Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE GENERAL COURT (First Chamber)

11 April 2019 (*)

(Procedure — Taxation of costs — Recoverable costs — EU trade mark)

In Case T–403/16 DEP,

Stada Arzneimittel AG, established in Bad Vilbel (Germany), represented by R. Kaase and J.-C. Plate, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO),

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being:

Urgo recherche innovation et développement SASU, established in Chenôve (France), represented by A. Sion, lawyer,

ACTION for the taxation of costs following the judgment of the General Court of the European Union (First Chamber) of 20 November 2017, Stada Arzneimittel v EUIPO — Urgo recherche innovation et développement (Immunostad) (T‑403/16, not published, EU:T:2017:824),

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,

Registrar: E. Coulon,

makes the following

Order

 Facts, procedure and forms of order sought

1        By application lodged at the Court Registry on 28 July 2016 and registered as Case T‑403/16 (‘the main proceedings’), the applicant, Stada Arzneimittel AG, brought an action against the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 April 2016 (Case R 863/2015‑5) (‘the decision of the Fifth Board of Appeal’), relating to invalidity proceedings between Vivatech (now Urgo recherche innovation et développement SASU) and the applicant.

2        The intervener, Urgo recherche innovation et développement SASU, intervened in support of the form of order sought by EUIPO in the main proceedings and requested the Court to dismiss the action and to order the applicant to pay the costs.

3        By judgment of 20 November 2017, Stada Arzneimittel v EUIPO — Urgo recherche innovation et développement (Immunostad) (T‑403/16, not published, EU:T:2017:824), the Court dismissed the action and ordered the applicant to pay the costs. That judgment was not the subject of an appeal and has therefore become final.

4        Following service on the parties of the judgment in the main proceedings, no agreement was reached between them on the amount of recoverable costs.

5        By document lodged at the Court Registry on 12 October 2018, the intervener, on the basis of Article 170(1) of the Rules of Procedure of the General Court, requested the Court to fix an amount of EUR 14 546 as recoverable costs in respect of the costs relating to: (i) the main proceedings; (ii) the present application for taxation of costs; and (iii) the proceedings before the Fifth Board of Appeal in Case R 863/2015‑5.

6        On 17 December 2018, the applicant submitted its observations on that application. It argues that the costs claimed by the intervener are not entirely necessary and requests the Court to fix the amount of recoverable costs at an amount that is significantly lower.

 Law

7        Under Article 170(1) and (3) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the Court, on application by the party concerned and after hearing the opposite party, is to make an order from which no appeal lies.

 The admissibility of the application for taxation of costs

8        With regard to the admissibility of the intervener’s application, it should be noted that, in accordance with Article 170(1) of the Rules of Procedure, an application for taxation of costs is admissible only if, on the date of submission of that application, there was a dispute concerning the costs to be recovered (see order of 13 May 2015, Goldsteig Käsereien Bayerwald v OHIM, T‑47/13 DEP, not published, EU:T:2015:316, paragraphs 11 to 13 and the case-law cited).

9        In the present case, it is apparent from the documents before the Court that the parties have been unable to reach an agreement on costs, a fact which the applicant does not dispute. Consequently, it must be held that, on the date of submission of the present application, there was a dispute as to the recoverable costs and that the present application for taxation of costs is admissible.

 The substance of the application for taxation of costs

 Preliminary observations

10      First of all, it should be noted that, under Article 140(b) of the Rules of Procedure, 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 is clear from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the Court and, secondly, to those which were necessary for that purpose (see order of 21 September 2018, CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 14 and the case-law cited).

11      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 scale of lawyers’ fees or any agreement in that regard between the party concerned and his agents or advisers (see order of 21 September 2018, CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 15 and the case-law cited).

12      It is also settled case-law 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 subject matter and nature of the proceedings, their significance from the point of view of EU law, the difficulties presented by the case, the amount of work generated by the case for the agents or advisers involved and the financial interest that the parties had in the proceedings (see order of 21 September 2018, CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 16 and the case-law cited).

13      The amount of recoverable costs in the present case must be assessed in the light of those considerations.

14      In that regard, it is apparent from the application for taxation that the costs which the intervener seeks to recover from the applicant amount to EUR 14 546. Those costs correspond, in the first place, to EUR 11 346 in costs relating to the main proceedings, in the second place, to EUR 1 500 in costs relating to the proceedings for taxation of costs and, in the third place, to EUR 1 700 in costs fixed by the Fifth Board of Appeal in Case R 863/2015‑5.

 The costs relating to the main proceedings

15      With regard to the main proceedings, the intervener seeks EUR 11 346 in costs which correspond to the sum of its lawyer’s fees, to travel expenses for attending the hearing and to value added tax (‘VAT’). It follows from the three invoices produced by the intervener in support of that amount that the 28.5 hours worked by the lawyer in charge of the case, at an hourly rate of EUR 300, cover, in particular, the examination of the case file, the preparation and sending of procedural documents, including the response, correspondence with an intellectual property consultant together with the preparation for and participation in the hearing.

