ORDER OF THE GENERAL COURT (Sixth Chamber)
20 October 2015(*)
(Community designs — Procedure — Taxation of costs)
In Case T‑10/08 DEP,
Kwang Yang Motor Co., Ltd, established in Kaohsiung (Taiwan), represented by P. Rath, W. Festl-Wietek and M. Wetzel, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Honda Giken Kogyo Kabushiki Kaisha, established in Tokyo (Japan), represented by T. Musmann, H. Timmann and M. Büttner, lawyers,
APPLICATION for taxation of the costs to be recovered from the applicant by the intervening party following the judgment of the General Court of 9 September 2011 in Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine with vent on the top) (T‑10/08, EU:T:2011:446),
THE GENERAL COURT (Sixth Chamber),
composed of S. Frimodt Nielsen, (Rapporteur), President, F. Dehousse and A.M. Collins, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 In its judgments of 9 September 2011 in Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine with vent on the top) (T‑10/08, EU:T:2011:446) and Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine) (T‑11/08, EU:T:2011:447), the Court dismissed the actions brought by the applicant, Kwang Yang Motor Co., Ltd, and ordered the applicant to pay the costs of the intervener, Honda Giken Kogyo Kabushiki Kaisha. The cases giving rise to those judgments were joined for the purposes of the oral part of the procedure by order of the President of the Court of 16 December 2010.
2 By letter of 30 January 2012, the intervener requested the applicant to reimburse it a total amount of EUR 36 067.60 for all of the proceedings against the applicant, including those before the Invalidity Division and the Third Board of Appeal of OHIM.
3 In March 2013, in response to the intervener’s request, the applicant reimbursed the intervener a total amount of EUR 4 100 for costs incurred by it both for the proceedings before the Invalidity Division and the Third Board of Appeal of OHIM.
4 By letter sent to the applicant on 3 April 2013, the intervener confirmed its receipt of that reimbursement and stated that the recoverable costs for the two proceedings before the Court still remained to be reimbursed.
5 By document lodged at the Court Registry on 23 December 2014, the intervener brought the present application for the taxation of costs, pursuant to Article 92(1) of the Rules of Procedure of the General Court of 2 May 1991, by which it claims that the Court should tax the amount of recoverable costs that the applicant must reimburse in accordance with the judgment in Internal combustion engine with vent on the top (cited in paragraph 1 above, EU:T:2011:446) at EUR 12 374.65.
6 By document lodged at the Court Registry on 25 February 2015, the applicant submitted its observations on the intervener’s application. It asks the Court to reject the application in its entirety or, in the alternative, to tax the amount of recoverable costs that it must reimburse the intervener in the amount of EUR 6 187.33, which the applicant considers to be reasonable.
Law
Arguments of the parties
7 In support of its application for taxation of the costs, the intervener has provided a fee note for a total amount of EUR 12 374.65 for expenses and fees itemised under the following headings and in the following amounts. First, it claims EUR 12 187.65 as costs for representing the intervener, for postage, fax and photocopying, plus EUR 500 as legal fees related to the costs of the proceedings. Second, EUR 187 is claimed as travel expenses in connection with one lawyer attending the hearing of 2 February 2011.
8 The intervener submits that the case was very significant from the point of view of EU law because it was one of the first cases concerning the interpretation and application of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1). The case was also very difficult and complex, in particular due to the very large number of annexes submitted by the applicant with its application of 7 January 2008, including approximately 40 additional Community designs that had not formed part of the initial proceedings. Moreover, the intervener submits that it had a significant financial interest in the Court rejecting the action brought against the contested decision.
9 The applicant contests those submissions and contends, in essence, that the amount claimed by the intervener is neither reasonable nor well founded.
Findings of the Court
10 Article 170 of the Rules of Procedure of the General Court states:
‘1. If there is a dispute concerning the costs to be recovered, the party concerned may apply to the General Court to determine the dispute. ...
3. After giving the party concerned by the application an opportunity to submit his observations, the General Court shall give its decision by way of an order from which no appeal shall lie.’
11 As was stated in paragraphs 2 to 4 above, on 30 January 2012 the intervener requested the applicant to reimburse the costs that it considered recoverable. Following a partial payment made by the applicant in March 2013, on 3 April 2013 the intervener again claimed the remainder of the amount at issue. Not having been paid at the date that the present application was brought, that amount must be considered to be contested by the applicant.
