Robert Burrell

Biography

Robert holds the Professorship of Intellectual Property and Information Technology Law. He also holds a visiting professorial position at Melbourne Law School. Robert’s previous academic positions include posts at the Australian National University and King’s College London. He has held visiting positions at the University of Cambridge, the Benjamin N. Cardozo School of Law in New York and the National University of Singapore.

Robert teaches and researches across all areas of intellectual property law. He is the author, with Allison Coleman, of Copyright Exceptions: The Digital Impact (Cambridge University Press, 2005) and, with Michael Handler, of Australian Trade Mark Law (Oxford University Press, 2010; 2nd ed. 2016). His most recent work includes an investigation of the role of rewards as an alternative to the patent system in the eighteenth and nineteenth centuries, and an interdisciplinary project with a team of psychologists that tests trade mark law’s assumptions about consumers.

His work has been cited by the High Court of Australia, the Federal Court of Australia, the Supreme Court of New Zealand, the Court of Appeal of England and Wales and in an Opinion of an Advocate General to the European Court of Justice.

Outside of academia, Robert has spent many years working as a consultant to boutique Australian firms and, in particular, has substantial experience in litigation before the Australian Trade Marks Office.

Publications

Recent additions

Robert Burrell and M. Handler, 'Zombie Marks Redux: Is Australia Safe from the New Zealand Variant?' (2022) 32 Australian Intellectual Property Journal (forthcoming)
Robert Burrell and C. Kelly, 'Innovation Policy and Chronic Emergencies' (2022) Vanderbilt Journal of Entertainment and Technology Law (JETLaw) 102
Robert Burrell, 'The Changing Judicial Politics of Copyright Exceptions in the UK' in Shyamkrishna Balganesh, Ng-Loy Wee Loon and Haochen Sun (eds), The Cambridge Handbook of Copyright Limitations and Exceptions (CUP 2021)

DOI: 10.1017/9781108671101
ISBN: 978-1-108-48304-9

Journal Article (14)

Robert Burrell and C. Kelly, 'Innovation Policy and Chronic Emergencies' (2022) Vanderbilt Journal of Entertainment and Technology Law (JETLaw) 102

Robert Burrell and M. Handler, 'Zombie Marks Redux: Is Australia Safe from the New Zealand Variant?' (2022) 32 Australian Intellectual Property Journal (forthcoming)

M. Handler and Robert Burrell, 'Zombie Marks Invade New Zealand! How Scared Should the Rest of the World Be?' (2021) Oxford University Commonwealth Law Journal 275

Robert Burrell and Catherine Kelly, 'The COVID-19 pandemic and the challenge for innovation policy' (2020) 71 Northern Ireland Legal Quarterly 89

Robert Burrell and Catherine Kelly, 'Myths of the Medical Methods Exclusion: medicine and patents in nineteenth century Britain' (2018) 38(4) Legal Studies 607

DOI: https://doi.org/10.1017/lst.2017.21

This paper explores the interaction of British medical practitioners with the nascent intellectual property system in the nineteenth century. It challenges the generally accepted view that throughout the nineteenth century there was a settled or professionally agreed hostility to patenting. It demonstrates that medical practitioners made more substantial use of the patent system and related forms of protection than has previously been recognised. Nevertheless, the rate of patenting remained lower than in other fields of technical endeavour, but this can largely be explained by the public nature of medical practice during this period. This paper therefore seeks to retell the history of the exclusion of medical methods from patent protection, an exclusion whose history has produced a substantial body of scholarship. However, its aims go beyond this in that it also seeks to illuminate how medical practitioners engaged with the broader political and policy landscape in order to secure financial remuneration for their inventions. Through an exploration of how prominent doctors interacted with Parliament around claims for a financial reward, it demonstrates that doctors sought to use reputational advantage to leverage financial success and the important role that Parliament could play in that process.

ISBN: 0261-3875

Robert Burrell and Kimberlee Weatherall, 'Towards a New Relationship Between Trade Mark Law and Psychology ' (2018) 71(1) Current Legal Problems 87

DOI: https://doi.org/10.1093/clp/cuy001

Trade mark law and cognitive psychology are both concerned with establishing the mental states of consumers: in theory then we might expect these disciplines to have a close relationship, and to be engaged in ongoing dialogue. This is not the case and on further examination, real difficulties emerge, because of trade mark law’s registration system. It is not simple to reconcile the goals, and the philosophical foundations, of these two disciplines. This article makes the argument that insights from psychology can play an important role in trade mark law, but for that to happen, we need to move away from the idea that insights from psychology are only useful to decide particular disputes before the courts. A better approach is to test trade mark law at a higher level of abstraction: to test trade mark law's assumptions about how consumers process information. At this level cognitive psychology can inform trade mark law, without disrupting the registration system.