16      In that regard, the intervener submits that the costs claimed are reasonable, particularly in view of the complexity of the case and of the fact that the lawyer assigned to the case before the Court was different from the representative of the intervener in the proceedings before the Cancellation Division and the Fifth Board of Appeal of EUIPO, that representative having been an intellectual property consultant.

17      The applicant disputes the complexity of the case in the main proceedings and notes, moreover, that the case did not concern an economic interest which was either unusual or significantly different from that which underlies any invalidity proceedings brought against a trade mark, with the result that the hourly rate of the intervener’s lawyer should be reduced to EUR 250. The applicant also takes the view that, in the light of the limited scope of the documents prepared for the pleadings and the hearing, the number of hours worked by the lawyer in charge of the case does not appear to have been objectively necessary, with regard to both the main proceedings and the application for taxation of costs.

18      Firstly, it should be noted that the main proceedings were, as regards their purpose and nature, of limited complexity, contrary to what was argued by the intervener, which has not, moreover, provided details in support of that claim. The main question raised in the main proceedings, namely, whether the mark at issue gives rise to a likelihood of confusion with an earlier national trade mark, is one which is rather common in trade mark proceedings. In support of its action before the Court, the applicant put forward two pleas in law alleging, first, infringement of Article 53(1)(a) 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, read in conjunction with Article 8(1)(b) of that regulation, and, secondly, infringement of Article 75 of that regulation, as amended (now, respectively, Article 60(1)(a), Article 8(1)(b) and Article 94 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)).

19      Furthermore, as is apparent from a reading of the judgment of 20 November 2017, Stada Arzneimittel v EUIPO — Urgo recherche innovation et développement (Immunostad) (T‑403/16, not published, EU:T:2017:824), the case at issue did not have any particular significance in relation to EU law, inasmuch as it forms part of a well-established line of case-law.

20      Secondly, although the case had a certain economic interest for the applicant, the applicant did not submit to the Court any evidence that that interest could be regarded, in the present case, as unusual or significantly different from that on which any invalidity proceedings brought against an EU trade mark are based (see order of 21 September 2018,CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 29 and the case-law cited).

21      Thirdly, with regard to the amount of work which the proceedings may have generated for the intervener, it is important to recall that the primary consideration of the Court is the total number of hours of work which may appear to be objectively necessary for the purpose of the proceedings before the Court. In that regard, the ability of the Court to assess the value of work carried out is dependent on the accuracy of the information provided (see order of 21 September 2018, CEDC International v EUIPO, T‑449/13 DEP, not published, EU:T:2018:625, paragraph 30 and the case-law cited).

22      In the present case, as regards the hours of work by the lawyer who represented the intervener before the Court, it should be recalled that the intervention by a lawyer in the context of the proceedings before EUIPO does, admittedly, imply that, when that lawyer represents the same party before the Court, he is familiar with the case, which justifies a reduction in the number of hours which might be seen as necessary for the proceedings before the Court (see, to that effect, order of 17 July 2012, Budějovický Budvar v OHIM, T‑53/04 DEP to T‑56/04 DEP, T‑58/04 DEP and T‑59/04 DEP, not published, EU:T:2012:388, paragraph 19 and the case-law cited).

23      However, it should be noted that, in the circumstances of the present case, the intervener was represented in the proceedings before EUIPO not by a lawyer, but by a consultant, an option expressly provided for by Article 93 of Regulation No 207/2009 (now Article 120 of Regulation 2017/1001). Given that such an intellectual property consultant could not have represented the applicant before the Court in the context of the main proceedings, as he is not a lawyer, a requirement imposed under the third and fourth paragraphs of Article 19 of the Statute of the Court of Justice of the European Union, applicable to the General Court under the first paragraph of Article 53 that statute (see, to that effect, order of 2 March 2012, PVS v OHIM, T‑270/09 DEP, not published, EU:T:2012:97, paragraph 25 and the case-law cited), the intervener had no alternative but to have recourse to a lawyer, who then necessarily had to familiarise himself with the case file, a fact which justifies the claim that the time spent by that lawyer in familiarising himself with the main proceedings was necessary for the purposes of the proceedings before the General Court.

24      Furthermore, the time spent by the intervener’s lawyer on communicating with the intellectual property consultant can also be taken into account, so long as the costs incurred as a result of the correspondence between the representative of an intervener and its advisers can be regarded as necessary, in particular for the preparation of the written pleadings and the hearing, on condition that those costs are clearly connected with the proceedings before the Court (see, to that effect, order of 2 March 2012, PVS v OHIM, T‑270/09 DEP, not published, EU:T:2012:97, paragraph 25 and the case-law cited).

