ORDER OF THE GENERAL COURT (Fourth Chamber)
10 September 2015(*)
(Procedure — Taxation of costs)
In Case T‑608/11 DEP,
Beifa Group Co. Ltd, established in Ningbo (China), represented by R. Davis and B. Longstaff, Barristers, and N. Cordell, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade marks and Designs) (OHIM),
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Schwan-Stabilo Schwanhäußer GmbH & Co. KG, established in Heroldsberg (Germany), represented by H. Gauß and U. Blumenröder, lawyers,
APPLICATION for taxation of the costs to be recovered from the applicant by the intervening party following the judgment of 27 June 2013 in Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing) (T‑608/11, EU:T:2013:334),
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By application lodged at the Court Registry on 30 November 2011, the applicant, Beifa Group Co. Ltd, formerly Ningbo Beifa Group Co., Ltd, brought an action for annulment of the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade marks and Designs) (‘OHIM’) of 9 August 2011 (Case R 1838/2010-3) relating to invalidity proceedings between Schwan-Stabilo Schwanhäußer GmbH & Co. KG and Ningbo Beifa Group Co., Ltd.
2 The intervener, Schwan-Stabilo Schwanhäußer GmbH & Co. KG, intervened in the proceedings to request that the application be dismissed and the applicant ordered to pay the costs.
3 By judgment of the Court of 27 June 2013 in Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing) (T‑608/11, EU:T:2013:334), the Court dismissed the application and ordered the applicant to pay the costs, including those of the intervener, on the basis of Article 87(2) of the Rules of Procedure of the General Court of 2 May 1991.
4 By letter of 17 April 2014, the intervener requested the applicant to reimburse it the recoverable costs relating to the proceeding before the Court, which it calculated at EUR 20 982.08.
5 By letters of 21 May 2014 and of 14 January 2015, the intervener repeated its request to the applicant. The applicant has not at any time responded to that request.
6 By document lodged at the Court Registry on 18 February 2015, pursuant to Article 92(1) of the Rules of Procedure of 2 May 1991, the intervener brought the present application for the taxation of costs by which it claims that the Court should order the applicant to pay it, as costs incurred for the purpose of the proceedings before the Court, EUR 20 982.08.
7 By fax of 25 February 2015, the Court Registry informed the applicant that the time-limit for submitting its observations on the application for the taxation of costs had been set at 7 April 2015. Nevertheless, the applicant has not submitted any observations in the prescribed period.
Law
8 Under Article 140(b) of the Rules of Procedure of the General Court, expenses necessarily incurred by the parties for the purpose of the proceedings, in particular the travel and subsistence expenses and the remuneration of agents, advisers or lawyers are to be regarded as recoverable costs.
9 It follows from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the Court and, second, to those that were necessary for that purpose (see order of 28 June 2004 in Airtours v Commission, T‑342/99 DEP, ECR, EU:T:2004:192, paragraph 13 and the case-law cited).
10 According to settled case-law, the General Court is not empowered to tax the fees payable by the parties to their own lawyers but it may determine the amount of those fees which may be recovered from the party ordered to pay the costs. When ruling on an application for taxation of costs, the Court is not obliged to take account of any national scale of lawyers’ fees or any agreement in that regard between the party concerned and his agents or advisers (see order in Airtours v Commission, cited in paragraph 9 above, EU:T:2004:192, paragraph 17 and the case-law cited).
11 It has also consistently been held that, in the absence of EU provisions laying down fee-scales, the Court must make an unfettered assessment of the facts of the case, taking into account the purpose and nature of the proceedings, their significance from the point of view of Community law as well as the difficulties presented by the case, the amount of work generated by the proceedings for the agents and advisers involved and the financial interests which the parties had in the proceedings (see order in Airtours v Commission, cited in paragraph 9 above, EU:T:2004:192, paragraph 18 and the case-law cited).
