OPPOSITION No B 3 048 557

Houzz, Inc., 285 Hamilton Ave., 4th Floor, 94301 Palo Alto, United States (opponent), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, EC2M 1QS London, United Kingdom (professional representative)

a g a i n s t

Hauz 1929, Unit 103 Westbourne Studios 242 Acklam Road, W10 5JJ London, United Kingdom (applicant), represented by Mark Fox, 1 Plough Place, EC4A 1DE London, United Kingdom (professional representative).

On 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 557 is upheld for all the contested goods:

2. European Union trade mark application No 17 593 807 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 593 807 for the figurative mark , namely against all the goods in Classes 20, 24 and 27. The opposition is based on European Union trade mark registration 15 938 434 and United Kingdom trade mark registration No 3 191 907, both for the word mark ‘HOUZZ’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration 15 938 434.

a) The goods

The goods on which the opposition is based are the following:

Class 11: Lighting, lighting apparatus and fixtures, decorative lighting, lanterns, lamps, lamp stands and shades, all of the aforesaid made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials.

Class 20: Furniture; wooden furniture; bespoke furniture; household furniture; bedroom furniture; fitted furniture; upholstered furniture; furniture for use in bars, clubs and restaurants; office furniture; tables; chairs; cabinets; sofas; armchairs; coffee tables; footstools; chests; drawers; shelving; beds; bedside tables; wardrobes; kitchen units; kitchen furniture; dressers; cupboards; stools; racks; worktops; trays, not made of metal; boxes made of wood; dining tables; dining chairs; benches; dining cabinets; dining drawers; mirrors; picture frames; mattresses; box springs; pillows; slatted bed bases; mattress bases; divans; bedding; bolsters and cushions; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for all these materials or of plastics, namely statues, figurines and works of art, ornaments and decorations, furniture and furnishings including beds, frames, mirrors, coat hangers, coat hooks and coat stands, baskets, barrels, casks, chairs, sofas, displays, stands and signage; parts and fittings for all the aforementioned goods.

The contested goods are the following:

Class 20: Furniture and furnishings; Beds, bedding, mattresses, pillows and cushions.

Class 24: Fabrics; Textile goods, and substitutes for textile goods.

Class 27: Floor coverings and artificial ground coverings; Wall and ceiling coverings; Carpets, rugs and mats.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 20

Furniture and furnishings; Beds, bedding, mattresses, pillows and cushions are identically contained in both lists of goods and services.

Contested goods in Class 24

The contested broad category of textile goods includes various finished goods made of textile for household purposes like blankets or bed sheets. They have some relevant points in common. They are considered similar to the opponent’s bedding in Class 20 because they may have the same ultimate purpose and they may coincide in relevant public and distribution channels.

The contested substitutes for textile goods consist of goods made of non-textile materials, for example, from recycled plastic, used nowadays in manufacturing of ‘eco/bio bedding’. Therefore, although they have a different nature they can have the same purpose and method of use. These goods are, therefore, considered similar to a low degree to the opponent’s bedding in Class 20. Furthermore, they may coincide in relevant public and distribution channels.

The contested broad category of fabrics includes textile fabrics that are materials used for the manufacture of finished textile goods for household purposes. They are considered lowly similar to the opponent’s bedding as they usually coincide in the relevant public and distribution channels.

Contested goods in Class 27

The contested floor coverings and artificial ground coverings; wall and ceiling coverings; carpets, rugs and mats and the opponent’s furniture share the same purpose as they are used to make a room or a building suitable for living or working or to decorate it. They also target the same public through the same distribution channels. Therefore, they are similar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and also at the professional public (in the case of the contested fabrics), such as manufacturers of textile goods.

The degree of attention is average.

c) The signs

HOUZZ
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the word ‘HOUZZ’.

The contested sign consists of the words ‘HAUZ’ and ‘NEW YORK’ portrayed in a rather standard uppercase typeface. The cross line of the letter ‘A’ is in a lighter shade and is not horizontal. The element ‘HAUZ’ is much bigger than the element ‘NEW YORK’ and is depicted above it.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division observes that the verbal elements ‘HOUZZ’ and ‘HAUZ’ may be perceived by a part of the relevant public, in particular by the English- and/or the German-speaking part of the public as allusion to ‘house’ in English or ‘Haus’ in German and, consequently they may have some connection to the relevant goods, which are mainly goods used for household purposes. However, another part of the relevant public, such as the Polish and the Bulgarian consumers, will not understand these terms and, therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and Bulgarian-speaking part of the public of the European Union, for which these terms are meaningless.

The element ‘HAUZ’ in the contested sign is the dominant element as it is the most eye-catching.

