Hauz 1929 v EUIPO - Houzz (HAUZ EST 1929) (EU trade mark - Judgment) [2021] EUECJ T-68/20 (10 March 2021)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark HAUZ EST 1929 – Earlier EU word mark HOUZZ – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

Hauz 1929 Ltd, established in London (United Kingdom), represented by N. Lyberis, lawyer,

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 November 2019 (Case R 885/2019‑5), relating to opposition proceedings between Houzz and Hauz 1929,

composed of A. Kornezov, President, K. Kowalik-Bańczyk and G. Hesse (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 4 February 2020,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 22 December 2017, the applicant, Hauz 1929 Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

3 The goods in respect of which registration was sought are in Classes 20, 24 and 27 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 20: ‘Furniture and furnishings; Beds, bedding, mattresses, pillows and cushions’;

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

4 The trade mark application was published in European Union Trade Marks Bulletin No 2018/012 of 18 January 2018.

5 On 17 April 2018, Houzz, Inc. filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

– EU word mark No 15 938 434, HOUZZ (‘the earlier mark’), filed on 18 October 2016 and registered on 19 April 2017 for the following goods:

– 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’.

– United Kingdom word mark No 3 191 907, HOUZZ, filed on 18 October 2016 and registered on 31 March 2017 for the following goods and services:

– 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’;

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.

8 On 26 February 2019, the Opposition Division upheld the opposition and refused registration of the mark applied for in respect of all the contested goods, on the ground that there was a likelihood of confusion.

9 On 22 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 19 November 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far it had rejected the application for registration of EU figurative mark No 17 636 119 ‘HAUZ EST 1929’ for the goods in Classes 24 and 27, and dismissed the appeal in respect of the goods in Class 20. In respect of the latter goods, the Board of Appeal found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

– annul the contested decision in part in so far as, for the goods in Class 20, the Board of Appeal dismissed the administrative appeal and upheld the decision of the Opposition Division, with the result that:

– the application for registration of EU figurative mark No 17 636 119 ‘HAUZ EST 1929’ is granted in respect of those goods;

– order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings before the General Court as well as the costs of the proceedings before the Opposition Division and the Board of Appeal.

13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as, in the contested decision, the Board of Appeal found that there was a likelihood of confusion in respect of the goods in Class 20. In that regard, the applicant criticises, in essence, the Board of Appeal’s findings relating to the relevant public’s level of attention, the distinctiveness of the earlier mark, the similarity of the signs, the global assessment of the likelihood of confusion, and the peaceful coexistence of the marks in question.

15 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

18 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

19 In the present case, the Board of Appeal found, in essence, that the relevant public consisted of the general public of the European Union, therefore including consumers who speak English or German and others without knowledge of those languages. That definition of the relevant public is not disputed by the parties.

20 The Board of Appeal also found, in paragraphs 30 and 31 of the contested decision, that the level of attention of that public could vary from average to, in essence, high, depending on the price of the product. As regards ‘beds’ and ‘mattresses’, it took the view that that level of attention was, in essence, high. As regards the other goods, namely ‘furniture and furnishings’ and ‘pillows and cushions’, it found that that level of attention was that of a reasonably well-informed and reasonably observant and circumspect consumer.

21 The applicant, while accepting the Board of Appeal’s finding that the relevant public’s level of attention for ‘beds’ and ‘mattresses’ is, in essence, high, submits that that level of attention is also high for the other goods in Class 20, namely ‘furniture and furnishings; bedding; pillows and cushions’ on account of their price, the frequency of purchase, the extent of their use for the consumer and the conditions under which those goods are usually selected.

23 In that regard, it must be noted that many basic and inexpensive goods belong to the category of ‘furniture and furnishings’. In that respect, the relevant public’s level of attention is not necessarily high. It is true that the appearance, quality or dimensions of the goods may be important for the purpose of determining the relevant public’s level of attention, as the applicant submits. However, those characteristics cannot justify the argument that the level of attention is, in essence, high for all of the goods in question.

24 In those circumstances, the applicant is not justified in claiming that the relevant public’s level of attention should have been regarded as high for all of the goods in question. Accordingly, the Board of Appeal did not err in finding that the relevant public’s level of attention was, in essence, high for beds and mattresses, and average for the goods in the categories ‘furniture and furnishings’ and ‘pillows and cushions’.

25 In the present case, the applicant has not disputed the Board of Appeal’s finding that the goods in Class 20 covered by the mark applied for and the goods covered by the earlier mark are identical.

