Corte di giustizia UE n. 1526/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 30 May 2018 ( * ) (Taxation of costs) [OSCURATO:PERSONA] C‑30/15 P-DEP, APPLICATION for taxation of recoverable costs under [OSCURATO:PERSONA] 145 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, brought on 24 August 2017, [OSCURATO:PERSONA] GmbH & Co. KG, established in Fürth (Germany), represented by O. Ruhl, Rechtsanwalt, appellant, v [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), represented by A. Folliard-Monguiral, acting as [OSCURATO:PERSONA], [OSCURATO:PERSONA], established in London ([OSCURATO:PERSONA]), represented by K. Szamosi, ügyvéd, respondents, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of C.G. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], S. Rodin (Rapporteur) and E. Regan, Judges, [OSCURATO:PERSONA]: M. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], after hearing the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1 The subject matter of this action is the taxation of the costs incurred by [OSCURATO:PERSONA] GmbH & Co. KG (‘[OSCURATO:PERSONA]’) in [OSCURATO:PERSONA] C‑30/15 P. 2 By an appeal brought on 26 January 2015 under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], [OSCURATO:PERSONA] asked the [OSCURATO:PERSONA] to set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 25 November 2014, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] (Shape of a cube with surfaces having a grid structure) (T‑450/09, ‘the judgment under appeal’, EU:T:2014:983), by which the [OSCURATO:PERSONA] had dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) of 1 September 2009 ([OSCURATO:PERSONA] R 1526/2008-2), relating to cancellation proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA] (‘the decision at issue’). 3 By judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849), the [OSCURATO:PERSONA] set aside the judgment under appeal, itself gave final judgment in the case by annulling the decision at issue, and ordered [OSCURATO:PERSONA] and [OSCURATO:PERSONA] to ‘bear their own costs and to pay the costs of [[OSCURATO:PERSONA]] relating both to the proceedings at first instance in [OSCURATO:PERSONA] T‑450/09 and to the appeal’. 4 Since no agreement has been reached between the parties on the amount of the recoverable costs relating to the appeal proceedings, [OSCURATO:PERSONA] has made the present application. 5 The costs relating to the proceedings at first instance are the subject matter of separate proceedings ([OSCURATO:PERSONA] C‑30/15 P-DEP2). Arguments of the parties 6 [OSCURATO:PERSONA] asks the [OSCURATO:PERSONA] to fix the amount of the recoverable costs relating to the appeal proceedings at EUR 59 494.50 and to order [OSCURATO:PERSONA] and [OSCURATO:PERSONA] to pay those costs jointly and severally, or, in the alternative, to order each party to pay half of those costs. 7 That amount is made up of (i) EUR 57 937.50 in respect of lawyer’s fees, corresponding to 128.75 hours of work carried out at an hourly rate of EUR 450, (ii) EUR 657 in respect of expenses incurred and (iii) EUR 900 in respect of the costs incurred relating to these taxation of costs proceedings. 8 [OSCURATO:PERSONA], which submitted as part of its application, inter alia, the fee agreement concluded with the lawyer who had represented it before the [OSCURATO:PERSONA] as well as a document detailing the hours of work carried out, considers that the amount of the costs it is claiming is, in the light, in particular, of the complexity and the significance of the dispute in question, adequate and corresponds to necessary expenses for the purpose of the proceedings before the [OSCURATO:PERSONA]. 9 Thus, according to [OSCURATO:PERSONA], having regard to the large number of arguments put forward and new legal problems raised, the appeal proceedings gave rise to 10 times the amount of work required for an ‘average’ trade mark case. The factual and legal difficulty of the case is apparent from the existence of divergent decisions made by the courts and authorities concerned, by the length and complexity of the judgment under appeal, and by the duration of the proceedings before the [OSCURATO:PERSONA]. The significance and financial impact of that case were, moreover, considerable. 10 [OSCURATO:PERSONA] and [OSCURATO:PERSONA] consider that the amount of the costs claimed by [OSCURATO:PERSONA] goes beyond the recoverable costs provided for in [OSCURATO:PERSONA] 144(b) of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice. 11 In that regard, [OSCURATO:PERSONA] submits, at the outset, that it is necessary to clarify whether it and [OSCURATO:PERSONA] were ordered, by judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849), to pay the costs relating to the appeal proceedings jointly and severally, or whether those costs are to be divided into two equal parts. 