ORDER OF THE COURT (Sixth Chamber)

30 May 2018 ( )

(Taxation of costs)

In Case C‑30/15 P-DEP2,

APPLICATION for taxation of recoverable costs under Article 145 of the Rules of Procedure of the Court of Justice, brought on 24 August 2017,

Simba Toys GmbH & Co. KG, established in Fürth (Germany), represented by O. Ruhl, Rechtsanwalt,

appellant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,





Seven Towns Ltd, established in London (United Kingdom), represented by K. Szamosi, ügyvéd,

respondents,

THE COURT (Sixth Chamber),

composed of C.G. Fernlund, President of the Chamber, S. Rodin (Rapporteur) and E. Regan, Judges,

Advocate General: M. Szpunar,

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 Simba Toys GmbH & Co. KG (‘Simba Toys’) in Case T‑450/09.

2 By an appeal brought on 26 January 2015 under Article 56 of the Statute of the Court of Justice of the European Union, Simba Toys asked the Court to set aside the judgment of the General Court of the European Union of 25 November 2014, Simba Toys v OHIM — Seven Towns (Shape of a cube with surfaces having a grid structure) (T‑450/09, ‘the judgment under appeal’, EU:T:2014:983), by which the General Court had dismissed its action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 September 2009 (Case R 1526/2008-2), relating to cancellation proceedings between Simba Toys and Seven Towns Ltd (‘the decision at issue’).

3 By judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), the Court set aside the judgment under appeal, itself gave final judgment in the matter by annulling the decision at issue, and ordered Seven Towns and EUIPO to ‘bear their own costs and to pay the costs of [Simba Toys] relating both to the proceedings at first instance in Case 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 proceedings at first instance, Simba Toys brought an application for taxation of costs on 24 August 2017 pursuant to Article 170(1) of the Rules of Procedure of the General Court (Case T‑450/09 DEP).

5 At the same time, by application lodged at the Registry of the Court of Justice on 24 August 2017, Simba Toys brought an application, pursuant to Article 145 of the Rules of Procedure of the Court of Justice, for taxation of costs for the reimbursement of the costs relating to the appeal proceedings in Case C‑30/15 P (Case C‑30/15 P‑DEP).

6 Inasmuch as the Court of Justice, by judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), had itself given final judgment in the matter and, accordingly, on the costs, the General Court, by order of 8 February 2018, Simba Toys v EUIPO — Seven Towns (Shape of a cube with surfaces having a grid structure) (T‑450/09 DEP, EU:T:2018:81), declared that it had no jurisdiction to hear and determine the application for taxation of costs relating to the proceedings at first instance and referred the case to the Court of Justice for a ruling pursuant to the second paragraph of Article 54 of the Statute of the Court of Justice of the European Union and Article 127 of the Rules of Procedure of the General Court.

Arguments of the parties

7 Simba Toys asks the Court to fix the amount of the recoverable costs relating to the proceedings at first instance at EUR 54 286.70 and to order EUIPO and Seven Towns to pay those costs jointly and severally, or, in the alternative, to order each party to pay half of those costs.

8 That amount is made up of (i) EUR 52 815 in respect of lawyer’s fees, corresponding to 125.75 hours of work carried out at an hourly rate of EUR 420, (ii) EUR 571.70 in respect of expenses incurred and (iii) EUR 900 in respect of the costs incurred relating to these taxation of costs proceedings.

9 Simba Toys, which submitted as part of its application, inter alia, the fee agreement concluded with the lawyer who had represented it before the General Court 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 General Court.

10 Thus, according to Simba Toys, having regard to the large number of arguments put forward and new legal problems raised, the proceedings at first instance 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 General Court. The significance and financial impact of that case were, moreover, considerable.

11 EUIPO and Seven Towns consider that the amount of the costs claimed by Simba Toys goes beyond the recoverable costs provided for in Article 144(b) of the Rules of Procedure of the Court of Justice.