26 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matrazen Concord v OHIM – Hukla Germany (MATRAZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).

27 Furthermore, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

28 Thus, it is apparent from settled case-law that, even in circumstances where two marks at issue are composed of similar word elements, that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (see judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 48 and the case-law cited). The fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. That could be the case, in particular, where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43; of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 33; and of 10 December 2008, MIP Metro v OHIM – Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 42).

29 In the present case, the Board of Appeal found that the marks at issue had a low degree of visual similarity. As regards the degree of phonetic similarity, the Board of Appeal found that it was high, in view of the pronunciation of ‘ha-uz’ or ‘houz’ of the earlier mark being similar to the pronunciation ‘ha-uz est 1929’ of the mark applied for. On a conceptual level, it concluded that, for the English-speaking or German-speaking part of the relevant public, the signs in question were similar, given the association of the words ‘houzz’ and ‘hauz’ with the word ‘house’. However, for consumers who were rarely exposed to those languages, the Board of Appeal took the view that the conceptual comparison of those signs remained neutral. As regards the element ‘est 1929’ included in the mark applied for, it found that that element would be perceived as the year of creation of the undertaking and that, consequently, it would have an insignificant impact on the comparison.

30 The applicant submits that the marks at issue are not similar. In the first place, it argues that the elements ‘hauz’ and ‘est 1929’ of the mark applied for are perceived as a whole, that is to say, as a set of interrelated words. It relies on the fact that the element ‘est 1929’ still has an essential impact on the comparison of the signs in question in that it contributes significantly to the overall impression produced by that mark. In the second place, the applicant argues that there is not even a slight visual similarity between those signs. In the third place, it submits that the Board of Appeal erred in finding that there was a high degree of phonetic similarity between those signs, in view of the different pronunciations of the earlier mark. In the fourth place, the applicant submits that the Board of Appeal made errors in the conceptual comparison of those signs, in that it ignored the element ‘est 1929’ and the image of a tepee in the mark applied for, and ignored the earlier mark’s conceptual association with sleep.

32 It must be noted, first of all, that the mark applied for consists of two word elements, namely the stylised element ‘hauz’ under which the element ‘est 1929’ appears, written in a considerably smaller font, and also of figurative elements. The signs in question share the letters ‘h’, ‘u’ and ‘z’ and differ in terms of (i) their second letters (‘o’/‘a’), (ii) the additional letter ‘z’, which constitutes the final part of the earlier mark, and (iii) the abovementioned element and its stylisation. The Board of Appeal did not err in finding that the overall stylisation of the mark applied for highlighted the word ‘hauz’ because of the font size and its bold style. It is therefore the dominant element of the latter mark.

33 As regards the visual comparison, it should be noted that there are significant similarities between the single element of the earlier mark ‘houzz’ and the dominant element of the mark applied for, ‘hauz’. Three out of the respective four and five letters of those elements are identical, namely the letters ‘h’, ‘u’ and ‘z’, which also appear in the same order, the first and last letters being the same. Moreover, the length of those elements is very similar.

34 As regards the element ‘est 1929’ of the mark applied for, which appears in a much smaller font and does not constitute the dominant element of that mark for the reasons set out in paragraph 32 above, it is appropriate to note, as does the applicant, the case-law according to which, although it is appropriate to take into consideration the distinctive and dominant elements of the marks for the purposes of assessing the similarity of the signs, no element can be totally ignored because of its low degree of distinctiveness (judgment of 15 April 2010, Cabel Hall Citrus v OHIM – Casur (EGLÉFRUIT), T‑488/07, not published, EU:T:2010:145, paragraph 34).

35 However, although the element ‘est 1929’ in the mark applied for must be taken into account in the assessment of the similarity of the signs in question, it must be noted that it does not play a decisive role in the appearance of that mark and is not very distinctive, since it refers only to a year.

36 Furthermore, nor are the significant similarities between the signs in question found in paragraph 33 above diminished by the figurative elements contained in the mark applied for, namely the font of the word element ‘hauz’ and the image of what the applicant describes as an ‘open tepee’. First, that font is common and, second, the ‘open tepee’ is merely a graphic stylisation of the letter ‘a’.

37 Consequently, it must be concluded that the signs in question are visually similar to an average degree.

38 As regards the phonetic comparison, it must be held that the Board of Appeal did not err in accepting that, depending on the language, the earlier mark was likely to be pronounced ‘ha-uz’ or ‘houz’. As regards the mark applied for, it will be pronounced ‘ha-uz est 1929’ if the relevant public chooses to pronounce that mark as a whole.

