ORDER OF THE GENERAL COURT (Seventh Chamber)
6 June 2019 (*)
(EU trade mark — Procedure — Taxation of costs)
In Case T‑859/16 DEP,
Sociedad Anónima Damm, established in Barcelona (Spain), represented by P. González-Bueno Catalán de Ocón and C. Aguilera Montañez, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO),
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz GmbH & Co. KG, established in Au-Hallertau (Germany), represented by C. Thomas, lawyer,
APPLICATION for taxation of the costs to be reimbursed by the applicant to the intervener following the judgment of 19 June 2018, Damm v EUIPO — Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER) (T‑859/16, not published, EU:T:2018:352),
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas (Rapporteur) and A. Marcoulli, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought by the parties
1 By decision of 5 September 2016 (Case R 2428/2015-5) (‘the contested decision’), the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) confirmed the decision of the Opposition Division which had rejected the opposition brought by Plataforma Continental SL, the predecessor in law to the applicant, Sociedad Anónima Damm, against the application brought by the intervener, Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz GmbH & Co. KG, for registration of the figurative sign EISKELLER as an EU trade mark, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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 In the contested decision, the Board of Appeal also ordered the applicant to pay the fees and costs incurred by the intervener for the purposes of the opposition and appeal proceedings, which were fixed at a total of EUR 850 (paragraph 57 of the contested decision and paragraphs 2 and 3 of the operative part of that decision).
3 By application lodged at the Court Registry on 7 December 2016, the applicant brought an action against the contested decision. The intervener intervened in support of the form of order sought by EUIPO before the Court and claimed that the action should be dismissed and the applicant ordered to pay the costs.
4 By judgment of 19 June 2018, Damm v EUIPO — Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER) (T‑859/16, not published, EU:T:2018:352) (‘the judgment in EISKELLER’), the Court dismissed the action as unfounded and, pursuant to Article 134(1) of its Rules of Procedure, ordered the applicant to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
5 By letter of 3 August 2018, the intervener requested the applicant to pay its costs relating both to the proceedings before EUIPO and to the proceedings before the Court. By letter of 27 August 2018, the intervener again requested the applicant to pay its costs in respect of those proceedings.
6 Since no payment was made by the applicant, the intervener, by document lodged at the Court Registry on 7 November 2018, made an application for taxation of costs pursuant to Article 170(1) of the Rules of Procedure.
7 The intervener asks the Court to order the applicant to pay to it a total sum of EUR 13 579.62, consisting of the sum of EUR 850 in respect of the proceedings before EUIPO and of an amount of EUR 12 729.62 in respect of the proceedings before the Court. In addition, the intervener requests that an enforceable writ of execution be sent to it.
8 On 14 January 2019, the applicant submitted its observations on the application for taxation of costs. It requests the Court to fix the costs at a total amount of EUR 3 318.59.
9 On 19 February 2019, the intervener submitted its observations on the applicant’s observations, which the Court decided not to place on the file.
Law
Preliminary observations
10 In accordance with Article 170(3) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the Court, at the request of the interested party, is to give its decision by way of an order from which no appeal may lie, after giving the party concerned by the application an opportunity to submit his observations.
11 According to Article 140(b) of the Rules of Procedure ‘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 regarded as recoverable costs. 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 which were necessary for that purpose (see order of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 11 and the case-law cited).
12 With regard to lawyers’ fees, it should be observed that, according to a consistent line of case-law, the EU judicature does not have jurisdiction 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 of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 12 and the case-law cited).
13 It is also settled case-law that, failing any provisions of EU law relating to fee scales, the Court must make an unfettered assessment of the case, taking into account the purpose and nature of the proceedings, their significance from the point of view of EU law, and also the difficulties presented by the case, the amount of work generated by the case for the agents or advisers involved and the economic interests that the parties had in the proceedings (see order of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 13 and the case-law cited).
14 Lastly, when fixing the costs to be recovered, the Court takes account of all the circumstances of the case up to the signing of the order on the taxation of costs, including the costs necessarily incurred in connection with the taxation of costs proceedings (see orders of 11 July 2018, Rühland v EUIPO, T‑779/16 DEP, not published, EU:T:2018:467, paragraphs 10 and 18 and the case-law cited, and of 19 September 2018, Viridis Pharmaceutical v EUIPO, T‑276/16 DEP, not published, EU:T:2018:620, paragraph 19 and the case-law cited).
15 The amount of recoverable costs in the present case must be assessed in the light of those considerations.
Costs relating to the proceedings before EUIPO
16 With regard to the costs relating to the opposition proceedings before the Opposition Division and the appeal proceedings before the Board of Appeal of EUIPO, it must be stated that the amount claimed of EUR 850, which is not in itself contested by the applicant, corresponds to the amount fixed by the Board of Appeal in the contested decision in respect of the costs and fees incurred by the intervener for the purposes of those proceedings and which it had ordered the applicant to repay (paragraph 57 of the contested decision and paragraphs 2 and 3 of the operative part thereof; see paragraph 2 above). Since that decision became final upon the expiry of the period for lodging an appeal against the judgment of the Court, the intervener already has an enforceable order entitling it to obtain payment of that amount, if necessary through enforcement proceedings (see, to that effect, order of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 18 and the case-law cited).
