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ORDER OF THE GENERAL COURT (Eighth Chamber)

13 December 2022 (*)

(Procedure – Taxation of costs)

In Joined Cases T‑227/20 DEP and T‑232/20 DEP,

Biovene Cosmetics, SL, established in Barcelona (Spain), represented by E. Estella Garbayo, 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

Eugène Perma France, established in Saint-Denis (France), represented by S. Havard Duclos, lawyer,

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,

Registrar: E. Coulon,

having regard to the judgment of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE BARCELONA) (T‑227/20, not published, EU:T:2021:395),

having regard to the judgment of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE) (T‑232/20, not published, EU:T:2021:396),

makes the following

Order

1        By its application, based on Article 170 of the Rules of Procedure of the General Court, the intervener, Eugène Perma France, requests the Court to fix at the sum of EUR 20 380 the amount of the recoverable costs to be paid by the applicant, Biovene Cosmetics, SL, in respect of the costs which it incurred in the proceedings in Cases T‑227/20 and T‑232/20, as well as in the present proceedings.

 Background to the dispute

2        By applications lodged at the Court Registry on 24 and 28 April 2020, registered under numbers T‑227/20 and T‑232/20 respectively, the applicant brought actions for annulment of two decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 February 2020 (Cases R 1661/2019-4 and R 739/2019-4), which had upheld the oppositions filed by the intervener against its applications for registration of two EU trade marks.

3        The intervener intervened in the disputes in support of the form of order sought by EUIPO. It contended that the action should be dismissed and the applicant ordered to pay the costs.

4        By judgments of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE BARCELONA) (T‑227/20, not published, EU:T:2021:395), and of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE) (T‑232/20, not published, EU:T:2021:396), the Court dismissed the actions and ordered the applicant to pay the costs incurred by the intervener.

5        By email of 2 February 2022, the intervener informed the applicant that the total amount of recoverable costs relating to the two main proceedings before the Court was EUR 18 690. By emails of 2 March and 15 April 2022, the intervener sent reminders to the applicant.

6        No agreement was reached between the parties on the amount of the recoverable costs.

 Forms of order sought

7        The applicant for taxation claims that the Court should:

–        fix the amount of the recoverable costs to be reimbursed by the party ordered to pay the costs at EUR 9 480 in respect of each of the main sets of proceedings, namely half of EUR 18 960, together with default interest;

–        fix the recoverable costs to be borne by the party ordered to pay the costs at EUR 710 in respect of each of the present sets of proceedings, namely half of EUR 1 420;

–        provide it with an authenticated copy of the present order.

8        The party ordered to pay the costs claims that the Court should:

–        reject the amount claimed by the applicant for taxation;

–        establish the total amount of recoverable costs at EUR 750 in respect of each of the main sets of proceedings;

–        order each party to bear its own costs relating to the present proceedings.

 Law

9        Under Article 170(3) of the Rules of Procedure, if 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 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 to those incurred for the purpose of the proceedings before the Court and which were necessary for that purpose (see order of 6 March 2003, Nan Ya Plastics and Far Eastern Textiles v Council, T‑226/00 DEP and T‑227/00 DEP, EU:T:2003:61, paragraph 33 and the case-law cited).

11      In the present case, the applicant for taxation seeks, first, reimbursement of lawyers’ fees amounting to EUR 9 480 for each main case, which corresponds to half of the fees payable in respect of the two main proceedings, namely EUR 18 960. Second, it seeks reimbursement of EUR 710 in respect of each of the present proceedings, corresponding to half of the fees payable in the two proceedings for taxation of costs, namely EUR 1 420.

12      It should be noted, first, that the invoices annexed to the present applications for taxation of costs concern tasks common to the two main cases and, second, that the amounts claimed are not apportioned according to each of those cases, but are accounted for globally. Therefore, in so far as the applications for taxation of costs are based on total amounts relating to the two main cases and to the present proceedings, it is necessary to assess the amount of recoverable costs in the light of those total amounts and of the characteristics of those cases as a whole.