39 As EUIPO submits, the pronunciation of the element ‘hauz’ of the mark applied for is similar, or even identical, to the pronunciation of the earlier mark. Even if the applicant’s argument that there are several possible pronunciations of the earlier mark were to be regarded as correct, the fact would remain that those different pronunciations have an average or high degree of similarity, depending on the pronunciation chosen, to the pronunciation of the mark applied for. For the part of the relevant public which will pronounce the earlier mark as ‘ha-uz’, there is a high degree of phonetic similarity to the element ‘hauz’ of the mark applied for.

40 Next, as regards the element ‘est 1929’ of the mark applied for, it is appropriate to note the case-law according to which, in essence, where a word element is descriptive and plays only a secondary role in the mark applied for, it may be presumed that the relevant public will not even pronounce it (see, to that effect, judgments of 3 July 2013, GRE v OHIM – Villiger Söhne (LIBERTE american blend against a red background), T‑206/12, not published, EU:T:2013:342, paragraphs 42 to 45 and the case-law cited, and of 3 June 2015, Pensa Pharma v OHIM – Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraphs 105 to 107 and the case-law cited).

41 In the present case, it is highly likely that, in practice, the element ‘est 1929’ of the mark applied for will not be pronounced by the relevant public when it refers to that mark. That public will focus on the element ‘hauz’, which is the dominant element of that mark for the reasons set out in paragraph 32 above.

42 In those circumstances, it must be pointed out that the Board of Appeal was right to find that the signs in question have a high degree of phonetic similarity.

43 As regards the conceptual comparison, as the Board of Appeal correctly found, a significant part of the public in the European Union is likely to associate the words ‘houzz’ of the earlier mark and ‘hauz’ of the mark applied for with the word ‘house’, even though those words are written differently. They are English-speaking consumers, given the similarity to the English word ‘house’, or German-speaking consumers, given the similarity to the German word ‘Haus’ (house). For that part of that public, the signs in question are conceptually similar. By contrast, the conceptual comparison remains neutral as regards the other part of that public which has little knowledge of English or German.

44 Furthermore, the element ‘est 1929’ of the mark applied for will be perceived by the relevant public as the year in which the undertaking was created, with the result that its impact on the comparison is insignificant, as the Board of Appeal correctly found.

45 As regards the applicant’s argument that the earlier mark can also be associated conceptually with sleep due to the group of letters ‘zz’ at the end of the word ‘houzz’, it must be stated that there is no universally recognised onomatopoeia ‘zz’ for sleep. It follows that the concept of ‘sleep’ is not present in the word ‘houzz’. In any event, according to the case-law, it is sufficient that there is conceptual similarity in one of the meanings of the signs at issue (judgment of 13 April 2011, United States Polo Association v OHIM – Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 47).

46 The same is true of the image of a tepee which is open to welcome the consumer inside, referred to by the applicant in relation to the mark applied for. It is merely a graphic stylisation of the letter ‘a’ of that mark which is not particularly striking and does not create a semantic content based on the image of a tepee.

47 It follows from the foregoing that the Board of Appeal did not err in finding that the signs in question had a high degree of conceptual similarity for the part of the relevant public which associates the words ‘houzz’ and ‘hauz’ with the word ‘house’, namely English-speaking or German-speaking consumers, and that there was a conceptually neutral comparison for the other part of that public which has little knowledge of English or German.

48 It should be noted that, according to case-law, for the purpose of assessing the distinctive character of a mark or of an element making up a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).

49 Thus, the more distinctive the earlier mark, the greater the likelihood of confusion. Consequently, since protection of a registered trade mark depends, in accordance with Article 8(1)(b) of Regulation 2017/1001, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).

50 In the present case, the Board of Appeal found that, as regards English-speaking or German-speaking consumers and consumers with a good command of English or German, since the earlier mark HOUZZ could be perceived as referring to the word ‘house’, and therefore referring to the function of the goods in question, it had a low degree of distinctiveness. By contrast, even though it considered that that word was known throughout the European Union, it took the view that it could not be assumed that all the relevant public, in particular the Polish-speaking and Bulgarian-speaking public, would understand the reference to that word in the word ‘houzz’. Therefore, as regards the part of that public which does not speak English or German, in particular the Polish-speaking and Bulgarian-speaking public, the Board of Appeal found that the earlier mark had a normal degree of distinctiveness.

