ORDER OF THE GENERAL COURT (Second Chamber)

9 February 2011 (*)

(Procedure – Taxation of costs)

In Case T‑429/08 DEP,

Grain Millers, Inc., established in Eden Prairie, Minnesota (United States), represented by L.-E. Ström, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Grain Millers GmbH & Co. KG, established in Bremen (Germany), represented by R. Böckenholt, lawyer,

APPLICATION for taxation of the costs payable by the applicant to the intervener pursuant to the order of the President of the Seventh Chamber of the General Court of 7 September 2009 in Case T-429/08 Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), not published in the ECR,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,

Registrar: E. Coulon,

makes the following

Order

 Facts, procedure and forms of order sought

1        By application lodged at the Court Registry on 30 September 2008, the applicant, Grain Millers Inc., brought an action against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 July 2008 (Case R 1192/2007-2) relating to opposition proceedings between Grain Millers GmbH & Co. KG and the applicant (‘the contested decision’).

2        Grain Millers GmbH & Co. KG (‘the intervener’) intervened in the proceedings, contending that the action should be dismissed and the applicant ordered to pay the costs.

3        By letter of 19 May 2009, the applicant informed OHIM that it was withdrawing its Community trade mark application.

4        By letter lodged at the Court Registry on 30 July 2009, the applicant informed the Court, in accordance with Article 99 of the Rules of Procedure of the General Court, that it was discontinuing its action.

5        By order of 7 September 2009, the President of the Seventh Chamber of the General Court removed the case from the register of the Court and ordered the applicant to bear the costs pursuant to Article 87(5) of the Rules of Procedure.

6        By letter of 11 September 2009, the intervener sought its costs from the applicant, which it assessed at EUR 5 008. That letter remained unanswered.

7        By application lodged at the Court Registry on 7 October 2009, pursuant to Article 92(1) of the Rules of Procedure, the intervener applied for taxation of costs and requested that the Court fix the amount of recoverable costs to be paid by the applicant at EUR 5 008.

8        By document lodged at the Court Registry on 27 November 2009, the applicant requested that that application be refused and the amount of costs limited to a maximum of EUR 1 307.

 Law

 Arguments of the parties

9        Since the applicant has not only discontinued its action before the General Court, but also withdrawn its Community trade mark application, the intervener submits that the applicant owes it the costs of the proceedings before the Court and the costs of the opposition and appeal proceedings before OHIM. In accordance with Article 81(3) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 85(3) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), the withdrawal of the Community trade mark application ‘supersedes’ the orders as to costs in the decisions of the Opposition Division of OHIM and in the contested decision.

10      The amount claimed by the intervener, namely, EUR 5 008, corresponds to the sum of the costs of the opposition proceedings before OHIM, the proceedings before the Board of Appeal of OHIM and the proceedings before the General Court, which it has assessed at EUR 650, EUR 1 350 and EUR 3 008, respectively. That last amount is obtained by adding the representation costs for 10 hours of work carried out at EUR 265 per hour, namely, EUR 2 650, to the costs of postage, photocopying and facsimile, calculated at EUR 358.

11      The applicant disputes, first, the interpretation of Article 81(3) of Regulation No 40/94 as put forward by the intervener. It submits that the contested decision should be upheld in relation to the costs incurred in the proceedings before OHIM. As an order was made in that decision for costs to be shared, the applicant is not liable for any amount in respect of those proceedings.

12      Second, the applicant submits that the representation costs before the General Court should be halved, since all pleadings and supporting material were, with only minor adjustments, also submitted to the Court in the proceedings which gave rise to the judgment of 9 July 2010 in Case T-430/08 Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), not published in the ECR.

13      Third, the postage, photocopying and facsimile costs claimed by the intervener are excessive and should therefore be reduced by 80%, that is to say, to EUR 72.

 Findings of the Court

14      Under Article 92(1) of the Rules of Procedure, if there is a dispute concerning the costs to be recovered, the General Court hearing the case, on application by the party concerned and after hearing the opposite party, is to make an order, from which no appeal is to lie.

15      Under Article 91(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 to be regarded as recoverable costs. It follows from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the General Court and, second, to those which were necessary for that purpose (see the order in Case T-342/99 DEP Airtours v Commission [2004] ECR II‑1785, paragraph 13 and the case-law cited).

