odette's Leadership

  • Intellectual Property Society of Australia and New Zealand Member and Invited Speaker
  • Licensing Executive Society of Australia and New Zealand Member and Invited Speaker
  • International Trademark Association Member, Committee Member and Invited Speaker
  • Australian Corporate Lawyers Association Member
  • Copyright Society of Australia Member
  • Australian Information Industry Association Member
  • Law Society of New South Wales Member
  • Australian Self Medication Industry Association Member
  • Law Council of Australia Member
  • College of Law Invited Speaker
  • University of New South Wales Invited Speaker
  • Obesity Australia Limited Honorary Adviser

What others say

  • “Top 250 Women in IP” IP Stars, 2016
  • “Best Lawyer - Life Sciences” Best Lawyers Peer Review, 2015-2017
  • “Best Lawyer - Litigation” Best Lawyers Peer Review, 2014-2017
  • “Best Lawyer - Biotechnology” Best Lawyers Peer Review, 2013-2017
  • “Best Lawyer - Intellectual Property” Best Lawyers Peer Review, 2008-2017
  • “An established figure in the IP sphere, boasting a particular depth of expertise in patents and trade marks
    Chambers Asia Pacific Guide, 2016
  • “Odette Gourley is another mover and shaker in the antipodean IP world. ” World Trademark Review, 2016
  • “Leading Lawyer - Intellectual Property” Asia Pacific Legal 500, 2014-2017
  • “She is pragmatic, down to earth and really efficient” Chambers Global Guide, 2015
  • “Leading Lawyer - Intellectual Property: Trade Mark & Copyright and Intellectual Property: Patents” Chambers Asia Pacific and Global Guides, 2008-2015
  • “Strong advertising law expertise” Asia Pacific Legal 500, 2015
  • “Trusted adviser...Outstanding at anticipating a client’s needs and coming up with creative ways to achieve the client’s objectives” World Trade Mark Review 2015
  • “Lawyer of the Year - Biotechnology - Sydney” Best Lawyers Peer Review, 2014
  • “Sources single Odette out as 'an expert in IP,' and are impressed with her 'good strategic advice' and practical approach” Chambers Global Guide, 2014
  • “Odette Gourley’s track record marks her out as a game-changer when it comes to demanding disputes. Her blend of contentious and brand strategy, regulatory and administrative law expertise resonates with top multinationals.” World Trademark Review, 2014
  • “Brilliant operator...takes on many of the toughest suits - and wins” World Trademark Review, 2013
  • “Intelligent and experienced and clients respect her skills as both a litigator and an adviser and as bringing a breath of fresh air to client relationships” Chambers Global Guide, 2012
  • “Best Lawyer - Intellectual Property Litigation” Euromoney Women in Business Law Awards, 2011 & 2012
  • “Odette Gourley has an 'impressive breath of knowledge'” Asia Pacific Legal 500, 2017

Odette's Thinking

  • Avoid social media folly: Seafolly v Madden case study and our top tips 5 April 2013
    What happens when a company vents their frustration about a competitor on Facebook? How does the law respond? Learnings from Seafolly v Madden.
    More
  • Green marketing: a win-win for business? 18 January 2012
    The introduction of the carbon price in Australia, coupled with the Australian Consumer Law replacing the Trade Practices Act, has businesses reconsidering their approach to green marketing. Find out how you can minimise your risk.
    More
  • Protect your brand on the internet 6 October 2011
    Who is in charge on the internet? Mostly, it seems it’s the consumer. So how do you protect your brand when it’s in the hands of the consumer and the consumer is everywhere?
    More
  • Registered Designs: What is the appropriate form of order for injunctive relief? 1 September 2016
    Cases in relation to registered design infringement are relatively rare. In a recent decision, in which we acted for the successful registered design owner, the Court extended the injunctive relief to articles the design of which was substantially similar in impression to the registered design, by reference to the analogy of the form of injunction in trade mark cases.
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  • Experimental evidence in patent cases: Discovery not available for experiments on matters no longer 26 August 2016
    In a recent decision concerning experimental evidence in a patent case, where a party had put forward to the other party preliminary experimental results, the Court concluded that the other party was not entitled to have discovery of experimental results also conducted but relating to matters no longer in issue in the proceedings.
    More
  • The power of architect plan copyright 10 August 2015
    In an interesting decision concerning architect plan copyright, a court ordered modifications to a newly built house because of copying by the builder and the builder’s client of the claimant’s house. Later, damages were also awarded
    More