Picture caption: Stewart Vandermark

According to an East Midlands' lawyer, the argument between former Bucks Fizz band members over the right to use the mark "Bucks Fizz" is typical of fights over brand rights that can occur when the owners of a business fall out.

Stewart Vandermark, a director and a specialist in intellectual property disputes at law firm, Nelsons says: "Fighting over brand rights in business is one of the most common disputes that we see and the legal battle being fought by Bucks Fizz, which shot to fame winning Eurovision in 1981, is typical. 

"The name is of course the band's brand and in which its goodwill from fans is found. Thirty years on from their climb to fame, the original band members are all keenly aware of how valuable the band's brand is today and are prepared to spend time and money trying to control it."

One of the original band 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 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.

"Registering a mark is an inexpensive step that always puts the registrant in a much stronger position," says Stewart. "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."

Whilst registering first is always wise, advises Stewart, it can backfire if the registrant acts without informing others who may have an interest in the mark and act without their consent.

"For all businesses," concludes Stewart, "protecting your brand by registering the marks you trade by is an essential first step. It is also worth spending some time at the outset of a new venture agreeing with your business partners 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."

For more information about Nelsons, please visit their website here: www.nelsonslaw.co.uk