ORDER OF THE GENERAL COURT (Seventh Chamber)
21 May 2014(*)
(Procedure — Taxation of costs)
In Case T‑444/10 DEP,
Esge AG, established in Bussnang (Switzerland), represented by J. Klink, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being
De’Longhi Benelux SA, formerly Kenwood Appliances Luxembourg SA, established in Luxembourg (Luxembourg), represented by P. Strickland, Solicitor, and J. St Ville, Barrister,
APPLICATION for taxation of costs lodged by De’Longhi Benelux SA following the judgment of the Court of 21 February 2013 in Case T‑444/10 Esge v OHIM — De’Longhi Benelux (KMIX), not published in the ECR,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought by the parties
1 By application lodged at the Court Registry on 28 September 2010, the applicant, Esge AG, brought an action for annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 July 2010 (Case R 1249/2009-2), concerning opposition proceedings between Esge AG and Kenwood Appliances Luxembourg SA.
2 The intervener, De’Longhi Benelux SA, formerly Kenwood Appliances Luxembourg SA, intervened in the proceedings in support of the form of order sought by OHIM to request that the action be dismissed and the applicant be ordered to pay the costs.
3 By judgment of 21 February 2013 in Case T‑444/10 Esge v OHIM — De’Longhi Benelux (KMIX), not published in the ECR, the Court dismissed the action and ordered the applicant to pay the costs pursuant to Article 87(2) of its Rules of Procedure.
4 By letter of 3 July 2013, the intervener asked the applicant to pay EUR 74 987.94 in respect of the costs which it had incurred in proceedings before the Court.
5 By letter of 16 July 2013, the applicant refused to pay that amount.
6 By application lodged at the Court Registry on 19 November 2013, the intervener submitted, on the basis of Article 92(1) of the Rules of Procedure, an application for taxation of costs by which it requested that the Court fix the amount of the recoverable costs to be paid by the applicant at EUR 78 756.
7 By document lodged at the Court Registry on 28 January 2014, the applicant contended that the application should be rejected and that the amount of the recoverable costs should be set at EUR 10 550.
Law
Arguments of the parties
8 The intervener claims that it provided an accurate and complete explanation of the high costs which the applicant’s action has caused. In particular, it claims that it had to perform considerable work in order to examine the numerous judgments relied on by the applicant in its written pleadings. In addition, the intervener claims that it had to be represented before the Court by several advisers because of the various aspects of work required and in the light of the importance of the case in the main proceedings. In that regard, the intervener claims that that case was very important for it from an economic point of view given that the amount of sales of products covered by its KMIX mark (the application for registration of which was contested by the applicant) was EUR 34 870 540 in 2012 in the European Union and that it had invested considerable amounts in the marketing of the products covered by that mark. The intervener attached a schedule of costs and fees of a total amount of EUR 78 756 as an annex to the application for taxation of costs.
9 The applicant claims that the question of law raised in the present case was simple since it had raised a single plea in law, alleging infringement of Article 8(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). In addition, the applicant maintains that the amount claimed by the intervener in respect of the costs before the Court corresponds to approximately 270.4 hours of work carried out by nine advisers belonging to three different law firms. That number of hours by far exceeds what can be considered to be a number of hours needed for the purpose of responding to a question of law such as that raised in the present case.
Findings of the Court
10 Under Article 92(1) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the Court hearing the case, on application by the party concerned and after hearing the opposite party, is to make an order, from which no appeal lies.
11 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 and, second, to those which were necessary for that purpose (see order of 28 June 2004 in Case T‑342/99 DEP Airtours v Commission [2004] ECR II‑1785, paragraph 13 and the case-law cited).
12 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 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 interests which the parties had in the proceedings (see order in Airtours v Commission, paragraph 18 and the case-law cited).
13 The amount of the recoverable costs in the present case must be assessed in the light of those factors.
14 In the first place, it must be noted that the purpose and nature of the case in the main proceedings did not present any particular complexity. That case concerned an opposition brought by the applicant against the registration of the Community trade mark requested by the intervener and the sole ground relied on in support of the opposition was the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 207/2009. It should also be noted that the case was of no particular importance from the point of view of EU law.
15 In the second place, it must be noted that, although the case in the main proceedings clearly had a certain economic interest for the intervener, that economic interest cannot be considered to be unusual or significantly different from that which underlies any opposition proceedings. In addition, the intervener does not adduce proof of the stated amount of sales of products covered by the KMIX mark or proof of the considerable amounts which it claims to have invested in the marketing of those products.
16 In the third place, as regards the amount of work which the contentious proceedings generated for the intervener’s advisers, it must be borne in mind that 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 in Airtours v Commission, paragraph 30 and the case-law cited).
