ORDER OF THE GENERAL COURT (Fifth Chamber)
26 March 2021 (*)
(Procedure – Taxation of costs)
In Joined Cases T‑223/17 DEP to T‑226/17 DEP,
Adapta Color, SL, established in Peñiscola (Spain), represented by G. Macías Bonilla, G. Marín Raigal and E. Armero Lavie, lawyers,
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
Coatings Foreign IP Co. LLC, established in Wilmington, Delaware (United States), represented by A. Rajendra, Solicitor,
APPLICATION for taxation of the costs to be reimbursed by the applicant to the intervener further to the four judgments of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP, ADAPTA POWDER COATINGS (T‑223/17, not published, EU:T:2019:245), Bio proof ADAPTA (T‑224/17, not published, EU:T:2019:242), Bio proof ADAPTA (T‑225/17, not published, EU:T:2019:247) and Rustproof System ADAPTA (T‑226/17, not published, EU:T:2019:246),
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By applications lodged at the Court Registry on 18 April 2017 in Case T‑223/17 and on 19 April 2017 in Cases T‑224/17 to T‑226/17, the applicant brought four actions against Decisions R 2522/2015-5, R 2521/2015-5, R 0311/2016-5 and R 2408/2015-5 of the Fifth Board of Appeal of EUIPO of 6 February 2017 which annulled, in whole or in part, the decisions of the Cancellation Division contested in each case and declared the applicant’s trade marks at issue to be wholly or partially invalid.
2 Coatings Foreign IP Co. LLC intervened in the proceedings in support of the forms of order sought by EUIPO and contended that the actions should be dismissed and the applicant ordered to pay the costs.
3 By four judgments of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP, ADAPTA POWDER COATINGS (T‑223/17, not published, EU:T:2019:245), Bio proof ADAPTA (T‑224/17, not published, EU:T:2019:242), Bio proof ADAPTA (T‑225/17, not published, EU:T:2019:247) and Rustproof System ADAPTA (T‑226/17, not published, EU:T:2019:246), the Court dismissed the actions 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 18 March 2020, the intervener requested the applicant to pay it a total amount of 72 904.18 pounds sterling (GBP) and EUR 4 000 in respect of the four cases.
5 By email of 14 May 2020, the applicant refused to pay those costs, stating that they were excessive and not justified.
6 By application lodged at the Court Registry on 19 June 2020, the intervener made, pursuant to Article 170(1) of the Rules of Procedure of the General Court, an application for taxation of costs, by which it claimed that the recoverable costs to be paid by the applicant in respect of the four cases should be fixed by the Court at GBP 72 904.18 and EUR 4 000. It states that that amount covers GBP 68 950.52 in lawyers’ fees, plus GBP 3 953.66 in travel and other expenses and EUR 4 000 in official fees paid to EUIPO.
7 By document lodged at the Court Registry on 12 October 2020, the applicant submitted its observations and contended that that application should be dismissed. It requests that the amount of costs be assessed on an equitable basis similar to analogous cases and the costs relating to the proceedings before EUIPO not be included.
Law
8 Under Article 170(1) and (3) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the Court, at the request of the party concerned, is to give its decision by way of an order from which no appeal may lie, after giving the party concerned by the application an opportunity to submit its observations.
9 Under Article 140(b) of the Rules of Procedure, expenses necessarily incurred by the parties for the purposes of the proceedings are regarded as recoverable costs, in particular the travel and subsistence expenses and the remuneration of agents, advisers or lawyers. 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 (order of 26 January 2017, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 9 and the case-law cited).
The costs relating to the proceedings before EUIPO
10 With regard to the costs relating to the proceedings before EUIPO, it should be borne in mind that the costs incurred before the Cancellation Division are not recoverable (order of 17 July 2012, Budějovický Budvar v OHIM – Anheuser-Busch (BUD), T‑60/04 DEP to T‑64/04 DEP, not published, EU:T:2012:390, paragraph 9). Moreover, in the present case, as the applicant points out, the intervener was unsuccessful before the Cancellation Division.
11 Article 190(2) of the Rules of Procedure provides that costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. In the present case, in the decisions contested before the Court in the cases in the main proceedings, the Board of Appeal ordered the applicant to pay the costs and fees of the cancellation proceedings and the appeal proceedings. However, the forms of order sought by the intervener in the main proceedings, as set out in the responses, made no reference to them. Thus, the order in the operative part of the judgments in the main proceedings that the applicant pay the costs covers only those relating to the proceedings before the Court and not those relating to the proceedings before EUIPO.
12 Since the present taxation of costs proceedings are ancillary to those in the cases in the main proceedings, in which the applicant was ordered to pay the costs of only the judicial proceedings, the intervener’s application is inadmissible in so far as it relates to other costs (orders of 26 October 2017, Haw Par v EUIPO – Cosmowell (GELENKGOLD), T‑25/16 DEP, not published, EU:T:2017:774, paragraph 34, and of 6 June 2019, Damm v EUIPO – Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER), T‑859/16 DEP, not published, EU:T:2019:402, paragraph 18). Moreover, the claim for EUR 4 000 in costs before EUIPO is not substantiated in any way.
13 It follows that the present application for taxation of costs is inadmissible in so far as it concerns the costs relating to the proceedings before EUIPO.
The costs relating to the proceedings before the Court
14 The intervener claims GBP 68 950.52 in respect of lawyers’ fees and GBP 3 953.66 in travel and other expenses.
15 In the first place, 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 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 (order of 26 January 2017, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited).