12 In that regard, EUIPO submits, at the outset, that it is necessary to clarify whether it and Seven Towns were ordered, by judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), to pay Simba Toys’ costs jointly and severally, or whether those costs are to be divided into two equal parts.

13 According to EUIPO, the amount claimed in respect of lawyer’s fees is excessive in the light of the significance of the dispute, the amount of work carried out and the financial interest that Simba Toys had in the proceedings.

14 As regards, in the first place, the significance of the dispute, EUIPO submits, inter alia, that the proceedings at first instance relating to the registration of a three-dimensional mark concerned, more specifically, the interpretation of Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). That provision has already been interpreted by the Court in previous decisions. In addition, the lawyer for Simba Toys had detailed knowledge of the case file, given that he had already represented that company during the administrative proceedings.

15 Regarding, in the second place, the amount of work carried out, EUIPO maintains that the work carried out during the proceedings before the Board of Appeal necessarily reduced the volume of work required for the proceedings before the General Court. The fact that the lawyer for Simba Toys raised, in the context of those proceedings, eight pleas was entirely his own choice and his own responsibility. Two exchanges of pleadings took place.

16 EUIPO 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. Secondly, Simba Toys claims, inter alia, that recoverable costs concerning 19 hours of working time in respect of the participation at the hearing itself should be reimbursed, whereas the greater part of that time corresponds to travel time. Thirdly, some of the tasks that, according to Simba Toys, were carried out by a specialised lawyer are obviously administrative tasks.

17 As regards, in the third place, the financial interest that Simba Toys had in the proceedings, EUIPO maintains that, as Simba Toys 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 EUIPO, Seven Towns considers, first of all, that, given that the lawyer for Simba Toys, a highly qualified professional, already had detailed knowledge of the case, the number of hours of work invoiced is excessive. It submits, next, that certain costs incurred by Simba Toys, such 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 Seven Towns, the case in question was not particularly complex, either in law or on the facts.

Findings of the Court

19 At the outset, it should be borne in mind, as the General Court moreover observed in its order of 8 February 2018, Simba Toys v EUIPO — Seven Towns (Shape of a cube with surfaces having a grid structure) (T‑450/09 DEP, EU:T:2018:81), that where, as in the present case by judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), the Court gives final judgment in a matter following the annulment of a General Court decision and rules, as a result, on the costs, including on those relating to the proceedings at first instance, it has jurisdiction to hear and determine the application for taxation of those costs (see, to that effect, orders of 3 September 2009, Industrias Químicas del Vallés v Commission, C‑326/05 P-DEP, not published, EU:C:2009:497, paragraphs 9 and 37, and of 1 October 2013, Elf Aquitaine v Commission, C‑521/09 P-DEP, EU:C:2013:644, paragraphs 9 to 12).

20 It should therefore be recalled that under Article 144(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 considered to be recoverable costs.

21 It is apparent from the wording of that article that recoverable costs are limited, first, to those incurred for the purpose of the proceedings, and, secondly, to those which were necessary for that purpose (see, to that effect, orders of 9 November 1995, Ahlström Osakeyhtiö and Others v Commission, C‑89/85 DEP, not published, EU:C:1995:366, paragraph 14, and of 28 February 2013, Comunidad Autónoma de la Rioja v Diputación Foral de Álava and Others, C‑465/09 P-DEP, not published, EU:C:2013:112, paragraph 22).

22 According to settled case-law, the Courts of the European Union 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, France Télévisions v TF1, C‑451/10 P-DEP, not published, EU:C:2012:323, paragraph 19).

23 In that connection, with regard to the fact that Simba Toys submitted, as part of its application, the fee agreement concluded with the lawyer who had represented it before the General Court, it must be borne in mind that, when ruling on an application for taxation of costs, the Court 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).

24 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 Court 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 Reber Holding, C‑141/13 P-DEP, not published, EU:C:2015:133, paragraph 22).