 Costs relating to the main proceedings

13      As a preliminary point, it should be noted that the total amount of costs claimed in the applications for taxation of costs, namely EUR 18 960, does not correspond to the amount that had been indicated in the emails sent to the party ordered to pay the costs and included in the invoices in the annex, namely EUR 18 690.

14      The amount of EUR 18 690 excluding value added tax (VAT) corresponds, according to those invoices, to 16 hours of work for the lawyer at an hourly rate of EUR 380 and 48.5 hours of work for the lawyer at an hourly rate of EUR 260. The amount of EUR 18 960 mentioned in the applications must therefore be deemed to be the result of a clerical error. The present assessment will be made in the light of the amount of EUR 18 690 appearing on the invoices annexed to the applications.

15      It is apparent from the invoices produced by the applicant for taxation that the total amount of lawyers’ fees for which it seeks reimbursement is broken down as follows:

–        an invoice of 27 August 2020, for the period from 1 June to 31 July 2020, of EUR 3 860 excluding VAT equivalent to 4 hours of work for the lawyer at an hourly rate of EUR 380 and 9 hours of work for the lawyer at an hourly rate of EUR 260, corresponding to exchanges with the applicant for taxation and to contacts with the representative of the applicant for taxation before EUIPO;

–        an invoice of 13 October 2020, for the period from 1 August to 30 September 2020, of EUR 12 640 excluding VAT equivalent to 10 hours of work for the lawyer at an hourly rate of EUR 380 and 34 hours of work for the lawyer at an hourly rate of EUR 260, corresponding globally to exchanges with the representative of the applicant for taxation before EUIPO, to the verification of the procedural rules before the General Court, to research into case-law, to the study of the applications, to the drafting of the two responses and to their service on the General Court, to the preparation and communication of the annexes to those responses as well as to various exchanges with the applicant for taxation;

–        an invoice of 19 January 2021, for the period from 1 October to 30 December 2020, of EUR 770 excluding VAT equivalent to 1 hour of work for the lawyer at an hourly rate of EUR 380 and 1.5 hours of work for the lawyer at an hourly rate of EUR 260, corresponding globally to the study of EUIPO’s responses and to exchanges with the applicant for taxation and with the lawyer of the party ordered to pay the costs;

–        an invoice of 23 November 2021, for the period from 1 March to 23 November 2021, of EUR 1 420 excluding VAT equivalent to 1 hour of work for the lawyer at an hourly rate of EUR 380 and 4 hours of work for the lawyer at an hourly rate of EUR 260, corresponding globally to exchanges with the applicant for taxation and to the study of letters from the General Court and of the judgments delivered in the main cases.

16      It is settled case-law that 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, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited).

17      It should also be borne in mind that, in the absence of provisions of EU law relating to tariffs or to the necessary working time, 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 (see 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).

18      The amount of the costs recoverable in the present case must be determined in accordance with those considerations.

19      In the first place, as regards the subject matter and nature of the dispute, its importance from the point of view of EU law and the difficulties presented by the case, it should be noted that the main cases were not particularly complex.

20      As is apparent from the judgments of 30 June 2021, BIOVÈNE BARCELONA (T‑227/20, not published, EU:T:2021:395), and of 30 June 2021, BIOVÈNE (T‑232/20, not published, EU:T:2021:396), those cases concerned two actions for annulment, based on a single plea in law, alleging infringement of 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). As such, the appeals were part of the usual proceedings in opposition to the registration of an EU trade mark, devoted to the assessment of the relative grounds for refusal of registration of the trade mark applied for on the basis of an analysis of the similarities of the goods at issue and the visual, phonetic and conceptual similarities of the signs at issue as well as the finding, on the basis of an overall assessment, of the existence of a likelihood of confusion. It should be noted that the Court also addressed, as a preliminary point, questions relating to the scope of the action and the admissibility of a document submitted for the first time before it.

