Bucks Fizz is one of many pop groups whose dissolution has prompted rows over rights to a name.

If you can remember Mike Nolan and Bobby G winning the Eurovision Song Contest by ripping the Velcro-fixed skirts off Jay Aston and Cheryl Baker, you might surprised to see Bucks Fizz once more making headlines. Two former band members are at each other's throats over the right to use the group's name, a registered trade mark.

Since 1980, Bobby G (real name Robert Gubby), has been performing as Bucks Fizz. When his friend David Van Day (formerly with another 1980s group, Dollar) fell on hard times Gubby helpfully asked him to replace the departing Mike Nolan in the line-up.

The pair worked together for 15 months parting on bad terms. Unfortunately for Gubby, Van Day then got together with Nolan and began touring as Bucks Fizz Dollar, and later just Bucks Fizz. Gubby sued both men (though he later settled with Nolan).

He sought an interlocutory injunction preventing the use of the name Bucks Fizz by Van Day whom, he said, 99% of the population would not associate with it. Van Day countered that everyone knew there were two separate Bucks Fizz; so there was no confusion. While not necessarily agreeing with Van Day, Mr Justice Jacob refused to grant the injunction, pending a full trial, pithily commenting that the name appeared not to "have much fizz left in it". Neither side will let up, and the battle continues.

Falling out over the ownership of a name seems to be part of being a pop group: Spandau the Bay City Rollers and Fleetwood Mac among others have all ended up in court over this issue. The question of who should own a trade mark after an enterprise splits up is a serious one and has recently been referred by the House of Lords to the European Court of Justice.

In 1967, two Swedish students set up a business called Scandecor. It prospered and registered two trade marks in the UK but after several years the founders went their separate ways, one taking the UK market and the other Sweden and mainland Europe. No formal provision was made for the continued use of the name Scandecor and trade marks remained the property of the Swedish arm, while the UK arm made exclusive use of them. In time the Swedish company became insolvent and the company which bought up the trade marks objected to Scandecor UK's use of them. It sued.

The case is complicated and includes Scandecor UK claiming a defence under section 11(2) of the Trade Marks Act 1994, which provides that use by a person of his own name in accordance with honest practices is an absolute defence to infringement.

As there was no contract between the two Scandecors, the UK company had in effect a bare licence - a simple permission to use the mark, with no terms and conditions relating, for example, to quality control. The issue that went all the way to the House of Lords, was whether Scandecor UK's use of the trade marks was inherently likely to deceive consumers who might surmise that Scandecor Sweden was solely responsible for supplying goods under those marks.

The Law Lords concluded that, over the years, trade mark law has become more flexible as business practices have developed. Trade marks no longer merely indicate that the marked goods are those of the registered trade mark proprietor but can also denote that they originate from a suitably selected licensee. With these comments in mind, Lord Nicholls said that the mere existence of a bare licence would not confuse consumers. However, once the licence ends, whether or not consumers are likely to be confused will depend on what business the trade mark owner and former licensee carry on.

Where the owner and former licensee carry on the same business (as in Scandecor's case), there may be scope for confusion and the mark may cease to be distinctive of a single source. The same applies when a pop group splits and two new groups continue using the same name. The Lords decided that the point was sufficiently important for the European Court of Justice to be consulted, and four specific questions were referred to it. Two of these were:

  • whether a trade mark is likely to mislead the public where it is used exclusively by a bare licensee; and
  • is a company a "person" for the purposes of section 11(2)?

In all the cases mentioned above, litigation could have been avoided if contractual provisions had been agreed from the outset providing for what should happen in the event of the founding parties going their separate ways. Often this is not done, or only done orally.

When starting a new business or pop group, no one likes to plan for the worst and anticipate what might happen if everything goes wrong. But a trade mark owner should ensure that he preserves his mark and his ownership of the mark, and minimise the risk of confusion.

The easiest way of doing this is by preventing any former licensees from continuing to use the mark and by requiring them to change their name if necessary .If the licensee is to carry on using the name, it is important to specify the terms on which such use may continue, including whether the trade mark owner will also be entitled to use the name. Litigation benefits no one except lawyers in the long run and it can easily be avoided with the right sort of agreement.

Even though he has won the first round of his case, David Van Day is likely to face a hefty legal bill - certainly a lot for someone who now makes more money from his burger van in Brighton than from his singing.

First published in Brand Strategy in September 2001.