As mentioned above, the elements ‘HOUZZ’ of the earlier mark and ‘HAUZ’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The element ‘NEW YORK’ of the contested sign will be understood by the relevant public as a reference to one of the most famous towns in the United States of America. As it may be perceived as a place of origin for the applicant goods, this element is not distinctive in relation to them.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Indeed, consumers will perceive this element as graphic embellishment of the corresponding brand and will refer to the contested sign by its verbal element ‘HAUZ’ as indicator of commercial origin for the goods in question.

Visually, the signs coincide in the letters ‘H’, ‘U’ and ‘Z’ and their positions within the marks. However, they differ in the second ‘Z’, present only in the earlier mark, as well as the letters in second position, ‘O’ in the earlier mark replaced by an ‘A’ in the contested sign, and the element ‘NEW YORK’ present only in the contested sign, which is, however, non-distinctive and secondary, as analysed above. The marks differ in the stylization of the contested sign, which is very low.

Therefore, the signs are visually similar to an average degree.

Aurally, contrary to the assertions of the applicant, for the relevant public there will be only one pronunciation of the earlier mark, namely /houz/, and the pronunciation of the dominant element of the contested sign is /hauz/. Therefore, the pronunciation differs in the sound of the letters ‘O’ and ‘A’ and ‛ NEW YORK’ of the contested mark, which has no counterpart in the earlier sign, and which, as mentioned above, is not distinctive.

The Opposition Division is of the opinion that, contrary to the assertions of the parties, the last two letters of the earlier mark, ‘zz’, will not allude to any onomatopoeic words such as ‘buzz’, ‘fizz’, etc. and they will be pronounced as a single letter ‘z’ by the relevant public.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘NEW YORK’ of the contested sign as explained above, the other sign has no meaning in that territory. Taking into account the fact that the element ‘NEW YORK’ is non-distinctive within the contested sign, it will not have an impact on the conceptual comparison of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as such has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C 251/95, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods of the contested sign have been found partly identical and partly similar to varying degrees to those of the earlier mark. They are directed at the public at large and at professionals, whose degree of attention is average.

It should be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the element ‘HAUZ’ of the contested sign is the dominant one. Furthermore, the stylisation of the contested sign, in particular the cross line of the letter ‘A’, is purely ornamental. Consequently, the overall impression of the marks is similar to an average degree from a visual and highly similar from a phonetic point of view. Additionally, the conceptual aspect is neutral because the additional non-dominant element ‘NEW YORK’ of the contested sign, is non-distinctive in relation to the relevant goods, as established above.

The applicant notes that the opponent provides no evidence about how it uses its marks in Europe and in the United Kingdom. However, it should be pointed out that the opponent’s earlier rights are not subject to proof of use because at the date of filing of the contested trade mark they had not been registered for at least five years. Furthermore, it should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T 568/12, Focus extreme, EU:T:2014:180, § 30 and the case law cited therein). The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the argument raised by the applicant is irrelevant.

The applicant further claims that it is appropriate to take into account the category of goods or services in question and the way they are marketed. In this regard it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination and is carried out in a more abstract manner. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (judgments of 15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

Moreover, the applicant refers to previous decisions of the Office and of the General Court to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings.

- McKenzie (18/05/2011, T 502/07, McKenzie, EU:T:2011:223) refers to the comparison of surnames;

- B (24/01/2012, T 593/10, B, EU:T:2012:25) refers to the comparison of figurative marks with a verbal element consisting of only one letter; moreover, the stylisation of the letter in the contested sign is very elaborated;

- Metronia (08/09/2011, T 525/09, Metronia, EU:T:2011:437) refers to a case where the degree of attention of the relevant public was found to be high, while in the case at hand the degree of attention was found to be average;

- Egléfruit (15/04/2010, T 488/07, Egléfruit, EU:T:2010:145) refers to the comparison of a complex figurative mark and a word mark, where the coinciding verbal element is weak;

- Mystery (15/01/2003, T 99/01, Mystery, EU:T:2003:7): in this case the marks were actually found to be aurally similar;

- Various examples taken from the EUIPO Guidelines for Examination of European Union Trademarks, which, however, refer to different scenarios: coincidence in weak elements only or in the ending of the word elements, comparison of figurative marks and different types of goods.

Considering all the above, and in particular the interdependence principle, there is a likelihood of confusion on the part of the Polish- and Bulgarian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 938 434. It follows that the contested trade mark must be rejected for all the contested goods, including those which are similar to a low degree to the opponent’s ones.

As the earlier European Union trade mark registration No 15 938 434 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Monika CISZEWSKA	Tzvetelina IANTCHEVA	Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.