OPPOSITION No B 3 057 878

Houzz, Inc., 310 University Avenue, 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

Joao Pedro Pereira, Calçada do Galvão 35 R/C ESQ, 1400-163 Lisbon, Portugal (applicant).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 878 is partially upheld, namely for the following contested services:

Class 35: Provision of an on-line marketplace for buyers and sellers of goods and services; sales administration; procurement of contracts for the purchase and sale of goods and services; consulting in sales techniques and sales programmes; all of the above services for use exclusively in the field of real estate brokerage.

2. European Union trade mark application No 17 881 412 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 881 412 . The opposition is based on European Union trade mark registration No 10518603 ‘ HOUZZ’. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

1. The services

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

Class 35: 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 37: Providing a website that features information in the field of home renovation and remodeling.

Class 42: Providing a website featuring information in the field of interior design and architecture for use by interior designers and architects; Providing a website featuring information in the field of home interior design and interior decorating; Providing an website that features temporary use of non-downloadable software allowing website users to upload, post, share and display online photos of interior design and decorating ideas and which also allows users to post questions and comments in the field of interior design, decorating and remodeling; providing a website featuring temporary use of non-downloadable software for use in creating online, electronic scrapbooks of design and decorating ideas.

The contested services are the following:

Class 35: Provision of an on-line marketplace for buyers and sellers of goods and services; sales administration; procurement of contracts for the purchase and sale of goods and services; consulting in sales techniques and sales programmes; all of the above services for use exclusively in the field of real estate brokerage.

Class 36: Real estate services.

Class 43: Providing temporary accommodation.

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 services in Class 35

The contested provision of an on-line marketplace for buyers and sellers of goods and services; sales administration; procurement of contracts for the purchase and sale of goods and services; consulting in sales techniques and sales programmes are similar to a low degree to the earlier promoting home design and decorating products of others by providing hypertext links to the web sites of others because, notwithstanding the fact they have different nature and distribution channels, they have the same purpose and they coincide in their relevant public.

Contested services in Class 36

The contested real estate services are dissimilar to all the services covered by the earlier right because they have nothing in common. They are of a different nature and purpose. They do not share the same distribution channels and relevant public. They are provided by different companies and they are not in competition or complementary.

Contested services in Class 43

The contested providing temporary accommodation are dissimilar to all the services covered by the earlier right because their nature, purpose, the distribution channels, sales outlets and producers are different. Also, they are not in competition with each other or complementary to each other.

2. 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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. 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 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.

In its observations of 24/06/2019 the opponent’s claims, inter alia, that the earlier mark ‘HOUZZ’ is, in English, a portmanteau of the words ‘house’ and ‘buzz’ and that both marks might evoke the concept of ‘house’. This circumstance may trigger a link with some of the services in question thereby potentially affecting the distinctiveness of the signs. However, it cannot be excluded that for a part of the relevant public who has no command of English both the verbal elements ‘HOUZZ’ and ‘HOUZING’ will be regarded as meaningless. This is the case, for instance, of the Italian and the Spanish-speaking part of the public.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who does not speak English, such as the Italian and the Spanish-speaking part of the public.

As already mentioned, for a part of the relevant public none of the sign has a meaning, included the figurative element of the contested sign, which consists of an blue circles surrounded by a sort of ring with an interruption on its lower right section. Therefore, both signs are distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

As regards the contested mark, account must be taken of the fact that 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).

Visually, the signs coincide in the letters ‘HOUZ’, although in the case of the contested sign they are reproduced using fanciful blue letters, being the second letter ‘O’ equivalent to the figurative element placed below the verbal element.

However, they differ in the last letter ‘Z’ of the earlier mark and in the last three letters ‘-ING’ of the verbal element ‘HOUZING’ of the contested mark. As already mentioned, the signs also differ in the contested sign’s figurative elements.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HOUZ(Z)’, present identically in both signs. The pronunciation differs in the last three letter ‘-ING’ of the contested sign, which have no counterpart in the earlier sign.

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

Conceptually, neither of the signs has a meaning for 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.

