BMB v EUIPO - Ferrero (Recipient pour sucreries) (Taxation of costs - Order) [2020] EUECJ T-695/15DEP

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BMB sp. z o.o., established in Grójec (Poland), represented by K. Czubkowski, lawyer,

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

Ferrero SpA, established in Alba (Italy), represented by M. Kefferpütz, lawyer,

APPLICATION for taxation of costs to be recovered from the applicant by the intervener following the judgment of 3 October 2017, BMB v EUIPO — Ferrero (Container for sweets) (T–695/15, not published, EU:T:2017:684),

composed of D. Spielmann, President, U. Öberg (Rapporteur) and R. Mastroianni, Judges,

1 By application lodged at the Registry of the General Court on 24 November 2015 registered as Case T–695/15, the applicant, BMB sp. z o.o., brought an action for annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 September 2015 (Case R 1150/2012-3), relating to invalidity proceedings between BMB and Ferrero SpA, the other party to the proceedings before the Board of Appeal of EUIPO. By that decision, the Board of Appeal had dismissed the appeal brought by the applicant and upheld the invalidity of the contested design.

2 Ferrero intervened in support of the form of order sought by EUIPO in the main proceedings and claimed that the General Court should dismiss the action and order the applicant to pay the costs.

3 By judgment of 3 October 2017, BMB v EUIPO — Ferrero (Container for sweets) (T–695/15, not published, EU:T:2017:684), the General Court dismissed the action and ordered the applicant to pay the costs.

4 The applicant brought an appeal against the judgment of the General Court before the Court of Justice. The appeal was registered as Case C–693/17 P. On 6 March 2019, the Court of Justice delivered its judgment, in which it dismissed the appeal and ordered the applicant to pay the costs (judgment of 6 March 2019, BMB v EUIPO, C–693/17 P, not published, EU:C:2019:176).

5 By letter of 9 October 2019, the intervener claimed from the applicant the sum of EUR 27 778.74 in respect of recoverable costs incurred in proceedings before the General Court. By letter of 23 October 2019, the applicant refused to pay that amount and offered to pay a lump sum of EUR 5 000.

6 By application lodged at the Registry of the General Court on 18 November 2019, the intervener submitted, pursuant to Article 170(1) of the Rules of Procedure of the General Court, an application for taxation of costs in which it requested the Court to fix the amount of recoverable costs relating solely to the proceedings before the General Court at EUR 27 778.74.

7 On 7 January 2020, the applicant submitted its observations on that application. It argues that the costs claimed were not invoiced to the intervener and, consequently, the intervener has no right to recover those costs. Alternatively, it submits that the costs claimed by the intervener were not necessarily incurred and requests the General Court to dismiss the application for taxation of costs, or, if the Court decides that some of the costs incurred by the intervener are recoverable, to set the amount of recoverable costs at a sum below EUR 4 300.

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

9 At the outset, as regards the applicant’s main argument that the costs claimed are not recoverable because the invoices for the costs relied on are addressed to a company related to the intervener, and not to the intervener itself, it is clearly apparent from the invoices annexed to the requests that they relate to legal services provided to Ferrero for the purposes of the proceedings before the General Court. There is no reason to assume that the intervener was not liable for these costs. In addition, it must be noted that, in its letter of 23 October 2019 (see paragraph 5 above), the applicant did not dispute that the costs which the intervener was seeking to recover from it had actually been incurred by the intervener and merely contested the excessive amount.

10 In any event, it follows from the case-law that proof of payment of the costs for which recovery is sought is not a precondition for the taxation of recoverable costs (order of 4 July 2013, Kronofrance v Germany and Others, C–75/05 P-DEP and C–80/05 P-DEP, not published, EU:C:2013:458, paragraph 30).

11 Thus, the applicant’s argument that the costs claimed are not recoverable because the invoices for the costs relied on are addressed to a company related to the intervener and not to the intervener itself cannot in any case succeed.

