Carl Steele

Partner and Head of Intellectual Property


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 25 years' experience of advising clients on intellectual property and related commercial law matters. 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 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.

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, Naked Wines, The Brand Architekts, JW Anderson and Majestic Wine.

Carl previously worked in the city for a leading IP law firm.

In recognition of his knowledge and abilities, in 2021, 2022 and 2023 Carl was named in the World Trademark Review 1000 publication as a leading trade mark practitioner and also in the 2023 IP Stars publication. These two publications are dedicated to identifying the world’s leading trade mark and IP legal services providers.

For many years, the University of Exeter 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 numerous times in the national and regional press and by IP specialist media outlets.

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: BlackRock, The Roald Dahl Story Company, JW Anderson, Majestic Wine and The Brand Architekts.

  • 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”. First case to decide that a fictional character is a copyright case. Won Managing IP Award  for “Impact Case of the Year”.

  • 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.

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

  • Acting for a famous French luxury fashion house in taking action against an infringer of its registered design for a handbag.

  • Advising a famous Spanish luxury fashion house on the clearance of its products against 3rd party IP rights.

Awards and Accreditations

Chambers Carl Steele 2024
Managing IP Award 2023
Legal 500 Hall Of Fame

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