ISBN: 0070-1998

J. Burt, M. Humphreys, S. Kelly and Robert Burrell, 'Brand Name Confusion: Subjective and objective measures of orthographic similarity' (2017) 23(3) Journal of Experimental Psychology: Applied 320

DOI: 10.1037/xap0000127

Determining brand name similarity is vital in areas of trademark registration and brand confusion. Students rated the orthographic (spelling) similarity of word pairs (Experiments 1, 2, and 4) and brand name pairs (Experiment 5). Similarity ratings were consistently higher when words shared beginnings rather than endings, whereas shared pronunciation of the stressed vowel had small and less consistent effects on ratings. In Experiment 3 a behavioral task confirmed the similarity of shared beginnings in lexical processing. Specifically, in a task requiring participants to decide whether 2 words presented in the clear (a probe and a later target) were the same or different, a masked prime word preceding the target shortened response latencies if it shared its initial 3 letters with the target. The ratings of students for word and brand name pairs were strongly predicted by metrics of orthographic similarity from the visual word identification literature based on the number of shared letters and their relative positions. The results indicate a potential use for orthographic metrics in brand name registration and trademark law. (PsycINFO Database Record.

ISBN: 1076-898X

M. Humphreys, J. Burt, S. Kelly and Robert Burrell, 'How Important is the Name in Predicting False Recognition for Lookalike Brands?' (2017) 23(3) Psychology, Public Policy, and Law 381

DOI: http://dx.doi.org/10.1037/law0000133

ISBN: 1076-8971

M. Humphreys, J. Burt, S. Kelly and Robert Burrell, 'Recognition in Context: Implications for trade mark law.' (2017) 24(5) Psychonomic Bulletin and Review 1665

DOI: 10.3758/s13423-017-1235-6

Context effects in recognition have played a major role in evaluating theories of recognition. Understanding how context impacts recognition is also important for making sound trade mark law. Consumers attempting to discriminate between the brand they are looking for and a look-alike product often have to differentiate products which share a great deal of common context: positioning on the supermarket shelf, the type of store, aspects of the packaging, or brand claims. Trade mark and related laws aim to protect brands and reduce consumer confusion, but courts assessing allegations of trade mark infringement often lack careful empirical evidence concerning the impact of brand and context similarity, and, in the absence of such evidence, make assumptions about how consumers respond to brands that downplay the importance of context and focus on the similarity of registered marks. The experiments reported in this paper aimed to test certain common assumptions in trade mark law, providing evidence that shared context can cause mistakes even where brand similarity is low.

Robert Burrell and Michael Handler, 'A Requiem for Champagne Heidsieck: Trade mark use and parallel importation' (2016) 29(3) Australian Intellectual Property Journal 110

The "Champagne Heidsieck rule", under which the importation and sale of legitimate branded goods has been held not to involve use as a trade mark, has historically provided an important mechanism to facilitate the parallel importation of trade marked products in Australia. However, following a number of recent Federal Court decisions, the rule has been written out of Australian law. This means that parallel importers and sellers of second-hand goods need to rely on the problematic defence contained in s 123 of the Trade Marks Act to avoid liability. This article traces the history and reception of the Champagne Heidsieck rule in Australia, and argues that the courts have taken a wrong turn by doing away with the rule, in part based on a misunderstanding of the history of the role of confusion in registered trade mark law. After discussing the numerous problems with the current s 123 defence, we consider how the Australian law on parallel importation and sale of second-hand goods could be improved, concluding that the best option is to resurrect the Champagne Heidsieck rule.

Robert Burrell and Michael Handler, 'Reputation in European trade mark law: a re-examination' (2016) 17(1) ERA Forum 85

Under the harmonised European trade mark regime marks with a reputation enjoy expanded protection. This article casts doubt on whether this ‘reputational trigger’ can be justified. It then explores some difficult operational questions about the way the reputation threshold works in cases where the mark enjoys fame only in niche markets or in a limited geographical area, the aim being to illustrate further why reputation is an unsatisfactory trigger for a different type of trade mark protection. Finally, it looks at some of the evidential difficulties involved in adjudicating disputes in which expanded protection is being claimed. It concludes by suggesting that if the evidential problems we identify were tackled the reputation threshold could be abandoned.

