OPPOSITION No B 3 050 196

Houzz, Inc., 285 Hamilton Ave., 4th Floor, 94301 Palo Alto, United States of America (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 Nikolaos Lyberis, Strovolou Ave. 201, The Future Business Centre, 3rd floor, Office 301, 2049 Strovolos, Nicosia, Cyprus (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 196 is partially upheld, namely for the following contested goods:

Class 11: Burners; lighting and lighting reflectors.

Class 21: Household utensils; cosmetic and toilet utensils and bathroom articles; tableware, cookware and containers; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class.

Class 25: Footwear; clothing.

2. European Union trade mark application No 17 817 222 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 817 222 for the figurative mark , namely against all the goods in Classes 2, 11, 21 and 25. The opposition is based on European Union trade mark registrations No 15 938 434 and 15 512 601 and United Kingdom trade mark registration No 3 191 907, all 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.

a) The goods and services

According to Article 46(1)(a) EUTMR (in the version in force at the time of filing of the opposition), the proprietors of earlier marks referred to in Article 8(2) EUTMR, as well as licensees authorised by the proprietors of those trade marks, may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application within a period of three months following the publication of the application.

Opposition has to be expressed in writing and must specify, in order to be admissible, the indications and elements laid down in Article 2(2)(a)-(i) EUTMDR (inter alia, an indication of the goods or services on which each of the grounds of the opposition is based). Furthermore, the opponent can only complete or extend the notice of opposition on its own initiative during the three-month opposition period following the publication of the European Union trade mark application concerned.

In the notice of opposition, filed on 18/04/2018 (within the three-month opposition period), the opponent indicated as the basis of the opposition as regards earlier EUTM registration No 15 512 601 only the goods in Class 25. However, in its observations dated 02/11/2018, it based the opposition on the goods and services in Classes 9 and 36, for which this mark is also registered. However, it did not use Classes 9 and 36 in its comparison of the goods and services. Taking into account the above and for the sake of completeness, the Opposition Division reminds the parties that the opponent cannot extend the basis of the opposition once the opposition period has expired and, therefore, the opposition is not admissible insofar as it is based on the goods and services in Classes 9 and 36, which will not be taken into account for the purpose of the comparison.

Therefore, the goods and services on which the opposition is based are the following:

European Union trade mark registration No 15 938 434:

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.

European Union trade mark registration No 15 512 601

Class 25: Apparel, namely, shirts, pants, shorts, jackets, sweaters, dresses, skirts, socks, pyjamas, headwear, footwear, robes, athletic uniforms, vests, gloves, bandanas, scarves, belts.

United Kingdom trade mark registration No 3 191 907

Class 20: Furniture; wooden 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; 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; parts and fittings for all the aforementioned goods.

Class 35: Retail services connected with the sale of furniture, home furnishings, homewares, soft furnishings, textile goods, mirrors, picture frames, bed and table covers; operating an online marketplace for sellers and purchasers of consumer goods including home interior and exterior furnishings, products and accessories; promoting home design and decorating products of others by providing hypertext links to the web sites of others; promoting home design, decorating, and remodeling services of others by providing contact information and hypertext links to service provider's websites.

Class 40: Bespoke furniture.

The contested goods are the following:

Class 2: Coatings; dyes, colorants, pigments and inks.

Class 11: Burners, boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment; refrigerating and freezing equipment; lighting and lighting reflectors.

Class 21: Household utensils; cosmetic and toilet utensils and bathroom articles; tableware, cookware and containers; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class.

Class 25: Footwear; clothing.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 and services 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 and services 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 2

The contested goods are coatings; dyes, colorants, pigments and inks in Class 2. A coating is a covering that is applied to the surface of an object with decorative and/or functional purpose. Dyes, colorants, pigments and inks are substances used to colour a surface.

The opponent’s goods in Classes 11, 20, 25, 35 and 40 (covered by the earlier marks) are mainly lighting, furniture and furnishings, clothing, headgear and footwear, retail services connected with the sale of furniture, furnishings and homeware and promoting home design. The opponent asserts that the contested goods in Class 2 are associated with its retail services connected with the sale home furnishings, homeware and operating an online marketplace for sellers and purchasers of consumer goods including home interior and exterior furnishings, products and accessories. Dyes, colorants and inks can be associated with a huge variety of goods and services without being complementary. Goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). However, this is not valid in this specific case.

The opponent argues as well that these goods and services may also share the same distribution channels and target the same end-users. However, the Opposition Division is of the opinion that the fact that the goods share or may share similar distribution channels is, as such, normally insufficient for finding of similarity between goods which differ in other aspects. Modern hypermarkets and department stores sell goods of all kinds. The relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a common origin merely because they are sold at the same outlet. Only where the goods in question are offered in the same section of such shops, where homogeneous goods are sold together, will this favour similarity. This is, however, not the case for the goods under comparison, because coatings; dyes, colorants, pigments and inks are sold in a particular separate section and the opponent’s services in Class 35 are offered in different sections of retail stores (physical or online stores). The public is aware and used to this. Moreover, the relevant goods are very often sold in specialised shops, which do not offer the opponent’s goods and services, etc.

Furthermore, the mere fact that the potential customers coincide does not automatically constitute an indication of similarity. The same group of customers may be in need of goods or services of the most diverse origin and nature. The fact that, for example, dyes and retail of furnishings may be purchased by the same relevant public, namely the public at large, has no impact on the analysis of similarity as these two types of goods and services serve to cover different customers’ needs.

