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

ORDER OF THE COURT (Eighth Chamber)

5 October 2023 (*)

(Taxation of costs)

In Case C‑818/18 P-DEP,

APPLICATION for taxation of recoverable costs under Article 145 of the Rules of Procedure of the Court of Justice, made on 6 March 2023,

Pirelli Tyre SpA, established in Milan (Italy), represented by T.M. Müller and F. Togo, Rechtsanwälte,

applicant,

v

European Union Intellectual Property Office (EUIPO), established in Alicante (Spain), represented by D. Hanf and D. Stoyanova-Valchanova, acting as Agents,

defendant,

THE COURT (Eighth Chamber),

composed of M. Safjan, President of the Chamber, N. Piçarra (Rapporteur) and N. Jääskinen, Judges,

Advocate General: M. Campos Sánchez-Bordona,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after hearing the Advocate General,

makes the following

Order

1        The present case concerns the taxation of the costs incurred by the European Union Intellectual Property Office (EUIPO) in Joined Cases C‑818/18 P and C‑6/19 P.

2        By their appeals brought on 21 December 2018 and 4 January 2019 respectively, pursuant to Article 56 of the Statute of the Court of Justice of the European Union, The Yokohama Rubber Co. Ltd (‘Yokohama’) (C‑818/56 P) and EUIPO (C‑6/19 P) sought to have set aside the judgment of the General Court of the European Union of 24 October 2018, Pirelli Tyre v EUIPO – Yokohama Rubber (Representation of an L-shaped groove) (T‑447/16, ‘the judgment under appeal’, EU:T:2018:709), by which the General Court annulled in part the decision of the Fifth Board of Appeal of EUIPO of 28 April 2016 (Case R 2583/2014-5), relating to invalidity proceedings between Yokohama and Pirelli Tyre SpA.

3        By judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, ‘the judgment of 3 June 2021’, EU:C:2021:431), the Court of Justice dismissed those appeals and ordered Yokohama and EUIPO to bear their own costs in relation to the appeal proceedings and to pay, in equal parts, the costs incurred by Pirelli Tyre in relation to those proceedings.

4        By email of 4 August 2021, Pirelli Tyre informed EUIPO that the recoverable costs it had incurred for the purposes of the proceedings before the General Court (Case T‑447/16) and before the Court of Justice (Joined Cases C‑818/18 P and C‑6/19 P) amounted to EUR 38 073.47 and EUR 70 000 respectively. It requested that EUIPO pay, by way of recoverable lawyers’ fees relating to the appeal proceedings in those joined cases, which gave rise to the judgment of 3 June 2021, half of the sum of EUR 70 000, namely EUR 35 000.

5        Since no agreement was reached between the parties on the amount of the recoverable costs relating to those appeal proceedings and the sums requested remain unpaid, Pirelli Tyre made the present application.

 Forms of order sought

6        Pirelli Tyre claims that the Court should:

–        fix the amount of recoverable costs relating to the appeal proceedings in Joined Cases C‑818/18 P and C‑6/19 P at EUR 70 109.50; and

–        order EUIPO to pay EUR 36 752.25.

7        EUIPO contends that the Court should fix the amount of recoverable costs, including those relating to the present application for taxation of costs payable by EUIPO at no more than EUR 8 000.

 Arguments of the parties

8        In support of its application, Pirelli Tyre states that the total amount of recoverable costs relating to the appeal proceedings in Joined Cases C‑818/18 P and C‑6/19 P is EUR 70 109.50, which includes:

–        EUR 35 029 in respect of lawyers’ fees in Case C‑818/18 P, corresponding to a total of 92.9 hours of work, of which 63.9 hours at an hourly rate of EUR 385 for its first lawyer and 29 hours of work at an hourly rate of EUR 320 for the second lawyer, and

–        EUR 35 080.50 in respect of lawyers’ fees in Case C‑6/19 P, corresponding to a total of 94.4 hours of work, of which 58.9 hours at an hourly rate of EUR 385 for its first lawyer and 35.5 hours at an hourly rate of EUR 320 for the second lawyer.

9        Pirelli Tyre states that it is seeking payment of half of the amount of recoverable costs relating to those proceedings, namely EUR 35 054.75, and an amount of EUR 1 697.50, corresponding to the costs relating to the present taxation of costs proceedings, that is to say, a total amount of EUR 36 752.25.

