IP case law Court of Justice

Order of 12 Feb 2015, C-35/14 (Gamesa E)



ORDER OF THE COURT (Second Chamber)

25 February 2016 (*)

(Taxation of costs)

In Case C-35/14 P-DEP,

APPLICATION for taxation of recoverable costs on the basis of Article 145 of the Rules of Procedure of the Court, brought on 2 October 2015,

Gamesa Eólica SL, established in Sarriguren (Spain), represented by E. Armijo Chávarri, abogado,

applicant,

v

Enercon GmbH, established in Aurich (Germany), represented by R. Böhm, Rechtsanwalt,

defendant,

THE COURT (Second Chamber),

composed of M. Ileši? (Rapporteur), President of the Chamber, C. Toader, A. Rosas, A. Prechal and E. Jaraši?nas, Judges,

Advocate General: Y. Bot,

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 Gamesa Eólica SL (‘Gamesa’) in Case C-35/14 P.

2        By its appeal brought on 22 January 2014, under Article 56 of the Statute of the Court of Justice of the European Union, Enercon GmbH (‘Enercon’) asked the Court of Justice to set aside the judgment of the General Court of the European Union of 12 November 2013 in Gamesa Eólica v OHIM — Enercon (Blended shades of green) (T-245/12, EU:T:2013:588), whereby the General Court annulled the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 March 2012 (Case R 260/2011-1) concerning invalidity proceedings between Gamesa and Enercon.

3        By its order in Enercon v Gamesa Eólica (C-35/14 P, EU:C:2015:158), the Court dismissed that appeal as manifestly inadmissible and ordered Enercon to bear its own costs and to pay the costs incurred by Gamesa.

4        Since no agreement has been reached between Gamesa and Enercon on the amount of the recoverable costs relating to those proceedings, Gamesa has made the present application.

 Arguments of the parties

5        Gamesa asks the Court to fix the amount of the costs to be recovered at EUR 12 200. Payment of that amount was demanded from Enercon on 22 July 2015.

6        That amount corresponded to the total fee invoices issued on the same date by the law firm representing Gamesa. Those invoices, it is claimed, represent 26 working hours for a partner and 8 working hours for an associate lawyer, at hourly rates of EUR 380 and EUR 290 respectively. The fees charged relate, according to the application, to the analysis of Enercon’s appeal and examination of the applicable case-law, preparation and filing of the response, analysis of the response lodged by OHIM and of the reply, preparation and filing of the rejoinder and the correspondence exchanged in that regard.

7        Enercon contests the amount of EUR 12 200 claimed by Gamesa.

8        It argues, in the first place, that, neither in his request for payment of 22 July 2015 nor in his application for taxation of costs, did Gamesa’s legal adviser provide a copy of the invoice that was actually sent to Gamesa, so that neither the Court nor Enercon are able to verify whether that invoice has, in fact, the same content as the one sent by Gamesa’s legal adviser to Enercon on 22 July 2015 for the purposes of obtaining reimbursement. Nor is it possible to determine whether the number of hours invoiced for the services of the partner or associate lawyer is genuine.

9        In the second place, since the appeal was rejected on the basis of procedural errors, the Court did not rule on the substance of the dispute, demonstrating that the case is not important from the perspective of EU law.

10      In the third place, neither national law, such as the German law on lawyers’ fees, nor EU law guarantees that the costs of representation will be reimbursed in full.

11      Finally, in the fourth place, most of the hours were invoiced at the hourly rate of the firm’s partner, not that of the associate lawyer. However, most of the items on the invoice relate to sending e-mails to the client and general correspondence. The amount claimed, therefore, is excessive.

 Findings of the Court

12      Under Article 144(b) of the Rules of Procedure of the Court, applicable, in accordance with Article 184(1) of those rules, to procedures on appeal, ‘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.

13      As is apparent from its wording, the remuneration of a lawyer is one of the expenses necessarily incurred within the meaning of that provision. It also follows from that wording that recoverable costs are limited, firstly, to expenses incurred for the purposes of the proceedings before the Court and, secondly, to expenses necessarily incurred for such purposes (order in Qwatchme v Kastenholz, C-435/13 P-DEP, EU:C:2014:2421, paragraph 9 and the case-law cited).

14      According to the settled case-law of the Court, 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 (order in AFT Pharmaceuticals v Mundipharma, C-669/13 P-DEP, EU:C:2015:758, paragraph 10 and the case-law cited).

15      In the first place, in so far as Enercon questions whether the fees for which reimbursement is requested are genuine, it should be pointed out that the mere fact that Gamesa’s legal adviser, who it is accepted represented the latter before the Court in the appeal proceedings in question, did not provide Enercon with a copy of the invoice sent to his client does not mean that the expenses set out in a detailed invoice sent to Enercon on 22 July 2015, and for which reimbursement is requested as recoverable expenses, are not accurate and genuine, since the question whether those expenses are essential and, therefore, recoverable does not, in any event, depend solely on assessments made by the party claiming them, as will be noted below.