12 It is by having regard to those factors that the amount of the recoverable costs in this case should be determined.
13 In the present case, the intervener has furnished copies of four invoices concerning the case in the main proceedings and for a total amount of EUR 20 982.08 excluding taxes. Those invoices, and the amounts relating to both proceedings in those invoices, are as follows:
– Invoice No 12018727 of 24 April 2012 for EUR 8 044.98 excluding taxes (EUR 9 573.53 including taxes) which refers to 21.2 hours of work at an hourly rate of EUR 300 for the following tasks: reviewing OHIM’s pleadings of 30 November 2011; reporting on that review to the client and the resulting discussion that followed it; answering the Court’s request to adopt a position on the designation of the language of the case; detailed reading of the pleadings, of the available case-law and of the provisions of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1); preparation of the response and its detailed annexes and the expenses relating to FedEx and copying;
– Invoice No 12032809 of 19 July 2012 for EUR 4 450.00 excluding taxes (EUR 5 295.50 including taxes) which includes another 15.4 hours at an hourly rate of EUR 300 for the services referred to in the invoice of 24 April 2012 and 1.5 hours at an hourly rate of EUR 300 for the preparation of the request of 4 July 2012 that a hearing be held;
– Invoice No 13012013 of 13 March 2013 for EUR 6 958.85 excluding taxes (EUR 8 281.03 including taxes) which includes 18.6 hours at an hourly rate of EUR 300 for preparation and attending the hearing and includes the travelling costs and expenses of one of the applicant’s lawyers, Mr H. Gauß;
– Invoice No 13051569 of 25 November 2013 for EUR 1 528.25 which includes the travelling costs and expenses of the applicant’s second lawyer, Mr U. Blumenröder, regarding his attendance at the hearing.
14 The intervener claims that the amount of the expenses sought is justified on account of the purpose and nature of the proceedings, their significance from the point of view of Community law, the financial interests which the parties had in the proceedings as well as the difficulties presented by the case and the amount of work performed by its lawyers.
15 First, as far as the purpose and nature of the proceedings are concerned, their significance from the point of view of EU law and the amount of work related to those proceedings are concerned, the intervener states, in its application, that the applicant relied on seven pleas of procedural and substantive law and that some of those pleas were based on the infringement, misinterpretation and incorrect application of various articles of Regulation No 6/2002 that do not relate to ordinary legal matters with which an intellectual property lawyer regularly deals. In that regard, the intervener claims that, in the absence of well-established academic writings and case-law on the procedural and substantive law on Community designs, a considerable amount of work was necessary to interpret Regulation No 6/2002 and on the implementing regulations. Furthermore, it was necessary to interpret, in a wide sense, German case-law on three-dimensional national trade marks and the interaction of national trade marks with registered Community designs. As a result, the case gave rise to many legal questions and was significant from the point of view of EU law.
16 Second, as far as its financial interests in the proceedings are concerned, the intervener maintains that the proceeding concerned the famous highlighter, STABILO BOSS, which is the applicant’s most important product and is extremely successful across the world, having sold more than two thousand million units at the date of the proceedings. In addition, the applicant seems to have permanently harmed the intervener’s rights, which has already resulted in several proceedings at national and Community level with regard to the intervener’s intellectual property rights relating to that product. The proceedings therefore involved a significant financial interest for the applicant.
17 Third, as far as the amount of work generated by the proceedings for the agents involved is concerned, the intervener maintains that, in the light of the complexity of the case, 36.6 hours invoiced for the preparation and submission of the response, namely 5.2 hours on each of the written pleas and 2.6 hours for each plea for preparing and attending the hearing are appropriate. Moreover, an hourly rate of EUR 300.00 is justified for the work of specialised intellectual property lawyers and is even relatively low with regard to the hourly fees ordinarily charged in Europe. Furthermore, the travel expenses of the applicant’s two lawyers are also reasonable and should be reimbursed in full.
18 In the first place, with regard to the purpose and nature of the case in the main proceedings, the Court notes that, on account of the absence inter alia of well-established Community case-law on the protection of designs, the case at issue was, in itself, relatively complex and, for the same reason, presented a certain significance from the point of view of EU law.
19 However, it must be stated that the contested decision in the case in the main proceedings had been adopted by the Board of Appeal following the annulment by the Court, by judgment of 12 May 2010 in Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing), (T‑148/08, ECR, EU:T:2010:190), of an initial decision which concerned the same subject-matter and which had involved the same parties as the contested decision in the case in the main proceedings. In paragraph 117 of the judgment in Instrument for writing (EU:T:2010:190), the Court had held that ‘since, in the [initial] decision, the Board of Appeal based its conclusion as to the likelihood of confusion between the design in dispute and the earlier [figurative] mark on the comparison of that design with a sign other than the earlier [figurative] mark [namely the earlier three-dimensional trade mark], it has erred in law’.
20 As a result, and in the light inter alia of the number of references made in the second judgment delivered by the Court (judgment in Instrument for writing, EU:T:2013:334), to the reasons given in the first judgment by the General Court (Instrument for writing judgment, EU:T:2010:190) and of the fact that, in both proceedings, the intervener had been represented by the same lawyers, it must be concluded that the degree of legal difficulty of the questions of law raised by the case in the main proceedings can no longer be characterised as exceptional.
21 In the second place, the Court finds that, even if the intervener has not put forward any figures, given the well-known commercial success of the product concerned, the fact that the case presented an important financial interest for it is undeniable.