10      It submits that the breakdown of the work performed by its two lawyers was drawn up on the basis of the criteria derived from the Court’s settled case-law on the subject, including the purpose 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 proceedings and the financial interest which the parties had in the proceedings. That company refers in particular to the order of 30 May 2018, Simba Toys v EUIPO and Seven Towns (C‑30/15 P-DEP, EU:C:2018:353, paragraph 23), which, it submits, is similar to the cases at issue.

11      As regards, in particular, the significance of the proceedings from the point of view of EU law and the difficulties presented by the case, Pirelli Tyre submits that the appeal proceedings before the Court did not concern standard issues relating to the assessment of the descriptiveness or distinctiveness of a trade mark, but the interpretation of Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). Those proceedings concerned a complex legal issue, namely the absolute ground for refusal to register signs which consist exclusively of the shape of a product which is necessary to obtain a technical result, as EUIPO also agrees.

12      Pirelli Tyre states that, in cases of similar complexity concerning the interpretation of Article 7(1)(e)(ii), such as those which gave rise to the order of the Court of Justice of 30 May 2018, Simba Toys v EUIPO and Seven Towns (C‑30/15 P-DEP, EU:C:2018:353), and to the order of the General Court of 2 December 2010, Lego Juris v OHIM (T‑270/06 DEP, EU:T:2010:494), the amount of recoverable costs was fixed at EUR 35 000 and EUR 31 000 respectively, whereas, in the case which gave rise to the order of the General Court of 6 March 2014, STEAM GLIDE (T‑544/11 DEP, EU:T:2014:147), which was in the context of ordinary trade mark litigation on absolute grounds for refusal of registration and was not particularly complex, the General Court fixed the amount of recoverable costs at EUR 9 000.

13      In the present case, the existence of divergent decisions between the EU Courts and EUIPO, the fact that the judgment under appeal was delivered by the General Court sitting in Extended Composition and the fact that EUIPO brought an appeal against that judgment also, according to the applicant, attest to the difficulty presented by the case and the significance of the proceedings from the point of view of EU law. Likewise, according to the applicant, it is apparent from the judgment of 3 June 2021 that the cases at issue were somewhat complex, raising, in respect of several aspects of law, questions that have a certain significance for the proper understanding and the appropriate application of the absolute grounds for refusal of registration provided for in Article 7(1)(e) of Regulation No 40/94, such as that relating to the assessment of the functional nature of a sign. Consequently, the financial impact of the cases at issue was considerable.

14      As regards the amount of work carried out, Pirelli Tyre submits that the fact that the two lawyers entrusted with the appeal proceedings had already represented it in the administrative proceedings before EUIPO did not facilitate their work in the present case or reduce the time spent preparing the appeal.

15      Furthermore, according to the applicant, it cannot be inferred from the mere involvement of two lawyers in Joined Cases C‑818/18 P and C‑6/19 P that their work was unduly duplicated. Depending on the specific features of each case, and in particular its complexity, the remuneration of several lawyers may be regarded as falling within the concept of ‘expenses necessarily incurred by the parties’ for the purpose of the proceedings, within the meaning of Article 144(b) of the Rules of Procedure of the Court of Justice.

16      In the present case, not only was the involvement of a second lawyer justified by the complexity of the cases at issue, but also the two lawyers shared the work from the outset. For each of those cases, the services provided included the drafting of a number of procedural documents and a response containing several grounds, since it was only after the written part of the procedure that Cases C‑818/18 P and C‑6/19 P were joined, and only for the purposes of the oral part of that procedure and of the decision closing the proceedings.

17      As regards the hourly rates applied by its two lawyers, Pirelli Tyre states that, in the breakdown attached to its application for taxation of costs, the services provided in the appeal proceedings were invoiced by applying an hourly rate of EUR 400 for the first lawyer and EUR 335 for the second lawyer. It adds that, due to a clerical error in the invoicing, eight items in the timesheets in that breakdown were incorrectly calculated, for the second lawyer, at an hourly rate of EUR 320 instead of EUR 335.

18      While reiterating that the 29 hours worked by the second lawyer in Case C‑818/18 P and the 35.5 hours worked by that second lawyer in Case C‑6/19 P constitute expenses necessarily incurred for the purposes of the appeal proceedings, Pirelli Tyre submits that EUIPO’s proposal for the recoverable lawyers’ fees – amounting, according to EUIPO’s final offer, to EUR 8 000, representing half of the total amount of the recoverable costs in the appeal proceedings – fails to have regard to the case-law cited in paragraph 12 of the present order.

19      Last, Pirelli Tyre produces a statement of fees relating to the present taxation of costs proceedings, in the amount of EUR 1 697.50, from which it is apparent that 5 hours of work, at an hourly rate of EUR 385 for the first lawyer and EUR 320 for the second lawyer, were necessary. It states that, since that type of proceedings raises accounting issues rather than legal ones, the hourly rate applicable to it is lower than that charged for appeal proceedings.

