Trade marks in music: Part two – When disputes go round, and round, and round

Despite this success, the group’s history has been marred by arguments, disagreements, and regular changes to the band’s line-up.

Siobhán Donaghy was the first to leave, walking out only a year after the hit single ‘Overload’ was released.

She was replaced by former Atomic Kitten singer Heidi Range, who would work with the group to release its second, and highly successful, album, ‘Angels with Dirty Faces’, in 2002.

Mutya Buena then departed in 2005 due to post-natal depression following her daughter’s birth. She would be replaced by Amelle Berrabah, leaving only Keisha Buchanan as the original member of the group.

In 2009, Keisha left too, later saying that she was “replaced while still being in the band.” Eurovision entrant Jade Ewan took her place.

Although Mutya would remark that Keisha’s departure “just means the Sugababes have ended,” Heidi, Amelle, and Jade would still go on to release the studio album ‘Sweet 7’ using the Sugababes name.

In the same year as Keisha’s departure, Mutya applied to register the mark ‘SUGABABES’ in the European Union which, at the time, still included the United Kingdom. Rather surprisingly, the mark had been unregistered up to this point.

Her application was only partially successful. The application was opposed by the current iteration of the Sugababes, and its record company Universal Island Records Limited. As they had not registered this trade mark themselves, the only ground they were able to rely upon was Article 8(4) of the Community Trade Mark Regulation (CTMR), which required them to submit a significant amount of evidence to establish that the mark had been used in the course of trade prior to Mutya’s application, and that a significant amount of goodwill was attached to it.

As evidence, the opposition demonstrated Wikipedia entries, BBC reports, CD album covers, tour brochures, press cuttings, and Amazon listings, all of which demonstrated the use of the Sugababes name alongside the current members of the band.

The Opposition Division agreed, stating that: “There is no question that the brand represented by the sign SUGABABES generates huge revenue in the United Kingdom market from sales of musical recordings, concert tickets, as well as endorsements and merchandising.”

The opposition was, therefore, partially upheld, with Mutya only granted registration of the trade mark for Class 16 goods, namely: paper, cardboard and goods made from these materials, not included in other classes; stationery; paper gift wrap and paper gift wrapping ribbons.

This left the original members, Mutya, Siobhán, and Keisha, in a highly frustrating situation as talks of a reunion began to take place. Although Heidi, Amelle, and Jade stopped performing together in 2011, the original members were unable to reclaim their name, which had by this time been registered under a broader EU mark to Universal Island Records Limited.

As such, when Mutya, Siobhán, and Keisha reunited in 2013, they would do so under the name MKS, rather than their original moniker.

In 2020, however, the group succeeded in registering the SUGABABES trade mark in the United Kingdom in the name of their partnership ‘Sacred Three LLP’ in relation to all the goods and services that mattered, including entertainment services in Class 41. This was after no other group had performed as the Sugababes since 2011.

Following the mark’s entry onto the register on 8 August 2023, the original formation of the Sugababes has gone on to perform to a huge crowd in Glastonbury. They also released a previously leaked album, ‘The Lost Tapes’, in 2022.

“There was so much manipulation,” Keisha commented in an interview for Time Out in 2023. “It would’ve been so easy for us to have thrown our hands up. But we invested our own money for the last 11 years and really, really fought for it. I’m so proud of us, that we stuck together. It was incredibly difficult – and we were getting to know each other again at the same time – but it was the making of us as a band.”

Given how young Mutya, Keisha, and Siobhán were when Sugababes was first formed, it is hardly fair to blame three pre-teens for not having the foresight to register the name of their band as a trade mark when they embarked on their musical career and took steps to ensure that they retained ownership of this trade mark.

Nevertheless, their story does demonstrate the importance of ironing out ownership issues prior to embarking on a new venture, musical or otherwise.

In partnerships, no individual member owns the rights to registered and unregistered assets, such as trade marks or goodwill, unless this is formally agreed by all individual members beforehand.

As such, it is important to identify who, or what, owns the rights to such assets from the outset, and how any departures or changes within the partnership will affect this.

Some partnerships, for example, may choose to assign rights to an individual, or to a separate legal entity such as a limited company. The best course of action will always depend on the specific circumstances and should therefore be explored with the help and support of intellectual property professionals.

Whilst the story of the Sugababes has a happy ending for the original band members, many other such disputes can often involve high costs and bitter compromises.

Deciding ownership of key intellectual property assets from the outset, with the help of legal specialists, will ensure that those who see themselves as founding members of a partnership have the rights to prove it.