22 In the third place, as regards the workload that the proceedings may have generated for the intervener’s lawyers, it should be noted that it is for the Courts of the European Union to take into account the amount of work objectively required for the whole of the judicial proceedings. Moreover, it is important to emphasise that the possibility for the Courts of the European Union to assess the value of the work carried out depends on the degree of precision of the information supplied (order of 6 March 2014 in Spectrum Brands (UK) v OHIM — Philips (STEAM GLIDE), Case T‑544/11 DEP, EU:T:2014:147, paragraph 16).
23 In this instance, it is relevant that the written procedure consisted of a single exchange of written pleadings and that a hearing was held on 21 February 2013. As is apparent from the invoices enclosed in the annex to the present application for taxation of costs, the intervener’s lawyers worked a total of 36.6 hours on the analysis of the application and the preparation of the letter concerning the choice of language and the response, 1.5 hours on the submissions made concerning the holding of a hearing and 18.6 hours on preparing and attending the hearing. Those hours are invoiced at an hourly rate of EUR 300, totalling EUR 17 010.00.
24 Although the hourly rate charged can be considered reasonable in remunerating the services of a particularly experienced professional, capable of working very efficiently and quickly, the number of hours invoiced appears excessive in the light of the written pleadings and taking account inter alia of the familiarity that the intervener’s lawyers already had with the file, having participated in the first proceedings before the Court which gave rise to the judgment in Instrument for writing (EU:T:2010:190) and before the Board of Appeal.
25 In that regard, it must be pointed out that the letter concerning the choice of the language of the case was only one page long, the letter concerning the request for a hearing two pages and the response only 18 pages. Finally, the application for taxation of costs contained seven pages.
26 Moreover, according to the case-law, for remuneration at such a level as is invoiced in the present case to be taken into account, there must, as a corollary, be a necessarily strict evaluation of the total number of hours of work absolutely necessary for the purposes of the proceedings at issue (see, to that effect, order of 15 January 2008 in Organisation des Modjahedines du peuple d’Iran v Council, T‑228/02 DEP, EU:T:2008:7, paragraph 64 and the case-law cited).
27 Moreover, the amount of work performed by the intervener’s lawyers must also be placed in perspective in so far as, as a general rule, the task of an intervening party is in procedural terms significantly eased by the work of the party to the main proceedings on whose behalf the former has intervened (order of 12 December 2008 in Endesa v Commission, T‑417/05 DEP, EU:T:2008:570, paragraph 45).
28 Finally, the minutes of the hearing in the case in the main proceedings show that the hearing of 21 February 2013 took place, in the absence of the applicant, from 9.34 to 9.45 and thus lasted approximately 10 minutes. As a result, the Court considers that 18.6 hours of work related to preparing and attending the hearing is manifestly excessive and must be significantly reduced.
29 In the light of the foregoing considerations, the Court considers that the case objectively required the intervener’s lawyers to work for 19 hours. Consequently, an appropriate assessment of the total recoverable costs in respect of the intervener’s legal fees which were absolutely necessary for the purposes of the main proceedings before the Court and those relating to the proceedings for the taxation of costs is EUR 5700.
30 As far as the lawyers’ expenses are concerned, the Court considers that the present case did not give rise to any specific circumstances justifying the expenses incurred in respect of two lawyers, for the purposes of their participation in the hearing, to be regarded as necessary within the meaning of Article 140(b) of the Rules of Procedure. In addition, it is clear both from the minutes of the hearing as well as its transcript that only one of the intervener’s lawyers actually participated at the hearing of 21 February 2012.
31 It is therefore necessary to admit only the expenses incurred by the sole lawyer of the intervener who pleaded at the hearing, those of Mr H. Gauß. In that regard, it is clear from the invoices provided in the annex to the present action that the expenses of that lawyer consisted of airfares in the amount of EUR 979.25 and the costs of staying and travelling in Luxembourg in the amount of EUR 323.00. Those amounts appear, taken as a whole, to be reasonable and supported by invoices with the result that that amount claimed must be considered recoverable.
32 Conversely, the intervener has not provided any evidence capable of establishing the existence and, a fortiori, the necessity of the expenses of EUR 1 456.38 for photocopies and EUR 228.60 for delivery by Fedex. In those conditions, the amount of those costs is set at a flat rate of EUR 500.
33 In the light of all of the foregoing considerations, the Court considers that the costs recoverable by the intervener in respect of the procedure before the Court will be fairly assessed by taxing their amount at EUR 7 502.25, which takes account of all the circumstances of the case up to the date of this order.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby orders:
The full amount of the costs that Beifa Group Co. Ltd, formerly Ningbo Beifa Group Co., Ltd, must reimburse Schwan-Stabilo Schwanhäußer GmbH & Co. KG is set at EUR 7 502.25.
Luxembourg, 10 September 2015.
E. Coulon | M. Prek
Registrar | President |