51 The applicant submits that the Board of Appeal erred in finding that the earlier mark had a normal degree of distinctiveness for the part of the relevant public, in particular Polish-speaking or Bulgarian-speaking consumers, which does not have a good command of English or German. The applicant relies on the argument that the word ‘house’, to which that mark refers, is a simple English word, which is understood in all the Member States of the European Union, including by non-English speakers. According to the applicant, the different spelling is not sufficient to prevent the Polish-speaking or Bulgarian-speaking public from recognising the word ‘house’ in the word ‘houzz’. It therefore submits that that mark has a low degree of distinctiveness for all of that public.

53 In the present case, as is apparent from paragraph 43 above, since a significant part of the general public of the European Union is likely to associate the word ‘houzz’ with the concept of house, the earlier mark has only a low degree of inherent distinctiveness.

54 Furthermore, a misspelling does not generally amount to evidence of any creative aspect capable of distinguishing the applicant’s goods and services from those of other undertakings (see, to that effect, judgment of 31 January 2001, Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform), T‑331/99, EU:T:2001:33, paragraph 25 and the case-law cited).

55 Similarly, the difference in spelling, resulting from the use of the group of letters ‘zz’, is not striking to such an extent that it might divert the relevant public’s attention from the association which it would make with the English word ‘house’ or with the German word ‘Haus’. Although that spelling thus requires some intellectual effort on the part of the English-speaking or German-speaking consumer in order for the sign to be understood as referring to the term ‘house’ or ‘Haus’, that does not alter the fact that the earlier mark has a low degree of distinctiveness for that public.

56 By contrast, for the part of the relevant public which does not have a command of English or German, that particular spelling is more likely to impede their understanding of the meaning of the earlier mark, with the result that, for that part of that public, that mark has a normal degree of distinctiveness.

57 Consequently, the earlier mark must be regarded as having a low degree of distinctiveness for the part of the relevant public which has a good command of English or German, and as having a normal degree of distinctiveness for the public which does not have a command of those languages, in particular the Polish-speaking and Bulgarian-speaking public.

58 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

59 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

60 Furthermore, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 27).

61 Thus, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).

62 Lastly, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 16; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 18; and of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 26). Those factors must be weighed up, given that they are interdependent (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19).

63 In the present case, the Board of Appeal’s finding that there was a likelihood of confusion as regards the goods in Class 20 was based on assessments that, first, the relevant public’s level of attention varied from average to, in essence, high, second, the level of similarity of the signs in question was visually low and phonetically high, and that those signs were conceptually similar as regards English-speaking or German-speaking consumers, third, the earlier mark had a low degree of distinctiveness for those consumers and a normal degree of distinctiveness for the rest of the relevant public and, fourth, the goods in question were identical. The low degree of visual similarity was offset by the goods in question being identical and by the high degree of phonetic similarity between the signs.

64 The applicant criticises the Board of Appeal on the ground that it incorrectly assessed the relevant factors. It submits that the visual differences between the marks at issue are of great importance in the global assessment. It notes, in that regard, that the Board of Appeal was entitled to confirm that the goods in question were usually sold in shops or department stores where the consumer chooses the goods on the basis of the image of the mark affixed to those goods. The applicant stresses that the consumer does not purchase goods in that specific category in response to advertisements broadcast on television or radio, because he or she has heard of them or on the basis of information provided by a salesperson or during a telephone call intended to ask questions about the goods, without first examining them visually. Consequently, the applicant takes the view that any phonetic similarity between those marks, which it disputes, is secondary and that the Board of Appeal attributed too much importance to the phonetic comparison of those marks. In any event, the ambiguity in the pronunciation of the earlier mark encourages the relevant public to concentrate on its visual aspect. The applicant also submits that, if there were an allusion between the words ‘houzz’ and ‘hauz’ and the word ‘house’, the phonetic and conceptual impression would be secondary, since the relevant public would focus on the visual aspect of the marks in question. Next, visually, the presence of the element ‘est 1929’ in the mark applied for is, in the applicant’s view, significant in the overall impression created by that mark. The applicant also claims that the relevant public’s level of attention is high, meaning that it would be more able to notice the differences between such marks. Finally, even if the distinctiveness of the earlier mark were to be regarded as normal, the differences between the marks concerned would be sufficient to exclude the likelihood of confusion between those marks.

66 In the present case, as noted in paragraphs 25 to 47 above, the goods in question are identical and the marks at issue are visually, phonetically and conceptually similar.

