CELEX: 62017CO0693
Language: en
Date: 2020-06-11 00:00:00
Title: Order of the Court (Tenth Chamber) of 11 June 2020.#Ferrero SpA v BMB sp. z o.o.#Taxation of costs.#Case C-693/17 P-DEP.

ORDER OF THE COURT (Tenth Chamber)
11 June 2020  (*)
(Taxation of costs)
In Case C‑693/17 P‑DEP,
APPLICATION for the taxation of recoverable costs under Article 145 of the Rules of Procedure of the Court of Justice, brought on 18 November 2019,

Ferrero SpA, established in Alba (Italy), represented by M. Kefferpütz, Rechtsanwalt,
applicant,
v

BMB sp. z o.o., established in Grójec (Poland), represented by K. Czubkowski, radca prawny,
defendant,
THE COURT (Tenth Chamber),
composed of I. Jarukaitis, President of the Chamber, E. Juhász and C. Lycourgos (Rapporteur), Judges,
Advocate General: E. Tanchev,
Registrar: A. Calot Escobar,
having regard to the written procedure,
after hearing the Advocate General,
makes the following

Order

1        The present case concerns the taxation of the costs incurred by Ferrero SpA in Case  C‑693/17 P.

2        By an appeal brought on 10 December 2017, BMB sp. z o.o. (‘BMB’) asked the Court to set aside the judgment of the General Court of the European Union of 3 October 2017, BMB v  EUIPO — Ferrero (Container for sweets) (T‑695/15, not published, ‘the judgment under appeal’, EU:T:2017:684), by which the General Court dismissed  its action for annulment of the decision of the  Third Board of Appeal of the European Intellectual Property Office (EUIPO) of 8 September 2015 (Case R 1150/2012‑3)  relating to invalidity proceedings between Ferrero and BMB.

3        By judgment of 6 March 2019, BMB v  EUIPO (C‑693/17 P, not published, EU:C:2019:176), the Court dismissed that appeal and ordered BMB to pay the costs.

4        No agreement having been reached between Ferrero and BMB on the amount of the recoverable costs relating to the appeal proceedings, Ferrero brought the present  application under Article 145 of the Rules of Procedure of the Court of Justice.
 Forms of order sought by the parties

5        Ferrero requests that the Court fix the amount of recoverable costs to be paid by BMB  in respect of the expenses incurred in the proceedings in Case C‑693/17 P at EUR 22 246.34.

6        BMB contends that the Court should dismiss the application.
 Arguments of the parties

7        Ferrero submits that, in the light of the significance of the proceedings and the particular circumstances of the case, in particular, legal issues which have not been settled and new legal issues which have been raised, the expenses incurred,  in the amount of EUR 22 246.34,  in respect of the analysis of the case file, preparation of the statement in intervention and the request for a hearing, coordinating with the intervener in the proceedings and analysing the judgment under appeal, along with correspondence and translation expenses,  must be regarded as being not only  necessary, but also appropriate. That is particularly so given that the costs incurred cover a period of more than one year.

8        Ferrero recalls that BMB’s design was challenged on the basis of two intellectual property rights which differ in nature and subject matter, so that the invalidity proceedings in respect of that design were  far from being an ordinary case.

9        Ferrero submits that the differences in the subject matter of the intellectual property rights at issue necessitated the examination and submission of arguments in respect of legal issues, such as the standard of assessment applicable to the ground for invalidity provided for in Article 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), in respect of which there is no settled case-law of the General Court or the Court of Justice.

10      Furthermore, according to Ferrero, BMB claimed that, contrary to the starting premiss of the General Court in the judgment under appeal, Ferrero’s international registration, done in Italy on 12 March 1974, should be regarded as a figurative mark rather than a three-dimensional mark, which necessitated in-depth research on the history of the mark and on Italian legislation and case-law on three-dimensional marks, which had to be translated, as well as, in particular, consultation of a lawyer qualified in Italian law. Moreover, Ferrero submits that, as BMB’s design was challenged on the basis of the extension to France of Ferrero’s international registration, it was also obliged to conduct research on French case-law, which also had to be translated.  

11      BMB submits that Ferrero did not incur  expenses that may be regarded as recoverable. All of the invoices enclosed with the application for the taxation of costs were issued in the name of Soremartec SA, it being common ground that that company was not a party to the proceedings before the Court. Therefore, BMB contends that Ferrero has not established that it incurred expenses for the purpose of those proceedings. 

12      In any event, BMB submits that the expenses presented by Ferrero are excessive and that some of those expenses were not incurred for the purpose of the proceedings before the Court.

13      According to BMB, it is not clear what the connection is between the subject matter of the proceedings before the Court and certain services described in Ferrero’s application, in particular,  as regards the steps  taken after the judgment under appeal was handed down, the descriptions of those services also  being very  terse. Ferrero referred to alleged drafting, translation and research costs which do not appear in any of the invoices annexed to the application for the taxation of costs. 

14      Furthermore, BMB submits that a number of the services referred to in the application for the taxation of costs were not necessary for the purpose of the proceedings before the Court. In that regard, BMB maintains that, having regard to the significance of the case from the point of view of EU law, the difficulties involved, the amount of work generated by the case for the advisers involved and the economic interests which the parties had in the proceedings, the costs  applied for by Ferrero are excessive.
 Findings of the Court

15      Under Article 144(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’, constitute recoverable costs.

16      It is thus clear from the wording of that provision that the remuneration of a lawyer is one of the expenses ‘necessarily incurred’ within the meaning of that provision. It also follows that the recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the Court and, second, to those  which were necessary for that purpose (order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 23).