ISBN: 1612-3093

Robert Burrell and Catherine Kelly , 'Parliamentary Rewards and The Evolution of the Patent System' (2015) 74(3) Cambridge Law Journal 423

DOI: https://doi.org/10.1017/S0008197315000690

This article examines the impact on the patent system of rewards for innovation across the eighteenth and early nineteenth centuries. During this period, Parliament would regularly grant rewards to inventors, with many of these rewards being set out in legislation. This legislation provided Parliament with the opportunity to promote a model of state support for inventors: a model that made public disclosure of the invention a precondition for assistance. This had important implications for patent law, in particular, in helping to develop the role of the patent specification and the doctrine of sufficiency of disclosure. In this way, the reward system helped establish the framework under which the state would provide support for inventors. Simultaneously, however, the reward system created a space in which inventors would have to do more than meet the minimum requirement of public disclosure. Rewards allowed the state to distinguish between different classes of inventor and to make special provision for particularly worthy individuals. In this way, the reward system recognised the contribution of the “heroic inventor”, whilst leaving the core of the patent system undisturbed.

ISBN: 0008-1973

Robert Burrell and Catherine Kelly, 'Public Rewards and Innovation Policy: Lessons from the Eighteenth and Early Nineteenth Centuries' (2014) 77(6) Modern Law Review 858

DOI: https://doi.org/10.1111/1468-2230.12095

There has been renewed interest in recent years in using prizes and rewards to promote innovation. History has played a central role in public debates in the UK about the merits of such interventions, with the Longitude Prize 2014 being self‐consciously modelled on its eighteenth century precursor. Similarly, historical case studies have been used extensively in the scholarly literature in this area. However, it is striking that there has been little engagement with parliament's role generally in rewarding inventors in the eighteenth and early nineteenth centuries and how this formed part of a broader system of rewards. The article explores how this system operated and demonstrates that it formed an established part of the legal landscape for many decades. It considers the extent to which a more complete understanding of the historical use of prizes and rewards during the key period of Britain's industrialisation might inform current debates.

Robert Burrell and Michael Handler, 'Reconciling Use-Based and Registration-Based Rights within The Trade Mark System: What the problems with section 58A of the Trade Marks Act tell us' (2014) 42(1) Federal Law Review 91

Reconciling registration and use as mechanisms by which rights can be acquired in a trade mark is inherently difficult. The federal Australian registered trade mark system is built around a hybrid of a registration-based and a use-based model of protection. While it is perfectly possible to defend such a dual model, the two means of acquiring trade mark rights rest on very different logics. In the event of a conflict between a registered mark and a mark that has been used for some time the question of which should take precedence is not necessarily capable of being determined a priori. The relationship between registration and use is mediated by a number of provisions of the Trade Marks Act 1995 (Cth). In this article we focus on one such provision, s 58A, a relatively recent addition to the legal landscape. Through a close analysis of s 58A, focusing on court decisions and decisions of the Trade Marks Office that have applied this provision, we demonstrate that s 58A has the potential to operate in an entirely unsatisfactory manner. We then use problems with s 58A as a vehicle to explore the relationship between use-based and registration-based rights generally, suggesting a new conceptual framework that might serve to guide future discussion of how the relationship between registration and use ought to be mediated.

Chapter (7)

Robert Burrell and M. Handler, '(Re)claiming trade mark protection ' in G. Dinwoodie and M. Janis (eds), Research Handbook on Trademark Law Reform (Edward Elgar 2021)

Robert Burrell, 'The Changing Judicial Politics of Copyright Exceptions in the UK' in Shyamkrishna Balganesh, Ng-Loy Wee Loon and Haochen Sun (eds), The Cambridge Handbook of Copyright Limitations and Exceptions (CUP 2021)

DOI: 10.1017/9781108671101

ISBN: 978-1-108-48304-9

Robert Burrell, 'Is Trade Mark Law Fit for Purpose? ' in A. Johnston and L. Talbot (eds), Great Debates in Commercial and Corporate Law (Macmillan 2020)

Robert Burrell and Michael Handler, 'Keyword Advertising and Actionable Consumer Confusion' in T. Aplin (ed), Research Handbook on Intellectual Property and Digital Technologies (Edward Elgar 2020)

Robert Burrell, 'Rethinking the Relationship between Registered and Unregistered Trade Marks' in G Austin et al. (ed), Across Intellectual Property: Essays in Honour of Sam Ricketson (CUP 2020)

Robert Burrell and Michael Handler, 'Trademark Transactions in Common Law Countries: Liberalisation and Its Limits' in I. Calboli and J. Ginsburg (eds), Cambridge Handbook of International and Comparative Trademark Law (CUP 2020)

ISBN: 978-1-108-42309-0

Robert Burrell, 'Unpacking Constitutional Protection for Trade Marks: The Plain Packaging Disputes before National Courts ' in C. Heath and A. Kamperman Sanders (eds), Intellectual Property and International Dispute Resolution (Kluwer 2019)