JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 June 2025 (*)
( EU trade mark – International registration designating the European Union – Word mark DYNAMIC RESPONSE IMAGING – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑505/24,
KenWave Solutions Inc., established in Mississauga (Canada), represented by L. Andersen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl (Rapporteur), President, I. Nõmm and G. Steinfatt, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1        By its action under Article 263 TFEU, the applicant, KenWave Solutions Inc., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 July 2024 (Case
R 939/2024-5) (‘the contested decision’).
Background to the dispute
2        On 8 August 2023, the applicant obtained from the International Bureau of the World Intellectual Property Organization (WIPO) the international registration designating the European Union and bearing the number 1760659 in respect of the word mark DYNAMIC RESPONSE IMAGING. On 9 November 2023, EUIPO received notification of the international registration at issue, pursuant to the fourth sentence of Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), as amended on 12 November 2007.
3        The mark applied for covered goods and services in Classes 9, 37 and 42 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 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Surface vibroacoustic wave sensors; ultrasound flow detectors, not for medical purposes; vibroacoustic inspection scanners for non-destructive testing’;
–        Class 37: ‘Sewer and drain cleaning, inspection, repair, replacement and maintenance services; consulting services in the field of maintenance to prevent water leaks and water damage prevention; maintenance, monitoring, repair and diagnostic services, all for water leakage prevention and detection systems and its components’;
–        Class 42: ‘Advisory services relating to material testing; consulting in the field of acoustics, sound, noise, and vibration for scientific purposes; industrial structure inspection and analysis; pipeline inspection services; quality control testing of anticorrosion materials; testing and research on prevention of pollution; engineering, testing and inspection services, namely, non-invasive testing of pipes to detect leaks, defects and fault location; data collection, processing and automation service using proprietary software to evaluate, analyze and collect sensor data on leak detection and pipe conditions’.
4        By decision of 5 March 2024, the examiner rejected the application for registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) and (c) and Article 7(2) of 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).
5        On 6 May 2024, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By the contested decision, the Board of Appeal dismissed the appeal on the grounds that the mark applied for had descriptive character for the purposes of Article 7(1)(c) of Regulation 2017/1001, in respect of all the goods and services referred to in paragraph 3 above.
Forms of order sought
7        The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        refer the case back to EUIPO with a view to accepting the registration of the mark applied for;
–        order EUIPO to pay the costs of the proceedings before the Board of Appeal and the General Court.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
9        The applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 7(1)(b) and (c) of Regulation 2017/1001, and (ii) infringement of Article 94(1) of that regulation.
10      Since the second plea in law constitutes a formal plea, while the first plea in law constitutes a substantive plea, the Court considers it appropriate to examine the second plea first.
The second plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
11      The applicant maintains that the Board of Appeal has not stated reasons that are coherent and logical and that assumptions about use of the nature of the goods and services at issue have played a role without being sufficiently explained.
12      EUIPO disputes the applicant’s arguments.
13      In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
14      In the present case, it must be found that the Board of Appeal stated in a clear and detailed manner, in paragraphs 48 to 58 of the contested decision, the reasons for which the mark applied for explicitly described the nature and function of the goods and services at issue. Furthermore, it is apparent from the examination of the first plea below that the reasoning set out in the contested decision enabled the applicant to understand the contested decision and to challenge it on the merits.
15      In those circumstances, the second plea in law must be rejected as unfounded.
The first plea in law, alleging infringement of Article 7(1)(b) and (c) of Regulation 2017/1001
16      The applicant claims that the Board of Appeal incorrectly found that the mark applied for was devoid of any distinctive character and was descriptive for the purposes of Article 7(1)(b) and (c) of Regulation 2017/1001.
17      EUIPO disputes the applicant’s arguments.
18      Article 7(1)(c) of Regulation 2017/1001 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.
19      For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the relevant public immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
20      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
21      A word mark which is descriptive of the characteristics of goods or services for which its registration as a mark has been applied for is, as a result, necessarily devoid of any distinctive character as regards those goods or services (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 33 and the case-law cited).
