Winning a trademark opposition, not “that complicated” for Avril Lavigne

Pop-punk artist Avril Lavigne is not only known for her hits like “Complicated" and "Sk8er Boi" but also for her eye-catching hairstyles. Her hairstyles vary from peroxide blond to long locks of pink and neon green, and she's even sported rainbow hair. And yes, there’s been a touch of rouge in there.

Rouge, did I say Rouge? Might this hair color be the reason she recently, in large part, won a trademark opposition at the European Trademark Office (EUIPO) against a trademark application of a trademark LAVIGNE ROUX by a German company named II. Almeda GmbH?

No, it is mainly because Avril Lavigne has robust trademark protection in place making it possible to take action against this “LAVIGNE ROUX” trademark application.

In this recent decision judging on the similarity between the trademarks of Avril Lavigne and the trademark LAVIGNE ROUX the EUIPO indicated that the common element ‘LAVIGNE’ in both trademarks will be perceived by the relevant public as a French family name and that since it does not have a connection to the relevant goods (mainly clothing and cosmetics), it is, therefore, distinctive.

According to EUIPO it is not very relevant that the trademarks in questions also contain other elements. LAVIGNE is a very distinctive element in both making that, in large part, Avril Lavigne was successful in this opposition.

Avril Lavigne did not succeed in her claim that her trademarks are “reputed” and therefore should receive enhanced protection beyond their normal scope. EUIPO stated that: “though the evidence submitted shows that Avril Lavigne is a successful singer and songwriter it is not capable of clearly demonstrating that the relevant public recognizes the terms ‘AVRIL LAVIGNE’ as a mark having an enhanced ability to identify the services for which protection is sought”.

Because Avril did not succeed in her claim that her trademarks are “reputed” LAVIGNE ROUX will receive protection for very specific products like “boxes of leather” and “insoles for footwear” but that is probably not what this trademark applicant was looking for.