17 Furthermore, it must be noted that in the course of the proceedings before the Court that gave rise to the judgment in EISKELLER, the intervener did not apply, under Article 134(1) and Article 190(2) of the Rules of Procedure, for the applicant to be ordered to pay the expenses necessarily incurred for the purposes of the proceedings referred to in paragraph 16 above as recoverable costs (see paragraph 3 above). It follows that the order requiring the applicant to pay the costs that was made in the operative part of the judgment in EISKELLER (see paragraph 4 above) refers only to the costs relating to the proceedings before the Court and not to those relating to the proceedings before the Board of Appeal (see, to that effect and by analogy, order of 13 February 2019, International Gaming Projects v EUIPO — Sky (Sky BONUS), T‑840/14 DEP, not published, EU:T:2019:101, paragraph 18).
18 Therefore, as the applicant rightly submits, the present taxation of costs proceedings are ancillary to those in the case in the main proceedings, in which the applicant was ordered to pay the costs of only the judicial proceedings. Therefore, the intervener’s application is inadmissible in so far as it relates to the costs incurred in the proceedings before EUIPO (see, to that effect and by analogy, order of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 20 and the case-law cited).
Costs relating to the proceedings before the General Court
19 With regard to the costs relating to the proceedings before the Court, the intervener claims, first, the fees invoiced by the lawyer in an amount of EUR 8 532.72, broken down as follows:
– procedural fee in the amount of EUR 4 176.90, pursuant to regulation 3100 of the Vergütungsverzeichnis zum Rechtsanwaltsvergütungsgesetz (standard remuneration scales set out in the German Law on the remuneration of lawyers; ‘the VV RVG’);
– hearing fee in the amount of EUR 3 855.60 under regulation 3104 of the VV RVG;
– travel expenses for attending the hearing on 7 December 2017, in the amount of EUR 410.22.
Secondly, the intervener requests reimbursement of the costs associated with the engagement of a patent lawyer in the amount of EUR 4 196.90, including an amount of EUR 4 176.90 in respect of procedural fees, under regulation 3100 of the VV RVG, and an amount of EUR 20 in respect of expenses calculated on a flat-rate basis under regulation 7002 of the VV RVG.
20 In the first place, concerning the costs claimed in respect of lawyers’ fees, including the costs associated with the engagement of a patent lawyer, excluding travel expenses in the amount of EUR 410.22, which will be examined separately (see paragraph 28 below), it is necessary to determine, in the light of the case-law referred to in paragraph 13 above, whether, in the light of the purpose and nature of the proceedings, their significance from the point of view of EU law, the complexity and difficulties presented by the case, the financial interest which the parties had in the proceedings and the amount of work carried out, the assessment of the costs claimed is justified.
21 First, with regard to the purpose and nature of the proceedings, their significance from the point of view of EU law and the difficulties presented by the case, it must be held that the case in the main proceedings was not particularly complex. It concerned a matter falling within the scope of ordinary trade mark litigation, namely the question whether there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), raised in the course of opposition proceedings brought against an EU trade mark application. The applicant had raised only a single plea in support of its action, alleging that there was no such likelihood of confusion. That case essentially concerned the application of settled case-law to the particular circumstances of the case. The question at issue had, moreover, already been examined by the Opposition Division and by the Board of Appeal. Furthermore, the intervener has not claimed, in its application for taxation of costs, that the case was of particular complexity or importance (see, to that effect and by analogy, order of 26 January 2017, Nürburgring v EUIPO — Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 17).
22 Secondly, it should be noted that, having regard to the significance of trade marks in business, although the case was indeed of clear economic interest to the intervener, it did not submit to the Court any evidence showing that that interest could be regarded, in the present case, as unusual, or significantly different from that on which any opposition brought against an application for registration of an EU trade mark is based (see, to that effect and by analogy, order of 26 January 2017, Nürburgring v EUIPO — Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 18 and the case-law cited).
23 Thirdly, as regards the amount of work to which the proceedings may have given rise for the intervener, it must be recalled that the primary consideration for the EU judicature is the total number of hours of work which may appear to have been objectively necessary for the purposes of the proceedings before the Court. In that connection, the possibility for the Court to assess the value of the work carried out is dependent on the accuracy of the information provided (see, to that effect, orders of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraph 24 and the case-law cited, and of 19 September 2018, Kneidinger v EUIPO, T‑286/16 DEP, not published, EU:T:2018:583, paragraph 21 and the case-law cited).
