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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, L'Artisan Parfumeur, 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, 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.

"His forensic knowledge of IP is obvious to other specialists; this together with his practical commercial application are the reasons for our continued instructions." - Chambers 2019

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

Relevant experience

  • 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 major copyright infringement and passing off case against those involved in the “Only Fools (Cushty) Dining Experience”. The case will decide whether copyright vests in and protects the characters in OFAH and not just the words they use in the scripts for the OFAH BBC shows.
  • Acting for Lay & Wheeler in connection with a trade mark dispute with Mr Wheeler, a rival wine merchant.
  • Acting for Naked Wines in a trade mark dispute with the owner of the brand Naked Grouse.
  • Defending successfully a specialist furniture design business against an allegation of Community Registered Design infringement.
  • Assisted a leading Italian shoe design business to fend off allegations of design infringement.
  • 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.
  • Velcro BVBA in taking enforcement action against infringers of its famous VELCRO® trade mark.
Combines an unusually high level of technical expertise with sound commercial judgement.

Chambers 2020