Information;Judgment — ECLI:EU:T:2022:108
Date: 2022-03-02
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Intellectual, industrial and commercial property;Designs
Procedure: Action for annulment - unfounded
Origin: Poland

ORDER OF THE GENERAL COURT (First Chamber) 16 January 2023 (*) (Procedure – Taxation of costs) In Case T‑1/21 DEP, Fabryki Mebli ‘Forte’ S.A., established in Ostrów Mazowiecka (Poland), represented by H. Basiński, lawyer, applicant, v European Union Intellectual Property Office (EUIPO), defendant, the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being Bog-Fran sp. z o.o. sp.k., established in Warsaw (Poland), represented by M. Mikosza, lawyer, THE GENERAL COURT (First Chamber), composed of D. Spielmann (Rapporteur), President, V. Valančius, M. Brkan, Judges, Registrar: E. Coulon, having regard to the written part of the procedure, makes the following Order 1 By its application, based on Article 170 of the Rules of Procedure of the General Court, Bog-Fran sp. z o.o. sp.k. requests that the Court fix the amount of recoverable costs to be paid by Fabryki Mebli ‘Forte’ S.A. at EUR 60 750 in respect of the costs it incurred for the purpose of the proceedings in Cases T‑159/19, C‑183/20 P and T‑1/21. Background to the dispute 2 On 14 March 2016, Bog-Fran filed an application for a declaration of invalidity, pursuant to Article 52 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), of Community design No 001384002-0034, registered on 17 September 2013. 3 By decision of 21 December 2017, the Cancellation Division upheld the application for a declaration of invalidity on the ground that the contested design did not have the individual character required by Article 6 of Regulation No 6/2002. 4 On 6 February 2018, Fabryki Mebli ‘Forte’ brought an appeal, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division. 5 By decision of 14 January 2019 (Case R 291/2018-3), the Third Board of Appeal of EUIPO upheld the appeal and annulled the Cancellation Division’s decision, on the ground that the earlier design had not been made available to the public in accordance with Article 7(1) of Regulation No 6/2002. 6 By judgment of 27 February 2020, Bog-Fran v EUIPO – Fabryki Mebli ‘Forte’ (Furniture) (T‑159/19, not published, EU:T:2020:77), the General Court annulled the decision of the Third Board of Appeal of 14 January 2019 and ordered EUIPO to bear its own costs and to pay those incurred by Bog-Fran. 7 By application lodged at the Registry of the Court of Justice on 28 April 2020, Fabryki Mebli ‘Forte’ brought an appeal against the judgment of 27 April 2020, registered under number C‑183/20 P. 8 By order of 16 July 2020, Fabryki Mebli ‘Forte’ v Bog-Fran (C‑183/20 P, not published, EU:C:2020:562), the Court of Justice did not allow the appeal to proceed. 9 By decision of 28 October 2020 (Case R 595/2020-3), the Third Board of Appeal, to which the case had been remitted, dismissed the appeal against the decision of the Cancellation Division of 21 December 2017 and ordered Fabryki Mebli ‘Forte’ to pay the fees and costs incurred for the purposes of the invalidity and appeal proceedings. 10 By application lodged at the Registry of the General Court on 4 January 2021 and registered under number T‑1/21, Fabryki Mebli ‘Forte’ brought an action for annulment of the decision of the Third Board of Appeal of 28 October 2020. 11 Bog-Fran intervened in the dispute in support of the form of order sought by EUIPO. It contended that the action should be dismissed and that Fabryki Mebli ‘Forte’ should be ordered to pay the costs. 12 By judgment of 2 March 2022, Fabryki Mebli ‘Forte’ v EUIPO – Bog-Fran (Furniture) (T‑1/21, not published, EU:T:2022:108), the General Court dismissed the action and ordered Fabryki Mebli ‘Forte’ to pay the costs incurred by EUIPO and Bog-Fran. 13 By letter of 19 May 2022, Bog-Fran informed Fabryki Mebli ‘Forte’ that the total amount of recoverable costs was, in its view, EUR 48 750 and Bog-Fran requested that Fabryki Mebli ‘Forte’ reimburse it that sum. 14 The parties have not agreed on the amount of the recoverable costs. Forms of order sought 15 Bog-Fran claims that the Court should fix the amount of the recoverable costs to be reimbursed by Fabryki Mebli ‘Forte’ at EUR 60 750. 16 Fabryki Mebli ‘Forte’ contends that the Court should fix the amount of the recoverable costs at EUR 1 250 and dismiss the remainder of the application. Law 17 Under Article 170(1) and (3) of the Rules of Procedure, where there is a dispute concerning the costs to be recovered, the General Court is, at the request of the party concerned, to give its decision by way of an order from which no appeal is to lie, after giving the party concerned by the application an opportunity to submit its observations. 