Out-Law News | 06 Sep 2011 | 4:44 pm | 4 min. read
Bucks Fizz was a famous 1980s music group comprising original members Mike Nolan, Cheryl Baker, Jay Aston and Bobby Gee. The group won the Eurovision Song Contest in 1981. Nolan, Baker and Aston subsequently left the group, but Bucks Fizz has continued performing and a number of other individuals joined.
The 'Bucks Fizz' trade mark was originally registered by record company Big Note Music but later lapsed. It was re-registered in 2001 by Heidi Manton who had subsequently joined the group.
Nolan, Baker and Aston have since performed as The Original Bucks Fizz, and tried to register the name as a trade mark as well as revoking the 'Bucks Fizz' trade mark owned by Manton. The trio claimed they owned the goodwill to the name, according to the ruling by an IPO hearing officer.
In the UK if you can prove that your use of a trade mark has established 'goodwill' in the business associated with that trade mark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.
If another trader 'passes off' their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.
Trade marks can be also be protected by registering the trade mark at the UK Trade Marks Registry.
A trade mark can be revoke if it is used in a way that might mislead the public "particularly as to the nature, quality or geographical origin of those goods or services", according tot he Trade Marks Act.
The IPO rejected the original Bucks Fizz members' goodwill claims, stating that they had individually given up any rights since they left the original group.
"The individual members of the current partnership can make no claim to be the owners of the goodwill in Bucks Fizz, and the current partnership cannot claim the benefit of any goodwill generated by previous partnerships, i.e. before 2009," the ruling (25-page / 119KB PDF) said.
"Further ... there is unchallenged evidence that the owner of the trade mark at the time of the original line-up of the group (Big Note) has consented to the registration of the trade mark in the name of Heidi Manton. That makes it unlikely that anyone else has a better legal claim to the mark. On the face of it, it is difficult to see why the use of the trade mark by its lawful owner can be said to mislead the public, essentially because of the residual goodwill from the performances and recordings of the original group," it said.
IPO hearing officer Allan James rejected the trio's claims that their goodwill rights were strong enough to outweigh Manton's registered rights and that the 'Bucks Fizz' mark was misleading to the public because they made up most of the original group.
Registered trade marks are not a guarantee of a quality service and as such the trio could not rely on showing that Manton was misleading the public by owning the 'Bucks Fizz' trade mark for a group that the majority of the original members were not members of, James said.
Misleading comments about registered trade marks could lead to a trade mark being revoked, but in this case, although there had been misleading statements relating to the use of 'Bucks Fizz', "there is little evidence that these statements were made by, or with the consent of, the trade mark owner," James said.
"Further, the frequency and scale of any misleading claims is not so great as to result in the continued use of the mark being liable to mislead the public as to the source or nature of the services provided under it," he said.
James said that because Manton was "entitled to rely" on the 'Bucks Fizz' trade mark there would be "a likelihood of confusion" if Nolan, Baker and Aston were allowed to register 'The Original Bucks Fizz' as a trade mark. As a result the proposed mark was not permitted to be registered.
“This case shows the importance of having a written agreement between all the members of a band governing the use of the band’s name when the group is formed,” Iain Connor, intellectual property law expert at Pinsent Masons, the law firm behind Out-Law.com, said.
“What we see here is that as members of the original group left and were replaced, they gave up their rights to name “Bucks Fizz” so that even when 3 of the 4 original members got back together they could not advertise themselves as ‘Bucks Fizz’,” Connor said.
“This might seem odd but from a legal perspective it makes sense. Individuals performing together operate as a partnership and so the name belongs to the partnership (not the individuals) and passes to new members of the partnership when original members leave. The trade mark registry gave a full decision in this case because 3 members of the first incarnation of the group had tried to register the name ‘The Original Bucks Fizz’ and so it made sense for the hearing officer to decide once and for all who had the rights to the name. As with many music cases, the first flash of fame is then tainted by a series of incidents which leave bitter recriminations between musicians and a correct legal answer that leaves the public confused as to who is actually performing under the name of the band they first loved,” he said.