ORDER OF THE COURT OF FIRST INSTANCE (Seventh Chamber)
19 March 2009 (*)
(Taxation of costs)
In Joined Cases T‑333/04 DEP and T‑334/04 DEP,
House of Donuts International, established in George Town (Grand Cayman), represented by N. Decker, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and A. Folliard‑Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Panrico, SA, established in Barcelona (Spain), represented by D. Pellisé Urquiza, lawyer,
APPLICATION for taxation of the costs to be recovered from the applicant by the intervener following the judgment of the Court of First Instance of 18 April 2007 in Joined Cases T‑333/04 and T‑334/04 House of Donuts v OHIM – Panrico (House of donuts), not published in the ECR,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),
composed of N. J. Forwood, President, D. Šváby and E. Moavero Milanesi (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By applications lodged at the Court Registry on 11 August 2004, the applicant brought two actions for annulment against the decisions of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 May 2004 in Cases R 1034/2001-4 and R 1036/2001-4 concerning opposition proceedings brought by Panrico against registration of the figurative mark House of donuts as a Community trade mark.
2 The intervener intervened in the dispute in support of the form of order sought by OHIM.
3 By judgment of 18 April 2007 in Joined Cases T‑333/04 and T‑334/04 House of Donuts v OHIM – Panrico (House of donuts) [2007] ECR II‑33 (‘the House of Donuts judgment’), the Court dismissed the actions and ordered the applicant to pay the costs.
4 By a number of letters, dated 12 December 2007, 8 January 2008 and 3 April 2008 respectively, the intervener requested the applicant to pay to it the costs, assessed at EUR 18 219.84, and attached in support of its request a statement of fees and expenses. Those letters were not acted upon.
5 By document lodged at the Court on 28 May 2008, the intervener brought, pursuant to Article 92 of the Rules of Procedure, an application for taxation of costs in which it requested the Court to set the amount of recoverable costs to be paid by the applicant at EUR 19 689.84, that is to say, EUR 18 218.84 corresponding to the costs recoverable under the proceedings which gave rise to the House of Donuts judgment, and EUR 1 470 for the costs relating to the present taxation of costs proceedings.
6 The applicant did not submit any observations on that application for taxation of costs.
Law
7 Under 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 Court of First Instance and, second, to those which were necessary for that purpose (order of the Court of 28 June 2004 in Case T‑342/99 DEP Airtours v Commission [2004] ECR II‑1785, paragraph 13).
8 In that regard, it should be recalled that according to settled case‑law, the Community judicature is not empowered to tax the fees payable by the parties to their own lawyers, but may determine the amount of those fees to 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 (order of the Court in Airtours v Commission, paragraph 17; order of the Court of 7 January 2008 in Case T‑206/04 DEP Rodrigues Carvalhais v OHIM – Profilpas (PERFIX), not published in the ECR, paragraph 8; and order of the Court of 17 July 2008 in Case T‑8/03 DEP Corte Inglés v OHIM, not published in the ECR, paragraph 13).
9 It has also consistently been held that, in the absence of Community 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 (order of the Court in Airtours v Commission, paragraph 18 and the case-law cited).
10 It is on the basis of those factors that the amount of recoverable costs in the present case must be assessed.
11 In the first place, the intervener draws attention to the particular significance of the case in relation to Community trade mark law. That assertion is, the intervener alleges, confirmed by the numerous articles about the House of Donuts judgment, published in specialist journals and reproduced in the annex to the application.
12 The Court observes, first, that the main proceedings, as regards their purpose and nature, were not particularly complex. They concerned opposition proceedings in which the principal ground relied upon was an alleged infringement of 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. The main proceedings therefore concerned normal trade mark litigation. Moreover, it follows from a reading of the House of Donuts judgment that the main proceedings concerned neither a new point of law nor a complex factual situation, and cannot therefore be considered particularly difficult.
13 Lastly, contrary to what the intervener claims, it must be held that the case does not have particular significance in relation to Community trade mark law, inasmuch as the House of Donuts judgment is part of a well-established line of case-law.
14 In the second place, the intervener claims that the case at issue was of particular financial interest for it, in so far as, apart from the mere issue of the validity of the marks for which registration was sought, the case called into question the validity and effectiveness of its own trade mark. According to the intervener, the judgment confirmed that it has exclusive rights over the trade mark DONUT, thereby excluding the possibility that the terms ‘donut’ and ‘donuts’ are generic terms. Furthermore, the applicant claims that as the trade marks DONUT and DONUTS enjoyed a high repute in Spain and in Portugal, the main proceedings raised an issue of general interest in those two countries. That fact is supported by the numerous articles about the House of Donuts judgment which have appeared in Spanish and Portuguese journals.