18 It is apparent from the application for taxation of costs that the sum of EUR 60 750, the reimbursement of which is sought by Bog-Fran in respect of the recoverable costs, corresponds to 138 hours of work at an hourly rate of EUR 450, broken down as follows: – application for a declaration of invalidity of Community design No 001384002-0034, which gave rise to the decision of the Cancellation Division of 21 December 2017 (Case ICD 10145): 25 hours; – appeal proceedings brought against the decision of 21 December 2017, which gave rise to the decision of the Third Board of Appeal of EUIPO of 14 January 2019 (Case R 291/2018-3): 20 hours; – proceedings before the General Court against the decision of 14 January 2019, which gave rise to the judgment of 27 February 2020, Furniture (T‑159/19, not published, EU:T:2020:77): 23 hours; – appeal which gave rise to the order of 16 July 2020, Fabryki Mebli ‘Forte’ v Bog-Fran (C‑183/20 P, not published, EU:C:2020:562): 5 hours; – proceedings which gave rise to the decision of the Third Board of Appeal of EUIPO of 28 October 2020 (Case R 595/2020-3): 5 hours; – proceedings before the General Court against the decision of 28 October 2020, which gave rise to the judgment of 2 March 2022, Furniture (T‑1/21, not published, EU:T:2022:108): 60 hours. The costs incurred for the purpose of the proceedings before the Court of Justice 19 It is apparent from a combined reading of Article 170 of the Rules of Procedure of the General Court and Article 145 of the Rules of Procedure of the Court of Justice that the General Court has no jurisdiction to rule on an application for taxation of recoverable costs incurred before the Court of Justice (order of 13 January 2015, Marszałkowski v OHIM, T‑159/11 DEP, not published, EU:T:2015:21, paragraph 13). Merits of the application 20 Under Article 140(b) of the Rules of Procedure, ‘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 regarded as recoverable costs. It follows from that provision that recoverable costs are limited to those incurred for the purpose of the proceedings before the General Court and which were necessary for that purpose (see order of 6 March 2003, Nan Ya Plastics and Far Eastern Textiles v Council, T‑226/00 DEP and T‑227/00 DEP, EU:T:2003:61, paragraph 33 and the case-law cited). Costs incurred for the purposes of the proceedings before the Cancellation Division 21 As regards proceedings relating to intellectual property rights, Article 190(2) of the Rules of Procedure states that ‘costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal shall be regarded as recoverable costs’. 22 It follows that the costs relating to the proceedings before the Cancellation Division of EUIPO are not recoverable. Costs incurred for the purpose of the proceedings before the General Court in Case T‑159/19 23 Since the General Court, by judgment of 27 February 2020, Furniture (T‑159/19, not published, EU:T:2020:77), ordered EUIPO to pay the costs incurred by Bog-Fran, the latter cannot obtain reimbursement of those costs from Fabryki Mebli ‘Forte’. Costs incurred for the purposes of the appeal proceedings before the Board of Appeal of EUIPO 24 By decision of 28 October 2020 (Case R 595/2020-3), the Third Board of Appeal ordered Fabryki Mebli ‘Forte’ to pay the costs incurred for the purposes of the invalidity and appeal proceedings, the amount of which it did not, however, fix. 25 In that regard, it should be noted that the appeal proceedings against the decision of the Cancellation Division of 21 December 2017 include the proceedings that led to the decision of the Third Board of Appeal of 14 January 2019, annulled by the judgment of 27 February 2020, Furniture (T‑159/19, not published, EU:T:2020:77) and those which led to the decision of the Third Board of Appeal of 28 October 2020. 26 Article 79(7) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28) lists exhaustively the costs essential to the proceedings and actually incurred by the successful party that must be borne by the losing party in accordance with Article 70(1) of Regulation No 6/2002 and sets maximum rates for those costs. 27 Thus, under Article 79(7)(f) of Regulation No 2245/2002, the costs of representing the defendant in appeal proceedings are recoverable up to a maximum of EUR 500. Bog-Fran did not produce before the General Court any evidence enabling an assessment to be made as to the existence and, where relevant, the amount of other expenses referred to in Article 79(7), mentioned above, which it claims to have incurred. 28 It follows that the costs incurred before the Boards of Appeal must be fixed at the amount of EUR 500. Costs incurred for the purpose of the proceedings before the General Court in Case T‑1/21 29 By judgment of 2 March 2022, Fabryki Mebli ‘Forte’ v EUIPO – Bog-Fran (Furniture) (T‑1/21, not published, EU:T:2022:108), the Court dismissed the action brought against the decision of 28 October 2020 and ordered Fabryki Mebli ‘Forte’ to pay the costs incurred by EUIPO and Bog-Fran. 30 It is settled case-law that 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. In ruling on the application for taxation of costs, the Court is not required to take into account any national tariff fixing lawyers’ fees or any agreement to that effect between the party concerned and its agents or advisers (see order of 26 January 2017, Nürburgring v EUIPO – Biedermann (Nordschleife), T‑181/14 DEP, EU:T:2017:41, paragraph 10 and the case-law cited). 