12 According to Article 140(b) of the Rules of Procedure, the 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 follows from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the General Court and, second, to those which are necessary for that purpose (see order of 12 January 2016, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T–368/13 DEP, not published, EU:T:2016:9, paragraph 11 and the case-law cited).

13 With regard to lawyers’ fees, it should be observed that, according to a consistent line of 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 (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).

14 In the absence of any provisions of EU law relating to fee scales, the General Court must make an unfettered assessment of the case, taking into account the purpose and nature of the proceedings, their significance from the point of view of EU law and also the difficulties presented by the case, the amount of work generated by the case for the agents or advisers involved and the economic interests that the parties had in the proceedings (see order of 13 February 2019, International Gaming Projects v EUIPO — Sky (Sky BONUS), T–840/14 DEP, not published, EU:T:2019:101, paragraph 14 and the case-law cited).

15 In order to assess whether the costs actually incurred were necessary for the purposes of the proceedings, precise information must be provided by the claimant. As was stated in paragraph 6 above, the intervener seeks to recover from the applicant a total amount of EUR 27 778.74 in respect of recoverable costs relating solely to the proceedings before the General Court. That amount corresponds to the sum of the fees of the law firm that represented it, as well as correspondence, translation and travel costs relating, respectively, to the participation of the intervener’s representative at the hearing on 28 March 2017 and in a coordination meeting held on 4 April 2017, for the purpose of preparing observations in response to a question put by the General Court during that hearing. In support of that claim, the intervener produced three invoices, drawn up by its counsel dated 18 July 2016, 3 November 2016 and 9 May 2017 respectively, to which were annexed three statements relating to hourly billing, covering the period from January 2016 to May 2017.

16 It is therefore appropriate to examine, first, the costs claimed in respect of lawyers’ fees and, second, the costs claimed in respect of disbursements.

17 Concerning the lawyers’ fees, the intervener submits that the amount of work for its lawyers results from the fact that:

– the law firm took over the handling of the case only at the stage of the procedure before the General Court, which required a careful review of the whole of the procedure before EUIPO;

– the contested design was challenged on the basis of earlier trademarks, which required the assessment and arguing of legal questions, such as the standard of assessment of the ground for invalidity of Article 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which have not yet been covered by settled case-law either of the General Court or the Court of Justice;

– the oral hearing was prepared most diligently in view of the importance of the case as well as the difficulty of the unsettled legal questions which had been raised in these proceedings;

– it was essential to protect the intervener’s trademark portfolio, particularly by ensuring that competitors maintain sufficient distance so that no likelihood of confusion may occur;

– after the hearing, the General Court did not close the proceedings and the parties were allowed to submit further observations relating to prior case-law issued by French courts regarding certain legal issues on trademark law which, according to the intervener, required coordination between the intervener’s representative and the intervener’s expert counsel in French law.

18 The applicant contests the complexity of the main proceedings and submits that the subject matter of the dispute does not present any particular difficulty. In addition, according to the applicant, the intervener did not provide any convincing explanation as to the extent to which the costs stated in the invoices were necessarily incurred for the purposes of the proceedings, and some of those costs are unrelated to the subject matter of the dispute. According to the applicant, the number of working hours claimed by the intervener does not appear to be objectively justified, in view of the low degree of complexity of the main proceedings, and is excessive, in particular in view of the fact that a lawyer who is highly qualified and experienced in intellectual property matters and whose hourly rate is high is presumed to manage the cases entrusted to him or her, including those which are less complex, in an efficient and expeditious manner. In addition, according to the applicant, it is in principle only possible to recover the costs from a single lawyer, and not from two, as the intervener claims.

19 It must therefore be established whether, having regard to the purpose and nature of the dispute, the economic interest which it represented for the parties, its significance from the point of view of EU law, the complexity and difficulties of the case, and the amount of work carried out, the assessment of the costs claimed is justified (see the case-law cited in paragraph 14 above).

