ORDER OF THE GENERAL COURT (Second Chamber)
2 May 2023 (*)
(Procedure – Taxation of costs)
In Case T‑447/16 DEP,
Pirelli Tyre SpA, established in Milan (Italy), represented by T.M. Müller and F. Togo, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
The Yokohama Rubber Co. Ltd, established in Tokyo (Japan),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, V. Tomljenović and R. Norkus, Judges,
Registrar: T. Henze, Acting Registrar,
having regard to the judgment of 24 October 2018, Pirelli Tyre v EUIPO – Yokohama Rubber (Representation of an L-shaped groove) (T‑447/16, EU:T:2018:709),
makes the following
Order
1 By its application, based on Article 170 of the Rules of Procedure of the General Court, the applicant, Pirelli Tyre SpA, requests that the Court fix at EUR 39 973.07 the amount of recoverable costs to be paid by the European Union Intellectual Property Office (EUIPO) in respect of the expenses incurred by the applicant in the proceedings in Case T‑447/16.
Background to the dispute
2 By application lodged at the Court Registry on 4 August 2016 and registered under case number T‑447/16, the applicant brought an action for annulment in part of the decision of the Fifth Board of Appeal of EUIPO of 28 April 2016 (Case R 2583/2014-5) (‘the contested decision’), relating to invalidity proceedings between Yokohama Rubber and the applicant.
3 By judgment of 24 October 2018, Pirelli Tyre v EUIPO – Yokohama Rubber (Representation of an L-shaped groove) (T‑447/16, EU:T:2018:709), the General Court granted the applicant’s application and ordered EUIPO to pay the costs incurred by the applicant. That judgment was the subject of two appeals, one brought by EUIPO and the other by the intervener. The Court of Justice dismissed those appeals by judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431).
4 By letter of 4 August 2021, the applicant informed EUIPO that the total amount of recoverable costs relating to the proceedings before the General Court and the Court of Justice was, in its view, EUR 73 073.47, which was adjusted, on 14 December 2021, to EUR 73 330.32, including EUR 38 275.57 in respect of the proceedings at first instance.
5 No agreement was reached between the parties on the amount of recoverable costs, including those relating to the proceedings at first instance.
Forms of order sought
6 The applicant claims that the Court should fix the amount of recoverable costs to be reimbursed by EUIPO at EUR 39 973.07 in respect of the proceedings at first instance, including the present taxation of costs proceedings.
7 EUIPO contends that the Court should fix the total amount of recoverable costs in respect of the proceedings at first instance, including those relating to the present taxation of costs proceedings, at an amount not exceeding EUR 8 000.
Law
8 Under Article 170(3) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the Court is, on application by the party concerned, to give its decision by way of an order from which no appeal is to lie, after giving the party concerned by the application an opportunity to submit its observations.
9 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 to be regarded as recoverable costs. It follows from that provision that recoverable costs are limited to those incurred for the purpose of the proceedings before the General Court and which were necessary for that purpose (see order of 6 March 2003, Nan Ya Plastics and Far Eastern Textiles v Council, T‑226/00 DEP and T‑227/00 DEP, EU:T:2003:61, paragraph 33 and the case-law cited).
10 In the present case, the applicant includes in the recoverable costs, first, lawyers’ fees in the amount of EUR 35 022.50 in respect of the proceedings in Case T‑447/16, second, disbursements in the amount of EUR 3 253.07 and, third, lawyers’ fees in the amount of EUR 1 697.50 in respect of the present taxation of costs proceedings.
Lawyers’ fees relating to the main proceedings before the Court
11 It is settled case-law that the Courts of the European Union are not empowered to tax the fees payable by the parties to their own lawyers, but may determine the amount of those fees which may be recovered from the party ordered to pay the costs. In ruling on the application for taxation of costs, the Court is not required to take into account any national tariff fixing lawyers’ fees or any agreement to that effect between the party concerned and its agents or advisers (see order of 26 January 2017, Nurburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited).
12 It should also be noted that, in the absence of EU law provisions laying down fee-scales or relating to the necessary working time, the Court must make an unfettered assessment of the facts of the case, taking into account the subject matter and nature of the proceedings, their significance from the point of view of EU 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 interest which the parties had in the proceedings (see order of 26 January 2017, Nordschleife, T‑181/14 DEP, EU:T:2017:41, paragraph 11 and the case-law cited).