17 In the present case, the schedule of costs and fees provided by the intervener shows that the intervener used the services of various advisers: an adviser from the law firm Baron Warren Redfern (who was its adviser before OHIM); a partner of the law firm Waterfront Solicitors LLP (formerly of the law firm Strickland LLP), who was assisted by several members of the law firm Waterfront Solicitors; and a barrister. The amount of approximately EUR 69 890.02 which the intervener is claiming in respect of the fees of its various advisers can be broken down as follows:
– EUR 5 106 for the work carried out by the law firm Baron Warren Redfern;
– EUR 1 028 for the work carried out by the law firm Strickland;
– GBP 24 308 (approximately EUR 27 366.02) for 98.5 hours of work carried out by the law firm Waterfront Solicitors;
– EUR 36 390 for the work carried out by the barrister.
18 The schedule of costs and fees contains a description of the tasks performed by each lawyer. By contrast, in that schedule of costs and fees, the hourly rate applied and the time spent on each task is stated only for the members of the law firm Waterfront Solicitors.
19 In that regard, 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 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).
20 In addition, it must be borne in mind that, while in the present case it was permissible for a party to entrust the defence of its interests to a number of lawyers, 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 20 November 2012 in Case T‑121/09 DEP Al Shanfari v Council and Commision, not published in the ECR, paragraph 25 and the case-law cited).
21 As regards, more specifically, the choice made by a party to use the joint services of solicitors and of barristers, it is apparent from the case-law that, where a party decides to be represented by both a solicitor and by a barrister, it does not follow that the fees due to each of them are not to be regarded as expenses necessarily incurred for the purpose of the proceedings, as provided for in Article 91(b) of the Rules of Procedure. In taxing costs in those circumstances, the Court must examine the extent to which the services supplied by all the advisers concerned were necessary for the conduct of the legal proceedings and satisfy itself that the fact that both categories of lawyers were instructed did not entail any unnecessary duplication of costs (see order in Al Shanfari v Council and Commission, paragraph 26 and the case-law cited).
22 Coordination costs cannot be regarded as necessary costs to be taken into account for the purpose of calculating the amount of recoverable costs (order of 12 December 2008 in Case T‑417/05 DEP Endesa v Commission, not published in the ECR, paragraph 27).
23 In the present case, the notes of costs and fees attached as annexes to the application for taxation of costs show that the law firm Waterfront Solicitors, the barrister and the law firm Baron Warren Redfern prepared the response and the rejoinder. Those notes also show that the law firm Waterfront Solicitors and the barrister prepared for the hearing.
24 The division of the work between several advisers therefore necessarily entailed a duplication of efforts, so that the Court cannot accept the totality of the hours of work claimed as being objectively necessary.
25 Nor can the Court take into account the services provided by the intervener’s various advisers which consisted in the coordination of work between them.
26 The actual participation of the intervener’s lawyers in the main proceedings and in the proceedings for taxation of costs took the form of preparation for and participation in the hearing of 24 October 2012 before the Court, and the drafting of four documents: a response, a rejoinder, a letter relating to the choice of the language of the case and an application for taxation of costs.
27 The letter relating to the choice of the language of the case consisted of only two pages. The 20-page response consisted of only 15 pages of argument which contained numerous extracts from annexes provided by the applicant and numerous extracts from case-law. In addition, the response was accompanied by annexes, the presentation of which did not require significant administrative or intellectual work from the intervener’s advisers, namely the contested decision and translations of annexes to the application carried out by a certified translator or by the applicant. The 10-page rejoinder consisted of numerous extracts from case-law and numerous repetitions of the response. It was not accompanied by an annex. Finally, the application for taxation of costs contained nine pages.
28 In the light of the volume of the written pleadings and taking account of the lack of complexity of the question of law raised in the present case, the Court considers that the applicant’s proposition that the number of hours needed in order to prepare the written pleadings and for the hearing be set at 37 is reasonable.
29 As for the determination of an appropriate hourly rate, the hourly rate claimed by the intervener ranges between GBP 250 and 260 (between approximately EUR 281.45 and 292.71) so far as concerns the work carried out by the solicitors and the partner of the law firm Waterfront Solicitors. The hourly rate of the barrister and that of the adviser from the law firm Baron Warren Redfern are not specified.
30 The Court considers that that hourly rate is excessive and that the applicant’s proposition that an average hourly rate of EUR 250 be applied is reasonable.
31 Therefore, the costs to be recovered in respect of the lawyers’ fees will be fairly assessed by setting their amount at EUR 9 250, as the applicant proposes.