20 In the first place, the Court notes that the case in the main proceedings was not, as regards its purpose and nature, particularly complex. As is apparent from the judgment of 3 October 2017, BMB v EUIPO– Ferrero (Container for sweets) (T–695/15, not published, EU:T:2017:684), that case concerned an action for annulment brought by the applicant on the basis of three pleas in law, alleging, respectively, infringement of Article 62 of Regulation No 6/2002, in that the Board of Appeal based its decision on an incorrect legal basis, infringement of Article 25(1)(e) of that regulation, in that the Board of Appeal erred in finding that there was a likelihood of confusion, and infringement of Article 63(1) of that regulation in that the Board of Appeal erred in its assessment of the likelihood of confusion. In that regard, it should be noted that, even if that case concerned, as the intervener claims, an unusual matter because of the differences in the subject matter of the intellectual property rights at issue and there was no established case-law of the Courts of the European Union in that regard, that case cannot be regarded as particularly difficult or complex.

21 In the second place, it must be noted that, while it is true that the case had an economic interest for the intervener, given its strategy to protect its trademark portfolio, it remains the case that such an interest cannot be regarded as being unusually significant or as differing substantially from that of other trademark proprietors (see, to that effect and by analogy, order of 13 February 2019, International Gaming Projects v EUIPO — Sky (Sky BONUS), T–840/14 DEP, not published, EU:T:2019:101, paragraph 22 and the case-law cited).

22 In the third place, as regards the amount of the work which the proceedings may have generated for the intervener, it is for the General Court to ascertain whether the hours claimed by the intervener (see paragraph 17 above) may appear to be reasonable, objectively necessary and essential for the purposes of the proceedings before the General Court (see, to that effect, order of 11 January 2017, Wahlström v Frontex, T–653/13 P-DEP, not published, EU:T:2017:12, paragraph 28).

23 It is apparent from the intervener’s application that the intervener used the services of two lawyers, a partner and an associate, who, respectively, devoted 50.2 hours of work, billed at EUR 330 per hour, and 32.7 hours of work, billed at EUR 250 per hour, making a total of 82.9 hours, billed at EUR 24 741.

24 As regards, first, the intervener’s recourse to the services of more than one lawyer, namely a partner and an associate, the primary consideration of the Court is the total number of hours of work and, more specifically, of the total amount of recoverable costs, which may appear to be objectively reasonable and necessary for the purpose of the proceedings before the Court, irrespective of the number of lawyers who may have provided the services in question (see, to that effect, orders of 28 June 2004, Airtours v Commission, T–342/99 DEP, EU:T:2004:192, paragraph 30 and the case-law cited, of 9 September 2015, Smurfit Kappa Group v Commission, T–304/08 DEP, not published, EU:T:2015:707, paragraph 67, and of 11 July 2018, Rühland v EUIPO — 8 seasons design (Lamp in the form of a star), T–779/16 DEP, not published, EU:T:2018:467, paragraph 16 and the case-law cited).

25 As regards, secondly, the average hourly rate of EUR 290 charged by the intervener’s counsel, it must be noted that, according to the case-law, it is necessary to consider the hourly rate which the intervener seeks to have applied, since remuneration at a high hourly rate is appropriate only for the services of professionals who are capable of working efficiently and rapidly, the quid pro quo being that, in such a case, an assessment must be made — which must be rigorous — of the total number of hours of work necessary for the purposes of the proceedings concerned (see order of 8 February 2019, Galletas Gullón v EUIPO — Hug (GULLON DARVIDA), T–456/16 DEP, not published, EU:T:2019:102, paragraph 21 and the case-law cited).

26 In the present case, the General Court considers that the hourly rate claimed is not unreasonable for this type of dispute, having regard to the specialisation of the intervener’s counsel in the field.

