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Carl Steele

Partner and Head of Intellectual Property

Biography

Carl is a Partner and Head of Intellectual Property. He is dual qualified, being both a Solicitor and a Chartered Trade Mark Attorney.

Carl has nearly 25 years' experience of advising clients on intellectual property and related commercial law matters, having previously worked in the city for leading IP firm Taylor Wessing. He specialises in advising clients on all aspects of intellectual property law, including copyright, designs, database, patent and trade mark law and the law relating to passing off and confidential information. In particular, he has extensive experience and expertise in advising and acting for clients in trade mark matters, both in the UK and overseas.

Carl deals with both contentious and non-contentious IP matters.

Carl is responsible for managing the worldwide trade mark portfolios of numerous clients of the firm, including clearing, filing, prosecuting, licensing, assigning, renewing, defending and enforcing hundreds of trade marks across the globe. Enforcement work includes conducting opposition, revocation and invalidity proceedings before the UKIPO, the Appointed Person, the EUIPO, the EU Boards of Appeal and conducting and defending registered trade mark infringement and passing off proceedings before the English Courts.

Carl is lead partner for many clients of the firm, dealing with their IP work in the UK/EU, including BlackRock (one of the world's leading asset and investment management firms), The Roald Dahl Story Company, Penhaligon's, Naked Wines, The Brand Architekts, JW Anderson, Majestic Wine and Facegym.

Carl also advises on and has significant experience of drafting, negotiating and resolving disputes concerning a wide range of commercial contracts involving IP rich businesses, including merchandising and licensing agreements, co-development and co-branding agreements and manufacturing, supply and distribution agreements.

In recognition of his knowledge and abilities, in 2021 and 2022 Carl was named in the World Trademark Review 1000 publication as a leading trade mark practitioner. The publication is dedicated to identifying the world’s leading trade mark legal services providers.

For many years the University of Exeter has invited Carl to lecture on trade mark law to undergraduates, as part of their law degree course.

In the past, Carl has lectured on IP litigation for CLT (the UK's leading provider of post-qualification training for legal professionals) and IP Rights for techUK. He has also spoken on Radio 4 and 5 about newsworthy IP matters and had been quoted in the national and regional press and online.

Carl is an active member of INTA (the International Trade Mark Association), having attended most of the Annual Meetings for the past 10 years.

"Carl Steele is truly an expert in his field."  - Legal 500 2022

"Carl Steele really knows his stuff and is responsive." – Legal 500 2020

Relevant experience

  • Managing trade mark and design portfolios of many famous brands. This includes clearing, filing, prosecuting, registering, renewing, maintaining, opposing, invalidating, defending and enforcing many trade marks each year, often on a global basis. Clients include: Penhaligon's, BlackRock, The Roald Dahl Story Company, JW Anderson, Majestic Wine, The Brand Architekts and Facegym.

  • Acting for Shazam Productions Limited (the owner of IP rights relating to the scripts of the famous “Only Fools and Horses” TV comedy series) in a copyright infringement and passing off case against those involved in the “Only Fools (Cushty) Dining Experience”.

  • Advising on copyright infringement disputes in respect of musical compositions and sound recordings.

  • Acting for Facegym in connection with a trade mark dispute with Skin Gym.

  • Advising The Roald Dahl Story Company in connection with the exploitation and licensing to/merchandising by third parties of various copyright and other IP rights created by or relating to Roald Dahl. Includes drafting and negotiating various contracts. Also assisting the Estate in preventing unlawful exploitation of those rights by taking enforcement action against infringers.

  • Acting for the owner of the IP rights to various fictional characters found in the longest running children’s show in the world, in respect of their licensing and commercial exploitation.

  • Acting for a children’s book publisher in negotiating and drafting a book publishing deal with a well-known Premiership footballer.

  • Successfully pursing various infringers of the shoe designs of a high fashion, Italian luxury ladies' footwear designer.

He is exceptionally responsive and helpful, and gives very pragmatic advice.

Chambers 2021