IP case law Court of Justice

Order of 12 Dec 2008, C-197/07 (Aktieselskabet - TDK)



ORDER OF THE COURT (Seventh Chamber)

19 September 2012 (*)

(Taxation of costs)

In Case C-197/07 P-DEP,

APPLICATION for taxation of recoverable costs under Article 74 of the Rules of Procedure of the Court, lodged on 21 February 2012,

TDK Kabushiki Kaisha (TDK Corp.), established in Tokyo (Japan), represented by A. Norris, Barrister,

applicant,

v

Aktieselskabet af 21. november 2001, established in Brande (Denmark), represented by C. Barrett Christiansen, advokat,

defendant,

THE COURT (Seventh Chamber),

composed of J. Malenovský, President of the Chamber, G. Arestis (Rapporteur) and T. von Danwitz, Judges,

Advocate General: J. Mazák,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1        The subject-matter of this action is the taxation of the costs incurred by TDK Kabushiki Kaisha (TDK Corp.) (‘TDK Kabushiki Kaisha’) in Case C-197/07 P.

 The appeal

2        By an appeal lodged on 10 April 2007, Aktieselskabet af 21. november 2001 requested the Court, in accordance with Article 56 of the Statute of the Court of Justice, to set aside the judgment of the Court of First Instance of the European Communities (now the General Court of the European Union) of 6 February 2007 in Case T-477/04 Aktieselskabet af 21. november 2001 v OHIM – TDK Kabushiki Kaisha (TDK ) [2007] ECR II-399, in which that court dismissed its action against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 October 2004 (Case R 36/2003-1), concerning opposition proceedings between TDK Kabushiki Kaisha (TDK Corp.) and Aktieselskabet af 21. november 2001.

3        By order of 12 December 2008 in Case C-197/07 P Aktieselskabet af 21. november 2001 v OHIM, the Court dismissed the appeal as being in part clearly inadmissible and in part clearly unfounded. Aktieselskabet af 21. november 2001 was ordered to pay the costs of the appeal proceedings.

4        As no agreement was reached between TDK Kabushiki Kaisha and Aktieselskabet af 21. november 2001 on the amount of the recoverable costs, TDK Kabushiki Kaisha brought the present application.

 Arguments of the parties

5        TDK Kabushiki Kaisha requests the Court to fix the amount of the costs to be recovered at GBP 22 329.07.

6        In support of its application, TDK Kabushiki Kaisha claims that the amount claimed covers the expenses necessarily incurred for the purposes of the proceedings brought before the General Court and the Court of Justice. That amount corresponds to the fees of the representatives it instructed in the various actions brought by Aktieselskabet af 21. november 2001. Those fees were, for the most part, incurred in examining the pleadings and appendices submitted by Aktieselskabet af 21. november 2001 and drafting the responses which the applicant produced as intervener.

7        TDK Kabushiki Kaisha claims that, in the light of the duration of the proceedings initiated more than 10 years ago and the length of the various pleadings drafted by its representatives, the amounts involved are not significant.

8        Aktieselskabet af 21. november 2001 disputes the amount of costs put forward by TDK Kabushiki Kaisha, which comes to GBP 22 329.07, for that excessively high amount is not justified by the nature of the case nor by the relevant case-law in this area.

9        In that regard, referring to that case-law, Aktieselskabet af 21. november 2001 claims that, so far as concerns the purpose and nature of the proceedings at issue, the dispute revolved around the same question, namely a conflict between two trade marks, in all instances and that, consequently, by its nature, that dispute was limited in scope. Furthermore, the litigation of that dispute has very limited importance in relation to European Union (EU) law since the basis of the dispute was a conflict between two trade marks and, therefore, was not of a complex nature, the case adding nothing new to the case-law. Furthermore, so far as concerns the difficulty of the case, Aktieselskabet af 21. november 2001 claims that, in order to resolve the dispute, EU trade mark law was applied, law which TDK Kabushiki Kaisha must have practised and of which it must have some experience.

10      Furthermore, referring to the order of 9 January 2008 in Case C-104/05 P-DEP Pucci v El Corte Inglés, Aktieselskabet af 21. november 2001 points out that the relevant case-law supports its argument that the sum of GDP 22 329.07 greatly exceeds the amount that TDK Kabushiki Kaisha should be awarded in costs.