27 It is apparent from the invoices and hourly statements placed on the file by the intervener that the work of its representatives consisted, inter alia, in re-examining the proceedings before EUIPO, examining the applicant’s application and EUIPO’s response, drafting the statement in intervention, preparing and taking part in the hearing, and preparing and submitting written observations on the question put by the General Court at the hearing, which required coordination between the intervener’s representative and the intervener’s expert counsel in French law.

28 Having regard, first, to the purpose and nature of the dispute, its significance from the point of view of EU law and the economic interest which it represented (see paragraphs 20 and 21 above), and the level of specialisation of the intervener’s counsel (see paragraphs 25 and 26 above) and, second, to the fact that it was necessary to respond in writing to a question put by the General Court at the hearing, which involved the input of the intervener’s counsel subsequent to that hearing, the number of working hours claimed by the intervener is manifestly excessive. Moreover, if it is true, as the intervener claims, that its counsel did not represent it in the EUIPO proceedings and was therefore unfamiliar with the factual and legal specificities of the case, the fact remains that, in so far as the intervener’s response in the present case was aimed at having the action dismissed, the task of its lawyers was facilitated since they were able to rely on the contested decision to reply to the applicant’s arguments (see, to that effect, order of 17 September 2019, Mozzetti v EUIPO — di Lelio (Alfredo alla Scrofa and ALFREDO’S GALLERY alla Scrofa Roma), T–96/15 DEP and T‑97/15 DEP, not published, EU:T:2019:658, paragraph 25 and the case-law cited).

29 A fair assessment will therefore be made of the working time necessary for that purpose by setting it at 40 hours, at an average hourly rate of EUR 290.

30 Thus, the amount of lawyers’ fees recoverable by the intervener must be set at EUR 11 600.

31 As regards the costs claimed in respect of travel and subsistence expenses, it should be noted that the intervener sought to recover EUR 714.43 in respect of the participation of its representative at the hearing held on 28 March 2017 and EUR 732.11 in respect of its participation in a coordination meeting on 4 April 2017 in Luxembourg, at the intervener’s headquarters, in order to prepare the observations in response to the question put by the General Court at the hearing.

32 Only travel and subsistence expenses for the purposes of the participation of the intervener’s representative at the hearing, the amount claimed of which is considered reasonable — despite the fact that no supporting documents have been produced by the intervener — may be regarded as necessary (see, to that effect, order of 30 September 2014, Kastenholz v OHIM — Qwatchme (Watch dials), T–68/11 DEP, not published, EU:T:2014:879, paragraph 31).

33 As regards the shipping costs amounting to EUR 108, although they were not supported by invoices, since the sum does not appear to be excessive, it should be allowed as a recoverable cost.

34 Moreover, the intervener claimed, first, an amount of EUR 763.20 for the costs of translating documents, the content of which is not specified, relating to an invoice from ‘Elativum’ dated 9 May 2016 (‘Costs for the translation in accordance with the invoice from Elativum of 09 May 2016’). Secondly, it claimed costs relating to the ‘inspection of files EUIPO GfK-Consumer Survey 20.05.2016’ and a ‘flat fee inspection of files EUIPO 17.03.2017’ amounting to EUR 115 and EUR 34 respectively.

35 It must be noted that the intervener did not provide any details concerning those costs in the application for taxation, so that it has not been demonstrated they were necessary for the purposes of the proceedings before the General Court, in accordance with the case-law referred to in paragraph 12 above. Those sums cannot therefore be regarded as recoverable costs.

36 In view of all of the foregoing considerations, a fair assessment will be made of the entirety of the costs recoverable by the intervener from the applicant by setting their amount at EUR 12 442.43.

The total amount of costs to be recovered from BMB sp. z o.o. by Ferrero SpA is set at EUR 12 442.43.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> BMB v EUIPO - Ferrero (Recipient pour sucreries) (Taxation of costs - Order) [2020] EUECJ T-695/15DEP_CO (25 May 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T69515DEP_CO.html Cite as: ECLI:EU:T:2020:236, EU:T:2020:236, [2020] EUECJ T-695/15DEP_CO

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