12 It is true that a not insignificant period of time has elapsed between the date of the judgment ordering the applicant to pay the costs of the proceedings and the date on which the intervener made the present application. Nevertheless, contrary to what the applicant submits, with regard to the sequence of events outlined in paragraph 11 above, the intervener alone cannot be criticised for such a period of time having elapsed and it cannot be concluded that the intervener has abandoned its request.
13 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 regarded as recoverable costs. It follows from that provision that recoverable costs are limited, first, to those incurred for the purposes of the proceedings before the Court and, second, to those that were necessary for those purposes (see, to that effect, order of 28 June 2004 in Airtours v Commission, T‑342/99 DEP, ECR, EU:T:2004:192, paragraph 13 and the case-law cited).
14 In the absence of provisions of EU law 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, 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 (see, to that effect, orders in Airtours v Commission, cited in paragraph 13 above, EU:T:2004:192, paragraph 18, and of 3 October 2012 in Diputación Foral de Álava and Others v Commission, T‑86/02 DEP to T‑88/02 DEP, EU:T:2012:520, paragraph 16).
15 It is in the light of the foregoing considerations that the amount of the recoverable costs in the present case must be assessed.
16 In the first place, the Court notes that, as the intervener correctly states, the case in the main proceedings was one of the first cases relating to the application of Regulation No 6/2002. Accordingly, the case at issue presented a certain significance from the point of view of EU law.
17 In the second place, specifically with regard to the purpose and nature of the case at issue, the judgment in Internal combustion engine with vent on the top (cited in paragraph 1 above, EU:T:2011:446) shows that that case concerned an application made by the applicant for annulment on the basis of a single plea in law alleging an infringement of Article 4(2) of Regulation No 6/2002 read in conjunction with Article 6 of that regulation. The judgment also shows that the case gave rise, inter alia, to a question of fact concerning the Board of Appeal’s assessment of the visible parts of the engine during its use that were covered by the design at issue, which had been classified as a component part of a complex product, and to two questions of law concerning the definition of an informed user and the degree of freedom of the designer. At the time that the parties’ pleadings were lodged, those questions had not previously been the subject of an interpretation in the Court’s case-law. In those circumstances, the Court finds that the case at issue presented a certain degree of difficulty and complexity.
18 In the third place, the Court finds that, although the case undeniably presented a significant financial interest for the intervener, that interest cannot be considered, in the complete absence of specific evidence adduced by the intervener in that regard, to be uncommon or significantly different from that which underlies every application for the annulment of a Community design (see, to that effect, order of 17 June 2015 in Mundipharma v OHIM, T‑328/12 DEP, EU:T:2015:430, paragraph 25 and the case-law cited).
19 Lastly, in assessing the extent of the work generated by the proceedings at issue, the primary consideration of the Court 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 14 May 2013 in Arrieta D. Gross v OHIM, T‑298/10 DEP, EU:T:2013:237, paragraph 19 and the case-law cited).
20 Moreover, according to the case-law, the hourly rate which an intervener seeks to have applied must be taken into account, since remuneration at a high hourly rate is appropriate only for the services of professionals who are capable of working efficiently and rapidly and must therefore be counterbalanced by a necessarily strict evaluation of the total number of hours of work necessary for the purposes of those proceedings (see order in Arrieta D. Gross v OHIM, cited in paragraph 19 above, EU:T:2013:237, paragraph 20 and the case-law cited).
21 In the present case, the detailed breakdown of counsel for the intervener’s fee note, presented by the intervener in support of its application for taxation of the costs of the proceedings, shows that the EUR 11 500 that it claims for representing the intervener during the course of the proceedings before the Court corresponds to 57 hours and 30 minutes of work by its lawyers between 29 January 2008 and 14 December 2011, inter alia in studying the rules of procedure of the Court, preparing and drafting the response, studying the contested decision and the written pleadings submitted in the proceedings before OHIM, analysing the report for the hearing, preparing for and attending the hearing and drafting reports and communicating them to the intervener on the hearing and the judgment delivered in the case in the main proceedings.
22 First, regarding the hourly rate charged by the intervener’s counsel, the Court finds that EUR 200 appears appropriate for that type of litigation (see, to that effect, order of 2 June 2015 in Optilingua v OHIM, T‑538/12 DEP, EU:T:2015:366, paragraph 21) and also notes that the applicant did not itself contest that rate.
