ORDER OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
9 November 2009(*)
(Taxation of costs)
In Case T‑325/06 DEP,
Boston Scientific Ltd, established in Hastings (Barbados), represented by P. Rath and W. Festl-Wietek, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Terumo Kabushiki Kaisha, established in Tokyo (Japan), represented by C. Bercial Arias, lawyer,
APPLICATION for taxation of the costs to be recovered from the applicant by the intervener following the judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and N. Wahl, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By application lodged at the Registry of the Court of First Instance on 24 November 2006, the applicant brought an action against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 September 2006 in Case R 61/2006-2, concerning the opposition by Terumo Kabushiki Kaisha to registration of the word mark CAPIO as a Community trade mark (‘the decision’).
2 By judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, the Court dismissed the action and ordered the applicant to pay the costs.
3 By letter of 5 May 2009, the intervener, referring to the applicant’s fax of 30 April 2009, repeated its request that the applicant pay it costs amounting to EUR 19 537, and enclosed in support of that request two invoices for expenses and fees. The intervener stated that the amount of costs claimed was not too high, contrary to the opinion of the applicant, and that, in the event of a dispute, the applicant could apply to the Court for the costs to be fixed, in accordance with Article 92 of the Rules of Procedure of the Court of First Instance.
4 By application lodged at the Registry of the Court on 18 May 2009, the applicant submitted an application for taxation of costs pursuant to Article 92 of the Rules of Procedure, in which it requested the Court to rule on the amount of recoverable costs, stating that the amount claimed, namely EUR 19 537, was too high.
5 By document lodged at the Registry of the Court on 9 June 2009, the intervener requested that the applicant be ordered to pay, first, the sum of EUR 19 537 representing the amount of costs incurred in connection with the proceedings before the Court, second, the costs incurred by the intervener in connection with the proceedings before OHIM and, lastly, the sum of EUR 1 000 representing the amount of costs that it incurred in connection with the present proceedings.
Law
Arguments of the parties
6 The applicant contends that the amount of costs claimed is too high and therefore requests the Court to rule on that issue.
7 The intervener states that the amount of EUR 19 537 in the two invoices of 18 April 2007 and 30 January 2008 is perfectly reasonable and usual in such proceedings, and that the hourly charging rate of an experienced lawyer is EUR 400. It points out that the amount of the fees claimed was reviewed by the billing department in order to verify the work billed and the amount claimed. It claims also the reimbursement of the costs it incurred in connection with the proceedings before OHIM, as stated in the decision. The travel and accommodation expenses for attendance at the hearing in Luxembourg are detailed.
Findings of the Court
8 According to 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 the recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the Court of First Instance and, second, to those which are necessary for that purpose (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 13 and the case-law cited).
9 Furthermore, costs relating to a period after the oral procedure before the Court do not seem to be directly connected with the intervention before the Court and cannot, consequently, be classified as necessary expenses for the purpose of the proceedings within the meaning of Article 91 of the Rules of Procedure (see, to that effect, order of 12 December 2008 in Case T‑417/05 DEP Endesa v Commission, not published in the ECR, paragraph 38 and the case-law cited).
10 It is also necessary to point out that, according to settled case-law, the Community Courts are not empowered to tax the fees payable by the parties to their own lawyers, but may determine the amount of those fees to be recovered from the party ordered to pay the costs. When ruling on an application for taxation of costs, the Court of First Instance is not obliged to take account of any national scale of lawyers’ fees or any agreement in that regard between the party concerned and his agents or advisers (order of 7 January 2006 in Case T‑206/04 DEP Rodrigues Carvalhais v OHIM – Profilpas (PERFIX), not published in the ECR, paragraph 8 and the case-law cited).
11 It is settled case-law that, in the absence of Community law 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 Community 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 (order in ROYAL COUNTY OF BERKSHIRE POLO CLUB, paragraph 14 and the case-law cited).
12 It is by having regard to those factors that the amount of the recoverable costs should be determined.
13 First, the Court finds that neither were the main proceedings unusually significant for Community law, nor did they raise any new questions of law. Furthermore, this case did not present any particular complexities with regard to its purpose and nature.
14 Second, although the intervener clearly had a certain financial interest in the case, in the absence of concrete evidence adduced by the intervener that financial interest cannot be considered to be unusually significant (see, to that effect, the order in PERFIX, paragraph 13).
15 Third, as regards the amount of work generated by the proceedings for the intervener’s adviser, it should be recalled that the ability of the Community Court to assess the value of work carried out is dependent on the accuracy of the information provided (order in ROYAL COUNTY OF BERKSHIRE POLO CLUB, paragraph 18).
16 In the present case, the Court finds that, although the hourly charging rate is specified, the calculation of the expenses is not broken down in detail on the basis of the work carried out.
17 Moreover, concerning more specifically the second invoice of 30 January 2008, for an amount of EUR 8 800, the amounts set out therein relate to a period after the lodging of the response on 13 March 2007, and the entirety of those expenses cover the period between 20 April 2007 and 28 January 2008. Furthermore, it is apparent, in particular, from the invoice statement that preparation for the hearing required 20 hours of work (from 17 December 2007 to 22 January 2008), which is clearly disproportionate in the light of the issues raised in the present case, and even though the intervener’s advisor referred to a period of 22 hours for the preparation of the response (from 24 January to 12 March 2007).
18 In that regard, it should be pointed out that the period of work for the preparation of the response cannot be considered to be disproportionate in the light of the fact that the applicant disputed, in particular, in a detailed and comprehensive manner, the genuine use of the mark by the intervener.
19 In the light of those considerations, the amount of costs must be fixed at EUR 10 000.
20 That amount must be increased by the sum of EUR 1 072.67, representing the travel and subsistence expenses incurred by the intervener’s advisor in Luxembourg.
21 Concerning the intervener’s application seeking an order against the applicant for payment of the recoverable costs incurred by the intervener before OHIM, it must be noted that the Board of Appeal fixed the amount of those costs in the decision.
22 In that regard, following the dismissal by the Court of the action brought by the applicant, the decision has become final.
23 It is clear from Article 86 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) that ‘[a]ny final decision of the Office fixing the amount of costs shall be enforceable’.
24 It follows that there is no need to rule on the costs before OHIM since they have already been fixed in the decision, which is enforceable and which the intervener can therefore have enforced against the applicant.
25 In the light of all the foregoing considerations, the Court holds that a fair assessment of all of the intervener’s recoverable costs is made by fixing them at EUR 11 072.67, which takes into account all the circumstances of the case up to the adoption of the present order. Therefore, there is no need to rule separately on the expenses incurred for the purpose of the present proceedings (see, to that effect, order in Case C‑104/89 DEP Mulder and Others v Council and Commission [2004] ECR I‑1, paragraph 87).
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby orders:
The total amount of costs payable by Boston Scientific Ltd to Terumo Kabushiki Kaisha is fixed at EUR 11 072.67.
Luxembourg, 9 November 2009.
E. Coulon | | M.E. Martins Ribeiro |