Trade marks in music: Part one – Bucks Fizz and band names

Pop group Bucks Fizz was formed by Big Note Music Limited, an independent UK-based music production and publishing company.

Initially comprising four singers – Mike Nolan, Cheryl Baker, Jay Aston, and Bobby Gee – the line-up of Bucks Fizz would change consistently and considerably in the years following a road traffic accident that seriously injured all four band members in 1984.

First to leave was Jay Aston in 1985. She was substituted by Shelley Preston, the winner of a competition to find Ms Aston’s replacement.

Ms Preston would leave four years later, with Ms Baker following her in 1993. Their replacements would be Heidi Manton and Amanda Swarcz, the latter of whom would also leave, alongside Mr Nolan, in 1996.

Further changes would continue within the foursome over the next two decades, with only Heidi Manton, and her future husband Bobby Gee, remaining as the longest serving members of the group.

In 1997, Ms Manton and Bobby Gee met with Nichola Martin, the then-owner of Big Note Music Limited, to re-register the trade mark ‘BUCKS FIZZ’.

Prior to this meeting, Big Note Music Limited had owned the trade mark but had allowed it to lapse after its initial registration period had expired.

Although Mr Nolan and Ms Baker, who had already left the group by this time, initially opposed the application, this was eventually dropped. The application to register ‘BUCKS FIZZ’ under Manton’s name was subsequently approved in 2001.

In 2004, however, Mr Nolan, Ms Baker, and Ms Preston revived their links to the group, joining Bobby Gee to perform as ‘The Original Bucks Fizz’ at the ‘Here and Now Tour 2004’ a celebration of music and artists from the 1980s.

Whilst this did not present a problem at the time, things would get more complicated when Bobby Gee returned to ‘Bucks Fizz’ alongside Ms Manton, with Ms Baker and Mr Nolan also continuing to appear as ‘The Original Bucks Fizz’.

A year after Ms Aston joined ‘The Original Bucks Fizz’, Mr Nolan, Ms Baker, and Ms Aston applied to register ‘THE ORIGINAL BUCKS FIZZ’ as a trade mark for entertainment services. They also sought to revoke the trade mark that Ms Manton had secured from Big Note Music Limited ten years earlier.

According to Mr Nolan, Ms Baker, and Ms Aston, who the judgment refers to as ‘the partnership’, the goodwill that they owned as the ‘original’ members of the group superseded the trade mark rights owned by Manton.

The fact that the group populated by Ms Manton and Bobby Gee was called ‘Bucks Fizz’ was also confusing and misleading for the public, they argued, presenting anecdotal evidence of disappointed fans who had attended Bucks Fizz events expecting to see the same people who had won Eurovision several decades before.

In her opposition, Ms Manton argued that registering the trade mark ‘THE ORIGINAL BUCKS FIZZ’ would cause confusion because the marks were similar and covered identical services.

She also claimed that the application was made in bad faith because it infringed on an agreement reached between Big Note Music Limited and Mike Nolan when Ms Manton’s application was initially disputed.

In a 25-page judgment, principal hearing officer Allan James both dismissed the partnership’s application, and upheld Ms Manton’s application for revocation.

In addition to referencing the partnership’s failure to produce any admissible evidence of public confusion concerning the identity of Bucks Fizz’s members, the judge also stated that “the individual members of the current partnership [i.e. Mr Nolan, Ms Baker, and Ms Aston] can make no claim to be the owners of the goodwill in Bucks Fizz” and that “the current partnership cannot claim the benefit of any goodwill generated by previous partnerships”.

In other words, considering the numerous iterations of Bucks Fizz since its formation in the early 80s, it was not possible to identify any individual member who could claim to have the goodwill required to counteract Ms Manton’s registered rights.

The judge even stated that the confusion of which the partnership complained was largely of their own making, saying that “the confusion as to whether Bucks Fizz designates the original line-up of the group has only become a live issue since The Original Bucks Fizz started to compete with the trade mark owner”.

Under the Trade Marks Act 1994, a trade mark registration may be revoked if it is “liable to mislead the public, particularly as to the nature, quality, or geographical origin of those goods or services”.

As we have seen, however, both the confusion caused by the registered mark and the goodwill in the conflicting earlier mark must be strong enough for this argument to work.

For any partnership or group looking to trade mark a collective under a single identity, it is important to have a written agreement in place from the outset – one that highlights to whom (or to what) the rights belong, and how the ownership of any assets, rights, or associated goodwill may be impacted if an individual chooses to leave the partnership or group.

As the Bucks Fizz case demonstrates, an individual’s former membership of a group – even if they are considered a ‘founding’ member – will not automatically permit that individual to use the goodwill accrued under the original trade mark to set up a subsequent, and competing, venture using a similar trade mark.

Although Mike Nolan, Jay Aston, and Cheryl Baker have since enjoyed success as ‘The Fizz’, they have also faced significant legal costs due to the dispute, as well as losing the right to use the name of the group that launched their careers.

Where trade marks and their associated goodwill are key assets, it is vital that ownership is clear from the start. For groups and partnerships that fail to do this, the buck ultimately stops with a potentially lengthy and expensive dispute before the UKIPO.