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Carl Steele

Partner

Biography

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

Carl has over 20 years' experience of advising clients on intellectual property and commercial 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, design, database, patent and trade mark law and the law relating to passing off and confidential information. He deals with both contentious and non-contentious matters. In particular, he has extensive experience and expertise in advising and acting for clients in trade mark and brand related matters, both in the UK and overseas.

In recognition of his knowledge and abilities, each year the University of Exeter invites Carl to lecture on trade mark law to undergraduates, as part of their law degree course.

Carl also advises on and has significant experience of drafting, negotiating and resolving disputes concerning a wide range of commercial contracts, including distribution, manufacturing, supply, agency, joint venture, partnership and collaboration, research & development and licensing contracts.

Relevant experience

  • Various clients: Managing the worldwide trade mark portfolios of all 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 UK Trade Marks Registry, the Appointed Person, the EU Trade Mark Office, the EU Boards of Appeal and conducting and defending registered trade mark infringement and passing off proceedings before the English Courts. Clients include: Penhaligon's, BlackRock, J.W. Anderson, The Roald Dahl Estate, Post Office, Flybe, Pro-Direct, Facegym, Swallowfield, The Brand Arkitects and Timothy Everest. 
  • The Roald Dahl Estate: Advising the client 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  (including High Court proceedings) against infringers.
  • Velcro BVBA: Acting for the client by taking enforcement action against infringers of its famous VELCRO® trade mark.
  • Luxury Italian shoe designer: Acting for the client in taking action against High Street and online retailers in connection with allegations of them selling infringing copies of the client's shoe designs.
  • Market leading CO and smoke alarm business: Assisting the client in connection with various distribution, manufacturing and other contractual arrangements relating to its products and services.  
He is a good team leader and provides practical solutions

Chambers & Partners Guide to the Legal Profession 2018