21      Accordingly, Cases T‑227/20 and T‑232/20 concerned neither a new point of law nor a complex question of fact, and cannot therefore be regarded as difficult or unusual, which the applicant for taxation moreover does not claim in its application for taxation of costs. Likewise, those cases did not have any particular significance in relation to EU law, inasmuch as the judgments of 30 June 2021, BIOVÈNE BARCELONA (T‑227/20, not published, EU:T:2021:395), and of 30 June 2021, BIOVÈNE (T‑232/20, not published, EU:T:2021:396), form part of a well-established line of case-law.

22      In the second place, in respect of the economic interests at stake, the Court finds that, while those cases were admittedly of financial interest for the applicant for taxation, in the absence of specific evidence adduced by the latter, that financial interest cannot be regarded as being unusual, or significantly different from that which underlies any opposition to an application for registration of an EU trade mark (see order of 21 January 2021, Biasotto v EUIPO – Oofos (OOF and OO), T‑453/18 DEP and T‑454/18 DEP, not published, EU:T:2021:40, paragraph 19 and the case-law cited).

23      In the third place, with regard to the amount of work which the proceedings may have generated for the lawyers of the applicant for taxation, it is important to recall 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 purpose of the proceedings before the Court, irrespective of the number of lawyers between whom the services provided may have been allocated (see order of 29 November 2016, TrekStor v EUIPO – Scanlab (iDrive), T‑105/14 DEP, not published, EU:T:2016:716, paragraph 16 and the case-law cited).

24      In addition, it must be pointed out that 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 21 May 2014, Atlas Transport v OHIM  Atlas Air (ATLAS), T‑145/08 DEP, EU:T:2014:361, paragraph 33 and the case-law cited).

25      In that regard, in the present case, while the applicant for taxation has placed in the file four invoices from the lawyers corresponding to four periods of work comprising an overall assessment of the hours worked by each of the two lawyers for each period, it does not provide any details as to the number of hours of work that were necessary to accomplish the various tasks required by the conduct of the proceedings before the Court.

26      It is clear from the case-law, however, that the fixed assessment of the fees, without stating the working time for each item referred to and the hourly rate applied, does not make it possible to assess the amount of work actually carried out. The lack of more detailed information makes it especially difficult to verify the costs incurred for the purpose of the proceedings before the Court and those which were necessary for that purpose. In those circumstances, a strict assessment of the fees recoverable is necessary (see order of 18 September 2015, Autortiesību un komunicēšanās konsultāciju aģentūra/Latvijas Autoru apvienība and Others v Commission, T‑414/08 DEP to T‑420/08 DEP and T‑442/08 DEP, not published, EU:T:2015:726, paragraph 50 and the case-law cited).

27      It should be noted that the main proceedings comprised a written procedure with a round of submissions, which entailed, for the applicant for taxation – then intervener in those proceedings – examining the applications (comprising 18 and 17 pages respectively and the same nine annexes totalling 199 pages) and drafting the responses. No hearing has been held in these cases.

28      It has to be stated that the participation of the applicant for taxation in the two main cases has been relatively limited. Indeed, it produced a 12-page response for each of Cases T‑227/10 and T‑232/20. Moreover, in so far as the marks whose registration was contested in those cases were very similar, namely the figurative mark BIOVÈNE BARCELONA in Case T‑227/20 and the word mark BIOVÈNE in Case T‑232/20, the applications lodged before the Court contained identical pleas based, essentially, on the same arguments. The same applies to the intervener’s responses, which were accompanied by identical annexes. Such similarity between the cases and the fact that they were related necessarily led to economies of scale (see order of 22 June 2022, Koopman International v EUIPO – Tinnus Enterprises and Mystic Products (Fluid distribution equipment), T‑838/19 DEP, not published, EU:T:2022:397, paragraph 27 and the case-law cited).

29      Therefore, the amount of work on the part of the lawyers of the applicant for taxation which the main proceedings required must be assessed by taking into account the overall number of hours which the two cases at issue required, since those lawyers were in a position to replicate, to a great extent, the tasks which each of those cases required. That analysis is borne out by the fact that, in the invoices sent to the party ordered to pay the costs, the applicant for taxation claimed the reimbursement of the overall costs with regard to those two cases.