25 Furthermore, in fixing the recoverable costs, the Court 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, Zafra Marroquineros v Calvin Klein Trademark Trust, C‑254/09 P-DEP, not published, EU:C:2012:628, paragraph 22).

26 The amount of the costs recoverable in the present case must be determined in accordance with those criteria.

27 With regard, in the first place, to the purpose and nature of the proceedings, it must be noted that the action brought against the decision at issue raised questions of law concerning the registration of a three-dimensional mark and questions of fact relating to the assessment of the characteristics of the sign in question in the light of the relevant conditions in that regard. In addition, before the appeal proceedings, the dispute arising from the application for a declaration of invalidity filed by Simba Toys had been examined first by the Cancellation Division of EUIPO, then by its Board of Appeal.

28 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 application at first instance, which contained eight 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 Article 7(1)(e) of Regulation No 40/94.

29 Furthermore, those questions gave rise to the Opinion of Advocate General Szpunar in Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849). Although the Court 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 Court for the purpose of assessing the functional nature of the sign at issue within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94, was not an obvious one, in particular as concerns the question of which elements the Court must take into consideration in analysing the functionality of a sign within the meaning of that provision (judgment of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraphs 35, 51 and 54).

30 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.

31 With regard, in the third place, to 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 Simba Toys’ 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, Simba Toys v EUIPO (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.

32 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 Court 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, Elf Aquitaine v Commission, C‑521/09 P-DEP, EU:C:2013:644, paragraph 22).

33 In that regard, the services provided in the context of the proceedings at first instance included, in essence, the production of a certain number of procedural documents, the drafting of an application and a reply — both of which contained several pleas and arguments — the preparation for the hearing and the submissions made during the hearing.

34 It is however important to recall that the lawyer for Simba Toys before the General Court had already represented that company before the Cancellation Division and the Board of Appeal of EUIPO. He therefore already had, at the stage of the proceedings at first instance, 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 action and the hearing before the General Court (see, to that effect, order of 3 September 2009, Industrias Químicas del Vallés v Commission, C‑326/05 P-DEP, not published, EU:C:2009:497, paragraph 53).

35 Furthermore, a lawyer, such as the one who represented Simba Toys before the General Court, who is highly qualified and experienced as far as concerns EU trade marks and whose hourly fee is EUR 420 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, Industrias Químicas del Vallés v Commission, C‑326/05 P-DEP, not published, EU:C:2009:497, paragraph 52).

36 In those circumstances, even though the matter was of a certain complexity, it must be stated that not all of the 125.75 hours of work, invoiced at an hourly rate of EUR 420, appear to have been objectively necessary for the purpose of the proceedings at first instance. This applies more specifically to a certain number of hours invoiced for research and analysis carried out in preparation of the application and the hearing as well as for services provided after the hearing.

37 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 filed in Simba Toys v EUIPO and Seven Towns (C‑30/15 P-DEP), relating to recoverable costs in respect of the appeal proceedings — so much so that it refers several times to the appeal proceedings instead of the proceedings at first instance.

38 In the light of all the foregoing considerations, the Court considers it appropriate, in the light of the criteria set out in paragraphs 22 and 24 of this order, to fix the total amount recoverable in respect of lawyer’s fees and costs incurred in respect of the proceedings at first instance and in respect of these taxation of costs proceedings at EUR 34 000.

39 Having regard to the fact that, by judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), EUIPO and Seven Towns were ordered to pay the costs relating, inter alia, to the proceedings at first instance, without the Court having determined how those costs were to be shared, each party must pay half that sum.

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

The total amount of the costs to be reimbursed by the European Intellectual Property Office (EUIPO) and Seven Towns Ltd to Simba Toys GmbH & Co. KG relating to the proceedings at first instance is fixed at EUR 34 000.





Luxembourg, 30 May 2018.





A. Calot Escobar C.G. Fernlund