16 It has also consistently been held that, in the absence of provisions relating to tariffs, the Court must freely assess the details of the case, taking account of the subject matter and nature of the dispute, its importance from the point of view of EU law and also the difficulties presented by the case, the amount of work which the contentious proceedings generated for the agents or counsel involved, and the economic interests which the dispute represented for the parties (order of 26 January 2017, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 11 and the case-law cited).
17 In the present case, the intervener requests that the recoverable costs in respect of lawyers’ fees be fixed by the Court at GBP 68 950.52. It states that it hired two lawyers, one highly experienced in trade mark matters, whose fees were, respectively, GBP 39 486 for the first lawyer and GBP 29 464.52 for the second, more experienced lawyer. In that regard, it produces invoices dated from 2 November 2017 to 28 August 2019, which, in respect of the advisory work done regarding the files in question, contained details of the fees but had the detailed wording of the services rendered redacted. It maintains, in essence, that the cases were complex and were of particular economic and strategic importance.
18 The applicant asserts that the invoices do not state the legal services rendered, that they are addressed to an American law firm as opposed to the intervener and that they relate to services from June 2017 to August 2019 without further clarification. It also emphasises that the amounts were excessive and disproportionate compared to analogous cases, that the cases were neither complex nor of a particular economic interest and that there was no reason to hire two law firms.
19 First, as regards the subject matter and nature of the disputes, it must be noted that the proceedings before the Court concerned ordinary trade mark litigation, namely that relating essentially to distinctive character within the meaning of Article 7(1) and (3) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 7(1) and (3) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). Furthermore, prior to the examination of the disputes by the Court, they had been examined by the Cancellation Division and by a Board of Appeal of EUIPO.
20 Secondly, it must be held that the cases in the main proceedings were not of particular importance with regard to EU law, since the principles applied were in line with existing case-law, referred to in the judgments in the main proceedings. Furthermore, those cases formed the subject of judgments delivered by a formation of three Judges, which were not published in the general Court Reports.
21 Thirdly, as regards the amount of work carried out, account must be taken of the total number of hours of work corresponding to the services provided and regarded as objectively necessary for the purposes of the proceedings concerned, irrespective of the number of lawyers who carried out that work (order of 3 September 2020, United Parcel Service v Commission, C‑265/17 P-DEP, EU:C:2020:655, paragraph 42).
22 In the present case, notwithstanding their respective factual specificities (partially different trade marks, goods and services), the four cases all raised the same four pleas in law and presented similar legal issues. They involved for the intervener: (i) the management of procedural matters consisting of identical documents for the four cases (a one-page document objecting to the language of the case and a three-paragraph document concerning the application to join the cases for the purposes of the oral part of the procedure); and (ii) the drafting of four 18-page responses containing large passages common to the four cases, as well as preparation for the hearing on 17 September 2018 in connection with the four joined cases, which lasted two hours, and the submission of oral argument at that hearing.
23 Furthermore, in principle, the intervener’s part in the proceedings is made substantially easier by the work done by the party in support of which it has intervened (order of 21 July 2016, Panrico v Bimbo, C‑591/12 P-DEP, not published, EU:C:2016:591, paragraph 32).
24 Furthermore, the ability of the Courts of the European Union to assess the value of the work carried out by a lawyer is dependent on the accuracy of the information provided (order of 6 October 2017, Gambettola v Carrols, C‑171/12 P-DEP, not published, EU:C:2017:748, paragraph 26).
25 In the present case, in annex to its application for taxation of costs, the intervener merely produced supporting invoices showing the amounts invoiced for work by the lawyers involved without setting out either the details of those services, the number of hours spent on those services or the hourly rate applied. Moreover, since the responses were lodged in September 2017 and those lawyers attended the hearing in September 2018, the invoices relating to services provided after those dates clearly do not cover recoverable costs.
26 In those circumstances, the lawyers’ fees claimed in the amount of GBP 68 950.52, to which the intervener refers, largely exceed the amounts objectively necessary to defend that company’s interests in the actions before the Court, the four cases being very similar.
27 Fourthly, it should be noted that, although, in view of the importance of trade marks in trade, the intervener has a certain financial interest in the present case, in the absence of evidence adduced by the intervener, that financial interest cannot be considered to be unusually significant (see, to that effect, order of 12 September 2012, Klosterbrauerei Weissenohe v Torresan, C‑5/10 P-DEP, not published, EU:C:2012:562, paragraph 15).
28 In the light of all the foregoing considerations, the costs recoverable by the intervener in respect of lawyers’ fees may be assessed on an equitable basis by fixing their amount at EUR 8 000.
29 In the second place, the intervener claims GBP 1 888.15 in travel expenses and GBP 2 065.51 in additional expenses such as photocopying and couriers’ costs, amounting to a total of GBP 3 953.66 in disbursements. As the applicant states, those disbursements are not, however, substantiated by any invoices.
30 In that regard, failing any supporting documents and more precise information from the intervener, the Court considers it reasonable to fix at EUR 500 the travel and subsistence expenses which may be regarded as necessary for the purposes of the participation of the intervener’s representative at the hearing (see, to that effect, order of 25 May 2020, BMB v EUIPO, T‑695/15 DEP, not published, EU:T:2020:236, paragraph 32).
31 In the light of all the foregoing considerations, the Court considers that the costs recoverable by the intervener may be assessed on an equitable basis by fixing their amount at EUR 8 500, which takes account of all the circumstances of the four cases up to the date of this order.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby orders:
The total amount of the costs to be reimbursed by Adapta Color, SL to Coatings Foreign IP Co. LLC is fixed at EUR 8 500.
Luxembourg, 26 March 2021.