24 In the present case, it must be stated that, as is apparent from paragraph 19 above, the intervener, in its application for taxation of costs, merely produced a flat-rate statement of the lawyer’s fees incurred in the main proceedings, which was based on the weightings provided for in the VV RVG, without a detailed breakdown of the figures indicated for the legal services provided, the number of hours worked in respect of those services, and the hourly rate charged by the lawyer or the patent lawyer engaged.
25 In that regard, it should be noted that, first, as the applicant rightly points out, the EU judicature is not bound by the weightings provided in the VV RVG, which apply to the costs of proceedings before German courts, but it must assess the amount of the recoverable costs in the light of the criteria set out in paragraph 13 above (see, to that effect and by analogy, order of 23 October 2018, Bundesverband Deutsche Tafel v EUIPO, T‑326/16 DEP, not published, EU:T:2018:747, paragraph 15). Secondly, it should be borne in mind that, when fixing the amount of the recoverable costs, the Court must take account of the total number of hours’ work corresponding to the services provided and considered objectively necessary for the purposes of the proceedings concerned, irrespective of the number of lawyers who carried out that work (see order of 29 June 2015, Reber v OHIM — Klusmeier (Wolfgang Amadeus Mozart PREMIUM), T‑530/10 DEP, not published, EU:T:2015:482, paragraph 30).
26 The lack of precise information on the legal services provided, the hours worked in respect of those services, and the hourly rate applied by the lawyer or the patent lawyer engaged, therefore makes it particularly difficult to verify the costs incurred for the purpose of the proceedings before the Court and whether they were necessary for that purpose. In those circumstances, a strict assessment of the fees recoverable is necessary (see, to that effect, order of 27 April 2009, Mülhens v OHIM — Conceria Toska (TOSKA), T‑263/03 DEP, not published, EU:T:2009:118, paragraph 18 and the case-law cited).
27 In the present case, it must be observed that the volume of the parties’ written pleadings in the main proceedings was meagre, consisting of a 10-page application, EUIPO’s 15-page response and the intervener’s 12-page response, approximately only three pages of which were devoted to legal arguments. Next, it should be noted that the intervener’s representatives before the Court already had extensive knowledge of the case from having represented it during the administrative procedure, which is likely to have facilitated the work of those representatives and reduced the time spent on preparing the intervener’s written pleading. In addition, it should be noted that, as is apparent from paragraph 21 above, the case was not particularly complex.
28 In those circumstances, it is fair to assess the total recoverable costs relating to the lawyers’ fees necessarily incurred for the purposes of the proceedings before the Court by fixing the amount of those costs at EUR 3 000.
29 In the second place, as regards the travel expenses of the intervener’s representative, by air and taxi, in the amount of EUR 410.22, for the purpose of taking part in the hearing held on 7 December 2017 in Luxembourg, it must be noted that the intervener has produced evidence only of the EUR 318.59 for its flight expenses. In those circumstances, the Court takes the view, like the applicant, that only air travel expenses duly substantiated by an invoice should be regarded as necessary costs. It is therefore appropriate to fix the total amount of recoverable travel expenses at EUR 318.59.
Conclusion on the recoverable costs
30 In the light of all the foregoing considerations, in particular the summary nature of the explanations provided by the intervener, the total costs recoverable by the intervener from the applicant may be assessed on an equitable basis at EUR 3 318.59.
31 Furthermore, it should be borne in mind that, in accordance with the case-law set out in paragraph 14 above, the Court, in fixing the recoverable costs, takes account of all the circumstances of the case up to the signing of the order on taxation of costs, including the expenses necessarily incurred in relation to the taxation of costs proceedings. In the present case, the intervener has not applied for reimbursement of costs relating to the present taxation of costs proceedings or provided any justification in that regard. Therefore, there is no need to increase the amount of recoverable costs connected with the case in the main proceedings, T‑859/16, by adding to those costs a sum relating to the present taxation of costs proceedings.
The request that the Court send to the intervener an enforceable writ of execution
32 As regards the intervener’s request for it to be sent an enforceable writ of execution, it is sufficient to observe that, in accordance with Article 280 TFEU, the present order is enforceable in the conditions laid down in Article 299 TFEU. Secondly, even though Article 170(4) of the Rules of Procedure expressly gives the parties the right to request an authenticated copy of the order for the purposes of enforcement, there is no need to give a formal ruling on that request as it is purely a matter of administration and falls outside the subject matter of the present dispute concerning taxation of the parties’ recoverable costs (see order of 27 October 2017, Heli-Flight v EASA, T‑102/13 DEP, not published, EU:T:2017:769, paragraph 59).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
The total amount of costs to be reimbursed by Sociedad Anónima Damm to Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz GmbH & Co. KG is fixed at EUR 3 318.59.
Luxembourg, 6 June 2019.