You have your members, rehearsed in the studio, maybe even recorded a couple of tracks. What about a name?Choosing it might be difficult but what happens if things do not go as planned? Members of the band may decide to go their separate ways. Who has the right to use the name? Does the band carry on under the same name?
Despite having left the band four years previously, in November 2009, founding member of the Sugababes, Mutya Buena, lodged an application with the Office for Harmonisation in the Internal Market ("OHIM") (the body responsible for European Community Trade Marks) to register the mark "Sugababes". If successful, Buena would own the trade mark rights in the name, preventing the current line up of Heidi Range, Amele Berrabah and Jade Ewen, or their record company from continuing to use the name. With such a threat hanging over what most would consider a fairly successful and lucrative name in the pop music world, the current line up (as a partnership) have lodged an opposition to Buena's application on the basis that goodwill and reputation in the mark and trading name "Sugababes" belongs to the partnership – not an individual.
However, this is not the first time ownership of and the right to use a band name has been called into question.
In Byford v Oliver[1] two former members of the heavy metal band "Saxon" registered the mark SAXON for various goods and services including records and the presentation of live performances (the "Owners"). A declaration of invalidity was lodged by the original and current member of the band (the "Applicant") on two grounds. Firstly, the mark had been registered in bad faith and secondly, use of the mark would constitute passing off. However, at the original hearing the Owners were successful in arguing that they had rights in the name as a result of having been members of the original band. On appeal, this decision was overturned.
The appeal was successful on the following basis:
1.The original band had been a partnership at will, with the name and goodwill being assets of that partnership. In particular, no one member of the band owned the name SAXON or the goodwill built up in it. As members of the band leave, this forms a new partnership at will, which, if the band continues, builds its own goodwill in the name. The Owners did not own the goodwill and had abandoned interest in the original band's trading style and the goodwill generated in it. Furthermore, the band continued to build goodwill and reputation in the name long after the Owner's departure.
2. With no existing title to the name, the purpose of obtaining the registration was to interfere with the rights of those who did have title to it and had consistently used it (i.e. the continuing members). This amounted to bad faith.
3. The court considered that use of the mark by the Owners as a trade mark for use by heavy metal bands or records could be prevented by passing-off. The current line up could bring proceedings since recent goodwill in the name belonged to it and the Owner's historical connection with the band did not provide a defence.
A similar situation arose when Holly Johnson of the 80's band "Frankie Goes to Hollywood" attempted to register the mark FRANKIE GOES TO HOLLYWOOD as a Community Trade Mark[2]. The application was successfully opposed by the four other members of the band on the basis of earlier propriety rights arising from their use of the name in the UK. Relying on the decision reached by Byford v Oliver, the court determined that even though the applicant had been an original member of the band, he had not established that he had used the name outside of his membership of the band for the goods and services in question. Goodwill generated by the band during the 1980s belonged to the partnership at will and not one particular member.Use by the Applicant of the mark would amount to misrepresentation likely to cause damage.
What this shows is that a band's name can be a very valuable asset, something Mutya Buena obviously realised. The current Sugababes line up and their record company lodged their Notice of Opposition in May 2010. It remains to be seen who will be successful, but if previous decisions are looked at, the precedent would have the odds in favour of the Opponents. However, if unsuccessful, it could prove an expensive rebranding exercise for the record company.
[1] [2003] E.M.L.R 20
[2] Gill v Frankie Goes To Hollywood Ltd [2008] E.T.M.R. 4
Article by Claire Thompson, Solicitor