12 According to [OSCURATO:PERSONA], the amount claimed in respect of lawyers’ fees is excessive in the light of the significance of the dispute, the amount of work carried out and the financial interest that [OSCURATO:PERSONA] had in the proceedings. 13 As regards, in the first place, the significance of the dispute, [OSCURATO:PERSONA] submits, inter alia, that the proceedings before the [OSCURATO:PERSONA] of Justice relating to the registration of a three-dimensional mark concerned, more specifically, the interpretation of [OSCURATO:PERSONA] 7(1)(e)(ii) of [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). That provision had already been interpreted by the [OSCURATO:PERSONA] in previous decisions that were, moreover, referred to in the judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849). 14 [OSCURATO:PERSONA] also submits that the appeal was, by its very nature, restricted to the analysis of points of law and could not extend to assessments of the facts. The lawyer for [OSCURATO:PERSONA] already had detailed knowledge of the case file, given that he had already represented that company during the administrative proceedings and before the [OSCURATO:PERSONA]. 15 Regarding, in the second place, the amount of work carried out, [OSCURATO:PERSONA] maintains that the work carried out during the proceedings before the [OSCURATO:PERSONA] of Appeal and the [OSCURATO:PERSONA] necessarily reduced the volume of work required for the appeal proceedings. The fact that the lawyer for [OSCURATO:PERSONA] raised, in the context of the appeal, six grounds of appeal was entirely his own choice and his own responsibility. In any event, only one exchange of pleadings took place. 16 [OSCURATO:PERSONA] also observes that the application of high fees, such as those in the present case, is appropriate only where services are provided by professionals capable of working quickly and efficiently, and implies that, in return, the total number of work hours necessary must be assessed strictly. First, the time devoted to straightforward research appears to be superfluous, having regard to the research that had already been carried out. [OSCURATO:PERSONA], [OSCURATO:PERSONA] claims, inter alia, that recoverable costs concerning 11.75 hours of working time before the hearing should be reimbursed, whereas the greater part of that time corresponds to travel time. Thirdly, some of the tasks that, according to [OSCURATO:PERSONA], had been carried out by a specialised lawyer are obviously administrative tasks. 17 As regards, in the third place, the financial interest that [OSCURATO:PERSONA] had in the proceedings, [OSCURATO:PERSONA] maintains that, as [OSCURATO:PERSONA] has adduced no specific evidence, that financial interest cannot be regarded in the present case as unusual or appreciably different from that which underlies any EU trade mark. 18 As observed by [OSCURATO:PERSONA], [OSCURATO:PERSONA] considers, first of all, that, given that the lawyer for [OSCURATO:PERSONA], a highly qualified professional, already had detailed knowledge of the case, the number of work hours invoiced is excessive. It submits, next, that certain costs incurred by [OSCURATO:PERSONA], such as those relating to work carried out before the appeal had been prepared and after the hearing had taken place, as well as those in connection with administrative and technical tasks, are not necessary for the purpose of the proceedings. Furthermore, additional costs related to the involvement of other lawyers are not recoverable. Lastly, according to [OSCURATO:PERSONA], the case in question was not particularly complex, either in law or on the facts. Findings of the [OSCURATO:PERSONA] 19 [OSCURATO:PERSONA] 144(b) of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, ‘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 considered to be recoverable costs. 20 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 [OSCURATO:PERSONA], and, secondly, to those which were necessary for that purpose (orders of 9 November 1995, [OSCURATO:PERSONA] and Others v Commission , C‑89/85 DEP, not published, EU:C:1995:366, paragraph 14, and of 28 February 2013, [OSCURATO:PERSONA] de la Rioja v [OSCURATO:PERSONA] de Álava and Others , C‑465/09 P-DEP, not published, EU:C:2013:112, paragraph 22). 