13 The amount of recoverable costs in the present case must be assessed in accordance with those considerations.
14 In the first place, as regards the subject matter and nature of the proceedings, its significance from the point of view of EU law and the difficulties presented by the case, it should be noted that the legal difficulty or the importance of that case or special circumstances justified its referral to a formation of the Court composed of five judges, pursuant to Article 28(1) of the Rules of Procedure. In that regard, that case concerned the relatively infrequent application in trade mark law of the absolute ground for refusal of registration laid down in Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) relating to ‘signs which consist exclusively of … the shape of goods which is necessary to obtain a technical result’. As is apparent from the judgment of the General Court and from the judgment of the Court of Justice ruling on the two appeals, that case raised, in particular, complex questions regarding the interpretation of that article and its implementation in the present case.
15 In the second place, as regards the financial interests at stake, it should be noted, having regard to the importance of trade marks in business, that, although the applicant had a clear financial interest in the case, it has not submitted to the Court any evidence establishing that that interest was, in the present case, unusual or significantly different from that which underlies any invalidity proceedings brought against an EU trade mark.
16 In the third place, as regards the amount of work generated by the proceedings for the applicant’s representatives, it should be borne in mind that the primary consideration of the Courts of the European Union is the total number of hours of work which may appear to be objectively necessary for the purpose of the proceedings before the Court, irrespective of the number of lawyers who may have provided the services in question (see order of 29 November 2016, TrekStor v EUIPO – Scanlab (iDrive), T‑105/14 DEP, not published, EU:T:2016:716, paragraph 16 and the case-law cited).
17 In particular, while it is possible that, depending on the individual circumstances and, most importantly, the complexity of each case, the remuneration of a number of lawyers may be regarded as falling within the concept of ‘expenses necessarily incurred’ under Article 140(b) of the Rules of Procedure (see, by analogy, order of 21 July 2016, Panrico v Bimbo, C‑591/12 P-DEP, not published, EU:C:2016:591, paragraph 28 and the case-law cited), expenses for the coordination of a party’s lawyers cannot be regarded as such (see orders of 21 May 2014, Esge v OHIM – De’Longhi Benelux (KMIX), T‑444/10 DEP, not published, EU:T:2014:356, paragraph 22 and the case-law cited, and of 21 January 2021, Biasotto v EUIPO – Oofos (OOF and OO), T‑453/18 DEP and T‑454/18 DEP, not published, EU:T:2021:40, paragraph 30 and the case-law cited).
18 In the present case, the applicant produced a breakdown of the lawyers’ fees in respect of which it is seeking reimbursement, namely 97.80 hours invoiced by its two lawyers at hourly rates of EUR 385 for one and of EUR 320 or EUR 300 for the other. Those hours are divided as follows:
– 48 hours of work in drawing up the application;
– 21.2 hours in respect of the work carried out after the application was lodged but before the hearing;
– 26 hours in respect of the work carried out on the day before and on the day of the hearing and in respect of part of the travel time;
– 2.6 hours in respect of the work carried out after the oral part of the procedure was closed.
19 In that regard, first, it should be noted that, during the main proceedings in that case, the applicant’s lawyers lodged an application of 21 pages together with 5 annexes, a request that a hearing be held, a request that the hearing be postponed to a later date, and a letter concerning their change of address. It should also be noted that the responses of EUIPO and the intervener consisted of 17 pages and 20 pages respectively. In addition, it is apparent from the minutes of the hearing which took place on 17 November 2017 that that hearing lasted less than two and a half hours.
20 Second, it must be stated that the applicant’s representatives had represented it during the administrative procedure and therefore already had extensive knowledge of the case. That consideration is likely to have, in part, facilitated the work of those representatives and reduced the time spent preparing the application. It follows from the case-law that the work carried out in the context of the proceedings before the Board of Appeal reduces the amount of the work to be carried out before the Court and, consequently, the amounts which may be recovered for that purpose (see order of 19 January 2016, Copernicus-Trademarks v OHIM – Blue Coat Systems (BLUECO), T‑685/13 DEP, not published, EU:T:2016:31, paragraph 21 and the case-law cited).