67 The marks at issue have an average degree of visual similarity, a high degree of phonetic similarity and may have a high degree of conceptual similarity for part of the relevant public.

68 It must be held, in that regard, that, even if the relevant public focuses on the visual impression, as per the applicant’s arguments, the marks at issue remain visually similar to an average degree (see paragraphs 33 to 36 above).

69 Furthermore, as EUIPO argues, the phonetic similarity between the marks at issue, which is high for a part of the relevant public (see paragraphs 38 to 42 above), cannot be ignored in the overall assessment of the likelihood of confusion (see, to that effect, judgment of 23 September 2009, Phildar v OHIM – Comercial Jacinto Parera (FILDOR), T‑99/06, not published, EU:T:2009:346, paragraph 81).

70 Furthermore, for the English-speaking or German-speaking part of the relevant public, the marks at issue are also conceptually similar and the earlier mark has a low degree of distinctiveness (see paragraphs 43 to 47 and 53 to 56 above, respectively). It is apparent from the case-law that, in order to find that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is not necessary to find that that likelihood exists for the whole of the relevant public. It is sufficient if it exists for a significant part of that public (see judgment of 19 September 2019, Unifarco v EUIPO – GD Tecnologie Interdisciplinari Farmaceutiche (TRICOPID), T‑359/18, not published, EU:T:2019:626, paragraph 124 and the case-law cited).

71 Finally, contrary to the applicant’s arguments, the relevant public’s level of attention, which can vary from average to, in essence, high (see paragraphs 23 and 24 above), does not allow the likelihood of confusion to be ruled out in the light of the goods in question being identical and the similarity between the marks at issue.

72 In those circumstances, it should be noted that the Board of Appeal was right to find that the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established in the present case as regards the goods in Class 20 covered by the mark applied for.

73 That conclusion is valid not only for the English-speaking or German-speaking part of the relevant public, as has just been explained, but also for the part of that public which has little knowledge of English or German, in particular the Polish-speaking and Bulgarian-speaking public. For that part of that public, the goods in Class 20 covered by the mark applied for remain identical to those covered by the earlier mark and, for that part of the public, there is also an average degree of visual similarity and an average or high degree of phonetic similarity between those marks. Although it is true that, for that part of that public, the conceptual comparison remains neutral (see paragraph 43 above), the earlier mark has, by contrast, a normal degree of distinctiveness (see paragraph 56 above). As has been pointed out in paragraph 59 above, according to the case-law, the more distinctive the earlier mark, the greater will be the likelihood of confusion. In those circumstances, the Board of Appeal was right to find that there was also a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for the specific part of the relevant public which has little knowledge of English or German, in particular the Polish-speaking and Bulgarian-speaking public.

74 As regards the ‘indirect likelihood of confusion’ relied on by the applicant, it reiterates its argument that the marks at issue contain significant differences which do not create a likelihood of confusion on the part of the consumer. It must be noted that, as is apparent from paragraphs 66 to 73 above, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the goods in Class 20 covered by the mark applied for and that argument must, therefore, be rejected.

75 As regards the peaceful coexistence of the marks, the evidence provided by the applicant does not support the conclusion that the marks at issue coexist in that way. According to that evidence, the goods bearing the contested mark had been sold for one or two years and only in Greece, Cyprus and Italy. It follows, in accordance with what EUIPO submits, that it is a limited coexistence, in terms of duration and geographical extent, which does not support the conclusion that consumers in the relevant territory, when faced with those marks, would know that they belong to different undertakings.

76 Consequently, the plea in law relied by the applicant, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected.

77 It follows from all the foregoing that the applicant’s arguments must be rejected and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second and third indents of the applicant’s first head of claim.

78 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.

79 Furthermore, as regards the applicant’s heads of claim relating to the costs incurred before the Opposition Division and the Board of Appeal, it is sufficient to note, in any event, that, since the present judgment dismisses the action brought against the contested decision, paragraph 4 of the operative part of that decision continues to govern the costs incurred before the Opposition Division and the Board of Appeal (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hauz 1929 v EUIPO - Houzz (HAUZ EST 1929) (EU trade mark - Judgment) [2021] EUECJ T-68/20 (10 March 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T6820.html Cite as: ECLI:EU:T:2021:127, [2021] ETMR 31, [2021] EUECJ T-68/20, EU:T:2021:127

Court of Justice of the European Communities (including Court of First Instance Decisions)