20      EUIPO contends that the amount of recoverable costs claimed is excessive and unreasonable as regards the number of hours of the lawyers and the hourly rates they charged.

21      First, as regards the significance of the proceedings from the point of view of EU law and the difficulties presented by the case, EUIPO agrees that the ground for refusal of registration provided for in Article 7(1)(e)(ii) of Regulation No 40/94 is not among the most frequent absolute grounds for refusal of registration. However, it emphasises, first of all, that Joined Cases C‑818/18 P and C‑6/19 P fell within the context of ordinary trade mark litigation, next, that the Court of Justice had already interpreted that provision and the corresponding provision in Article 3(1)(e)(ii) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), and, last, that the General Court regularly applies that provision. In addition, EUIPO notes that the recoverable costs claimed by Pirelli Tyre relate to appeal proceedings, limited to points of law, and that the Court of Justice decided to proceed to judgment without an oral hearing and without an Opinion of the Advocate General.

22      Furthermore, according to EUIPO, Pirelli Tyre does not put forward any specific argument concerning the complexity or the significance of Joined Cases C‑818/18 P and C‑6/19 P and the factual and legal circumstances of the present cases differ significantly from those of the case that gave rise to the order of the Court of Justice of 30 May 2018, Simba Toys v EUIPO and Seven Towns (C‑30/15 P-DEP, EU:C:2018:353). In any event, general considerations and mere references to the amounts of recoverable costs fixed by the Courts of the European Union in other cases do not justify the amounts of costs claimed by Pirelli Tyre.

23      Second, as regards the amount of work required for the purposes of the appeal proceedings, EUIPO states that, since Pirelli Tyre’s lawyer had already represented that company during the administrative proceedings and before the General Court, he had extensive knowledge of the case, which facilitated his work and reduced the time which had to be devoted to preparing Joined Cases C‑818/18 P and C‑6/19 P. EUIPO relies on the ‘material filed in EUIPO and GC proceedings’, to which, according to the breakdown attached to the application for taxation of costs, Pirelli Tyre’s lawyers dedicated more than 20 hours of work. Those documents were already part of the administrative file before EUIPO and were extensively discussed by that company in its written pleadings in the proceedings before EUIPO and the General Court.

24      In addition, EUIPO contends that the appeals in Cases C‑818/18 P and C‑6/19 P are closely connected, which facilitated Pirelli Tyre’s defence. Accordingly, the responses largely contained common arguments. Consequently, EUIPO submits that part of the hours of work invoiced was not objectively necessary for the purposes of the appeal proceedings.

25      Furthermore, the time dedicated to the legal analysis of the appeals in Cases C‑818/18 P and C‑6/19 P and the drafting of the responses, representing more than 50 hours of work according to the breakdown provided by Pirelli Tyre, seems excessive in the light of the case-law of the Court according to which a highly paid and experienced lawyer is presumed to handle the cases entrusted to him or her, including those involving some complexity, efficiently and speedily (order of 20 January 2021, Council v Gul Ahmed Textile Mills, C‑100/17 P-DEP, EU:C:2021:41, paragraph 40).

26      In that regard, EUIPO notes that two different hourly rates are stated in Pirelli Tyre’s application for taxation of costs for the services provided in the appeal proceedings by each of that company’s two lawyers. In view of the clerical error in the timesheets in the breakdown attached to that application, it is unclear at which rate those services were invoiced. Moreover, certain tasks of a clerical nature were presented in the statements as having been carried out by a specialist lawyer at an hourly rate of EUR 320 or more.

27      EUIPO infers from the case-law of the Court, and in particular from the order of 3 October 2018, Orange v Commission (C‑486/15 P-DEP, EU:C:2018:824, paragraph 35), that the remuneration of the second lawyer should not be regarded as constituting recoverable costs. EUIPO submits that it is evident from the breakdown provided by Pirelli Tyre that part of the work was identically carried out by its two lawyers and invoiced separately for each of them. The same is true of some of the work carried out after Cases C‑818/18 P and C‑6/19 P were joined.

28      Furthermore, EUIPO submits that, according to the case-law of the Court, costs relating to work done after the case has ended are not recoverable, namely 3.7 hours of work in Case C‑818/18 P and 3.1 hours of work in Case C‑6/19 P that were devoted, inter alia, to analysing and explaining the judgment of the Court in those cases.

