Odette Gourley




Odette has, for more than 20 years as a partner, advised on and conducted litigation covering intellectual property, competition and consumer law, and regulatory law. This litigation has included landmark cases that have redefined areas of trade mark and patent law. Odette is also an expert on trade mark registration and portfolio management including clearance searches and advice, filing and prosecution of applications, portfolio management and oppositions.

Across the full range of IP (patents, trade marks, copyright, designs, trade secrets, passing off etc), Odette has conducted major cases for leading companies in IP-driven sectors, including pharmaceutical, medical devices and biotechnology, high technology, fast moving consumer goods, food and beverages, manufacturing and services including media and communications, R&D, financial services, advertising and market research.

Odette acts in significant competition and consumer law litigation including achieving a rare dismissal of ACCC anti-trust penalty and injunction proceedings in the marketing services industry. She advises on competition and consumer law compliance and training, clears advertising and marketing conduct, and acts in contested advertising and marketing disputes before industry bodies and the courts, relating to a wide range of goods and services.

Odette has expertise in all areas of regulatory and administrative law and is also an expert in privacy and data protection, freedom of information, product liability risk and recall, trade descriptions, the specific regulatory schemes for a number of industries including in the human health, animal and plant sciences, and consumer products and related regulation affecting manufacturers and importers.

Odette is a part of the International Trademark Association Enforcement committee, an invited speaker at the Intellectual Property Society of Australia and New Zealand, and a panellist and chair at the Advertising Industry Jury.

Key deals

E&J Gallo Winery – leading High Court authority on trade mark use

Acting for a US privately-owned wine company against a beer company that used our client's registered trade mark without permission. The case raised important issues in relation to infringement and non-use cancellation. After adverse court decisions at first instance and on appeal, an appeal to the High Court of Australia secured a unanimous victory in favour of our client. The case is now the leading authority on the nature of trade mark use under Australian law.

Winnebago Industries, Inc – recovery of US owner’s brand 30 years after commencement of unauthorised use in Australia

Acting for a US company to secure recovery of its Winnebago brand, 30 years after the brand was adopted without authorisation by an Australian company. Substantial damages were awarded by the Federal Court, and subsequently a satisfactory settlement was achieved. The case established the availability of damages for IP infringement on the basis of the user principle, eponymously called “Winnebago damages".

AstraZeneca – patent claims for pharmaceutical composition formulations and application of obviousness law principles

Acting for a patentee the validity of whose formulation patent for a leading anti-ulcer drug was challenged by intending generic entrants. After unsuccessful outcomes at first instance and on appeal, our client was successful on further appeal to the High Court. The case is one of the leading authorities on the criterion of obviousness/lack of inventive step under Australian patent law.

Lyoness – dismissal of pyramid scheme penalty and injunction proceedings

Following s155 Notices, search and seizure (“dawn raid”) action, director compulsory examination and vigorously contested injunction and penalty proceedings, the claim against Odette’s client was wholly dismissed with costs.

Johnson & Johnson v Unilever – substantiation of marketing claims based on consumer in use research

In one of few contested cases to reach a decided judgment in the Courts on market research methodology, the advertiser’s consumer research panel was determined to meet adequate standards for substantiation methodology under Australian law. The advertisement in question conveyed, however, a message exceeding the substantiation provided by the in-use test, demonstrating the importance of determining the message conveyed by the advertisement to consumers in context.

Angiotech v Conor Medsystems – challenge to patent entitlement prompts law change

Acting in Federal Court proceedings including on appeal to the Full Court, relating to a patent for a medical device (drug eluting stents). The challenge to the patentee’s claimed entitlement back to the named inventors prompted a statutory law change recognising that orderly title changes post patent grant are not, by that fact alone, necessarily disentitling.

Anchorage Capital Partners – leading authority on service trade marks

Few decided cases concern registered trade marks for services; in this case, two private equity and investment management groups contested ownership and validity of registered trade marks for financial services.