32 Finally, the costs claimed by the intervener in respect of its advisers’ expenses of a total amount of approximately EUR 3 325.19 include transport, hotel and subsistence, photocopying, correspondence, research and translation costs.
33 As for the transport costs in order to attend the hearing of 24 October 2012 amounting to EUR 1 270 and the hotel and subsistence costs of EUR 948 of the partner of the law firm Waterfront Solicitors LLP, the barrister and the adviser from the law firm Baron Warren Redfern, it should be noted that those costs must be calculated on the basis of two and not three persons. The presence of three advisers at the hearing was not necessary given the question of law raised in the present case.
34 Therefore, it must be held that only two thirds of the amount of those costs, namely EUR 846.66 for the transport costs and EUR 632 for the hotel and subsistence costs, that is to say a total of EUR 1 478.66, may be regarded as recoverable costs. That amount is not excessive and one night in a hotel in Luxembourg on the eve of the hearing was necessary given that the hearing took place in the morning and that the intervener’s advisers were coming from London.
35 As for the transport costs of GBP 88.01 (approximately EUR 99.07) of the law firm Waterfront Solicitors LLP, as that amount is not excessive, those costs may be regarded as recoverable costs even though their amount is not justified by any document.
36 As for the photocopying and correspondence costs of GBP 257 (approximately EUR 289.32) for the law firm Waterfront Solicitors LLP and of EUR 220 for the law firm Baron Warren Redfern, given that the use of several advisers entailed a duplication of tasks (see paragraphs 23 and 24 above), account should be taken of only one of those two amounts. Since the applicant stated that it was not contesting the amount of EUR 220, those EUR 220 must be regarded as recoverable costs even though that amount is not justified by any document.
37 As for the research costs of GBP 10.51 (approximately EUR 11.83) of the law firm Waterfront Solicitors LLP for research carried out into the Commercial and Companies Register, it must be noted that although the amount of those costs is not justified by an invoice, the intervener actually provided the Court, in the case in the main proceedings, with an extract from the Commercial and Companies Register in Luxembourg in order to prove its existence in law. Those costs may therefore be regarded as recoverable costs.
38 As for the costs of translating some annexes to the application amounting to EUR 487, the intervener claims that it was forced to have Annexes K.7 to K.9 to the application translated from German into the language of the case, English.
39 It must be observed that those annexes had been provided by the applicant in German before the Court granted the intervener’s application to designate English as the language of the case.
40 The amount of those translation costs is not justified by an invoice. However, the translations into English by a certified translator of Annexes K.7 to K.9 to the application were provided by the intervener in an annex to its response in the case in the main proceedings. The translation of Annex K.7 consists of four pages, that of Annex K.8 consists of some lines and that of Annex K.9 consists of less than a page. In addition, it must be noted that those annexes were relied on by the applicant in support of its argument that the signs at issue were similar. The translation of those annexes was therefore necessary so that the intervener could ensure the defence of its interests. Those costs of EUR 487 may therefore be regarded as recoverable costs.
41 Therefore, the costs recoverable in respect of the expenses of the intervener’s advisers will be fairly assessed by setting their amount at EUR 2 296.56.
42 Furthermore, as for the amount of GBP 4 921.63 (approximately EUR 5 540.79) claimed by the intervener in respect of value added tax (VAT) for some costs and fees, it must be noted that when an undertaking is subject to VAT it is entitled to recover from the tax authorities VAT paid on goods and services purchased by it. VAT thus does not represent an expense for it and, accordingly, it cannot claim reimbursement of VAT paid on costs which are recoverable from the party ordered to pay the costs under Article 91(b) of the Rules of Procedure (see, to that effect, order in Airtours v Commission, paragraph 79). The amount claimed in respect of VAT is therefore regarded as recoverable costs only if the undertaking which is claiming that amount establishes that it is not subject to VAT (see, to that effect, order of 25 April 2008 in Case T‑146/03 DEP Asociación de Estaciones de Servicio de Madrid and Federación Catalana de Estaciones de Servicio v Commission, not published in the ECR, paragraph 32).
43 In the present case, since the intervener has not established that it was not subject to VAT, the amount of VAT on the costs and fees cannot be regarded as recoverable costs.
44 In the light of all the foregoing considerations, all the costs recoverable by the intervener will be fairly assessed by setting their amount at EUR 11 546.56, which takes account of all the circumstances of the case up to the date of this order.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
The total amount of the costs to be reimbursed by Esge AG to De’Longhi Benelux SA is set at EUR 11 546.56.
Luxembourg, 21 May 2014.
E. Coulon | | M. van der Woude |