Judgments nº T-67/20 of Tribunal General de la Unión Europea, March 10, 2021

• Resolution Date: March 10, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-67/20

(EU trade mark - Opposition proceedings - Application for the EU figurative mark HAUZ NEW YORK - Earlier EU word mark HOUZZ - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-67/20,

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

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Houzz, Inc., established in Palo Alto, California (United States),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 November 2019 (Case R 886/2019-5), relating to opposition proceedings between Houzz and Hauz 1929,

THE GENERAL COURT (Tenth Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 3 February 2020,

having regard to the response lodged at the Court Registry on 16 April 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,

gives the following

Judgment

Background to the dispute

1 On 13 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).

2 Registration as a mark was sought for the following figurative sign:

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 24: ‘Fabrics; Textile goods, and substitutes for textile goods’;

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

4 The trade mark application was published in European Union Trade Marks Bulletin No 2017/242 of 21 December 2017.

5 On 21 March 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.

6 The opposition was based on the following earlier rights:

- 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’;

- Class 40: ‘Bespoke furniture’.

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 17 593 807 HAUZ NEW YORK 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.

Forms of order sought

11 The applicant claims that the Court should:

- 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:

- Appeal R 886/2019-5 is upheld in its entirety;

- Opposition B 3 048 557 is rejected in its entirety;

- the application for registration of EU figurative mark No 17 593 807 HAUZ NEW YORK 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.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

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.

14 EUIPO disputes the applicant’s arguments.

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...