11      Therefore, while denying that the amount of costs claimed by TDK Kabushiki Kaisha is reasonable and that it covers the expenses necessarily incurred by the applicant, Aktieselskabet af 21. november 2001, by reference to the order in Pucci v El Corte Inglés, maintains that the recoverable costs must be fixed at an amount not exceeding EUR 5 600.

 Findings of the Court

12      Under Article 73(b) of the Rules of Procedure of the Court 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 recoverable costs. It follows from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the Court and, second, to those which are necessary for that purpose (see order in Case C-104/89 DEP Mulder and Others v Council and Commission [2004] ECR I-1, paragraph 43 and the case-law cited, and that of 7 June 2012 in Case C-451/10 P-DEP France Télévisions v TF1, paragraph 17).

13      It follows that an application for the taxation of recoverable costs is within the jurisdiction of the Court in accordance with Article 74 of the Rules of Procedure in so far as it concerns the expenses necessarily incurred by the parties for the purpose of the proceedings before the Court. However, it must be noted at the outset that the amount of costs claimed by TDK Kabushiki Kaisha in its application for taxation of the recoverable costs relates both to the proceedings before the General Court and to those before the Court of Justice.

14      Therefore, in the present case, it is necessary only to rule on the costs claimed by TDK Kabushiki Kaisha which relate to the proceedings before the Court of Justice and which that court ordered Aktieselskabet af 21. november 2001 to pay in Aktieselskabet af 21. november 2001 v OHIM.

15      Furthermore, it should be borne in mind that the Courts of the European Union are authorised, not to tax the fees payable by the parties to their own lawyers, but to determine the amount up to which that remuneration may be recovered from the party ordered to pay the costs (see, in particular, order of 10 September 2009 in Case C-204/07 P-DEP C.A.S. v Commission, paragraph 13, and that in France Télévisions v TF1, paragraph 19).

16      It has consistently been held that, in the absence of any 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 the 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 presented for the parties (see, in particular, orders in Pucci v El Corte Inglés, paragraph 10 and in France Télévisions v TF1, paragraph 20, and the case-law cited).

17      The amount of the recoverable costs must be assessed in the light of those criteria.

18      First, with regard to the purpose and the nature of the proceedings, it must be recalled that the action before the court was an appeal, which, by its nature, is limited to points of law and does not involve findings as to fact. Furthermore, before the appeal, the dispute resulting from TDK Kabushiki Kaisha’s opposition to the registration of the word mark ‘TDK’ gave rise to an examination by the Opposition Division of OHIM, by the First Board of Appeal of OHIM and by the General Court, successively.

19      Secondly, with regard to the importance of the dispute from the point of view of EU law, it is important to note that the appeal at issue, which is comprised of only one plea in law expressed in two parts, raises no new point of law or particular complexity. Indeed, the Court dismissed that appeal as being in part clearly inadmissible and in part clearly unfounded by an order made on the basis of Article 119 of its Rules of Procedure.

20      Thirdly, with regard to the economic interests involved, it is undisputed that, in the light of the importance of trade marks in trade, TDK Kabushiki Kaisha had a specific interest, at the appeal stage, in seeking confirmation of the judgment in Aktieselskabet af 21. november 2001 v OHIM – TDK Kabushiki Kaisha (TDK) in which the General Court dismissed Aktieselskabet af 21. november’s action for annulment of the decision of the First Board of Appeal of OHIM refusing the application for registration for the word mark ‘TDK’ made by that company. However, TDK Kabushiki Kaisha did not submit to the Court any evidence which would indicate that that economic interest was of an unusual nature.

21      Finally, with regard to the amount of work carried out, in the light of the findings made in paragraphs 18 and 19 of the present order, the drafting of the response lodged on behalf of TDK Kabushiki Kaisha did not necessitate an in-depth analysis nor a considerable amount of work, and all the more so since the dispute had already been the subject of an examination by TDK Kabushiki Kaisha before the General Court and before the adjudicating bodies of OHIM. It follows that the workload imposed on TDK Kabushiki Kaisha’s advisers by the appeal cannot be regarded as being of particular significance.

22      In light of all the foregoing considerations and having regard to the criteria referred to in paragraph 16 of the present order, the recoverable costs relating to the appeal proceedings before the Court in Case C-197/07 P can be assessed on an equitable basis at a total of GDP 6 000.

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

The total amount of the costs to be reimbursed by Aktieselskabet af 21. november 2001 to TDK Kabushiki Kaisha (TDK Corp.) in Case C-197/07 P is fixed at GBP 6 000.

[Signatures]

* Language of the case: English.



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