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

4. 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the services for which it is registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Witness statement of the opponent’s Head of Legal, signed on 21/06/2019 in which the reputation of the mark ‘HOUZZ’ is claimed through the operation since the year 2008 of an online platform for the home remodelling, architecture, interior design and decorating, landscaping and home improvement industries. Also, a detailed description of the pieces of evidence submitted is included.

• Exhibit RL1: Copy of the Certificate of Incorporation dated 05/06/2015 of the opponent’s company in the register of the State of Delaware, United States of America.

• Exhibit RL2: Printouts from the opponent’s website for the United Kingdom, Denmark, France, Germany, Ireland, Italy, Spain and Sweden.

• Exhibit RL3: Copy of an article published on the New York Times on 21/03/2012 entitled ‘Houzz Proud’ in which it is described the origin of the opponent’s activity.

• Exhibit RL4: One page printout of an ‘Ideabook’ dated 18/06/2019 uploaded by ‘Houzz UK’ under the username ‘UK Professionals’ explaining, inter alia, the ‘tag’ functionality.

• Exhibit RL5: One page flyer produced by Houzz in 2019 entitled ‘HOUZZ Facts’ which provides information regarding the Houzz platform and services.

• Exhibit RL6: Undated table which contains details about the opponent’s subsidiaries in several continents. As regards the European Union, two company names are included, for the territories of Germany and the United Kingdom.

• Exhibit RL7: Table claimed to be prepared in June 2019 that provides details of ‘Houzz’ trade mark applications and registrations throughout the world, including European countries such as the United Kingdom.

• Exhibit RL8: Press releases taken from the opponent’s website and dated in 2014-2016 announcing the launch of dedicated websites for EU countries.

• Exhibit RL9-10: Extracts of the entry for the ‘Houzz’ mobile application on two different application stores.

• Exhibit RL11: Printouts of App Annie’s full ranking data for the ‘Houzz App’ for mobile phones and other devices with data regarding EU Member States.

• Exhibit RL12: Article dated 03/11/2014 taken from Forbes Magazine in which the opponent’s business activities are described.

• Exhibit RL13: Article published on www.bbc.co.uk of 03/06/2019 in which, inter alia, the value of ‘Houzz’ is reported and the opponent’s website is described as having 40 million monthly users.

• Exhibit RL14: Empty pages only bearing the title ‘This page/exhibit is intentionally blank’.

• Exhibits RL15-36: Articles published on the opponent’s platform in relation to United Kingdom houses and design projects, together with press release about news on the opponent’s activities in Germany, France, Italy, Spain and Denmark.

• Exhibit RL 37: Printouts from the websites of the relevant domain names registries showing the WHOIS information for domain names in several EU countries.

• Exhibit RL 38: Copy of the opponent’s ‘Houzz and Home UK’ survey 2018 and the ‘Houzz & Home – International Comparison’.

• Exhibit RL 39-41: Printouts of the ‘Houzz’ Facebook pages, Twitter accounts and Instagram pages.

• Exhibit RL 42: Articles taken from the CNBC webpage (CNBC is an American pay television business news channel) in which, as regards the years 2015 and 2018, it is written, inter alia, that ‘’Houzz has grown to over 25 million monthly unique users around the world’.

• Exhibit RL 43: Printout taken for the website ‘Techcrunch.com’, an American online publisher focusing on the tech industry, in which ‘Houzz’ is mentioned for winning the ‘Best App’ award at the Inaugural 2016 Google Play Awards.

• Exhibit RL 44: Articles taken from the websites of ‘BBC.UK’ (2014), the Guardian (2014), ‘Daily Mail Online’ (2014 and 2015), ‘Inews.co.uk’ (2017), ‘Les Echos.fr’ (2014) in which the activities of the opponent’s are described.

• Exhibit RL 45: ‘Certificates of Circulation’ issued by the Audit Bureau of Circulation and regarding the circulation, in particular, of the Guardian and of the Daily Mail in the United Kingdom.

• Exhibit RL 46: Extract from the opponent’s websites of a page in which articles referring to ‘Houzz’ are listed, being the vast majority of them American media.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation/high degree of distinctiveness through its use in the European Union.

