ORDER OF THE GENERAL COURT (Second Chamber)
2 September 2021 (*)
(Procedure – Taxation of costs – EU trade mark)
In Case T‑328/19 DEP,
Scorify UAB, established in Vilnius (Lithuania), represented by V. Viešūnaitė, 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
Scor SE, established in Paris (France), represented by T. de Haan, lawyer,
APPLICATION for taxation of costs to be reimbursed by the applicant to the intervener following the judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY) (T‑328/19, not published, EU:T:2020:311),
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and form of order sought by the intervener
1 By application lodged at the Court Registry on 29 May 2019, the applicant, Scorify UAB, formerly Scorisk UAB, brought an action against the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 March 2019 (Case R 1639/2018-4), relating to opposition proceedings between Scor SE and Scorisk.
2 The intervener, Scor, intervened in the proceedings in support of the form of order sought by EUIPO. It contended that the Court should dismiss the action and order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.
3 By judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY) (T‑328/19, not published, EU:T:2020:311), the Court dismissed the action and ordered the applicant to pay the costs, on the basis of Article 134(1) of the Rules of Procedure of the General Court.
4 By emails of 22 December 2020 and 8 January 2021, the intervener requested the applicant to pay it the amount of recoverable costs, namely the sum of EUR 5 626.43 in respect of the proceedings which gave rise to the judgment of 8 July 2020, SCORIFY (T‑328/19, not published, EU:T:2020:311) and EUR 550 in respect of the proceedings before the Board of Appeal. According to the intervener, the applicant did not respond to that request.
5 By application lodged at the Court Registry on 23 April 2021, the intervener requested the Court, pursuant to Article 170(1) of the Rules of Procedure, to fix the amount of recoverable costs, which the applicant must reimburse, at EUR 6 626.43.
6 By letter of 29 April 2021, the Court Registry informed the applicant that the time limit set for filing its observations on the application for taxation of costs was 9 June 2021. Nevertheless, the applicant did not submit any observations within the prescribed time limit.
Law
7 Under Article 170(1) to (3) of the Rules of Procedure, where there is a dispute concerning the costs to be recovered, the Court is, on application by the party concerned, to give its decision by way of an order from which no appeal lies, after giving the party concerned an opportunity to submit its observations.
8 In that regard, it must be stated that the admissibility of an application for taxation of costs cannot depend on a lack of response on the part of the party ordered to pay the costs or the possible existence of a prior agreement between the parties, as the procedure under Article 170 of the Rules of Procedure, which serves to achieve a definitive ruling on the costs of the proceedings, would otherwise be deprived of any practical effect (see, to that effect, order of 28 February 2013, Commission v Marcuccio, C‑528/08 P-DEP, not published, EU:C:2013:110, paragraph 15).
9 In the present case, the applicant was given the opportunity to submit its observations on the intervener’s application for taxation of costs, but did not respond to the Court’s invitation. Its silence cannot, however, be interpreted as meaning that there is no dispute as to the sum claimed and, therefore, the merits of this application must be examined (see, to that effect, orders of 21 September 2015, dm-drogerie markt v OHIM – V-Contact Kereskedelmi és Szolgáltató (CAMEA), T‑195/13 DEP, not published, EU:T:2015:730, paragraph 9, and of 25 March 2021, Austria Tabak v EUIPO – Mignot & De Block (AIR), T‑800/19 DEP, not published, EU:T:2021:174, paragraph 8) in the light of the factual evidence submitted to the Court by the intervener.
10 According to Article 140(b) of the Rules of Procedure, the 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 January 2017, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 9 and the case-law cited).
11 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 (see order of 26 January 2017, Nordschleife, T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited).
12 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 proceedings for the agents and advisers involved and the financial interests which the parties had in the proceedings (see order of 27 January 2016, ANKO v Commission and REA, T‑165/14 DEP, not published, EU:T:2016:108, paragraph 20 and the case-law cited).
13 In fixing recoverable costs, the Court takes 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 relation to the taxation of costs proceedings (see order of 6 March 2017, Hostel Tourist World v EUIPO – WRI Nominees (HostelTouristWorld.com), T‑566/13 DEP, not published, EU:T:2017:158, paragraph 16 and the case-law cited).