22      It is in the light of those considerations that the first plea in law must be examined.
The relevant public
23      In paragraphs 22 to 26 of the contested decision, the Board of Appeal noted that the goods and services covered by the mark applied for targeted professionals in the highly specialised sector of engineering, water and wastewater systems, who would display a high level of attention. Furthermore, since the mark applied for consisted of words derived from English, the Board of Appeal focused, for the purposes of examining the descriptive character of the mark applied for, on the English-speaking part of the public in the European Union.
24      There is no need to call into question the Board of Appeal’s assessments, which, moreover, are not disputed by the applicant.
25      Furthermore, contrary to what the applicant maintains, the Board of Appeal did not make an error of assessment in noting, in paragraph 27 of the contested decision, that the fact that the relevant public has specialist knowledge or displays a high level of attention does not increase the probability that a sign will be perceived as non-descriptive or as distinctive, but may rather favour a finding that the sign has a descriptive or non-distinctive character. According to the case-law, a high level of attentiveness on the relevant public’s part does not imply that a sign is less subject to any absolute grounds for refusal. In fact, the opposite may be true, since training and professional experience will enable the relevant public to grasp more easily the descriptive connotations of the mark applied for in respect of the goods and services concerned, whose characteristics it knows very well (see, to that effect, judgment of 17 September 2019, Geske v EUIPO (revolutionary air pulse technology), T‑634/18, not published, EU:T:2019:611, paragraph 24 and the case-law cited).
The meaning of the mark applied for
26      In paragraphs 29 to 32 of the contested decision, the Board of Appeal noted that the mark applied for consisted of three word elements, namely ‘dynamic’, ‘response’ and ‘imaging’. According to the Board of Appeal, the examiner had convincingly set out, by means of references to online dictionaries, that the words ‘dynamic response’ referred inter alia to ‘the dynamic response of a machine, structure or process [which was] how it react[ed] over time to something that [was] done to it’ and that the word ‘imaging’ meant, inter alia, ‘the process of forming images that represent things such as sound waves, temperature, chemicals, or electrical activity’. It thus found, like the examiner, that the mark applied for referred to the process of forming images or collecting data that represented how a machine, structure or process reacted over time to specific stimuli or conditions.
27      There is no need to call into question the Board of Appeal’s assessments, which, moreover, have not been disputed by the applicant.
The link between the meaning of the mark applied for and the goods and services at issue
28      In paragraph 33 of the contested decision, the Board of Appeal found, in essence, that the words ‘dynamic response imaging’ explicitly described the nature and function of the goods and services at issue in so far as they conveyed the concept of real-time, responsive imaging and data collection that professionals use to monitor, inspect and maintain various systems and structures. Thus, the mark applied for clearly communicates the utility and application of those goods and services to the professional public in engineering and related fields.
29      The applicant criticises the Board of Appeal for concluding
that the mark applied for was descriptive of the nature and function of the goods and services at issue. First, it claims that the relevant public will not perceive any link between the meaning of the mark applied for and the goods and services at issue, and that the mark applied for is, at best, only suggestive, which is not sufficient to establish that it is descriptive, in accordance with the judgment of 31 January 2001, Taurus-Film v OHIM (Cine Action) (T‑135/99, EU:T:2001:30). Secondly, it notes that the mark applied for constitutes a fanciful combination and that there is a perceptible difference between that mark and the mere sum of the elements which compose it.