As regards the witness statement submitted by the opponent’s and signed by its Head of Legal, account must be taken of the fact that Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary, since such statements have to be considered as having less probative value than evidence originating from independent sources.

In the present case, the witness statement claims that as a result of the extensive use ‘Houzz’ has acquired substantial reputation in the European Union. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the content of the witness statement is supported by the other items of evidence.

In the first place, the Opposition Division notes that the evidence does not include any direct indications regarding the public’s awareness of the earlier mark (e.g. surveys or opinion polls) and that no information about the share of the European Union market that the mark holds is provided, either. Beside this, in the witness statement it is claimed that it is the opponent’s policy not to disclose the amount of money spent on advertising, marketing of promotion. Hence, it is impossible for the Opposition Division to create any hypothesis as regards the actual size of the promotional activity made by the opponent, and the consequent impact it might have had on the relevant public.

The vast majority of the documents submitted are printouts coming directly from the opponent’s own websites (e.g. Exhibits RL2-4-8-9-10, from 15 to 36, 38-46) or documents directly compiled by the opponent (e.g. Exhibits RL5-6) which do not give any independent and reliable indication of the level of recognition or the market share in the European Union of the mark ‘HOUZZ’.

Likewise, it can only be observed that both in the witness statement and in some of the articles there are no more than generic statements such as that the - ‘Houzz’ platform receives more than 40 million unique visitors per month’-, a data that obviously only provide a global figure, lacking of any direct reference to the relevant territory.

Whatever can be linked to European Union countries is mostly rather generic. In addition, among the articles or references to the use of the marks, the majority of the documents are related mainly to the United States of America. This is the case for instance of media such as Techcrunch.com or CNBC, which moreover are in their majority dated in years which are already quite distant in the past, as in the case of the article published on the New York Times (2012), but also on Forbes (2014), on the website of the BBC (2014), on the Guardian (2014), on the online edition of the UK based newspaper ‘Daily Mail’ (2014 and 2015) and on the French financial newspaper ‘Les Echos.fr’ (2014).

In fact the vast majority of information regarding European countries such as Italy, France, Germany, Spain or the United Kingdom is mostly contained in press releases which directly emanate from the opponent.

As regards the presence of the opponent in social media such as Facebook, Twitter and Instagram, the documents attached do not enable the Opposition Division to determine what portion of these followers, subscribers or likes, originate from the European Union. The opponent’s mere statements in the witness statement are insufficient in that regard. Therefore, these documents are unsuitable to determine the degree of recognition of the mark in the territory concerned.

As far as the ‘Best App’ award at the Inaugural 2016 Google Play Awards mentioned in the article in Exhibit RL 43, it is impossible to determine whether it also has some relevance for the European Union or at least for one or more of its Member States.

As already mentioned before, it is also particularly striking the fact that the documents submitted do not shed any light on the revenues and turnover generated by the earlier mark within the EU nor account is given of marketing expenditures or sponsorship activities undertaken by the opponent that may have increased awareness of the opposing sign in the EU.

If a use of the mark cannot definitely be excluded, however the documents provided by the opponent do not make available sufficient indication, beyond any reasonable doubt, of the earlier trade mark’s exposure to the relevant public and do not allow the Opposition Division to reach a positive and conclusive finding that the earlier mark has acquired a reputation in the European Union.

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 a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services in class 35 covered by the earlier right and the services in class 35 covered by the contested application have been found similar to a low degree while the contested services in Classes 36 and 43 have been found dissimilar to all the services covered by the earlier mark. The signs are similar to an average degree both from a visual and aural perspective. The earlier mark ‘HOUZZ’ is almost fully incorporated within the contested sign’s only verbal element ‘HOUZING’.

The relevant public is both the public at large and the professional public and their degree of attention is average. The earlier mark has a normal degree of distinctive character.

Account is taken of the fact 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).

Due to the visual and aural similarity and the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public who does not speak English, such as the Italian- and the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

The opponent also based its opposition on the grounds of Article 8(5) EUTMR, which will be examined in the next section of the present decision.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Riccardo RAPONI

Andrea VALISA

Francesca CANGERI

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.