After years of speculation, the three original members of pop group Sugababes - Mutya Buena, Keisha Buchanan and Siobhan Donaghy – launched a second comeback last week, but this time with a very valuable asset up their sleeves: the original Sugababes name.
The group became infamous in the 2000s not just for being the most successful female act of the 21st century, but also for their regularly transforming line-up: the Sugababes’ revolving door also saw Heidi Range, Amelle Berrabah and Jade Ewen join the group over the years as the original members left. Behind the scenes, a secret battle for the naming rights to the band played out: one which the original members now appear to have finally won.
Sugababes are not the only band to have found themselves caught up In The Middle of a clash over the intellectual property rights in their name. Bucks Fizz and the Commodores (to name but a few) have also resorted to legal action in a ‘battle of the bandmates’ over naming rights.
On 23rd October 2019, days after a Sugababes collaboration with DJ Spoony was released, a UK trade mark application for the mark “SUGABABES” was filed, covering various music-related goods and services. The application was filed in the name of Sacred Three LLP – and if there were any doubts as to who the ‘sacred three’ are, Mutya, Keisha and Siobhan are listed as ‘designated members’ of the partnership.
Assuming the application becomes registered without opposition, it marks the end of a decade-long struggle for the Sugababes name. After leaving the band in 2005, original member Mutya filed an EU application for the trade mark SUGABABES in 2009. The application was swiftly opposed by the group at the time, Heidi, Amelle and Jade. Interestingly, the name had not been registered as a trade mark prior to Mutya’s application, so the ‘new’ Sugababes had to rely on their unregistered rights or ‘goodwill’ in the name to oppose it instead. The group argued that, as they had continued to perform and record under the name since Mutya left, the goodwill in the Sugababes name belonged to them.
The EU Intellectual Property Office (EUIPO) agreed, and Mutya’s application was rejected for all goods and services except paper, cardboard and related goods – perhaps not the main focus of Ms. Buena’s application. A far broader EU mark for the name was subsequently registered in 2010, by a partnership of the current members at the time.
The original members made a short-lived comeback in 2011, simply under the name ‘Mutya, Keisha, Siobhan’. Their recent return under the original name suggests the original members are in a Stronger position now, and that the decade-long battle has finally stopped spinning Round Round in circles.
The line-up of Eurovision winners Bucks Fizz has also changed significantly over the years, resulting in serious headaches over the ownership of the band name. Most recently, three of the original members of the famous 80s pop group – Cheryl Baker, Mike Nolan and Jay Aston – failed to convince the UK Intellectual Property Office (UKIPO) that they should own the rights to the name.
The trio performed under the name ‘The Original Bucks Fizz’ after leaving the band, and applied to revoke a UK trade mark for “BUCKS FIZZ” which had been registered by Heidi Manton, who had subsequently joined the group. The three original members argued that they owned the goodwill in the name.
The UKIPO decided that the original members had given up their claim to the goodwill when they left the band, and so could make no claim to use the Bucks Fizz name. Following the decision, the trio of original members have found continued success by performing as ‘The Fizz’.
Over in the US, soul group The Commodores have not always had it Easy when it comes to the band’s name either. The Grammy-award winning band, which once featured Lionel Richie at the helm in the 1970s and 1980s, was involved in a court case in 2016 when original members made conflicting claims to the ownership of the band name.
A US district judge ruled that Commodores Entertainment Group, comprised of original trumpet player William King and drummer Walter Orange, was the true owner of the legal rights to the band name – and not original guitarist Thomas McClary, who had been performing under variations of the name.
Although battling bandmates can make for interesting stories in the media, the lessons learned from these cases can be applied to businesses more generally. Under the law, bands are treated as a partnership unless they have specifically created a separate commercial vehicle for their activities, such as a limited company. If the band members have not formally agreed otherwise, rights such as trade marks and goodwill will generally belong to the partnership, and not the individual partners. As demonstrated in the examples above, this can cause complex difficult legal problems when band members come and go, or when partners of a business leave and are replaced. Consequently, partnerships should formally agree the ownership of any IP – including unregistered rights such as goodwill and reputation – from the outset, so there is legal clarity as to who owns those rights if any members of the partnership leave.
These cases also demonstrate the importance of managing an IP portfolio clearly and effectively. Filing for trade marks as soon as possible can help avoid many problems later down the line – for example, the later generation of Sugababes may have had a much easier challenging Mutya Buena’s application if they had registered the trade mark in the first place.