23 Second, regarding the number of hours which ought to be considered objectively necessary for the purposes of the proceedings before the Court, it should be noted, first of all, in the light of the considerations set out in paragraph 20 above, that it appears excessive for a professional remunerated at a reasonable hourly rate in representing his client before the Court to spend 6 hours and 40 minutes studying the rules of procedure of the Court, which the professional is supposed to know.
24 It must be pointed out that, although the case presented a certain significance and a certain degree of complexity, as found in paragraphs 16 and 17 above, the written part of the procedure consisted in a single exchange of pleadings in which the intervener submitted a response (16 pages excluding the annexes), observations concerning attendance at the hearing (one page) as well as concerning a proposal that the case be joined (one page). In addition, the application made by the applicant needed to be analysed by the intervener’s counsel, which comprised 20 pages and 283 pages of annexes, of which 12 pages represented the contested decision, 27 pages contained advertising catalogues and 250 pages contained registered engine models, principally in the United States. With regard to the last of those documents, although they comprised a large amount of information, that information was mostly presented in the standard format for registrations allowing professionals who are experts in the area to extract the relevant information relatively quickly.
25 Moreover, according to the case-law, the knowledge that the advisers of one of the parties already have of the case from having represented it prior to the application being brought in the main proceedings before the adjudicatory bodies of OHIM can, to a not insignificant degree, facilitate the work and reduce the time necessary for drafting the response and the other documents submitted before the Court (see order of 23 October 2013 in Phonebook of the World v OHIM — Seat Pagine Gialle (PAGINE GIALLE), T‑589/11 DEP, EU:T:2013:572, paragraph 18 and the case-law cited). In the present case, the documents before the Court show that the law firm representing the intervener before the Court had also represented it before OHIM.
26 Furthermore, as the applicant correctly maintains, it is necessary to take into consideration the fact that the same counsel represented the intervener for the purpose of the proceedings before the Court in the case giving rise to the judgment in Internal combustion engine (cited in paragraph 1 above, EU:T:2011:447), which involved the same parties in relation to a very similar Community design to the one at issue in the case in the main proceedings of the present case, in which the contested decision and the written pleadings of the parties are very similar and which was joined to the case in the main proceedings of the present case for the purposes of the oral part of the procedure. In that regard, the intervener has presented an application for taxation of recoverable costs in relation to the judgment cited above for a total amount of EUR 16 176.90, including in particular EUR 15 989.90 as costs for representing the intervener on the basis of 73 hours and 30 minutes of work performed by counsel for the purpose of the proceedings at issue. In the light of those considerations, the Court considers that there is an overlap between the applications for taxation of costs presented by the intervener which must be taken into account in assessing the amount of the costs recoverable in each of the two cases.
27 In those circumstances, the Court considers that 31 hours and 20 minutes of work relating to the written part of the procedure and ancillary work, as stated in counsel for the intervener’s fee note, is excessive.
28 Finally, as regards the number of hours of work related to preparing for and attending at the hearing, following the order for joinder mentioned in paragraph 1 above, only one hearing was held on 2 February 2011, from 9:39 to 10:59. Thus, the Court considers that 17 hours and 50 minutes of work in connection with the hearing in the case in the main proceedings of the present case, as stated in the counsel for the intervener’s fee note, is manifestly excessive.
29 In those circumstances, the Court considers that 57 hours and 30 minutes of work relating to the representation of the intervener during the written and oral part of the procedure before the Court, as stated in counsel for the intervener’s fee note, is, taken as a whole, manifestly excessive and greatly exceeds what is necessary for the purpose of the proceedings before the Court.
30 As regards the expenses for photocopies and postage assessed in the amount of EUR 189.65 and the travel expenses of one lawyer to attend the hearing, assessed at EUR 187, documentary evidence of which was produced by the intervener, they appear on the whole reasonable and justified.
31 In the light of all the foregoing considerations, the Court considers that the costs recoverable by the intervener in respect of the proceedings before the Court will be fairly assessed by taxing their amount at EUR 6 187.33, which the applicant itself considers to be reasonable. That amount takes account of all the circumstances of the case up to the date of this order.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
The full amount of the costs that Kwang Yang Motor Co., Ltd must reimburse Honda Giken Kogyo Kabushiki Kaisha is fixed at EUR 6 187.33 EUR.
Luxembourg, 20 October 2015.
E. Coulon | S. Frimodt Nielsen
Registrar | President |