OPPOSITION No B 3 050 140

Houzz, Inc., 285 Hamilton Ave., 4th Floor, 94301, Palo Alto, United States of America (opponent), represented by Cooley 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 3 050 140 is upheld for all the contested goods.

2. European Union trade mark application No 17 636 119 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 17 636 119 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 No 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 No 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: Textile goods, and substitutes for textile goods; Fabrics.

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

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, 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 and services of the earlier EUTM registration 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 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 and they are similar to the opponent’s bedding in Class 20 as they may have the same ultimate purpose and they may coincide in relevant public and distribution channels. Furthermore, they may be complementary.

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; carpets, rugs and mats and the opponent’s furniture share the same purpose as they are used to make a room or 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 ‘EST 1929’ 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 ‘EST 1929’ 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 German-speaking part of the public, as allusion to ‘house’ in English or ‘Haus’ in German and, consequently they may have some relation 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 additional elements ‘EST 1929’ of the contested sign may be understood by a part of the relevant public as the year of incorporation of the applicant. In any case, its impact on the comparison of the signs will be limited due to its position and size.

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 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 replaced by an ‘A’ in the contested sign, and the element ‘EST 1929’ present only in the contested sign, which is, however, non-dominant 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, the pronunciation of the earlier mark is /houz/, and that of the dominant element of the contested sign is /hauz/. Therefore, the pronunciation differs in the sound of the letters ‘O’ and ‘A’ and the non-dominant elements ‛EST 1929’ of the contested mark, which have no counterpart in the earlier sign.

The Opposition Division is of the opinion that, contrary to the assertions of the opponent, the last two letters of the earlier mark, ‘zz’, will not allude to any onomatopoeic words such as ‘buzz’.

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 ‘EST 1929’ of the contested sign as explained above, the other sign has no meaning in that territory. Therefore, the signs are not conceptually similar. However, the impact of this conceptual difference is rather limited, taking into account the fact that the element 'EST 1929' is non-dominant and less distinctive than the remaining elements of the contested sign.

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.

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).

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. The additional elements ‘EST 1929’ of the contested sign are non-dominant and, therefore, they play a secondary role due to its size and position within the sign.

Considering all the above, and in particular the interdependence principle mentioned above, 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.