31 It is also settled case-law that, in the absence of EU law provisions 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 the difficulties presented by the case, the amount of work which the contentious proceedings generated for the agents or advisers involved and the economic interests which the dispute represented for the parties (see order of 26 January 2017, Nordschleife, T‑181/14 DEP, EU:T:2017:41, paragraph 11 and the case-law cited). 32 In addition, 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 140(b) of the Rules of Procedure (see, by analogy, order of 21 July 2016, Panrico v Bimbo, C‑591/12 P-DEP, not published, EU:C:2016:591, paragraph 28 and the case-law cited). 33 In taxing costs in those circumstances, the Court must examine the extent to which the services supplied by all the advisers concerned were necessary for the conduct of the legal proceedings and satisfy itself that the fact that both categories of lawyers were instructed did not entail any unnecessary duplication of costs (orders of 28 June 2004, Airtours v Commission, T‑342/99 DEP, EU:T:2004:192, paragraph 44, and of 3 May 2012, CSL Behring v Commission and EMA, T‑264/07 DEP, not published, EU:T:2012:211, paragraph 26). 34 However, it is important to stress that expenses for the coordination of a party’s lawyers cannot be regarded as necessary expenses to be taken into account for the purpose of calculating the amount of recoverable costs (see orders of 21 May 2014, Esge v OHIM – De’Longhi Benelux (KMIX), T‑444/10 DEP, not published, EU:T:2014:356, paragraph 22 and the case-law cited, and of 21 January 2021, Biasotto v EUIPO – Oofos (OOF and OO), T‑453/18 DEP and T‑454/18 DEP, not published, EU:T:2021:40, paragraph 30 and the case-law cited). 35 Lastly, it is for the applicant for costs to establish the amount and the existence of the procedural costs in respect of which reimbursement is sought (see order of 14 July 2015, Ntouvas v ECDC, T‑223/12 DEP, not published, EU:T:2015:570, paragraph 31 and the case-law cited). 36 The amount of the recoverable costs in the present case must be assessed in the light of those considerations. 37 In the first place, as regards the subject matter and nature of the dispute, its importance from the point of view of EU law and the difficulties presented by the case, it must be noted that the case in the main proceedings was not, as regards its subject matter and nature, particularly complex. That case raised a question falling within the scope of ordinary litigation relating to design law, namely that of disclosure and individual character of a design raised in the course of invalidity proceedings brought by Bog-Fran against a registered design. The case at issue concerned neither a new point of law nor a complex factual situation, and cannot therefore be regarded as presenting any particular difficulty. Likewise, the case did not have any particular significance in relation to EU law, inasmuch as the judgment of 2 March 2022, Furniture (T‑1/21, not published, EU:T:2022:108) forms part of a well-established line of case-law. 38 In the second place, as regards the economic interests at stake, although the case in the main proceedings was clearly of some economic interest to Bog-Fran, that economic interest cannot be regarded, in the absence of specific evidence adduced by Bog-Fran, as unusual or significantly different from that which underlies any invalidity proceedings brought in relation to a design. 39 In the third place, as regards the extent of the work which the proceedings may have generated for the representative of the applicant for costs, the primary consideration of the Courts of the European Union is the total number of hours of work which may appear to be objectively necessary for the purpose of the proceedings before the General Court, irrespective of the number of lawyers who may have provided the services in question (see order of 29 November 2016, TrekStor v EUIPO – Scanlab (iDrive), T‑105/14 DEP, not published, EU:T:2016:716, paragraph 16 and the case-law cited). 40 In the present case, Bog-Fran states that the amount claimed includes, in addition to ‘strictly procedural activities’, drawing up periodic reports on the progress of the case for the principal, monitoring activities undertaken by the person conducting the proceedings, providing information to the various lawyers involved in the case and explaining more complex questions to those lawyers. In that regard, it submits that a professional representative was involved in the case, a patent attorney with a doctorate in law and that, for the hearing, it was necessary to rely on the support of a law firm established in Luxembourg, which also generated additional costs. 