30      It is true that the lawyers of the applicant for taxation intervened at the stage of the proceedings before the Court and did not represent it in the proceedings before EUIPO, which means that the time needed to familiarise oneself with the files must be taken into account. However, since the intervener’s responses sought, in the main cases, the dismissal of the actions seeking the annulment of the decisions of the Fourth Board of Appeal of EUIPO of 12 February 2020, the Court must take into account the fact that the task of its lawyers was facilitated since they were able to rely on the contested decisions to reply to the other party’s arguments (order of 5 February 2021, Khadi and Village Industries Commission v EUIPO – BNP Best Natural Products (Khadi, khadí Naturprodukte aus Indíen, and Khadi Ayurveda), T‑681/17 DEP to T‑683/17 DEP, not published, EU:T:2021:83, paragraph 29 and the case-law cited).

31      Furthermore, as the party ordered to pay the costs submits, the arguments relating to the application of Article 8(1)(b) of Regulation 2017/1001 and the evidence submitted in the responses before the Court had already been submitted by the representative of the applicant for taxation in the administrative proceedings before EUIPO.

32      It follows that not only was the work of the lawyers of the applicant for taxation made easier, but also that the time they had to spend on the two files was able to be reduced significantly.

33      In addition, costs related to periods during which no procedural step was taken cannot be recovered, since such costs cannot be regarded as directly connected to the intervention of the lawyers before the Court. In particular, it should be recalled that, in that regard, 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 25 March 2021, Austria Tabak v EUIPO – Mignot & De Block (AIR), T‑800/19 DEP, not published, EU:T:2021:174, paragraph 19 and the case-law cited). Consequently, the services provided after the dates on which the responses of the applicant for taxation were lodged, namely on 1 and 7 September 2020, in particular, as the party ordered to pay the costs rightly points out, those mentioned in the invoices of 19 January and 23 November 2021 are not recoverable costs within the meaning of Article 140 of the Rules of Procedure.

34      Furthermore, as regards the various exchanges, telephone conferences, emails and contacts mentioned in the invoices of 27 August and 13 October 2020, the applicant for taxation does not specify the subject matter of those exchanges and therefore does not demonstrate that those expenses were necessary for the purposes of the proceedings before the Court (see, by analogy, order of 21 May 2014, Atlas Transport v OHIM  Atlas Air (ATLAS), T‑145/08 DEP, EU:T:2014:361, paragraph 35). Those costs cannot therefore be taken into consideration.

35      In so far as the invoices submitted do not contain details of the number of hours of work that were actually spent preparing the cases and drafting the responses, it would be a fair assessment of the amount of work that must be regarded as objectively necessary for the representation of the applicant for taxation in the main cases to fix it at 15 hours.

36      As regards the hourly rate, it should be recalled that, in the absence, as EU law now stands, of a scale in that respect, it is only where the average hourly rate invoiced appears manifestly excessive that the Court may depart from it and fix ex aequo et bono the amount of recoverable lawyers’ fees (see order of 19 January 2021, Romańska v Frontex, T‑212/18 DEP, not published, EU:T:2021:30, paragraph 39 and the case-law cited).

37      The taking into account of a high hourly rate appears appropriate only to remunerate the services of professionals who have performed their duties efficiently and rapidly and must, consequently, be counterbalanced by a necessarily strict assessment of the total number of hours’ work necessary for the purposes of the proceedings (see order of 30 April 2018, European Dynamics Belgium and Others v EMA, T‑158/12 DEP, not published, EU:T:2018:295, paragraph 23 and the case-law cited).

38      In the light of the characteristics of the present case referred to in paragraphs 20 to 36 above, the Court considers that the invoiced rate of EUR 380 for one of the lawyers of the applicant for taxation appears manifestly excessive and that, by contrast, the rate of EUR 260 corresponding to the hourly rate of the other lawyer is deemed reasonable for the type of litigation at issue in the present case.

39      It follows from the foregoing that the Court considers that the recoverable costs relating to the main proceedings may be assessed on an equitable basis by fixing them at EUR 3 900.

 The claim for default interest

40      The applicant for taxation claims that the applicant in the main proceedings should be ordered to pay default interest on the amount of costs claimed from the date of service of the present order until the date of actual payment.

