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Mark Metzeling
principal lawyer, commercial
meet Markabout Mark
about Mark
Mark’s career began with an Applied Science Biochemistry degree before his move into intellectual property law. His scientific background honed his attention to detail and curiosity that now helps him achieve great results for his clients. It also enables him to understand, communicate and innovate with clients in the information, communications and technology, manufacturing, life sciences, pharmaceutical and medical industries.
Recognised as a leading lawyer in the Australian intellectual property and trade mark landscape, Mark’s clients vary from start-ups to national subsidiaries of global corporations.
Mark advises on the searching, availability and registrability of new trade marks and designs. He is dedicated to securing the registration of Australian, New Zealand and international trade mark and designs applications and has significant experience in commercialising, policing and enforcing all intellectual property rights, both nationally and internationally.
Mark has a Masters of Intellectual Property Law and is registered as a trade marks attorney in Australia and New Zealand.
“A big thank you for all of your help in our entry to Australia. This was a big deal for us and a transaction that was more than a year in the making. You were great to work with and were invaluable in getting this closed on terms we were very happy with. We particularly appreciated your responsiveness, expertise, practical advice and all of your hard work.”
Jason Bauman, Corporate Counsel, Franchising, Planet Fitness
Macpherson Kelley in Queensland is a pre-qualified Local Buy supplier of Legal Services (LB311).
Areas of Expertise
- Anti-counterfeiting strategies
- Artificial Intelligence (AI), including Artificial General Intelligence (AGI)
- Brand and technology protection
- Consumer Data Rights (CDR)
- Data Breaches
- Freedom to operate advice
- Intellectual Property (copyright, trade marks, design and patent) commercialisation and enforcement
- Intellectual property strategy
- Privacy
- Securing trade mark and design rights
- International trade
- Advertising and labelling law
- Competition law and ACCC issues
- Consumer law
- Information technology and IT agreements
- Product standards, safety and health
industries
additional qualifications
registered trade marks attorney
awards
Recommended, world trademark review
Patent and Trade Mark Star, Managing IP – IP stars | 2022, 2023
Trade Mark Leader, world IP review
publications
genuine use of trade marks (editions 1 and 2) published by AIPPI/Kluwer (australian chapter, contributing author)
trade mark practice published by thomson reuters (australian chapter, contributing author)
leadership positions
business mentor, queensland government ‘mentoring for growth (M4G)’
committee member, aippi trademarks standing committee
committee member, aippi commercialisation of intellectual property standing committee
recent experience
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salumi manufacturer logo protection
Mark helped Australian manufacturer Borgo Salumi successfully register the logo it has used for 30 years, despite an attempt by Italian multinational food giant AIA Agricola Italiana Alimentare to stop the family business using it. When Borgo attempted to register the company’s distinctive star-shaped logo as a trade mark, the Italian food giant argued consumers could mistake the Borgo logo for their familiar Negroni logo, also star shaped. The Australian Trade Marks office found consumers could not mistake the two logos because the different business names featured in the logos meaning they were not similar.
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dial before you dig (qld) business expansion and protection
Mark successfully obtained registration of a certified trade mark for this national referral service, without objections from the ACCC or the Australian Trade Marks Office. This was a complex matter because the licensing extended to programs in New Zealand, the UK and USA, making the certification process multijurisdictional. Mark ensured the rules and procedures for granting certification were protected through copyright in the USA.
