It was reported this week that Bucks Fizz have been arguing over the right to use the mark "Bucks Fizz", in a dispute that is typical of arguments over intellectual property rights that can occur when the owners of a business fall out.
Bucks Fizz shot to fame winning Eurovision, memorably singing Making Your Mind Up (whilst removing skirts) in 1981. Success followed, before the inevitable slide into relative obscurity, since when there have been a bewildering number of different band formations and the accompanying disputes over who has the right to use the band name. The name is of course the band’s brand and in which its goodwill is found.
One of the original members, Bobby G, claims to have continued to operate from the early days as Bucks Fizz. He married a later band member, Heidi Manton, in 2000. In 2001, the mark “Bucks Fizz” was registered as a trademark in her name.
In 2004, the other 3 original members (Mike Nolan, Cheryl Baker and Jay Aston) decided to re-group. They began touring (and dedicated fans will be excited to hear they have recently recorded a new CD) under the mark “The Original Bucks Fizz”. In 2010, they applied to register “The Original Bucks Fizz” as a separate mark but the grant of that is being opposed by Bobby G and his wife.
Now, Mike, Cheryl and Jay are challenging the already registered mark “Bucks Fizz” and have applied for it to be revoked. They claim the public are being misled when turning up to concerts to find only one of the original members’ performing.
It will be interesting to see how these disputes are resolved by the Registrar who heard the arguments. It is though typical of the sort of business disputes which occur when the relationship between the owners of a business breaks down. This dispute features arguments over the extent of an alleged oral agreement, with the classic failing to record it in writing. Then there are the intellectual property arguments over who owns the brand, with each side asserting the stronger claim to it.
Registering a mark is an inexpensive step that always puts the registrant in a much stronger position. Bobby G (or his wife) was the smart one in taking that step. But this dispute reflects that registration alone is not conclusive.
The Trade Marks Act 1994 sets out various grounds upon which a registration can be revoked. These largely mirror the grounds for refusing to register a mark in the first place, such as the mark not being distinctive, or being descriptive in some way. But a mark can also be revoked when it is registered in bad faith. It is common for one party to object to rely upon this ground when one of the business partners in a new (or growing) venture registers it without informing the other; or otherwise in breach of some agreement between them.
So whilst registering first is always wise, it can backfire if you act without informing others who may have an interest in the mark and act without their consent.
This dispute also illustrates vividly the value of a brand. When the 4 young performers took to the stage at Eurovision, they will have had no idea how valuable the brand “Bucks Fizz” was to become. Thirty years later, they are all keenly aware and prepared to spend time and money trying to take control of it.
For all businesses, protecting your brand by registering the marks you trade by is an essential first step. It is also worth spending sometime at the outset of a new venture agreeing with your business partners (and recording it in writing) what will happen if things do not work out as planned.
Whatever dreams we have for our businesses, all businesses exist in the real world rather than (as Bucks Fizz put it) in the Land of Make Believe. So we need to act accordingly.
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