41      According to well-established case-law, an application made in the course of proceedings for taxation of costs to add default interest to the amount due must be allowed for the period between the date of notification of the order of taxation of costs and the date of actual recovery of the costs (see order of 27 November 2020, Flabeg Deutschland v Commission, T‑103/15 DEP, not published, EU:T:2020:585, paragraph 60 and the case-law cited).

42      The applicable interest rate is to be calculated, having regard to Article 99(2)(b) of Regulation (EU, Euratom) 2018/1046 of the European Parliament and of the Council of 18 July 2018 on the financial rules applicable to the general budget of the Union, amending Regulations (EU) No 1296/2013, (EU) No 1301/2013, (EU) No 1303/2013, (EU) No 1304/2013, (EU) No 1309/2013, (EU) No 1316/2013, (EU) No 223/2014, (EU) No 283/2014, and Decision No 541/2014/EU and repealing Regulation (EU, Euratom) No 966/2012 (OJ 2018 L 193, p. 1), on the basis of the interest rate applied by the European Central Bank (ECB) to its principal refinancing operations in force on the first calendar day of the month in which payment is due, increased by 3.5 percentage points (order of 25 September 2019, Bilbaína de Alquitranes and Others v Commission, T‑689/13 DEP, not published, EU:T:2019:698, paragraph 58).

43      Consequently, the amount of recoverable costs is to bear default interest, from the date of service of the present order, at a rate calculated on the basis of the rate set by the ECB mentioned in paragraph 42 above.

 The costs relating to the present taxation of costs proceedings

44      As regards the sum of EUR 1 420 claimed by the applicant for taxation for the conduct of the present taxation of costs proceedings, it should be borne in mind that, in fixing the 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 11 April 2019, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16 DEP, not published, EU:T:2019:249, paragraph 31 and the case-law cited).

45      According to settled case-law, an application for taxation of costs is of a fairly standardised nature and is characterised, generally, 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, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16 DEP, not published, EU:T:2019:249, paragraph 32 and the case-law cited).

46      With regard to the claim relating to the costs incurred by the applicant for taxation in the present proceedings, it should be noted that the applicant claims an amount of EUR 1 420 excluding VAT corresponding, according to the invoice dated 18 July 2022 produced in the annex, to one hour of work for the lawyer at an hourly rate of EUR 380 and to four hours of work for the lawyer at an hourly rate of EUR 260. That invoice shows an overall amount for the present proceedings.

47      In the present case, the number of hours of work spent on the present proceedings by the applicant for taxation must be fixed at 1.5 hours to which the average hourly rate used for the main proceedings must be applied, such that a total amount of EUR 390 must be deemed reasonable to cover the costs relating to the present set of proceedings.

 The request for provision of an authenticated copy of the order for the purposes of enforcement

48      By its third head of claim, the applicant for taxation requests that it be provided with an authenticated copy of the present order, pursuant to Article 170(4) of the Rules of Procedure.

49      In that regard, first, it is sufficient to point out that, in accordance with Article 280 TFEU, the present order is enforceable in the conditions laid down in Article 299 TFEU. Second, even though Article 170(4) of the Rules of Procedure expressly gives the parties the right to request an authenticated copy of the order for the purposes of enforcement, there is no need to give a formal ruling on that request as it is purely a matter of administration and falls outside the subject matter of the present dispute concerning taxation of the parties’ recoverable costs (see, to that effect, order 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 32 and the case-law cited).

50      In the light of all the foregoing considerations, the Court considers that the costs recoverable by the applicant for taxation may be assessed on an equitable basis by fixing their amount at EUR 4 290, which takes account of all the circumstances of the case up to the date of the present order.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby orders:

1.      The total amount of the costs to be reimbursed by Biovene Cosmetics, SL to Eugène Perma France is fixed at EUR 4 290.

2.      That sum shall bear default interest from the date of the service of this order until the date of payment.

Luxembourg, 13 December 2022.

E. Coulon

 

A. Kornezov

Registrar

 

President


*      Language of the case: English.