14 The amount of the costs recoverable in the present case must be determined in accordance with those principles.
15 It can be seen from the application for taxation that the costs in respect of which the intervener seeks repayment from the applicant amount to EUR 6 626.43 corresponding, first, to EUR 5 626.43 in respect of lawyers’ fees and costs relating to the main proceedings before the Court and, second, to EUR 1 000 as a lump sum for the present taxation of costs proceedings.
16 The intervener submits that all the costs were necessary and are justified in particular by the following circumstances. First, the case was important for both parties, which is demonstrated in particular by the fact that the applicant lodged an appeal before the Court of Justice. Second, the intervener’s lawyers had no prior knowledge of the case since they were not involved in the administrative proceedings before EUIPO. Third, its response was sharp, accurate and of high quality and contained numerous references to case-law. Fourth, its lawyers charged a very reasonable and minimalistic lump sump, namely EUR 4 000, for the examination of the file, devising a strategy, drafting the response and filing it before the Court and the hourly rates charged are reasonable and in line with market practices.
17 In support of its application for taxation of costs in the main proceedings in the amount of EUR 5 626.43, the intervener submitted five invoices, with issue dates between 15 November 2019 and 15 July 2020.
18 As regards, in particular, the invoice dated 15 November 2019, it corresponds to EUR 4 000 in respect of fees, plus 6% for office expenses, namely EUR 240. It follows that the intervener’s lawyers devoted, between 13 September and 25 October 2019, 17 hours and 42 minutes to studying the case file, researching the case-law, drafting the response, preparing formal documents with a view to lodging the response, contacting the intervener and studying EUIPO’s response. That time is divided as follows between the intervener’s lawyers: 5 hours for Mr de Haan and 12 hours and 42 minutes for his associate, Mr de Callataÿ.
19 As regards the other invoices drawn up by the intervener’s lawyers, the following must be noted:
– the invoice dated 10 December 2019, corresponding to EUR 156 in fees and EUR 14.08 for costs, relates to the drafting of emails, addressed to the Court Registry and the intervener on 6 and 20 November 2019, which required 24 minutes of working time;
– the invoice dated 12 February 2020, corresponding to EUR 130 in fees and EUR 7.80 for costs, relates to telephone conversations with the Court Registry and the intervener on 22 January 2020, which required 24 minutes of working time for Mr de Callataÿ;
– the invoice, dated 25 May 2020, corresponding to EUR 177.50 in fees and EUR 10.65 for costs, relates to the drafting of emails, sent to the intervener on 22 April and 20 May 2020, which required 12 minutes of working time for Mr de Haan and 18 minutes of working time for Mr de Callataÿ;
– the invoice dated 15 July 2020, corresponding to EUR 840 in fees and EUR 50.40 for costs, relates to the study of the judgment of 8 July 2020, SCORIFY (T‑328/19, not published, EU:T:2020:311) and the drafting of emails, addressed to the intervener between 8 and 10 July 2020, which required 2 hours and 6 minutes of working time for Mr de Haan.
20 First, it must be held that the costs set out in the invoice dated 15 July 2020, referred to in paragraph 19 above, are not recoverable, irrespective of their amount and the lack of precision of the information provided.
21 According to the case-law, the time devoted to the examination of the decision of the Court closing the proceedings is not considered to be expenses necessarily incurred for the purposes of the proceedings (see order of 10 April 2014, Éditions Odile Jacob v Commission, T‑279/04 DEP, EU:T:2014:233, paragraph 39 and the case-law cited).
22 In the present case, the costs referred to in paragraph 19 above corresponding to the invoice dated 15 July 2020 concern the analysis of the judgment closing the main proceedings, which cannot be recovered, in accordance with the case-law cited in paragraph 21 above.
23 In the second place, with regard to lawyer’s fees set out in the other invoices submitted by the intervener, it must be noted, first, that the case in the main proceedings was, as regards its subject matter and nature, of limited complexity. That case raised a question falling within the context of ordinary trade mark litigation, namely that of whether there was a likelihood of confusion within the meaning of Article 8(1)(b) 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 8(1)(b) 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)), in the context of opposition proceedings. In addition, before the dispute was examined by the Court, it had been examined by the Opposition Division and by a Board of Appeal of EUIPO.