29      Third, as regards the financial interests at stake, EUIPO contends that, although Joined Cases C‑818/18 P and C‑6/19 P were of some interest to Pirelli Tyre, such interest cannot be considered to be unusual or significantly different from that underlying any EU trade mark application process. Pirelli Tyre did not provide any specific information to substantiate its interest in the dispute.

30      Last, EUIPO submits that, since the Court, in fixing the recoverable costs, takes account of all the circumstances of the case up to the making of the order on taxation of costs, it is not necessary for it to adjudicate separately on the costs incurred by Pirelli Tyre in respect of the present taxation of costs proceedings.

 Findings of the Court

31      Under Article 144(b) of the Rules of Procedure, which is applicable to appeal proceedings by virtue of Article 184(1) of those rules, ‘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 to be regarded as recoverable costs.

32      It is apparent from the wording of that article 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 30 May 2018, Simba Toys v EUIPO and Seven Towns, C‑30/15 P-DEP, EU:C:2018:353, paragraph 20 and the case-law cited).

33      According to settled case-law, the EU judicature is not empowered to tax the fees payable by the parties to their own lawyers, but rather may determine the amount of those fees to be recovered from the party ordered to pay the costs. To that end, the EU judicature is not obliged to take account of any national scales of lawyers’ fees (order of 21 February 2022, OZ v EIB, C‑558/17 P-DEP, EU:C:2022:140, paragraph 20 and the case-law cited).

34      In the absence of any provision of EU law laying down fee-scales or concerning necessary hours of work, the EU judicature 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 EU 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 interest which the parties had in the proceedings (order of 30 May 2018, Simba Toys v EUIPO and Seven Towns, C‑30/15 P-DEP, EU:C:2018:353, paragraph 23 and the case-law cited).

35      Furthermore, 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 the costs, including the expenses necessarily incurred in relation to the taxation of costs proceedings (order of 30 May 2018, Simba Toys v EUIPO and Seven Towns, C‑30/15 P-DEP, EU:C:2018:353, paragraph 24 and the case-law cited).

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

37      As regards, in the first place, the purpose and nature of the proceedings, it should be noted that the appeal proceedings which form the subject of the present application for taxation of recoverable costs are, by their very nature, limited to points of law and their purpose is not to establish facts or assess evidence, except where a distortion of the facts or evidence has been alleged. Furthermore, prior to the appeals, the dispute, which arose from an application for a declaration of invalidity brought by Yokohama, had already been examined in turn by the Cancellation Division of EUIPO, by the Board of Appeal of EUIPO and by the General Court.

38      As regards, in the second place, the significance of the proceedings from the point of view of EU law and the difficulties presented by the case, it must be stated that, in Joined Cases C‑818/18 P and C‑6/19 P, apart from the arguments alleging distortion of the facts or evidence by the General Court and a contradiction in the reasoning of the judgment under appeal, which are not particularly complex, Pirelli Tyre had to respond to grounds of appeal relating to the interpretation and application of the absolute ground for refusal to register a trade mark, laid down in Article 7(1)(e)(ii) of Regulation No 40/94, in respect of a figurative sign which does not represent a significant part of the product.

39      While that issue was of some importance for EU trade mark law and required in-depth analysis, it was not unusually difficult for an appeal relating to invalidity proceedings based on an absolute ground for refusal. Moreover, in those cases, unlike, in particular, the case which gave rise to the order of 30 May 2018, Simba Toys v EUIPO and Seven Towns (C‑30/15 P-DEP, EU:C:2018:353), the Court was able to dismiss the appeals in their entirety, proceeding to judgment without holding an oral hearing and without an Opinion of the Advocate General.

40      As regards, in the third place, the extent of the work carried out, it should be observed that Pirelli Tyre has included in the calculation of the amount of recoverable costs fees relating to the work done by two lawyers.

41      In that regard, while, in principle, the remuneration of only one agent, adviser or lawyer is recoverable, the fees of a number of lawyers may, depending on the individual circumstances and, most importantly, the complexity of each case, be considered ‘necessary expenses’ under Article 144(b) of the Rules of Procedure. It follows that, when fixing the amount of the recoverable costs, the total number of hours of work may appear to be objectively necessary for the purpose of the proceedings, irrespective of the number of lawyers amongst whom that work was shared (order of 21 February 2022, OZ v EIB, C‑558/17 P-DEP, EU:C:2022:140, paragraphs 36 and 37 and the case-law cited).

