ORDER OF THE GENERAL COURT (Sixth Chamber)
9 April 2018 (*)
(Procedure — Taxation of costs)
In Case T‑580/13 DEP,
Real Express Srl, established in Bucharest (Romania), represented by C. Anitoae, lawyer,
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
MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.C. Plate, lawyer,
APPLICATION for taxation of costs to be reimbursed by the applicant to the intervener further to the order of 21 April 2015, Real Express v OHIM — MIP Metro (real) (T‑580/13, not published, EU:T:2015:245),
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and form of order sought by the intervener
1 By application lodged at the Registry of the General Court on 4 November 2013, the applicant, Real Express Srl, brought an action against the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 September 2013 (Case R 1519/2012-4), relating to opposition proceedings between the applicant and MIP Metro Group Intellectual Property GmbH & Co. KG, the intervener.
2 The intervener supported EUIPO’s claim in the main proceedings that the Court should dismiss the action and order the applicant to pay the costs of those proceedings.
3 By order of 21 April 2015, Real Express v OHIM — MIP Metro (real) (T‑580/13, not published, EU:T:2015:245), the Court dismissed the action as being, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law, and ordered the applicant to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
4 By letter of 3 November 2016, the intervener requested the applicant to reimburse to it the amount of recoverable costs relating to the proceedings before the Court, which it calculated at EUR 3 634.54. That letter contained a detailed description of the costs incurred by the intervener.
5 The applicant did not reply to the intervener’s letter, nor did it make the payment requested of it.
6 By application lodged at the Court Registry on 3 August 2017, the intervener requested the Court to fix, pursuant to Article 170(1) of its Rules of Procedure, the amount of recoverable costs at EUR 3 634.54 in respect of the proceedings giving rise to the order of 21 April 2015, real (T‑580/13, not published, EU:T:2015:245).
7 The applicant did not submit any observations on the intervener’s application for taxation of costs.
Law
8 Article 170(1) and (3) of the Rules of Procedure of the General Court provides that if there is a dispute concerning the costs to be recovered, the Court is to make an order from which no appeal is to lie, on application by the party concerned and after hearing the other party.
9 At the outset, it must be pointed out that, although the applicant did not formally refuse to accede to the intervener’s request to pay it the amount claimed, it did not, however, act on that request up until the time at which the present application for taxation of costs was lodged.
10 In that regard, according to case-law, it cannot be the case that a dispute for the purposes of Article 170 of the Rules of Procedure can be deemed to arise only when the party which has been requested by the successful party to reimburse the costs provides an explicit and comprehensive refusal. If that were so, it would be sufficient for a party to proceedings which has been ordered to pay the costs incurred by the other party to refrain from any reaction or to use delaying tactics in order to make it impossible to lodge an application for taxation of costs pursuant to that article. Such a result would render nugatory the procedure provided for in that article, which serves to achieve a definitive ruling on the costs of the proceedings (see order of 26 October 2017, Cosmowell v EUIPO — Haw Par (GELENKGOLD), T‑599/13 DEP, not published, EU:T:2017:770, paragraph 12 and the case-law cited).
11 According to Article 140(b) of the Rules of Procedure, expenses necessarily incurred by the parties for the purposes 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 26 October 2017, GELENKGOLD, T‑599/13 DEP, not published, EU:T:2017:770, paragraph 13 and the case-law cited).
12 More specifically, with regard to lawyers’ fees, it should be observed that, according to a consistent line of case-law, 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 up to which those fees may be recovered from the party ordered to pay the costs (see order of 26 October 2017, GELENKGOLD, T‑599/13 DEP, not published, EU:T:2017:770, paragraph 14 and the case-law cited).
13 It has also consistently been held that, in the absence of 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 EU law as well as the difficulties presented by the case, the amount of work generated by the case for the agents and advisers involved and the financial interest which the parties had in the proceedings (see order of 26 October 2017, GELENKGOLD, T‑599/13 DEP, not published, EU:T:2017:770, paragraph 15 and the case-law cited).
14 In fixing the recoverable costs, the Court is to take 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 connection with the taxation-of-costs proceedings (order of 26 October 2017, GELENKGOLD, T‑599/13 DEP, not published, EU:T:2017:770, paragraph 16 and the case-law cited).