25      However, the view must be taken that the 28.5 hours of work by the lawyer, claimed by the intervener for dealing with the case in the main proceedings, cannot entirely be described as ‘recoverable’ within the meaning of Article 140(b) of the Rules of Procedure, in particular the 17 hours of work relating to the services of its lawyer after the response had been sent, notwithstanding the time needed to prepare for and participate in the hearing. A total of 20 hours would appear to be more appropriate in the light of the circumstances of the present case.

26      With regard to the applicable hourly rate, the Court takes the view that the rate of EUR 300, exclusive of VAT, applied by the intervener’s lawyer exceeds what may be termed ‘recoverable’ within the meaning of Article 140(b) of the Rules of Procedure, in the light of the complexity and nature of the case in question. An hourly rate of EUR 250, exclusive of VAT, must be considered more reasonable for remuneration of the services of a particularly experienced professional, capable of working quickly and effectively in a case of the kind at issue in the present case (see, to that effect, order of 26 October 2017, Haw Par v EUIPO, T‑25/16 DEP, not published, EU:T:2017:774, paragraph 21 and the case-law cited).

27      In addition, in respect of the travel expenses for the purposes of taking part in the hearing, one of the three invoices produced by the intervener indicates an amount of EUR 905. However, it must be stated that that invoice drawn up by the intervener’s lawyer does not provide additional details as to those costs and that no supporting document has been submitted in support of it. Whilst the absence of such information does not preclude the Court from fixing the amount of the recoverable costs on the basis of an equitable assessment, it nevertheless places it in a situation in which its assessment of the applicant’s claims must necessarily be strict (see, to that effect, order of 21 March 2018, K&K Group v EUIPO, T‑2/16 DEP, not published, EU:T:2018:175, paragraphs 36 and 37). In those circumstances, the Court sets the amount of travel expenses for the purposes of attending the hearing at EUR 450.

28      Finally, as regards the amounts claimed in respect of VAT, it should be noted that the intervener, as a company, is subject to VAT and is thus entitled to recover, from the tax authorities, the VAT paid on goods and services which it purchases. VAT thus does not represent an expense as such for that undertaking and, consequently, it cannot, in the present case, claim reimbursement of VAT paid on the costs (see order of 14 November 2013, Schwaaner Fischwaren v Rügen Fisch, C‑582/11 P‑DEP, EU:C:2013:754, paragraph 31 and the case-law cited).

29      In the light of the foregoing, the amount of recoverable costs in respect of the main proceedings is set at EUR 5 450.

 The costs relating to the present taxation of costs proceedings

30      In respect of the costs relating to the present taxation of costs proceedings, the intervener seeks EUR 1 500, corresponding to 5 hours of work by its lawyer at an hourly rate of EUR 300.

31      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).

32      Furthermore, 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, to that effect, orders of 10 October 2013, OCVV v Schräder, C‑38/09 P‑DEP, not published, EU:C:2013:679, paragraph 42, and of 29 November 2016, Brune v Commission, T‑513/16 DEP, not published, EU:T:2016:709, paragraph 40), particularly when the latter does not involve any particular difficulty, as was the case here in the main proceedings.

33      Accordingly, in the circumstances of the present case, an amount of EUR 500 appears to be reasonable to cover the expenses relating to the present proceedings.

 The costs relating to the proceedings before EUIPO

34      The intervener also seeks an amount of EUR 1 700 in respect of the costs fixed by the Fifth Board of Appeal in Case R 863/2015‑5 and for which the applicant remains liable, a fact which is not contested by the latter.

35      In that regard, it should be noted that, since the Court dismissed the action brought by the applicant, the decision of the Fifth Board of Appeal has become final, in accordance with Article 64(3) of Regulation No 207/2009 (now Article 71(3) of Regulation 2017/1001) (see, to that effect, orders of 2 March 2012, PVS v OHIM, T‑270/09 DEP, not published, EU:T:2012:97, paragraph 18, and of 23 October 2013, Phonebook of the World v OHIM — Seat Pagine Gialle (PAGINE GIALLE), T‑589/11 DEP, not published, EU:T:2013:572, paragraph 22).

36      Consequently, it is not necessary to rule on the costs incurred before EUIPO, since they were fixed in the decision of the 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, to that effect, orders of 2 March 2012, PVS v OHIM, T‑270/09 DEP, not published, EU:T:2012:97, paragraphs 19 and 20, and of 23 October 2013, PAGINE GIALLE, T‑589/11 DEP, not published, EU:T:2013:572, paragraph 23).

37      It follows from all of the foregoing that the total amount of costs recoverable by the intervener from the applicant in respect of Case T‑403/16 comes to EUR 5 950, which gives due regard to all the circumstances of the case until the date on which the present order is made.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby orders:

The total amount of costs to be paid by Stada Arzneimittel AG to Urgo recherche innovation et développement SASU is fixed at EUR 5 950.

Luxembourg, 11 April 2019.

*      Language of the case: English.

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