21 Third, it must be stated that the breakdown of fees includes hours which cannot be taken into account in the costs. That is true of the hours which the lawyers spent travelling between Munich (Germany) and Luxembourg (Luxembourg), the invoicing of which, even in part, cannot in any circumstances be regarded as falling within the concept of ‘expenses necessarily incurred by the parties for the purpose of the proceedings’ within the meaning of Article 140(b) of the Rules of Procedure (see order of 10 October 2013, CPVO v Schräder, C‑38/09 P-DEP, not published, EU:C:2013:679, paragraph 37). That is also true of the hours charged in respect of drafting a report of the hearing, discussions with the applicant relating to the notification regarding the delivery of the judgment of the Court or the examination of that judgment. According to settled case-law, recovery must be refused for costs relating to the period after the oral part of the procedure where no procedural steps were taken after the hearing (see order of 10 April 2014, Éditions Odile Jacob v Commission, T‑279/04 DEP, not published, EU:T:2014:233, paragraph 39 and the case-law cited).
22 Similarly, several services listed in the abovementioned breakdown, such as certain correspondence with the Court and the applicant, are administrative tasks which cannot be invoiced at the hourly rate for a lawyer (see, to that effect, orders of 23 October 2018, Bundesverband Deutsche Tafel v EUIPO – Tiertafel Deutschland (Tafel), T‑326/16 DEP, not published, EU:T:2018:747, paragraph 22, and of 18 May 2022, 12seasons v EUIPO – Société immobilière et mobilière de Montagny (BE EDGY BERLIN), T‑329/19 DEP, not published, EU:T:2022:328, paragraph 36 and the case-law cited).
23 Fourth, as regards the hourly rate of the lawyers, it should be recalled that, in the absence, as EU law currently stands, of a scale in that regard, it is only where the average hourly rate invoiced appears manifestly excessive that the Court may depart from it and fix, on equitable principles, the amount of recoverable fees for lawyers and expert economists (see order of 19 January 2021, Romańska v Frontex, T‑212/18 DEP, not published, EU:T:2021:30, paragraph 39 and the case-law cited). Taking into account a high hourly rate appears appropriate only to remunerate the services of professionals who have performed their duties efficiently and rapidly and must, consequently, be counterbalanced by a necessarily strict assessment of the total number of hours of work necessary for the purpose of the proceedings (see order of 30 April 2018, European Dynamics Belgium and Others v EMA, T‑158/12 DEP, not published, EU:T:2018:295, paragraph 23 and the case-law cited).
24 In the present case, in accordance with the case-law cited in paragraph 23 above, the high hourly rates charged by the applicant’s advisers must be counterbalanced by a necessarily strict assessment of the total number of hours of work necessary for the purpose of the proceedings before the Court.
25 In the light of the principles set out above and all the abovementioned circumstances of the present case, the amount of work necessary for the purpose of the main proceedings may be assessed on an equitable basis by fixing it at a total of 25 hours based on the average hourly rate of EUR 350 charged by the applicant’s advisers. Therefore, the lawyers’ fees necessary for the purpose of the main proceedings amount to EUR 8 750.
Disbursements
26 The applicant requests that account be taken, in the recoverable costs, first, of a sum of EUR 3 104.55 in respect of the travel and subsistence expenses for the purposes of the hearing, second, of a sum of EUR 509.24 in respect of a meeting held in Milan (Italy) with one of its lawyers and, third, of the sums of EUR 138.52 in respect of expenses necessarily incurred relating to mail and of EUR 10 in respect of expenses relating to applications made to the commercial register.
27 First, the applicant requests that account be taken of the travel and subsistence expenses for the purposes of the participation in the hearing of its two lawyers and of one of its employees specialising in patent law.
28 In that regard, it should be borne in mind that, save in specific circumstances, the expenses of a single adviser may be declared recoverable (see, to that effect, order of 8 October 2014, Coop Nord v Commission, T‑244/08 DEP, not published, EU:T:2014:899, paragraph 33).
