Sugababes and Bucks Fizz – a potent brew

September 13 2011

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There has been press coverage recently of separate trademark disputes between current and former members of both of these bands. Although the details of each of the disputes were different, the issues in each case were broadly the same:

• the original band members were unhappy that they couldn’t secure the trademark rights in the band’s name; and
• the ownership of the trademarks only became an issue long after the bands had been formed and goodwill had been created in the names.

In the case of Bucks Fizz, the "Bucks Fizz" trademark is owned by a band member who was not in the original line-up (and who was not a member of the all-conquering Eurovision Song Contest winning band in 1981). The trademark was granted in 2001. Three of the original band members from the 1980s were unsuccessful in a recent challenge, considered by the Intellectual Property Office (IPO). The original members claimed that they should have the right to use the Bucks Fizz name (calling themselves "The Original Bucks Fizz"), and that the later band member should have her right to use the Bucks Fizz name withdrawn. The IPO disagreed.
In the case of the Sugababes, the "Sugababes" trademark is owned in the UK by Universal Island Records in the area of musical recordings and sound reproduction. However, one of the original band members (who left the band in 2005) recently challenged Universal’s right to use the name. The challenge was only partly successful, and the original band member secured the right to use the "Sugababes" name in the area of paper and cardboard goods, including wrapping paper and greetings cards. Whether this turns out to be a valuable trademark remains to be seen, but it would seem to be of less use than the right to use the name in the area of music.
What can we learn from these disputes?

• when starting a new business, whether a band or anything else, give some thought to protecting the name of the business and how the right to use the name is going to be shared amongst the various individuals. This may not seem important at the time, but as Bucks Fizz and the Sugababes have demonstrated, these names can become valuable assets; and
• remember that the same trademark can be used in different areas. Therefore having the right to use a trademark in (for example) the music industry will not automatically give the right to use it on clothes, perfumes and other such merchandise.