41 Bog-Fran adds that the duration of the proceedings and the fact that individual activities were spread over time required recalling the background of the case and returning to previous activities. It also claims that, due to the fact that the hearing in Case T‑1/21 was held during the period of travel restrictions linked to the COVID-19 pandemic, it considered it appropriate to have recourse to the services of a lawyer established in Luxembourg, which increased the time needed to provide information and materials and to agree the line of argumentation to present at the hearing. Lastly, it recalls that, shortly before that hearing, Fabryki Mebli ‘Forte’ had lodged a document containing an item of evidence and arguments, with the result that a Polish lawyer and Luxembourgish lawyer had had to work on public holidays and at night in order to prepare observations on the new arguments for the purposes of the hearing. 42 It must be stated that the present application for taxation of costs is not accompanied by any supporting evidence capable of establishing the existence or, a fortiori, the necessary nature of the amount claimed or of the hours actually spent on the appeal proceedings and the proceedings before the Court in Case T‑1/21. 43 Whilst the absence of such supporting evidence does not preclude the Court fixing the amount of the recoverable costs on the basis of an equitable assessment, it nonetheless places it in a situation where its assessment of the claims submitted by the applicant for costs must necessarily be strict (see order of 21 March 2018, K&K Group v EUIPO – Pret A Manger (Europe) (Pret A Diner), T‑2/16 DEP, not published, EU:T:2018:175, paragraph 37 and the case-law cited). 44 Furthermore, it should be borne in mind that the taking into account of a high hourly rate appears appropriate only to remunerate the services of professionals who have performed their duties efficiently and rapidly and must, consequently, be counterbalanced by a necessarily strict assessment of the total number of hours’ work necessary for the purposes of the proceedings (see order of 30 April 2018, European Dynamics Belgium and Others v EMA, T‑158/12 DEP, not published, EU:T:2018:295, paragraph 23 and the case-law cited). 45 In accordance with that case-law, the high hourly rate of EUR 450 charged by the advisers of Bog-Fran are counterbalanced by a necessarily strict assessment of the total number of hours’ work necessary for the purposes of the proceedings before the Board of Appeal and the General Court. 46 In that regard, it should be noted that Bog-Fran’s representative already had extensive knowledge of the case, having represented it during the administrative procedure and the proceedings before the General Court in Case T‑159/19. That consideration is likely to have, in part, facilitated the work of that representative and reduced the time spent preparing the response and, consequently, the amounts which may be recovered in that respect (order of 17 November 2021, Promed v EUIPO – Centrumelektroniki (Promed), T‑30/20 DEP, not published, EU:T:2021:803, paragraph 29 and the case-law cited). 47 It should be borne in mind that that response contained 22 pages, including 11 pages of legal arguments. Five of those 11 pages stemmed, in substance, from the application lodged in Case T‑159/19. That written pleading was accompanied by 53 pages of annexes which, owing to their nature and wording, did not require any significant intellectual or administrative work from Bog-Fran’s advisers. 48 In view of the extensive knowledge which Bog-Fran’s representative had of the case, the length of the written pleading drafted by that representative and taking account of the lack of specific complexity of the legal issues raised in the present case because some of those issues, such as the disclosure of the earlier design, had already been raised and discussed before the Board of Appeal, and of the high hourly rates applied, the 60 hours of work necessary for the purpose of the proceedings before the Court, claimed by Bog-Fran, is manifestly excessive. 49 In addition, Bog-Fran also invokes costs incurred in drawing up periodic reports on the progress of the proceedings for the principal, monitoring the activities undertaken by the person conducting the proceedings, providing information to the various lawyers involved in the case and explaining the more complex issues to those lawyers. In the absence of further details or supporting evidence and having regard to the limited complexity of the case and to the case-law referred to in paragraphs 32 to 34 above, those costs cannot be regarded as having been necessary for the purpose of the proceedings. 50 As regards the costs incurred as a result of the participation of Bog-Fran’s advisers at the hearing on 9 November 2021, it is necessary, in the absence of supporting evidence, to assess their amount strictly, in accordance with the case-law referred to in paragraph 43 above. 51 In the light of all the foregoing considerations, the Court takes the view that the costs recoverable by Bog-Fran may be assessed on an equitable basis by fixing their amount at EUR 3 000, which takes account of all the circumstances of the case up to the date of this order. On those grounds, THE GENERAL COURT (First Chamber) hereby orders: The total amount of the costs to be reimbursed by Fabryki Mebli ‘Forte’ S.A. to Bog-Fran sp. z o.o. sp.k. is fixed at EUR 3 000. Luxembourg, 16 January 2023. E. Coulon D. Spielmann Registrar President * Language of the case: English.