16      In the second place, in so far as Enercon refers to national legislation concerning expenses, namely the German law on lawyers’ fees, it should be pointed out that, in ruling on an application for taxation of costs, the Courts of the European Union do not have to take into consideration national legislation concerning the fixing of lawyers’ fees (see, to that effect, the order in AFT Pharmaceuticals v Mundipharma, C-669/13 P-DEP, EU:C:2015:758, paragraph 11 and the case-law cited).

17      In the third place, it must be pointed out that, in the absence of any provisions of EU law relating to fee scales or the necessary working time, the Courts of the European Union must make an unfettered assessment of the facts of the case, taking account of the purpose and the nature of the proceedings, their significance from the point of view of EU law, the difficulties presented by the case, the amount of work which the case generated for the agents or lawyers involved and the financial interest which the parties had in the proceedings (see, in particular, the order in Deoleo v Aceites del Sur-Coosur, C-498/07 P-DEP, EU:C:2013:302, paragraph 20).

18      In the present case, first, as regards the purpose and nature of the dispute, it should be noted that the case was referred to the Court in the context of appeal proceedings which are, by nature, limited to questions of law and do not concern themselves with findings as to the facts, or assessment of the facts. Furthermore, prior to that appeal, the dispute arising from an application for a declaration of invalidity lodged by Gamesa had already been brought before the Cancellation Division of OHIM and then before a Board of Appeal of that Office and, finally, before the General Court.

19      Secondly, with regard to the significance of the dispute from the point of view of EU law and the difficulties of the questions examined in the appeal proceedings, it should be noted that, in support of those proceedings, Enercon relied on two grounds of appeal which did not raise complex questions of law. Moreover, the Court, by reasoned order adopted on the basis of Article 181 of its Rules of Procedure, dismissed that appeal as manifestly inadmissible.

20      Thirdly, as regards the financial interests concerned, it should be pointed out that, in the light of the importance of trade marks in trade, Gamesa certainly had an interest in obtaining the confirmation, on appeal, of the judgment of the General Court in Gamesa Eólica v OHIM — Enercon (Blended shades of green) (T-245/12, EU:T:2013:588), whereby the General Court annulled the decision of the First Board of Appeal of OHIM referred to in paragraph 2 of the present order.

21      Fourthly, as regards the amount of work done by Gamesa’s legal advisers, it should be noted that the latter included, in the calculation of the recoverable costs, fees relating to the hours of work of two lawyers.

22      In that regard, it should be noted that, while, in principle, the remuneration of only one agent, adviser or lawyer is recoverable, it is possible that, depending on the individual circumstances and, most importantly, the complexity of each case, the fees of a number of lawyers may be considered ‘necessary expenses’ under Article 144(b) of the Rules of Procedure (orders in Industrias Químicas del Vallés v Commission, C-326/05 P-DEP, EU:C:2009:497, paragraph 47 and Deoleo v Aceites del Sur-Coosur, C-498/07 P-DEP, EU:C:2013:302, paragraph 27).

23      It follows that, when fixing the amount of the recoverable costs, it is appropriate to take account of the total number of hours’ work that may be considered objectively necessary for the purposes of the proceedings, irrespective of the number of lawyers who carried out that work (orders in Industrias Químicas del Vallés v Commission, C-326/05 P-DEP, EU:C:2009:497, paragraph 48 and Deoleo v Aceites del Sur-Coosur, C-498/07 P-DEP, EU:C:2013:302, paragraph 28).

24      In that regard, it should be noted, first, that the preparation by Gamesa’s legal advisers of the reply and rejoinder in the appeal giving rise to the order in Enercon v Gamesa Eólica (C-35/14 P, EU:C:2015:158) involved the examination of a limited number of questions of law. It should also be noted that Gamesa’s legal advisers already had a thorough knowledge of the case as they had represented that company in the proceedings at first instance. Finally, as there was no hearing, those advisers did not have to present oral argument before the Court.

25      Whereas it appears, in the light of the above findings, that drafting the written pleadings referred to in the previous paragraph did not entail a particularly heavy workload, it must nonetheless be held, given the financial interests referred to in paragraph 20 of the present order and the arguments presented by Enercon in its appeal, that, notwithstanding the plea that the appeal raised by Gamesa in its reply was inadmissible, the latter’s legal advisers were reasonably entitled to claim that it was necessary to develop a detailed argument on the merits of the case.

26      In view of all the foregoing, the costs recoverable by Gamesa from Enercon in Case C-35/14 P may be fairly assessed at EUR 6 000.

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

The total amount of costs to be reimbursed by Enercon GmbH to Gamesa Eólica SL in Case C-35/14 P is fixed at EUR 6 000.

Luxembourg, 25 February 2016.

[Signatures]

* Language of the case: English.



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