Case C‑57/15

United Video Properties Inc.

v

Telenet NV

(Request for a preliminary ruling
from the hof van beroep te Antwerpen)

(Reference for a preliminary ruling — Intellectual property rights — Directive 2004/48/EC — Article 14 — Legal costs — Lawyers’ fees — Flat-rate reimbursement — Maximum amounts — Costs of a technical adviser — Reimbursement — Condition of fault on the part of the unsuccessful party)

Summary — Judgment of the Court (Fifth Chamber), 28 July 2016

1.        Approximation of laws — Enforcement of intellectual property rights — Directive 2004/48 — Legal costs — National legislation providing for a system of varying flat rates in respect of the reimbursement of lawyers’ fees — Lawfulness — Condition — Reasonableness of the costs — Assessment by the national court — No guarantee of reimbursement of a significant and appropriate part of the costs on the part of the unsuccessful party — Not permissible

(European Parliament and Council Directive 2004/48, Recital 17, Arts 3(1) and (2) and 14)

2.        Approximation of laws — Enforcement of intellectual property rights — Directive 2004/48 — Legal costs — National legislation providing that reimbursement of the costs of a technical adviser only in the case of fault on the part of the unsuccessful party — Not permissible

(European Parliament and Council Directive 2004/48, Recital 26, Arts 13(1) and 14)

1.        Article 14 of Directive 2004/48 on the enforcement of intellectual property rights must be interpreted as not precluding national legislation which provides that the unsuccessful party is to be ordered to pay the legal costs incurred by the successful party, which offers the courts responsible for making that order the possibility of taking into account features specific to the case before it, and provides for a flat-rate scheme for the reimbursement of costs for the assistance of a lawyer, subject to the condition that those rates ensure that the costs to be borne by the unsuccessful party are reasonable, which it is for the referring court to determine.

Taking account of recital 17 and Articles 3(1) and 14 of that directive, such legislation is capable of being justified, in particular if that legislation is intended to exclude the reimbursement of excessive costs due to unusually high fees agreed between the successful party and its lawyer or due to the provision, by the lawyer, of services that are not considered necessary in order to ensure the enforcement of the intellectual property rights concerned. By contrast, the requirement that the unsuccessful party must bear reasonable legal costs cannot justify legislation imposing a flat-rate significantly below the average rate actually charged for the services of a lawyer in that Member State. Such legislation would be incompatible with Article 3(2) of Directive 2004/48, which states that the procedures and remedies provided for by that directive must be dissuasive or compromises the principal aim pursued by Directive 2004/48, of ensuring a high level of protection of intellectual property rights in the internal market.

However, Article 14 of that directive precludes national legislation providing flat-rates which, owing to the maximum amounts that it contains being too low, do not ensure that, at the very least, that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party. That question cannot be assessed independently of the costs that the successful party actually incurred in respect of the assistance of a lawyer, provided they are reasonable. If the requirement of proportionality does not imply that the unsuccessful party must necessarily reimburse the entirety of the costs incurred by the other party, it does however mean that the successful party should have the right to reimbursement of, at the very least, a significant and appropriate part of the reasonable costs actually incurred.

(see paras 25-27, 29, 32, operative part 1)

2.        Article 14 of Directive 2004/48 on the enforcement of intellectual property rights must be interpreted as precluding national rules providing that reimbursement of the costs of a technical adviser are provided for only in the event of fault on the part of the unsuccessful party, given that those costs are directly and closely linked to a judicial action seeking to have such an intellectual property right upheld.

In that regard, first, given that the costs of identification and research, often linked to the services of a technical adviser, incurred by the intellectual property rightholder, concern, in particular, damages to be paid in the case where there has been fault on the part of the infringer and that damages are the subject matter of Article 13(1) of that directive, those costs, incurred often before judicial proceedings, do not necessarily fall within the scope of Article 14 of that directive.

Second, a broad interpretation of Article 14 of Directive 2004/48, to the effect that it provides that the unsuccessful party must bear, as a general rule, the other expenses incurred by the successful party, without going into any detail about those costs, risks conferring excessive scope on that article and thus depriving Article 13 of its practical effect. It is therefore necessary to interpret that concept narrowly and to take the view that only those costs that are directly and closely related to the judicial proceedings concerned fall under other expenses, within the meaning of Article 14.

Third, Article 14 of Directive 2004/48 does not contain any element from which it may be concluded that the Member States may subject the reimbursement of other expenses, or legal costs in general, in the context of proceedings seeking to ensure the enforcement of an intellectual property right, to a condition of fault on the part of the unsuccessful party.

In that context, the costs linked to the assistance of a technical adviser show such a close direct link and consequently fall within the scope of the other costs which must, pursuant to Article 14 of Directive 2004/48, be borne by the unsuccessful party, to the extent that the technical adviser’s services are essential in order for a legal action to be usefully brought seeking, in a specific case, to have an intellectual property right upheld.

(see paras 35-37, 39, 40, operative part 2)