17      Furthermore, in fixing the recoverable costs, the Court takes account of all the circumstances of the case up to the delivery of the order on the taxation of the costs (order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P‑DEP, not published, EU:C:2019:1148, paragraph 24).

18      In the absence of provisions of EU law laying down fee scales, 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, the difficulties presented by them, the amount of work generated by the case for the agents or advisers involved and the economic interests which the parties had in the proceedings (order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 25).

19      It is in the light of all those factors that the amount of the recoverable costs in the present case must be assessed.

20      As a preliminary matter, the Court rejects BMB’s claim that Ferrero failed to demonstrate that it incurred costs for the purpose of the appeal proceedings on the ground that all of the invoices annexed to the application for the taxation of costs were issued in the name of Soremartec, which  the parties agree was not a party to the proceedings before the Court.

21      First, it is apparent that those invoices contain all of the information necessary to ascertain what they cover, namely the fees that the law firm to which Mr Kefferpütz, the lawyer who represented Ferrero before the Court, belongs, contends are  payable by that party for the purpose of the appeal proceedings in Case C‑693/17 P. Secondly, it is clear from the letter of 9 October 2019, in which BMB is requested to reimburse the expenses claimed to be payable  in respect of the costs in those proceedings, that Soremartec is a subsidiary of Ferrero. Therefore, the fact that the name of that subsidiary  company appears in those invoices must be regarded as  being  solely for the purpose of the payment of the fees due by Ferrero.

22      In the first place, as regards the subject matter and the nature of the dispute, it should be noted that the proceedings concerned are appeal proceedings which are, by nature, limited to questions of law and do not concern themselves with findings as to the facts or the assessment of the facts of the dispute (order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 27).

23      In the second place, as regards the significance of the case from the point of view of EU law and the difficulties presented by it, it must be pointed out that the appeal brought by BMB seeking to have  set aside the judgment under appeal,  by which the General Court dismissed its action against the decision of the Third Board of Appeal of EUIPO of 8 September 2015 (Case R 1150/2012-3), relied on a single ground comprising four parts and  alleging infringement of Article 25(1)(e) of Regulation No 6/2002.

24      First, the Court notes that the first three parts of the single ground of appeal were dismissed by the Court as inadmissible, BMB having sought to  obtain a fresh appraisal of the General Court’s assessment of the facts  or having merely reproduced an argument already made  before  that court.

25      Secondly, as regards the fourth part of the single ground of appeal, the Court pointed out, inter alia, that BMB did not raise any specific argument regarding an error in law allegedly made by the General Court in its interpretation of Article 25(1)(e) of Regulation No 6/2002. Furthermore, citing settled case-law, the Court added that, in any event, the judgment of the tribunal de grande instance de Paris (Regional Court, Paris, France) relied on by BMB in support of that part,  handed down in a dispute in connection with trade  mark infringement proceedings, cannot bind the EUIPO adjudicating bodies in invalidity proceedings such as those in question in Case C‑693/17 P, as neither the parties nor the subject matter of those two sets of proceedings are the same.

26      Therefore, BMB’s single ground of appeal was not of any particular complexity and nor did it require in-depth analysis, it having been addressed as a matter of mere application of EU law, the interpretation of which followed from the Court’s existing case-law.

27      As regards, in the third place, the amount of work carried out, it must be recalled that, when fixing the amount of the recoverable costs, the Court should take account of the total number of hours of work which may appear to be objectively necessary for the purpose of the proceedings, irrespective of the number of lawyers amongst whom the work was shared (order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 35).

28      In that regard, it is apparent, having regard to the foregoing considerations, that the corresponding workload was not particularly heavy, since the drafting of the response to the appeal brought by BMB and of the request for a hearing necessitated examination of only one question of law relating to the interpretation of Article 25(1)(e) of Regulation No 6/2002, and questions of fact did not arise at the appeal stage.

29      Furthermore, lawyers who claim to be highly qualified and very experienced in design law and whose services are invoiced at an hourly rate from EUR 270 to EUR 300 are presumed to handle the cases entrusted to them efficiently and speedily (see, to that effect,  order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 37).

30      In that regard, the lawyers instructed by Ferrero had already acquired in-depth knowledge of Case C‑693/17 P during both the administrative proceedings before EUIPO and the proceedings before the General Court, as they had already represented that party in both sets of proceedings, which should not only have facilitated their work, but also reduced the time necessary for the examination of the appeal and the drafting of the statement in intervention and the request for a hearing.

31      Under those circumstances,  the drafting of Ferrero’s statement in intervention and request for a hearing should not have entailed a particularly high workload. It follows that the 57.3 hours of work done by the lawyers instructed by Ferrero in the appeal do not appear in their entirety to have been ‘necessarily incurred for the purpose of the proceedings’, within the meaning of Article 144(b) of the Rules of Procedure.

32      In the fourth place, as regards the economic interests at stake in Case C‑693/17 P, it must be pointed out that Ferrero had a definite interest in BMB’s appeal being rejected. However, the fact remains that no evidence was  submitted to the Court to indicate that that case presented an economic interest of an unusual nature for Ferrero (see, by analogy, order of 19 December 2019, Unitec Bio and Others v Council, C‑602/16 P-DEP, not published, EU:C:2019:1148, paragraph 40).

33      In the light of all of the foregoing considerations, the recoverable costs in Case C‑693/17 P may be assessed on an equitable basis at a  total amount of EUR 7 000.

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

The total amount of costs to be paid by BMB sp. z o.o. to Ferrero SpA in Case C‑693/17 P is fixed at EUR 7 000.

Luxembourg, 11 June 2020.

A. Calot Escobar
 
I. Jarukaitis

Registrar
 
      President of the Tenth Chamber

*      Language of the case: English.