ORDER OF THE GENERAL COURT (Ninth Chamber)
17 November 2021 (*)
(Procedure – Taxation of costs – EU trade mark)
In Case T‑30/20 DEP,
Promed GmbH kosmetische Erzeugnisse, established in Farchant (Germany), represented by B. Reinisch, B. Sorg and C. Raßmann, 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
Centrumelektroniki sp.j., established in Tarnowskie Góry (Poland), represented by M. Kondrat, lawyer,
APPLICATION for taxation of the costs to be reimbursed by the applicant to the intervener following the judgment of 9 December 2020, Promed v EUIPO – Centrumelektroniki (Promed) (T‑30/20, not published, EU:T:2020:599),
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and P. Zilgalvis, Judges,
Registrar: E. Coulon,
makes the following
Order
Facts, procedure and forms of order sought
1 By application lodged at the Registry of the General Court on 20 January 2020, the applicant, Promed GmbH kosmetische Erzeugnisse, brought an action, registered as Case T‑30/20, for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 November 2019 (Case R 614/2019-5), relating to invalidity proceedings between the intervener, Centrumelektroniki sp.j., and the applicant.
2 The intervener, Centrumelektroniki sp.j., intervened in the dispute 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 9 December 2020, Promed v EUIPO – Centrumelektroniki (Promed) (T‑30/20, not published, EU:T:2020:599), 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 Furthermore, in paragraph 61 of that judgment, the Court specified that, as regards the costs incurred by the intervener before the Board of Appeal, it was the operative part of the contested decision, which had stated that the Cancellation Division’s decision ordering each party to bear its own costs remained unchanged and that the total amount for both sets of proceedings therefore amounted to EUR 550, which continued to determine the costs in question. That judgment was not the subject of an appeal and has therefore become final.
5 By letter of 6 May 2021, the intervener requested the applicant to pay to it, in accordance with the judgment of 9 December 2020, Promed (T‑30/20, not published, EU:T:2020:599), the amount of recoverable costs, that is to say, the sum of EUR 7 704.40. By letter of 25 May 2021, the applicant refused to pay the costs, disputing each of the items comprising the sum claimed in connection with that request.
6 Since the applicant did not accede to that request, the intervener, by document lodged at the Registry of the General Court on 21 June 2021, brought, in accordance with Article 170(1) of the Rules of Procedure, an application for taxation of costs, which was registered under Case T‑30/20 DEP.
7 By that application for taxation of costs, the intervener claims that the Court should fix the amount of recoverable costs in the case in question and thus order the applicant to reimburse to it the sum of EUR 7 404. The intervener also claims that the Court should make a costs order relating to the present proceedings in its favour.
8 By document lodged at the Registry of the General Court on 11 August 2021, the applicant submitted its observations and contended, in essence, that the application brought by the intervener should be dismissed and, in the alternative, in so far as there was a ground for the recovery of costs, that the recoverable amount of costs should be fixed by taking into account the set-off of EUR 1 250 made by the applicant.
Law
9 Under Article 170(1) and (3) of the Rules of Procedure, where there is a dispute concerning the costs to be recovered, the Court is, at the request of the party concerned, to give its decision by way of an order from which no appeal is to lie, after giving the party concerned by the application an opportunity to submit its observations.
10 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 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
11 The intervener seeks reimbursement of the costs incurred by it in connection with the proceedings before EUIPO.
12 In particular, relying on Accounting Note No 0173/08/17, set out in Annex A.7 to the application for taxation of costs, the intervener seeks reimbursement of the fee of 2 730 Polish zlotys (PLN) (approximately EUR 589) for lodging the application for a declaration of invalidity of the contested trade mark. It also seeks reimbursement of the costs, in the sum of PLN 10 947 (approximately EUR 2 362), which it incurred during the invalidity proceedings in respect of that mark before the Cancellation Division, relying on invoices No 0423/08/17 and No 0053/01/18, set out in Annexes A.9 and A.10 to that application, respectively.
13 In that regard, it should be recalled that, with respect to litigation concerning intellectual property rights, Article 190(2) of the Rules of Procedure specifies that recoverable costs include costs necessarily incurred by the parties for the purpose of the proceedings before the Board of Appeal.
14 By contrast, as is apparent from the clear wording of that provision, the Court does not have jurisdiction to adjudicate on the costs relating to the proceedings before the Cancellation Division of EUIPO as those are not recoverable (see, to that effect, orders of 17 July 2012, Budějovický Budvar v OHIM – Anheuser-Busch (BUD), T‑64/04 DEP, not published, EU:T:2012:390, paragraph 9, and of 21 May 2014, Atlas Transport v OHIM, T‑145/08 DEP, EU:T:2014:361, paragraph 17).
