5 Wentworth

Professional Career

Mr Burley commenced practice as a barrister in New South Wales in 1993. He has since developed a specialist practice in the intellectual property field, with particular emphasis on patents, trade marks (including passing off and trade practices), copyright and designs cases. He appears mainly in the Federal Court of Australia and also appears on a regular basis before hearing officers of IP Australia in their administrative jurisdiction associated with the registration of patents and trade marks.

Mr Burley has also regularly appeared in administrative law cases arising out of the application of the National Health Act.

In each year since taking silk in 2007, Mr Burley has been listed in the Australian Financial Review’s Guide to Australia’s Top Lawyers. Some of his recent appearances as lead counsel in the Federal and High Courts include; Apple Inc v Samsung Electronics (electronics, patent); Alphapharm v Wyeth Inc (pharmaceutical, patent); Austin Nichols & Co v Lodestar Anstalt (trade mark); Dynamic Supplies v Tonnex (Copyright, Trade Practices); Nick Scali v Super-A-Mart (trade practices) and Wake Forest University v Smith and Nephew (patent, pharmaceutical).

Selected Cases

Mr Burley has appeared in numerous first instance and appellate cases concerning intellectual property matters.

Patents

In the patent field his appearances in matters at first instance, in the full court of the Federal Court and the High Court include: Aktiebolaget Hassle v Alphapharm Pty Ltd (pharmaceutical), Lockwood Security Products Pty Ltd v Doric Secruity Products Pty Ltd No.1 and No. 2 (mechanical), Gambro Pty Ltd v Fresenius Medical Care Australia (biomedical), Apple Inc v Samsung Electronics (electronics), Apotex v Sanofi (pharmaceutical), Sigma Pharmaceuticals v Wyeth (pharmaceutical), and New England Biolabs v F Hoffman-la Roche (biotechnical).

Mr Burley also appeared in the first innovation patent case, Del North Pty Ltd,v Durapost (mechanical, innovation patent) and has since appeared at first instance, on appeal in the Full Court and (in 2012) in successfully resisting special leave to appeal to the High Court in Seafood Innovations v Bass (mechanical), another innovation patent case. Mr Burley appeared on appeal in Kimberly Clark v Multigate (medical) and in Wake Forest Universtity v Smith and Nephew. Other areas of technology concerning patents in which Mr Burley has appeared include electronics, gaming machines and engineering fields.

Trade Marks

In trade marks Mr Burley’s appearances include in the High Court in Health World Australia v Shin-Sun, appearing at first instance and on appeal and in the High Court in B P v Woolworths (first colour trade mark case), Kenman Kandy v Registrar of Trade Marks(first shape trade mark case), Woolworths v Registrar of Trade Marks, Le Cordon Bleu BV v Cordon Bleu International and Federal Treasury Sojuzplodoimport v Spirits International. He appeared in the first case concerning geographical indications under the Trade Marks Act (Objection by Rothbury Wines to the determination of a geographical indication) and appeared in the Full Court of the Federal Court in Austin Nichols & Co v Lodestar Anstalt (non-use).

Copyright and designs

In the field of copyright and registered designs, Mr Burley appeared in the High Court, the Full Court and at first instance in Nine Network Australia Pty Ltd v IceTV (compilation copyright), at trial and on appeal in Polo Lauren International v Ziliani (parallel imports, copyright, deisgns), Caroma Industries v Technicon Pty Ltd (registered designs) and at trial and on appeal in Dynamic Supplies v Tonnex International, the last of which was the first case in which a compilation copyright infringement allegation was upheld since the IceTV decision.

Trade Practices

In trade practices Mr Burley’s appearances include Nick Scali v Super A-Mart (misleading and deceptive conduct), Singtel Optus Pty Ltd v Vodaphone Pty Ltd (misleading and deceptive conduct), Dynamic Supplies v Tonnex International, Schutz DSL v VIP Plastic Packaging and Zetco Pty Ltd v Austworld.

Interlocutory Applications

Mr Burley’s practice routinely includes urgent interlocutory applications, examples of which include Eli Lilly v Interpharma Pty Ltd (pharmaceutical patent), Wyeth v Alphapharm (pharmaceutical patent) and Apple Inc v Samsung Electronics Co Ltd (computers).

Publications and Presentations

Mr Burley regularly speaks at conferences concerning intellectual property subjects.

Memberships

Mr Burley is a member of the Intellectual Property Committee of the Law Council of Australia. He is also a member of the Intellectual Property Society of Australia and New Zealand.