15 The amount of the costs recoverable in the present case must be determined in accordance with those criteria.
16 The application for taxation of costs and the intervener’s letter of 3 November 2016, referred to in paragraph 4 above, state that the amount of the costs claimed by the intervener from the applicant is EUR 3 634.54, corresponding to a total of 13.4 hours of work invoiced at an hourly rate of EUR 290, excluding value added tax (VAT), and is broken down as follows:
– EUR 232 for the preparation of the representation before the Court, which required 0.8 hours of work by the intervener’s lawyer;
– EUR 725 for the examination of EUIPO’s electronic file, the assessment of the probability of success of the action contemplated and the drafting of a briefing note, which required 2.5 hours of work by the intervener's lawyer;
– EUR 116 for the drafting of observations on the choice of the language of the case, which required 0.4 hours of work by the intervener’s lawyer;
– EUR 1 740 for the drafting of the response, which required 6 hours of work by the intervener’s lawyer;
– EUR 87 for the examination of EUIPO’s response, which required 0.3 hours of work by the intervener’s lawyer;
– EUR 319 for the communication of the Court’s letter concerning the possibility of a hearing, for the recommendation that a request to that effect be made and for the drafting of that request, which required 1.1 hours of work by the intervener’s lawyer;
– EUR 87 for the communication of the Court’s decision to give judgment without a hearing, which required 0.3 hours of work by the intervener’s lawyer;
– EUR 580 for the examination of the order of 21 April 2015, real (T‑580/13, not published, EU:T:2015:245), which required 2 hours of work by the intervener’s lawyer, and, lastly,
– EUR 40 for administrative expenses.
17 In the first place, it must be held that certain costs set out in paragraph 16 above are not recoverable, irrespective of their amount.
18 This applies, first, to the costs concerning the preparation of the representation before the Court and those relating to the examination of EUIPO’s file, to the possibility of successfully bringing an action and the drafting of a briefing note in that regard (see the first and second indents of paragraph 16 above).
19 According to the case-law, even though, as a rule, substantial legal work is carried out in the course of the phase preceding judicial proceedings, by ‘proceedings’, Article 140(b) of the Rules of Procedure refers only to proceedings before the General Court, to the exclusion of any prior stage. Therefore, expenses and fees incurred in part for the preparation, by its advisers, of reports on the prospect of success and of the action contemplated by a party do not constitute recoverable costs (see, to that effect, orders of 14 March 1997, Arbeitsgemeinschaft Deutscher Luftfahrt-Unternehmen and Hapag-Lloyd v Commission, T‑25/96, EU:T:1997:34, paragraph 34; of 10 April 2014, Éditions Odile Jacob v Commission, T‑279/04 DEP, not published, EU:T:2014:233, paragraph 39; and of 18 September 2015, Autortiesību un komunicēšanās konsultāciju aģentūra/Latvijas Autoru apvienība and Others v Commission, T‑414/08 DEP to T‑420/08 DEP and T‑442/08 DEP, not published, EU:T:2015:726, paragraphs 41 and 42).
20 Secondly, the costs related to the examination of EUIPO’s response, the communication of the Court’s decision to give judgment without a hearing and the analysis of the order closing the main proceedings (see the seventh and eighth indents of paragraph 16 above) are not recoverable costs.
21 According to case-law, costs related to periods during which no procedural step was taken cannot be recovered, as such costs cannot be deemed to be directly connected to the interventions of the party’s lawyer before the Court. It should, inter alia, be borne in mind that, in this regard, the hours dedicated to the examination of the decision closing the proceedings before the Court and to the discussion of that decision with the client are not considered to be necessary expenses incurred for the purposes of the proceedings (see, to that effect, order of 19 January 2016, Copernicus-Trademarks v OHIM — Blue Coat Systems (BLUECO), T‑685/13 DEP, not published, EU:T:2016:31, paragraph 16 and the case-law cited).
