ORDER OF THE GENERAL COURT (Ninth Chamber)
9 December 2014 (*)
(Procedure — Taxation of costs)
In Case T‑394/10 DEP,
Elena Grebenshikova, residing in St Petersburg (Russia), represented by M. Björkenfeldt, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the procedure before the OHIM Board of Appeal, intervener before the General Court, being
Volvo Trademark Holding AB, established at Gothenburg (Sweden),
REQUEST for taxation of costs to be reimbursed by OHIM to the applicant following the judgment delivered by the General Court on 5 December 2013, Grebenshikova v OHIM — Volvo Trademark (SOLVO) (T‑394/10, EU:T:2013:627),
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By application lodged at the Court Registry on 13 September 2010, the applicant, Ms Elena Grebenshikova, brought an action for annulment against the decision of the First Board of Appeal of OHIM of 9 June 2010 (R 861/2010-1) relating to opposition proceedings between Volvo Trademark Holding AB and the applicant.
2 The intervener, Volvo Trademark Holding AB, intervened in the proceedings in support of the form of order sought by OHIM.
3 By judgment of 5 December 2013 in Grebenshikova v OHIM — Volvo Trademark (SOLVO) (T‑394/10, EU:T:2013:627), the General Court allowed the action and annulled the decision of the First Board of Appeal. It ordered OHIM to pay, in addition to its costs, two-thirds of the costs of the applicant and ordered the intervener to pay, in addition to its costs, one-third of the costs of the applicant.
4 By application lodged at the Court Registry on 3 June 2014, the applicant, pursuant to Article 92(1) of the Rules of Procedure, sought taxation of the costs, asking the Court to set the amount of recoverable costs at EUR 49 178, comprising EUR 47 355 in lawyers’ fees and EUR 1 823 in disbursements and other expenses, observing that OHIM should be required to pay her two-thirds of the total amount, namely EUR 32 785.
5 By document lodged at the Court Registry on 19 August 2014, OHIM submitted its observations on that application. It contended that the application brought by the applicant should be dismissed and that the share of the recoverable costs to be paid by itself should be set at EUR 8 000.
Law
6 According to Article 91(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 General Court and, secondly, to those which were necessary for that purpose (orders of the General Court of 28 June 2004, Airtours v Commission, T‑342/99 DEP, ECR, EU:T:2004:192, paragraph 13, and 7 January 2008, Rodrigues Carvalhais v OHIM — Profilpas (PERFIX), T‑206/04 DEP, EU:T:2008:2, paragraph 7).
7 It is settled case-law that 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 General 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 (orders in Airtours v Commission, cited in paragraph 6 above, EU:T:2004:192, paragraph 17, and PERFIX, cited in paragraph 6 above, EU:T:2008:2, paragraph 8).
8 It is also settled case-law that, in the absence of European Union provisions laying down fee scales, the General 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 EU law, the difficulties presented by the case, the amount of work generated by the case for the agents or advisers involved and the financial interest which the parties had in the proceedings (orders in Airtours v Commission, cited in paragraph 6 above, EU:T:2004:192, paragraph 18, and PERFIX, cited in paragraph 6 above, EU:T:2008:2, paragraph 9).
9 The amount of the costs recoverable in the present case must be determined in the light of those elements.
10 In the first place, the Court notes that the case in the main proceedings was not, in terms of its purpose and nature, particularly complex.
11 That case concerned an opposition brought by the intervener against the registration of the Community trade mark requested by the applicant, the main ground relied on in support of the opposition being the likelihood of confusion referred to in Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). In this regard, the judgment delivered in the main proceedings indicates that the case in question, which concerned neither a new legal issue nor a complex question of fact and which did not involve complex analysis, could not be regarded as particularly difficult.
12 The applicant nonetheless contends that the ‘continuity’ of the dispute increased its complexity.
13 In this context, it should be recalled that the judgment in the main proceedings was given after another judgment concerning the dispute between the same marks, namely the judgment of 2 December 2009 in Volvo Trademark v OHIM — Grebenshikova (SOLVO) (T‑434/07, ECR, EU:T:2009:480). In the decision overturned by the latter judgment, the Second Board of Appeal held that there was no similarity between the signs at issue, and hence that there was no likelihood of confusion. However, in the decision overturned by the judgment given in the main proceedings, the First Board of Appeal observed a certain degree of similarity between the signs at issue and concluded that there was a likelihood of confusion.
14 OHIM thus adopted two decisions at second instance concerning the same opposition procedure which featured different approaches and outcomes. This circumstance was likely to make it more difficult for the applicant to define her position in the main proceedings and to frame her arguments, which is relevant from the point of view of the assessment of the complexity of the dispute.
15 Lastly, there are nonetheless grounds for considering that the main proceedings were of no particular significance in terms of EU law, as the solution adopted could be arrived at directly from well-established case-law.