30      In the first place, with regard to ‘surface vibroacoustic wave sensors; ultrasound flow detectors, not for medical purposes; vibroacoustic inspection scanners for non-destructive testing’ in Class 9, the Board of Appeal found that those devices all pertained to detection, measurement and inspection processes through non-destructive testing methods, that they used advanced technology to form images or gather data that represented the conditions and responses of various materials or systems without causing damage and that they were thus used to generate images or data that represented the dynamic responses of materials or systems to testing procedures. It thus concluded that the relevant public, made up of professionals in engineering and related fields, would immediately perceive through the mark applied for that those tools captured real-time responses to vibrations, sound waves or ultrasonic signals, providing a dynamic visualisation of the internal conditions without causing damage.
31      In that regard, the applicant maintains that the Board of Appeal did not demonstrate that the goods at issue were used to ‘generate images or data that represent[ed] the dynamic responses of materials or systems to testing procedures’ and that that finding was out of line with the technical field.
32      First, it is apparent from the very title of the ‘surface vibroacoustic wave sensors’, ‘ultrasound flow detectors, not for medical purposes’ and ‘vibroacoustic inspection scanners for non-destructive testing’ covered by the mark applied for that those devices are used to generate images and data, which constitute ‘dynamic responses’ meaning that they show in real time how vibroacoustic waves or ultrasonic flows react during testing procedures. Secondly, the applicant has not put forward any specific evidence to demonstrate that that finding was out of line with the technical field. In those circumstances, contrary to what the applicant maintains, the mark applied for cannot be found to be only suggestive, since it clearly describes the nature and purpose of the goods in Class 9.
33      In the second place, as regards the ‘sewer and drain cleaning, inspection, repair, replacement and maintenance services; consulting services in the field of maintenance to prevent water leaks and water damage prevention; maintenance, monitoring, repair and diagnostic services, all for water leakage prevention and detection systems and its components’ in Class 37, the Board of Appeal first found that those services all involved the upkeep, repair and preventive maintenance of systems related to water and wastewater, with the primary focus on ensuring the functionality and integrity of those systems to prevent failures and damage. It then noted that they involved monitoring and diagnosing systems to see how they responded to maintenance and repair efforts and that, in that context, the mark applied for referred to the continuous monitoring and visual representation of how those systems responded to cleaning, repair or maintenance efforts over time. According to the Board of Appeal, that could involve using imaging technologies to detect leaks or blockages and to visualise the system’s condition dynamically.
34      In that regard, the applicant argues that ‘sewer and drain cleaning and replacement services’ cannot be characterised as ‘monitoring and diagnosing systems to see how they respond to maintenance and repair efforts’.
35      It is nevertheless sufficient to find that the ‘sewer and drain cleaning, inspection, repair, replacement and maintenance services’ covered by the mark applied for are not limited to sewer and drain cleaning and replacement services, but also include sewer and drain inspection, repair, and maintenance services, which can clearly be described as ‘monitoring and diagnosing systems to see how [sewers and drains] react to maintenance and repair efforts’, as the Board of Appeal correctly noted. In those circumstances, the Board of Appeal did not make an error of assessment in finding that the mark applied for was descriptive of the nature and purpose of the services in Class 37.
36      In the third place, with regard to the ‘advisory services relating to material testing; consulting in the field of acoustics, sound, noise, and vibration for scientific purposes; industrial structure inspection and analysis; pipeline inspection services; quality control testing of anticorrosion materials; testing and research on prevention of pollution; engineering, testing and inspection services, namely, non-invasive testing of pipes to detect leaks, defects and fault location; data collection, processing and automation service using proprietary software to evaluate, analyze and collect sensor data on leak detection and pipe conditions’, in Class 42, the Board of Appeal found, in particular, that those advisory, consulting and testing services encompassed activities such as material testing, pipeline inspection and data collection using sensors and that those services often relied on creating images or data models that showed how materials and structures responded dynamically to various tests and conditions.
37      The applicant claims that it is obvious that the relevant public will not consider the mark applied for to be descriptive of ‘quality control testing of anticorrosion materials’, since the purpose of such testing is to test some materials. However, as the Board of Appeal explained, in essence, ‘quality control testing of anticorrosion materials’, which aims to carry out some tests to check whether the materials at issue have defects or not, can be carried out using sensors creating images or data models in order to show how anticorrosion materials respond dynamically to various tests and conditions, with a view to controlling their quality.