21 According to settled case-law, the Courts of the [OSCURATO:PERSONA] have jurisdiction, not to tax the fees payable by the parties to their own lawyers, but to determine the amount of those fees which may be recovered from the party ordered to pay the costs (orders of 10 September 2009, C.A.S . v Commission , C‑204/07 P-DEP, not published, EU:C:2009:526, paragraph 13, and of 7 June 2012, [OSCURATO:PERSONA] v TF1 , C‑451/10 P-DEP, not published, EU:C:2012:323, paragraph 19). 22 In that connection, with regard to the fact that [OSCURATO:PERSONA] submitted, as part of its application, the fee agreement concluded with the lawyer who had represented it before the [OSCURATO:PERSONA], it must be borne in mind that, when ruling on an application for taxation of costs, the [OSCURATO:PERSONA] is not obliged to take account of, inter alia, any agreement in that regard between the party concerned and his agents or advisers (order of 14 June 2017, CPVO v Schräder , C‑546/12 P-DEP, not published, EU:C:2017:460, paragraph 14). 23 It has also consistently been held that, in the absence of any provision of EU law laying down fee-scales or concerning necessary hours of work, the [OSCURATO:PERSONA] 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 (orders of 16 May 2013, Deoleo v Aceites del Sur-Coosur , C‑498/07 P-DEP, not published, EU:C:2013:302, paragraph 20, and of 26 February 2015, Wedl & Hofmann v [OSCURATO:PERSONA] , C‑141/13 P-DEP, not published, EU:C:2015:133, paragraph 22). 24 Furthermore, in fixing the recoverable costs, the [OSCURATO:PERSONA] 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 12 October 2012, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , C‑254/09 P-DEP, not published, EU:C:2012:628, paragraph 22). 25 The amount of the costs recoverable in the present case must be determined in accordance with those criteria. 26 With regard, in the first place, to the purpose and nature of the proceedings, it must be noted that, as is the case for all appeals, the appeal that gave rise to the judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849), had to be limited to points of law and was not intended to assess the facts. In addition, before the appeal proceedings, the dispute arising from the application for a declaration of invalidity filed by [OSCURATO:PERSONA] had been examined first by the [OSCURATO:PERSONA] of [OSCURATO:PERSONA], then by its [OSCURATO:PERSONA] of Appeal, and by the [OSCURATO:PERSONA]. 27 In the second place, regarding the significance of the dispute from the point of view of EU law and the difficulties presented by the case, it is clear from the judgment under appeal — in respect of which it is important to note the detailed nature of the grounds — and from the appeal, which contained six substantive pleas, that the case was a matter of a certain complexity and raised, inter alia, conceptual questions, in respect of several aspects of law, concerning the registration of a three-dimensional mark that is indissociable from the appearance of the product it is intended to protect, which have a certain significance for the proper understanding and the appropriate application of the absolute grounds for refusal of a registration pursuant to [OSCURATO:PERSONA] 7(1)(e) of [OSCURATO:PERSONA] 40/94. 28 Furthermore, those questions gave rise to the Opinion of [OSCURATO:PERSONA] in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849). Although the [OSCURATO:PERSONA] was able to confine itself, in order to set aside the judgment under appeal and annul the decision at issue, to examining the first ground of appeal, it is nonetheless the case that the answer to that ground of appeal, concerning the actual application of the conditions and criteria stemming, inter alia, from the case-law of the [OSCURATO:PERSONA] for the purpose of assessing the functional nature of the sign at issue within the meaning of [OSCURATO:PERSONA] 7(1)(e)(ii) of [OSCURATO:PERSONA] 40/94, was not an obvious one, in particular as concerns the question of which elements the [OSCURATO:PERSONA] must take into consideration in analysing the functionality of a sign within the meaning of that provision (judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , C‑30/15 P, EU:C:2016:849, paragraphs 35, 51 and 54). 29 It follows that the case in question, the significance of which was certain for the purpose of the proper understanding and the appropriate application of the absolute grounds for refusal of a registration relating to a three-dimensional mark, was relatively complex and raised somewhat difficult questions. 