24 Since the case in question concerned neither a new point of law nor a complex factual situation and was not particularly significant in relation to EU law, it is clear that the judgment of 8 July 2020, SCORIFY (T‑328/19, not published, EU:T:2020:311), forms part of a body of well-established case-law relating to trade marks. Furthermore, that case formed the subject of a judgment delivered by a formation of three Judges, which was not published in the general Court Reports.
25 Second, it should be noted that although, given the importance of trade marks in business, the intervener has a clear financial interest in the present case, in the absence of any 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).
26 Thus, as regards the amount of work to which the proceedings may have given rise for the intervener, it is important to note that the primary consideration for the Courts of the European Union 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 12 January 2016, Boehringer Ingelheim International v OHIM – Lehning entreprise (ANGIPAX), T‑368/13 DEP, not published, EU:T:2016:9, paragraphs 15 and 20 and the case-law cited).
27 In the present case, the intervener indeed submitted detailed invoices, as is apparent from paragraphs 18 and 19 above. It can be seen from those invoices, inter alia, that two lawyers worked on the case file.
28 In that connection, it should be recalled that the primary consideration for the Court is the total number of hours’ work which may appear to be objectively necessary for the purposes of the proceedings before the Court, irrespective of the number of lawyers who may have provided the services in question (see order of 20 September 2017, Frucona Košice v Commission, T‑11/07 DEP, not published, EU:T:2017:650, paragraph 39 and the case-law cited).
29 Thus, in view of the work which had to be carried out by the intervener’s lawyers as regards studying the file, researching case-law and preparing and drafting the response (see paragraph 18 above), which comprised eight pages, it appears that the lawyers’ fees claimed by the intervener exceed the amount objectively necessary to ensure the defence of the latter’s interests in the action before the Court.
30 It must be found that the working time of the intervener’s lawyers which was objectively necessary for the purposes of the proceedings before the Court cannot exceed 10 hours. As regards the hourly rate, it is appropriate to apply the average rate used by the intervener’s lawyers in the invoice of 15 November 2019, namely EUR 226.
31 It follows that the total amount of recoverable costs in the present case, as regards the main proceedings, must be fixed at EUR 2 260 in respect of fees and EUR 135 in respect of general costs.
32 In the third place, as regards the costs incurred for the purposes of the present taxation of costs proceedings, the intervener claims a lump sum of EUR 1 000. The intervener submits that that sum relates to the following-up of the proceedings before the Court of Justice in order to ascertain that the judgment of 8 July 2020, SCORIFY (T‑328/19, not published, EU:T:2020:311) had become final when drafting the letter of 22 December 2020 and the reminder of 8 January 2021, the drafting of the application for taxation of costs and exchanges with the intervener’s representative.
33 In that regard, it must be borne in mind that, according to settled case-law, the Court takes account of all the circumstances of the case up to the making of the order on taxation of costs, including the expenses necessarily incurred in relation to the taxation of costs proceedings (order of 17 September 2019, Mozzetti v EUIPO – di Lelio (Alfredo alla Scrofa and ALFREDO’S GALLERY alla Scrofa Roma), T‑96/15 DEP and T‑97/15 DEP, not published, EU:T:2019:658, paragraph 42).
34 In view, moreover, of the fact that the application for taxation of costs contains seven pages in total, that the annexes consist essentially of documents which the intervener’s lawyers are presumed to have already at their disposal, the costs incurred by the intervener in respect of the present proceedings will be fairly assessed by limiting them to an amount of EUR 300. In that regard, it should be added that the costs connected with the following-up of the proceedings before the Court of Justice which gave rise to the order of 26 November 2020, Scorify v EUIPO (C‑418/20 P, not published, EU:C:2020:968), and the drafting of emails to the applicant’s representatives cannot be regarded as recoverable costs, in accordance with the case-law cited in paragraph 21 above.
35 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 2 695, which takes account of all the circumstances of the case up to the date of the present order.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
The total amount of the costs to be reimbursed by Scorify UAB to Scor SE is set at EUR 2 695.
Luxembourg, 2 September 2021.