16 In the second place, it should be noted that, while it is true that the case was one in which the applicant had a financial interest, in the complete absence of specific considerations adduced by the latter, that interest could not be regarded as unusual or significantly different from that which is inherent in any challenge to an opposition to an application for registration of a Community trade mark (see, to that effect, order of 25 October 2010 in Bastos Viegas v OHIM — Fabre Médicament (OPDREX), T‑33/08 DEP, EU:T:2010:447, paragraph 12).
17 In the third place, as regards the amount of work generated by the proceedings for the applicant’s lawyer, it must be noted that it is for the Courts of the European Union to take into account the work objectively required for the whole of the judicial proceedings. Furthermore, it should be recalled that the ability of the Court to assess the value of work carried out is dependent on the accuracy of the information provided (see order in Airtours v Commission, cited in paragraph 6 above, EU:T:2004:192, paragraph 30 and the case-law cited).
18 Where the applicant’s lawyers have already assisted the applicant during proceedings or procedures prior to the relevant action, as in the case at issue, it is also necessary to have regard to the fact that those lawyers are aware of matters relevant to the action, which is likely to have facilitated their work and reduced the preparation time required for the judicial proceedings (order of 13 January 2006 in IPK-München v Commission, T‑331/94 DEP, ECR, EU:T:2006:11, paragraph 59).
19 In support of her request for taxation of costs in the case at issue, the applicant has produced an account of the charges and fees incurred during the proceedings, whose payment she seeks.
20 In the first place, the applicant submits documents indicating that 213 hours of work were performed by her lawyer and by a trade mark agent, invoiced at hourly rates of EUR 275 and EUR 165 respectively, over the period from 1 September 2010 to 3 March 2014.
21 While the hourly rates charged by the applicant’s advisers seem quite reasonable, the number of hours devoted to work relating to the main proceedings seems disproportionate.
22 The application lodged by the applicant runs to only twelve pages, and the procedure before the General Court was confined to a single exchange of documents.
23 Moreover, the hours invoiced for rectification of the application are not recoverable. It is the responsibility of the applicant’s counsel to lodge procedural documents in due form. Accordingly, additional expenditure arising from rectification necessitated by the failure to observe certain formal criteria when lodging the documents initially cannot be charged to the other party.
24 Lastly, it is also necessary to refuse any recovery from OHIM of costs pertaining to the period following the oral procedure. It should be noted that no steps in procedure were adopted after 22 April 2013, the date of the hearing, judgment having been reserved in the case. This being so, costs incurred by the applicant after this date do not appear to be directly linked to the proceedings before the General Court and cannot, therefore, be regarded as expenses necessarily incurred for the purpose of the proceedings within the meaning of Article 91 of the Rules of Procedure (see, to that effect, order of 2 December 2010 Lego Juris v OHIM — Mega Brands (Red Lego brick), T‑270/06 DEP, EU:T:2010:494, paragraph 57).
25 In view of all of the above considerations, it is appropriate to fix the part of the costs incurred in the form of fees of the applicant’s advisers, to be paid to the latter by OHIM, at a lump sum of EUR 17 000.
26 In the second place, the applicant states that the travel and subsistence expenses incurred by her advisers amounted to EUR 1 823. This amount includes costs of travel to, and subsistence in, Luxembourg incurred by the lawyer representing her before the General Court and her trade mark agent (EUR 1 201), and the costs incurred by the trade mark agent for travel to, and subsistence in, St Petersburg for the purposes of a personal meeting with the applicant in November 2011 (EUR 622).
27 In the case at issue, it should be held that only the disbursements arising by way of travel and subsistence for purposes of the participation by the applicant’s lawyer in the hearing before the General Court constitute expenses necessarily incurred for the purpose of the proceedings, within the meaning of Article 91 of the Rules of Procedure. In this context, it should be recalled that travel and subsistence expenses incurred by persons other than the applicant’s lawyer are recoverable only if the presence of those persons was necessary for the purposes of the proceedings (order of 17 July 2012 in Budějovický Budvar v OHIM — Anheuser-Busch (BUDWEISER), T‑57/04 DEP, EU:T:2012:389, paragraph 15). In the case at issue, the applicant has not adduced any matter which would go towards demonstrating that the presence of her trade mark agent was necessary during the hearing. Similarly, there is no indication in the case-file that the presence of the applicant’s trade mark agent in St Petersburg in November 2011 was necessary.
28 The costs to be reimbursed to the applicant by OHIM on this head are accordingly fixed at EUR 400.
29 Having regard to all of the above considerations and without it being necessary to adjudicate on the costs incurred for the purposes of the present proceedings (order in Red Lego brick, cited in paragraph 24 above, EU:T:2010:494, paragraph 62), the Court considers that the costs recoverable from OHIM by the applicant in respect of the proceedings before the General Court will be equitably assessed by fixing their amount at EUR 17 400, which amount takes into account all the circumstances of the case, until the time of adoption of this order.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
The total sum to be reimbursed by OHIM to Ms Elena Grebenshikova is fixed at EUR 17 400.
Luxembourg, 9 December 2014.