15 Consequently, the intervener’s claim regarding the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible.
16 As regards the costs of the proceedings before the Board of Appeal, the intervener relies on invoice No 0559/09/19, set out in Annex A.12 to the application for taxation of costs, in order to claim the reimbursement of costs in the sum of PLN 4 059 (approximately EUR 876), incurred by it before the Board of Appeal in connection with Case R 614/2019-5. The intervener also seeks an amount of EUR 550 in respect of the costs fixed by the Fifth Board of Appeal in that case and for which the applicant remains liable, a fact which is not contested by the latter.
17 In that regard, it should be noted that, since the Court dismissed the action filed by the applicant in the main proceedings, the decision of the Fifth Board of Appeal became final, in accordance with Article 64(3) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)), (now Article 71(3) of Regulation 2017/1001) (see order of 11 April 2019, Stada Arzneimittel v EUIPO – Urgo recherche innovation et developpement (Immunostad), T‑403/16 DEP, not published, EU:T:2019:249, paragraph 35 and the case-law cited).
18 Furthermore, it must be pointed out that, in paragraph 61 of the judgment of 9 December 2020, Promed (T‑30/20, not published, EU:T:2020:599), the Court specified that, as regards the costs incurred by the intervener before the Board of Appeal, it was sufficient to note that, since the action brought against the decision of the Board of Appeal of 7 November 2019 had been dismissed, it was the operative part of that decision which continued to determine the costs in question.
19 Consequently, it is not necessary to rule on the costs incurred before the Fifth Board of Appeal of EUIPO, since they were fixed in the decision of that Fifth Board of Appeal, which is enforceable and which the intervener can therefore have enforced against the applicant, as is clear from the wording of Article 86 of Regulation No 207/2009 (now Article 110 of Regulation 2017/1001) (see order of 11 April 2019, Immunostad, T‑403/16 DEP, not published, EU:T:2019:249, paragraph 36 and the case-law cited).
The costs relating to the proceedings before the Court
20 The intervener also claims reimbursement of the costs incurred by it in connection with the proceedings before the Court.
21 In essence, the intervener requests that the Court fix the recoverable costs in respect of lawyers’ fees incurred before it at PLN 5 596.50 (approximately EUR 1 207). In that regard, it produces invoices No 0203/03/20 and No 0339/05/20, set out, respectively, in Annexes A.14 and A.15 to the application for taxation of costs and which concern, first, the fees relating to the preparation and lodging of the intervener’s response in Case T‑30/20 and, second, the fees relating to the preparation of submissions on whether a hearing should be held in that case.
22 In that regard, as regards lawyers’ fees, it should be observed that, according to settled 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. When ruling on an application for taxation of costs, the Court is not obliged to take account of any national tariff fixing lawyers’ fees or any agreement in that regard between the party concerned and its agents or advisers (order of 26 January 2017, Nordschleife, T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited).
23 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 advisers involved, and the financial interests which the dispute represented for the parties (order of 26 January 2017, Nordschleife, T‑181/14 DEP, EU:T:2017:41, paragraph 11 and the case-law cited).
24 The amount of the costs recoverable in respect of lawyers’ fees in the present case must be determined in accordance with those criteria.
25 First, as regards the subject matter and nature of the dispute, it must be noted that the proceedings before the Court concerned ordinary trade mark litigation, that is to say, litigation relating essentially to distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) in the context of invalidity proceedings. In addition, prior to the examination of the dispute by the Court, it had been examined by the Cancellation Division and by a Board of Appeal of EUIPO.
26 Second, it must be held that the case in the main proceedings was not of particular importance with regard to EU law, since the principles applied were in line with existing case-law, referred to in the judgment in the main proceedings. 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.
27 Third, as regards the amount of work to which the proceedings may have given rise for the intervener, it must be recalled that the primary consideration of the Courts of the European Union is the total number of hours of work which may appear to have been objectively necessary for the purpose of the proceedings before the Court. In that regard, 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 17 March 2016, Norma Lebensmittelfilialbetrieb v OHIM – Yorma’s (Yorma Eberl), T‑229/14 DEP, not published, EU:T:2016:177, paragraph 19 and the case-law cited).
28 In the present case, the intervener merely produced invoices No 0203/03/20 and No 0339/05/20, set out, respectively, in Annexes A.14 and A.15 to the application for taxation of costs, which mainly list the amounts invoiced in respect of the work carried out by the lawyer involved and the designations of the services concerned, that is to say, first, the fees relating to the preparation and lodging of the intervener’s response in Case T‑30/20 and, second, the fees relating to the preparation of submissions on whether a hearing should be held in that case. Thus, those invoices do not identify in any way the details of those services, the number of hours of work devoted to the provision of those services or the hourly rate applied.