22 In the second place, with regard to lawyer’s fees, it must first be noted that the purpose and nature of the case in the main proceedings did not present any particular difficulties with regard to their complexity. More specifically, it is apparent from the order of 21 April 2015, real (T‑580/13, not published, EU:T:2015:245) that the case in question concerned, in essence, the rejection of opposition to the registration of a sign as an EU mark on procedural grounds, inter alia as regards the timeous submission of proof of the existence, validity and scope of protection of the earlier marks, in accordance with Rules 19 and 20 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). What is more, the action in the main proceedings was dismissed by the Court as being, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law. That case was therefore not of any particular importance from the point of view of EU law. Moreover, the intervener has not claimed, in its application for taxation of costs, that the case was particularly complex or important.
23 Secondly, it should be noted that, although the case was evidently of clear economic interest to the intervener, the latter did not submit to the Court any evidence that that interest could be regarded, in the present case, as being 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, order of 29 November 2016, TrekStor v OHIM — Scanlab (iDrive), T‑105/14 DEP, not published, EU:T:2016:716, paragraph 15 and the case-law cited).
24 Therefore, in the present case, the Court takes the view that the hourly rate of EUR 290 applied by the intervener's lawyer is excessive and considers it appropriate to reduce that rate to EUR 250, as such a rate is regarded as reasonable for the type of litigation at issue in this case. Nevertheless, it must be pointed out that this rate can be regarded as appropriate only as remuneration for the services of a particularly experienced professional, who is able to work very efficiently and quickly. For remuneration at such a rate to be taken into account, there must, moreover, in return be an assessment, which must be strict, of the total number of hours of work necessary for the purposes of the proceedings before the Court (see order of 26 January 2017, Nürburgring v EUIPO — Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 20 and the case-law cited).
25 In the third place, as regards the extent of the work to which the proceedings may have given rise for the intervener, it is important to recall that the primary consideration for the Court is the total number of hours of work which may appear to be objectively necessary for the purposes of the proceedings before the Court. In this respect, the ability of the Courts of the European Union to assess the value of work carried out is dependent on the accuracy of the information provided (see order of 29 November 2016, iDrive, T‑105/14 DEP, not published, EU:T:2016:716, paragraph 16 and the case-law cited).
26 In the present case, the intervener’s participation in the proceedings consisted of the drafting of observations on the language of the case, of a reply, and of a request that an oral hearing be held.
27 First, having regard to the drafting of observations on the language of the case (see the third indent of paragraph 16 above), it should be noted that the intervener merely informed the Court that it agreed to the use of English, the language chosen by the applicant. Therefore, the recoverable costs for that purpose cannot exceed an amount corresponding to 0.25 hours, at an hourly rate of EUR 250.
28 Secondly, with regard to the drafting of the reply (see the fourth indent of paragraph 16 above), which is 11 pages long, it appears reasonable to consider that the six hours of work mentioned by the intervener at the hourly rate of EUR 250 were necessary. Account should be taken, inter alia, of the difficulties posed by the fact that, as observed by the Court in paragraph 35 of the order of 21 April 2015, real (T‑580/13, not published, EU:T:2015:245), most of the applicant’s statements were extremely vague, failed to explain the breach of the principles and provisions relied on in the case, or merely referred to documents submitted before EUIPO.
29 Thirdly, with regard to the drafting of the request that a hearing be held (see the sixth indent of paragraph 16 above), it must be noted that that request is three pages long and contains a quite detailed explanation of the questions that the intervener wished to address when presenting oral argument. Thus, it is reasonable to consider that the intervener’s lawyer could have dedicated 0.8 hours to that task, at an hourly rate of EUR 250.
30 It follows that the total number of hours of work by the intervener’s lawyer that may be considered to correspond to recoverable costs in the present case must be fixed at 7.05.
31 Lastly, as for the amount of EUR 40 claimed as a flat-rate fee for the administrative expenses incurred (see the ninth indent of paragraph 16 above), the Court takes the view that such a fee is perfectly reasonable and, in view of that amount, no specific supporting documentation is necessary. Consequently, the amount claimed must be accepted.
32 In the light of all of the foregoing, the costs recoverable by the intervener in respect of the proceedings before the Court will be fairly assessed by taxing their amount at EUR 1 802.50, which takes account of all the circumstances of the case up to the date of the present order.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
The total amount of the costs to be reimbursed by Real Express Srl to MIP Metro Group Intellectual Property GmbH & Co KG is set at EUR 1 802.50.
Luxembourg, 9 April 2018.