More Fizz than Bucks: when being Original doesn't help

Bucks Fizz, c.2011.  The original group was never found ...

Modestly calling himself an "amateur copyright junkie", the IPKat's friend and occasional correspondent Andy Johnstone has turned his hand to a spot of trade mark law, furnishing us with a note on a case with a name so long and clumsy that we Kats can but praise the economy and elegance of continental and institutional practice of giving cases numbers, not names. A convenient and shortened version of the name of this case is Application by the Original Bucks Fizz to Register the Trade Mark ‘The Original Bucks Fizz’ and Opposition by Heidi Manton; Application by the Original Bucks Fizz to Revoke the Trade Mark ‘Bucks Fizz’. There are an awful lots of bucks and fizzes in this report (170 of the former, 175 of the latter, but that's another matter.

Anyway, getting back to Andy's note:

"Such was the excitement generated by Louboutin v YSL in America (noted by the AmeriKat here) that Eurovision Song Contest aficiandos and other followers of stylish matters may well have missed a decision by the UK's Intellectual Property Office in a trade mark dispute which has been rumbling on for over a decade between the former members of the Eurovision-winning group (1981, since you ask) Bucks Fizz. For a group that's had more line-up changes than an X Factor judging panel, a little history may be required. 

Mike Nolan, Jay Aston, Cheryl Baker and Bobby Gee were brought together to form the group specifically to represent Great Britain in the Eurovision Song Contest in 1981. The name Bucks Fizz was registered as a trade mark by their then management and creators Big Note Music Ltd in classes 9 (sound recordings etc) and class 41 (live entertainment etc). Over the next few years the group had several chart hits but, as happens with such groups, in 1985 Jay Aston left and was replaced by Shelley Preston. After Shelley left in 1989 the band continued to perform as a trio until 1993, when Cheryl Baker left to pursue a solo career and two new female members -- Heidi Manton and Amanda Swarcz -- joined the line-up. Three years later Mike Nolan and Amanda Swarcz left, while David Van Day joined. So at this stage Bobby Gee was the only original member left. Shortly thereafter, David Van day left and, together with Mike Nolan, began performing as 'Bucks Fizz starring Mike Nolan and co-starring David Van Day'. 

Meanwhile the trade mark registration (only valid for 7 years in those days) had lapsed. Heidi Manton came to an agreement with Big Note Music that she could take on the name and, in 1997, she applied to register the name as a trade mark. This registration was opposed by Mike Nolan and Cheryl Baker, while at the same time Nolan and David Van Day had fallen out and their business relationship was ending acrimoniously. Nolan, under some stress, agreed to withdraw his opposition -- largely, it seems, in order to prevent David Van Day getting his hands on the trade mark. From 2001 the name Bucks Fizz was being used by the group consisting of Bobby Gee, Heidi Manton and several other people who came and went. Around 2004 a revival of interest in music from the 1980s prompted Mike Nolan, Cheryl Baker and Shelley Preston to get together to form The Original Bucks Fizz (OBF). Bobby Gee even performed with them on a number of occasions. Then, in 2009, Jay Aston also joined OBF. 

Sadly, all was not well backstage. In January 2010 OBF applied to register the words The Original Bucks Fizz as a trade mark in the same classes (9 and 41) as the existing mark Bucks Fizz. Heidi Manton (who was by now Bobby Gee's third wife) opposed the registration on the grounds of both the likelihood of confusion and bad faith. The members of OBF then sought a revocation of the Bucks Fizz mark under the Trade Marks Act section 46(1), on the ground that use of the mark in relation to the band (containing only one original member of the Eurovision-winning line-up) would mislead the public as to the quality of the service being offered. 

The Hearing Officer, Allan James, cut through the various changes in personnel (15 individuals in all) by referring to Laddie J's analysis in Byford v Oliver [2003] EWHC 295 (Ch) over claims to the band name 'Saxon'. Simply put, each individual line-up constituted of a partnership at will, and any goodwill, IP and other intangible assets of the partnership which could not be monetised at the time of the breakup of each partnership could not be considered the property of any one person or faction of the former partnership. Mr James then considered the implications of the ECJ judgment in Case C-259/04 Elizabeth Emanuel v Continental Shelf 128 Ltd, which held that there was no deception of the public in using a legally assigned mark consisting of the name of a famous designer, even though that designer no longer had any connection with the business. The hearing officer applied this decision to the grounds for revocation pleaded by OBF and rejected their claim. Having found that there was no likelihood of misleading the public as to the quality of performances by the present day Bucks Fizz, conversely Mr James had little doubt that the mark The Original Bucks Fizz would cause confusion among fans and so upheld the opposition without needing to consider the bad faith aspect".

Says the IPKat, while the words "partnership at will" won't be found in UK or European Union trade mark legislation, the concept works well with loose groups with ever-changing line-ups such as pop groups [and blogging teams, Merpel notes tartly].

Bucks Fizz without the apostrophe here
Buck's Fizz with the apostrophe here
The English apostrophe: a user's guide here
The Scottish apostrophe: a non-user's guide here
The greengrocer's apostrophe: an over-user's guide here