42      Furthermore, it should be noted that, since Cases C‑818/18 P and C‑6/19 P were joined, by decision of the President of the Court of Justice of 25 October 2019, solely for the purposes of the oral part of the procedure and of the decision closing the proceedings, Pirelli Tyre lodged a response for each of those cases, comprising, respectively, 32 pages with 8 annexes and 24 pages with 7 annexes. However, parts of those pleadings contain common arguments in response to the grounds of appeal and arguments raised in the appeals brought by Yokohama and by EUIPO.

43      In addition, at the stage of the appeals before the Court of Justice, Pirelli Tyre’s lawyers already had extensive knowledge of the dispute, since they had represented Pirelli Tyre before EUIPO and before the General Court. That facilitated their work and enabled them to reduce the time devoted to analysing the appeals and preparing the responses, since the cases were not particularly complex and some of the arguments raised by Yokohama and EUIPO in their appeals were similar.

44      It should also be recalled that lawyers who claim to be highly qualified and very experienced and whose services are invoiced, as in the present case, at hourly rates of EUR 385 and EUR 320 – or even at the hourly rates of EUR 400 and EUR 335 set out in paragraph 43 of the application for taxation of costs – are presumed to handle the cases entrusted to them, including those that are somewhat complex, efficiently and speedily. Accordingly, the fact that remuneration at that rate is taken into account requires in return a strict assessment of the total number of hours’ work essential for the purposes of the proceedings in question (see, to that effect, order of 4 March 2021, Schmid v Landeskammer für Land- und Forstwirtschaft in Steiermark, C‑514/18 P-DEP, EU:C:2021:180, paragraph 42 and the case-law cited).

45      Last, as EUIPO noted, some of the services included in the breakdown provided, such as correspondence with the Court Registry regarding a change of law firm or with Pirelli Tyre concerning the power of attorney, uploading the response and attachments to e-Curia, downloading the Court’s communications or coordination in relation to the status of the case file, notwithstanding their administrative nature, were paid to that company’s lawyers at an hourly rate of EUR 320 or higher hourly rates.

46      In those circumstances, the 187.3 hours of work carried out by Pirelli Tyre’s two lawyers in the appeal proceedings, of which 92.9 hours of work in Case C‑818/18 P and 94.4 hours of work in Case C‑6/19 P, do not appear, in their entirety, to have been objectively ‘incurred necessarily … for the purpose of the proceedings’ within the meaning of Article 144(b) of the Rules of Procedure.

47      As regards, in the fourth place, the financial interests at stake, it is common ground that, in view of the importance of trade marks in trade, Pirelli Tyre had a definite interest in the Court of Justice upholding, at the stage of the appeal, the judgment under appeal, by which the General Court annulled in part the decision of the Fifth Board of Appeal of EUIPO of 28 April 2016 (Case R 2583/2014-5), in so far as it had declared Pirelli Tyre’s Community trade mark invalid. However, there is nothing in the present application for taxation of costs to suggest that that financial interest was particularly significant.

48      Last, it must be held that the amount of EUR 1 697.50 claimed by Pirelli Tyre for the present taxation of costs proceedings does not appear, in itself, to be disproportionate, even in the light of the standardised nature of that application, which does not, in principle, present any difficulty.

49      Consequently, the total amount of recoverable costs in Joined Cases C‑818/18 P and C‑6/19 P must be fixed at EUR 31 000, corresponding, on the basis of the hourly rates charged by Pirelli Tyre’s two lawyers, first, to a total of 54.6 hours of work at an hourly rate of EUR 400 and, second, to a total of 27.3 hours of work at an hourly rate of EUR 335.

50      Since EUIPO has been ordered to pay, in equal parts with Yokohama, the costs incurred by Pirelli Tyre in relation to those proceedings, the amount of the costs to be paid by EUIPO to Pirelli Tyre in Joined Cases C‑818/18 P and C‑6/19 P must be fixed at EUR 15 500.

51      The costs relating to the present taxation of costs proceedings can be assessed on an equitable basis by fixing the amount of recoverable costs in that respect at EUR 1 600.

52      In the light of all the foregoing considerations, the total amount of costs recoverable by Pirelli Tyre from EUIPO in relation to Joined Cases C‑818/18 P and C‑6/19 P and the present taxation of costs proceedings is fixed at EUR 17 100.

On those grounds, the Court (Eighth Chamber) hereby orders:

The total amount of the costs to be paid by the European Union Intellectual Property Office (EUIPO) to Pirelli Tyre SpA in Joined Cases C‑818/18 P and C‑6/19 P and in Case C‑818/18 P-DEP is fixed at EUR 17 100.

Luxembourg, 5 October 2023.

Registrar      President of the Chamber

*      Language of the case: English.

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