15 The Court holds that, while the case at issue was, admittedly, of financial interest for the intervener, that financial interest cannot be regarded as being unusual, or significantly different to that which underlies any opposition proceedings brought against an application for a Community trade mark.
16 As regards, in the third place, the amount of work generated by the proceedings for the intervener’s advisers, the intervener asserts that, in view of the importance of the case in the main proceedings, its advisers had to undertake a large amount of work. That being so, the fees for which reimbursement is sought should be considered to be relatively modest. The intervener relies, in addition, on the fact that there were two joined cases in the main proceedings, in order to establish the sizeable nature of the amount of work and, therefore, the amount of fees and expenses.
17 In that respect, it should be borne in mind that the ability of the Community judicature to assess the value of work carried out is dependent on the detailed nature of the information provided.
18 In the present proceedings, the intervener has produced, annexed to its application for taxation of costs, two invoices on which appear, first, the fees and expenses in relation to the main proceedings and, second, the fees and expenses in relation to the present taxation of costs proceedings.
19 It is apparent from the first invoice that the fees of the lawyers amount to EUR 15 000, to which must be added expenses in the amount of EUR 3 219.84, producing a total amount for the invoice of EUR 18 219.84.
20 It must, first, be observed that while the bill of costs contains a precise description of the documents drafted and the steps taken by the intervener’s advisers in the context of the House of Donuts judgment, as the breakdown of the fees does not specify the time spent on each item referred to, nor the hourly rate applied, it does not allow for an effective assessment of the amount of work actually carried out. The lack of more detailed information on hourly rates and the time spent on each item makes it especially difficult to verify precisely the costs incurred for the purpose of the proceedings before the Court and those which were necessary for that purpose, and requires the Court to apply a strict test when assessing the fees recoverable in this case (see order of the Court of 25 January 2007 in Case T‑214/04 DEP Royal County of Berkshire Polo Club v OHIM – Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB), not published in the ECR, paragraph 18 and the case‑law cited).
21 It must then be observed that the intervener’s actual participation in the proceedings before the Court involved: producing two written pleadings, each of about 40 pages, together with annexes of approximately of 300 pages; the exchange of correspondence with the Court, and the participation in the hearing of the main proceedings. As the two cases were joined, it must be stated that the two written pleadings were substantially identical. Therefore, in assessing the number of hours worked, it is not necessary to take account of the amount of time which would have been required to draft two completely unrelated written pleadings. In the circumstances, an increase of the order of 20% for the working time required for drafting a single written pleading is appropriate in order to take account of the extra work arising from the filing of a second written pleading in respect of a joined case.
22 In the light of those considerations, and in the absence of precise details in relation to the time spent working or the hourly rate applied, the level of fees requested in respect of the main proceedings must be considered excessive, regard being had to the Rules of Procedure concerning recoverable costs.
23 As regards the expenses incurred in the main proceedings – comprising photocopying expenses (EUR 187.84), postage fees (EUR 512), a bill from the Freylinger Office (EUR 60) and travel costs (EUR 1 350) – the Court considers that they are reasonable. On the other hand, the translation costs (EUR 1 100) are not recoverable. It is apparent from the combined provisions of Article 136(2), and the second subparagraph of Article 131(4), of the Rules of Procedure that those costs which are incurred in producing a translation into the language of the case of the pleadings or documents other than the application are recoverable only where there has been a change in the language of the case, following an agreement between the parties to that effect, or in cases of opposition to the language in which the application was drafted becoming the language of the case. In the present case, it should be noted that English, the language of the application was also the language of the main proceedings. No change in the language of the case, capable of justifying a translation of the pleadings, has taken place. It follows that, in the present case, the translation costs are not recoverable.
24 Having regard to all the foregoing considerations, the Court finds that an amount of EUR 13 000 represents a fair assessment of the costs recoverable by the intervener in respect of the proceedings before the Court, an amount which takes account of all the stages in the proceedings up to the adoption of the present order.
On those grounds,
THE COURT OF FIRST INSTANCE (Seventh Chamber)
hereby orders:
The total amount of costs recoverable from the applicant by the intervener be set at EUR 13 000.
Luxembourg, 19 March 2009.