The contested goods and the opponent’s goods and services have clearly different natures, purposes and methods of use. Furthermore, they are not produced by the same undertakings and they are not in competition with each other.

Consequently, the contested goods in Class 2 are clearly dissimilar to the opponent’s goods and services.

Contested goods in Class 11

Lighting is identically contained in both lists of goods.

The contested lighting reflectors belong to the broad category of the opponent’s lighting apparatus. Therefore, there are identical.

With regard to the opponent’s lighting apparatus, nowadays they work mostly with electricity and do not use a burner. However, gas lighting apparatus are still used, in particular in remote areas without electricity distribution. These gas lighting apparatuses require a burner. The goods are therefore similar.

The contested boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment and refrigerating and freezing equipment are durable consumer goods. However, ‘durable consumer goods’ is a very broad category of goods covering a huge variety of items such from, for example, hand tools and furniture to cars and it is impossible to establish identity or even similarity between these goods. Therefore, these goods are dissimilar to the opponent’s services in Class 35. Furthermore, they are dissimilar to the opponent’s goods in Classes 11 and 25. These goods and services have a different nature and purpose and, therefore, methods of use. They coincide neither in manufacturer nor in distribution channels and they are clearly not in competition with or complementary with each other. The same reasoning applies for the opponent’s goods in Class 20 and Class 40 which include various furniture and furnishings and bespoke furniture. Although they can be used in combination with some of the contested goods (for example kitchen furniture and cooking equipment) they are not complementary as neither of them is essential for the proper functioning or use of the other. Therefore, they are dissimilar.

Finally, ‘homeware(s)’ is furniture, utensils, and decorative objects for domestic use. Therefore, contrary to the opponent’s assertions, it does not include household appliances and equipment such as the contested boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment and refrigerating and freezing equipment and consequently these goods are dissimilar to the opponent’s retail services connected with the sale of homewares.

Contested goods in Class 21

The contested household utensils; cosmetic and toilet utensils and bathroom articles and tableware, cookware and containers are various types of homeware.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested household utensils; cosmetic and toilet utensils and bathroom articles; tableware, cookware and containers are similar to a low degree to the opponent’s retail services connected with the sale of homewares.

The contested statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class are at least similar to the opponent’s 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 in Class 20. These goods have the same purpose for decoration. They target the same public via the same distribution channels. Furthermore, they are in competition with each other.

Contested goods in Class 25

Footwear is identically contained in both lists of goods.

The contested clothing includes, as a broader category the opponent’s shirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 burners and the contested goods in Class 2), among which manufacturers of lighting apparatus.

The degree of attention is average.

c) Comparison of the signs and distinctiveness of the earlier marks

HOUZZ
Earlier trade marks	Contested sign

The relevant territory is the European Union and the United Kingdom.

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 unitary character of the European Union trade mark means that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Consequently, for reasons of economy of procedure the Opposition Division will focus the comparison of the signs on the English-speaking part of the public.

The Opposition Division observes that the verbal elements ‘HOUZZ’ and ‘HAUZ’ might be perceived by a part of the relevant public as allusion to ‘house’ in English and, consequently they may have some relation to the relevant goods, which are mainly goods used for household purposes, or the services thereof. Nevertheless, as these words only give a vague association with the word ‘house’ and do not describe in a direct way the goods/services in question or their characteristics, they must be deemed to have at least an average degree of distinctiveness in relation to the relevant goods/services.

Given the above considerations, and in the absence of any evidence to support the claim of enhanced distinctiveness of the earlier marks, the Opposition Division considers that, as a whole, they enjoy a normal distinctiveness in relation to the goods and services.

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). The typeface in which the contested sign is depicted is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the elements it embellishes. Indeed, the consumers will perceive this aspect as graphic embellishment of the corresponding brand and will refer to the contested sign by its verbal element ‘HAUZ’ as main 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 and ‘A’ in the contested sign. The marks differ as well in the stylization of the contested sign, which, however, will have less impact in the overall perception of the sign, as already explained above.

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

Aurally, the pronunciation of the earlier mark will be most likely /hauz/ or /hu:z/, and that of the contested sign is /hauz/.

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 or identical.

Conceptually, neither of the signs has a meaning for a part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, to the extent that another part of the relevant public perceives the verbal elements ‘houzz’ and ‘hauz’ as allusive to ‘house’, the signs are conceptually identical.

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

d) 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.

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

The signs are visually similar to an average degree and aurally similar to at least a high degree, for the reasons explained above. The distinctiveness of the earlier marks is normal.

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).

Furthermore, 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).

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).

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 for the reasons below:

- 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 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.

In its observations, the applicant states that it owns an earlier European Union trade mark No 16 392 458 for the same figurative sign , which was not opposed by the opponent.

In this regard, the Opposition Division notes that, the registration of and/or raising any opposition against the applicant’s other trade mark applications are not the subject matter of the present opposition proceedings. Indeed, it is not relevant for the present proceedings whether or not the applicant is the owner of another European Union trade mark registration and the reasons why it was not opposed by the opponent, because the subject matter under the present examination is whether the EUTM, as applied for, falls under any of the relative grounds for refusal invoked by the opponent, in the light of its earlier right. Therefore, the applicant’s statement must be put aside.

Considering all the above, and in particular the interdependence principle, there is a likelihood of confusion on the part of the English-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 partly well founded on the basis of the opponent’s European Union and United Kingdom trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks, even as regards the contested goods found similar to a low degree to the opponent’s goods and services, as the similarities between the signs are overwhelming.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Tzvetelina IANTCHEVA

Manuela RUSEVA

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.