29 In the present case, the applicant has not demonstrated that there are specific circumstances which would justify regarding the expenses associated with the participation of its two lawyers in the hearing as necessary for the purposes of Article 140(b) of the Rules of Procedure. The fact that it was deemed appropriate for the applicant to be represented by two lawyers with respect to the hearing cannot therefore be financially attributed to the party ordered to pay the costs.
30 Similarly, travel and subsistence expenses incurred by persons other than lawyers are recoverable only if their presence was necessary for the purpose of the proceedings (see orders of 17 September 1998, Branco v Commission, T‑271/94 (92), EU:T:1998:222, paragraph 20 and the case-law cited, and of 27 October 2017, Heli-Flight v EASA, T‑102/13 DEP, not published, EU:T:2017:769, paragraph 49 and the case-law cited).
31 In the present case, the applicant has not adduced any evidence to show how the presence of its employee specialising in patent law was necessary for the hearing. Moreover, it is not apparent from the minutes of the hearing that that employee was invited by the Court to speak at the hearing.
32 It follows that, in the present case, only one lawyer’s travel and subsistence expenses for the purposes of the hearing may be taken into account as ‘expenses necessarily incurred’ within the meaning of Article 140(b) of the Rules of Procedure. In the light of the supporting documents produced by the applicant relating to the cost of airline tickets, accommodation and catering expenses, and public transport and taxi expenses, the sum of EUR 743.29, which corresponds to half of the established expenses associated with the participation of the applicant’s two lawyers in the hearing, must be accepted on that basis.
33 Second, it must be stated that the applicant has not adduced any evidence to establish that it was necessary for the purpose of the proceedings for one of its lawyers to travel to Milan on 6 November 2017.
34 Third, according to the case-law, secretarial, photocopying, postage, fax and telephone expenses should be treated as recoverable costs, where they appear to be properly justified and to have been assessed on a reasonable basis (orders of 2 June 2009, Sison v Council, T‑47/03 DEP, EU:T:2009:166, paragraph 51, and of 25 November 2009, Hynix Semiconductor v Council, T‑383/03 DEP, not published, EU:T:2009:466, paragraph 54).
35 In the present case, the applicant produced supporting documents establishing that the expenses, amounting to EUR 138.52, incurred in respect of sending to the Court Registry the application, the request for a hearing and the request for a postponement of the hearing, were genuine. It has also established expenses of EUR 5 incurred in respect of an application made to the Italian commercial register. By contrast, the expenses relating to the application made to that register, dated 7 May 2019, cannot be regarded as expenses incurred for the purpose of the proceedings before the Court since they are subsequent to the judgment closing the proceedings.
36 It follows that the recoverable costs in respect of disbursements should be fixed at EUR 886.81.
Expenses relating to the present taxation of costs proceedings
37 It should be noted that, in fixing the recoverable costs, the Court takes account of all the circumstances of the case up to the making of the order on taxation of costs, including expenses necessarily incurred in relation to the taxation of costs proceedings (see order of 11 April 2019, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16 DEP, not published, EU:T:2019:249, paragraph 31 and the case-law cited).
38 According to settled case-law, an application for taxation of costs is of a fairly standardised nature and is characterised, generally, by the absence of any difficulty for the lawyer who has already dealt with the substance of the case (see order of 11 April 2019, Immunostad, T‑403/16 DEP, not published, EU:T:2019:249, paragraph 32 and the case-law cited).
39 As regards the application relating to the costs incurred by the applicant in the present taxation of costs proceedings, it should be noted that the applicant charges an amount of EUR 1 697.50 corresponding to five hours of work by its lawyers at hourly rates of EUR 385 or EUR 320. In the light of the average rate used in the main proceedings, two hours of work must be regarded as reasonable to cover the costs relating to the present proceedings, with the result that an amount of EUR 700 must be accepted on that basis.
40 In the light of all the foregoing considerations, the Court takes the view that the costs recoverable by the applicant may be assessed on an equitable basis by fixing their amount at EUR 10 336.81.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
The total amount of the costs to be reimbursed by the European Union Intellectual Property Office (EUIPO) to Pirelli Tyre SpA is fixed at EUR 10 336.81.
Luxembourg, 2 May 2023.
Acting Registrar | | President |