30 Regarding, in the third place, the financial interest at stake, even if the precise economic impact on the parties cannot be determined on the basis of the overall turnover that the magic cube games in question could, according to [OSCURATO:PERSONA]’ calculations, still generate, it is nonetheless possible to establish, in the light of that information, that the financial interest that that party had in the proceedings was at the very least significant, given that, as is apparent from the judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849, paragraphs 52 and 53), the contested mark would have been capable of granting the proprietor of the mark a monopoly on that category of games. 31 As regards, in the fourth place, the amount of work carried out, it must be noted that, although certain hours of work were carried out by a second specialised lawyer, the [OSCURATO:PERSONA] must, when fixing the amount of the recoverable costs, take account, in particular, of the total number of hours of work that appear to be objectively necessary for the purpose of the proceedings, irrespective of the number of lawyers who may have provided those services (order of 1 October 2013, [OSCURATO:PERSONA] v Commission , C‑521/09 P-DEP, EU:C:2013:644, paragraph 22). 32 In that connection, the services provided in the context of the appeal that gave rise to the judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849), were composed, in essence, of the drafting of the appeal, containing several grounds, the preparation for the hearing and the submissions made during the hearing. 33 It is however important to recall that the lawyer for [OSCURATO:PERSONA] before the [OSCURATO:PERSONA] had already represented that company before the [OSCURATO:PERSONA] and the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA], and subsequently before the [OSCURATO:PERSONA]. He therefore already had, at the appeal stage, detailed knowledge of the case and its legal implications, which was likely to have facilitated his work and reduced the length of time devoted to the preparation of the appeal and the hearing before the [OSCURATO:PERSONA] (see, to that effect, order of 3 September 2009, [OSCURATO:PERSONA] del Vallés v Commission , C‑326/05 P-DEP, not published, EU:C:2009:497, paragraph 53). 34 Furthermore, a lawyer, such as the one who represented [OSCURATO:PERSONA] before the [OSCURATO:PERSONA], who is highly qualified and experienced as far as concerns EU trade marks and whose hourly fee is EUR 450 is presumed to handle the cases entrusted to him, including those that are somewhat complex, efficiently and quickly (see, to that effect, order of 3 September 2009, [OSCURATO:PERSONA] del Vallés v Commission , C‑326/05 P-DEP, not published, EU:C:2009:497, paragraph 52). 35 In those circumstances, even though the matter was of a certain complexity, it must be held that not all of the 128.75 hours of work, invoiced at an hourly rate of EUR 450, appear to have been objectively necessary for the purpose of the appeal proceedings. This applies more specifically to a certain number of hours invoiced for research and analysis carried out in preparation for the appeal and the hearing as well as for services provided after the hearing. 36 As concerns, in addition, the costs relating to the taxation of costs proceedings, it must be stated, inter alia, that the wording of this application for taxation of costs is almost identical to that of the application for taxation of costs lodged in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] and [OSCURATO:PERSONA] (C‑30/15 P-DEP2), relating to recoverable costs in respect of the proceedings at first instance. 37 In the light of all the foregoing considerations, the [OSCURATO:PERSONA] considers it appropriate, in the light of the criteria set out in paragraphs 21 and 23 of this order, to fix the total amount recoverable in respect of lawyer’s fees and costs incurred in respect of the appeal proceedings and in respect of these taxation of costs proceedings at EUR 35 000. 38 Having regard to the fact that, by judgment of 10 November 2016, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (C‑30/15 P, EU:C:2016:849), [OSCURATO:PERSONA] and [OSCURATO:PERSONA] were ordered to pay the costs relating, inter alia, to the appeal proceedings, without the [OSCURATO:PERSONA] having determined how those costs were to be shared, each party must pay half that sum. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: The total amount of the costs to be reimbursed by the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) and [OSCURATO:PERSONA] to [OSCURATO:PERSONA] GmbH & Co. KG relating to the appeal proceedings is fixed at EUR 35 000. Luxembourg, 30 May 2018. A. [OSCURATO:PERSONA] C.G. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.