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level 16, 324 queen st,
brisbane qld 4000
+61 7 3235 0400

dandenong

40-42 scott st,
dandenong vic 3175
+61 3 9794 2600

melbourne

level 7, 600 bourke st,
melbourne vic 3000
+61 3 8615 9900

sydney

level 21, 20 bond st,
sydney nsw 2000
+61 2 8298 9533

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Mark Metzeling

special counsel, commercial

meet 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 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

Areas of Expertise

anti-counterfeiting strategies
brand and technology protection
freedom to operate advice
intellectual property (copyright, trade marks, design and patent) commercialisation and enforcement
intellectual property strategy
securing trade mark and design rights

industries

foreign owned subsidiaries
information technology and telecommunications

additional qualifications

registered trade marks attorney

awards

leading lawyer, world trade mark review, 2018 and 2019

leadership positions

committee member, aippi trade marks standing committee
standing committee, commercialisation of intellectual property
australian representative, trade mark committee of the association of intellectual property firms

recent experience

  • 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.

  • 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.