38      The same applies to ‘engineering, testing and inspection services, namely, non-invasive testing of pipes to detect leaks, defects and fault location’, in respect of which the applicant claims that the mark applied for is, at most, only suggestive. As the Board of Appeal correctly noted, those services may also involve imaging techniques that display the pipe’s response to pressure or sound waves, revealing defects and ensuring quality control. In those circumstances, the mark applied for cannot be considered to be only suggestive, since it clearly describes the nature and purpose of the services in Class 42.
39      In the fourth place, it should be borne in mind, as regards marks consisting of a combination of elements, the descriptive character of a mark may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 23 and the case-law cited). A mark consisting of elements each of which is descriptive of characteristics of the goods or services it covers is itself descriptive of the characteristics of those goods or of those services, for the purposes of Article 7(1)(c) of Regulation 2017/1001, unless there is a perceptible difference between that mark and the mere sum of its parts. That assumes that, because of the unusual nature of the combination of those elements in relation to those goods or services, that mark creates an impression that is sufficiently far removed from that produced by the simple juxtaposition of indications lent by the elements of which it is composed (see, to that effect, judgment of 8 July 2008, Lancôme v OHIM – CMS Hasche Sigle (COLOR EDITION), T‑160/07, EU:T:2008:261, paragraph 49). In that regard, the analysis of the word at issue in the light of the appropriate lexical and grammatical rules is also relevant (see judgment of 13 July 2022, dennree v EUIPO (BioMarkt), T‑641/21, not published, EU:T:2022:446, paragraph 30 and the case-law cited). Furthermore, since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark taken separately, which is important (see judgment of 9 September 2020, Daw v EUIPO (SOS Loch- und Rissfüller), T‑626/19, not published, EU:T:2020:399, paragraph 31 and the case-law cited).
40      In the present case, the words ‘dynamic response imaging’, as a whole, are a simple combination of three English words, which conforms to English grammatical rules and will be easily and immediately understood by the relevant public. Those words are not likely to create an impression sufficiently far removed from that produced by the simple juxtaposition of indications lent by the elements ‘dynamic’, ‘response’ and ‘imaging’ of which it is composed, in accordance with the case-law referred to in paragraph 39 above. It follows that, contrary to what the applicant maintains, the combination of those three elements is not fanciful.
41      It follows from the foregoing that the Board of Appeal correctly concluded that the relevant English-speaking public would perceive the mark applied for, immediately, and without further thought, as describing characteristics of the goods and services included in Classes 9, 37 and 42.
42      That finding cannot be called into question by the fact that the mark applied for is protected in the United Kingdom. It is sufficient to recall that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it, that it applies independently of any national system, and that the legality of the decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation 2017/1001, as it is interpreted by the Courts of the European Union (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, if appropriate, the Courts of the European Union, are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national trade mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).
43      Furthermore, the applicant’s argument relating to the distinctive character of the mark applied for cannot, in any event, succeed, in so far as, since that mark is descriptive of the characteristics of the goods and services at issue, it is necessarily devoid of any distinctive character as regards those same goods and services within the meaning of Article 7(1)(b) of Regulation 2017/1001, in accordance with the case-law referred to in paragraph 21 above.
44      In those circumstances, the first plea in law and, therefore, the action in its entirety must be rejected, without it being necessary to examine the plea of inadmissibility raised in defence by EUIPO with regard to the applicant’s second head of claim.
Costs
45      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.
46      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. As no hearing was held, each party must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders KenWave Solutions Inc. and the European Union Intellectual Property Office (EUIPO) to each bear their own costs.
Škvařilová-Pelzl
Nõmm
Steinfatt
Delivered in open court in Luxembourg on 11 June 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.