29 In addition, it should be pointed out that the intervener’s representative already had extensive knowledge of the case, having represented it during the administrative procedure. That consideration is likely to have, in part, facilitated the work of that lawyer and reduced the time spent preparing the intervener’s response. It follows from the case-law that the work carried out in the proceedings before the Board of Appeal reduces the extent of the work to be carried out before the Court and, consequently, the amounts which may be recovered in that respect (see order of 19 January 2016, Copernicus-Trademarks v OHIM, T‑685/13 DEP, EU:T:2016:31, paragraph 21 and the case-law cited).
30 Fourth, it should be noted that, although, in view of the importance of trade marks in trade, the intervener has a definite financial interest in the present case, that financial interest cannot, in the absence of evidence adduced by the intervener, 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).
31 In the light of all the foregoing considerations, and also in view of the work that had to be carried out by the intervener’s lawyer with respect to, in particular, the drafting of the response, which was 13 pages long, it appears that the lawyers’ fees claimed by the intervener do not exceed the amount objectively necessary to ensure the defence of the intervener’s interests in the action before the Court. Thus, the costs recoverable by the intervener in respect of lawyers’ fees incurred in the proceedings before the Court can be assessed on an equitable basis at PLN 5 596.50 (approximately EUR 1 207).
The costs incurred for the purpose of the taxation of costs proceedings
32 In respect of the costs relating to the present taxation of costs proceedings, the intervener requests that the Court make a costs order in its favour, without, however, claiming a specific amount or providing any evidence in support of that request.
33 In that regard, it should be noted that, in fixing the recoverable costs, the Court takes account of all the circumstances of the case up to the making of the order on taxation of costs, including expenses necessarily incurred in relation to the taxation of costs proceedings (see order of 21 September 2018, CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 17 and the case-law cited).
34 Furthermore, an application for taxation of costs is of a fairly standardised nature and is characterised, in principle, by the absence of any difficulty for the lawyer who has already dealt with the substance of the case (see order of 11 April 2019, Immunostad, T‑403/16 DEP, not published, EU:T:2019:249, paragraph 32 and the case-law cited), particularly when that case does not involve any particular difficulty, as was the case here in the main proceedings.
35 As a result, in view of the circumstances of the present case and, in particular, of the fact that the application for taxation of costs consists of a total of five pages, and that the annexes consist for the most part of documents which the intervener’s lawyer is presumed to have already had in his possession, the costs incurred by the intervener in respect of the present taxation of costs proceedings can be assessed on an equitable basis at EUR 250.
The costs relating to proceedings before EUIPO other than those in the main proceedings
36 Lastly, the intervener claims reimbursement of the costs relating to professional legal assistance, amounting to PLN 9 184 (approximately EUR 1 981), which it incurred in proceedings before EUIPO concerning trade marks other than the one contested in the main proceedings in Case T‑30/20, but which were incurred as part of the dispute between the parties. In that regard, the intervener relies on a number of supporting invoices, set out in Annexes A.8, A.11, A.13 and A.16 to the application for taxation of costs, which relate to proceedings before EUIPO concerning trade marks other than that contested in the main proceedings in Case T‑30/20.
37 In that regard, as has been pointed out in paragraph 10 above, it must be recalled that it follows from Article 140(b) of the Rules of Procedure that recoverable costs are, inter alia, limited to those incurred for the purpose of the proceedings before the Court.
38 In addition, it should be noted that the decision requiring the applicant to pay the costs, made in paragraph 61 and in the operative part of the judgment in the main proceedings in Case T‑30/20, refers only to the costs relating to the proceedings before the Court.
39 Therefore, since the present taxation of costs proceedings are only ancillary to the main proceedings in Case T‑30/20, in which the applicant was ordered to pay the costs of the judicial proceedings relating to the contested trade mark, the intervener’s request is inadmissible in so far as it relates to other costs, such as those incurred in proceedings before EUIPO concerning trade marks other than the one contested in the main proceedings in Case T‑30/20.
40 Furthermore, in so far as, in the context of its observations on the application for taxation of costs, the applicant raises, in the alternative, a counterclaim requesting that the Court effect a possible set-off of EUR 1 250 between the applicant’s claims and those of the intervener (see paragraph 8 above), it must be stated that the applicant’s allegations and the invoices annexed in support of that counterclaim do not relate to the main proceedings in Case T‑30/20, but concern other costs. Consequently, for the same reasons as those set out in paragraph 39 above, that counterclaim must be rejected as inadmissible.
41 In the light of all the foregoing considerations, and in particular paragraphs 31 and 35 above, the Court takes the view that the costs recoverable by the intervener can be assessed on an equitable basis at a total amount of EUR 1 457, which takes account of all the circumstances of the case up to the date of the present order.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
The total amount of the costs to be reimbursed by Promed GmbH kosmetische Erzeugnisse to Centrumelektroniki sp.j. is fixed at EUR 1 457.
Luxembourg, 17 November 2021.