16      As regards proceedings relating to intellectual property rights, Article 136(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 and costs incurred for the purposes of the production, prescribed by the second subparagraph of Article 131(4) of the Rules of Procedure, of translations of pleadings or other documents into the language of the case are also to be regarded as recoverable costs (order of 28 September 2009 in Case T-420/03 DEP El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (BoomerangTV), not published in the ECR, paragraph 11).

17      In the present case, the intervener seeks reimbursement of the costs of both the proceedings before OHIM and those before the General Court.

 Costs of the proceedings before the Opposition Division

18      As is apparent from the clear wording of Article 136(2) of the Rules of Procedure, the General Court does not have jurisdiction to adjudicate on the costs of the proceedings before the Opposition Division of OHIM. Consequently, the intervener’s request that the applicant be ordered to pay the costs of the proceedings before the Opposition Division must be declared inadmissible (judgment of 10 December 2008 in Case T‑290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 60).

 Costs of the proceedings before the Board of Appeal

19      It is apparent from Article 82(1) of Regulation No 40/94 (now Article 86(1) of Regulation No 207/2009) that any final decision of OHIM fixing the amount of costs is to be enforceable.

20      In accordance with Article 62(3) of Regulation No 40/94 (now Article 64(3) of Regulation No 207/2009), the decisions of the Boards of Appeal are to take effect only as from the date of expiration of the period referred to in Article 63(5) of Regulation No 40/94 (now Article 65(5) of Regulation No 207/2009) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action (order of 9 November 2009 in Case T‑325/06 DEP Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraphs 21 and 22).

21      A decision of the Board of Appeal duly contested before the General Court generally becomes final also following a discontinuance under Article 99 of the Rules of Procedure, since it entails the applicant’s withdrawal from the proceedings before the General Court.

22      However, the discontinuance of 30 July 2009 did not have the effect of rendering the contested decision final.

23      It is clear from Article 44(1) of Regulation No 40/94 (now Article 43(1) of Regulation No 207/2009) in conjunction with Article 81(3) of that regulation that a trade mark applicant may at any time withdraw his Community trade mark application and that that withdrawal concludes the proceedings before OHIM.

24      In the present case, the Community trade mark application was withdrawn by means of the applicant’s letter of 19 May 2009, that is to say, well before the abandonment of proceedings before the Court. In those circumstances, it was the withdrawal of the Community trade mark application which terminated the proceedings before OHIM. The discontinuance of 30 July 2009 therefore has an effect only in relation to the proceedings before the Court.

25      It follows that costs incurred before the Board of Appeal of OHIM must be awarded in accordance with Article 81(3) of Regulation No 40/94, which provides that the party who terminates the proceedings by withdrawing the Community trade mark application is to bear the fees and the costs incurred by the other party as stipulated in Article 81(1) and (2).

26      Article 81(1), (2) and (6) of Regulation No 40/94 (now Article 85(1), (2) and (6) of Regulation No 207/2009) provides:

‘1.      The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs … incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation [Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94, as amended (OJ 1995 L 303, p. 1)].

2.      However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs.

6.      The … Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to [OHIM] and the representation costs …’

27      In the present case, the intervener’s claim is limited to the fees paid to OHIM and the representation costs. However, it is not apparent from the file of the administrative proceedings before OHIM that the Board of Appeal fixed the amount of costs to be paid following the withdrawal of the Community trade mark application by the applicant; nor, moreover, has this been contended by the parties.

28      In the absence of a decision by OHIM, and in accordance with Article 136(2) of the Rules of Procedure, it is for the General Court itself to fix the amount of those costs.

29      In that connection, the Court finds that, in the present case, reasons of equity do not dictate that the costs incurred before the Board of Appeal should be shared. Accordingly, Article 81(1) of Regulation No 40/94 should be applied.

30      As regards, first, the fees incurred by the intervener in the proceedings before the Board of Appeal, these amount to EUR 800, in accordance with Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to OHIM (OJ 1995 L 303, p. 33), in the version applicable at the time when the appeal was brought.

31      The costs which may be recovered in respect of the appeal fees incurred by the intervener must therefore be fixed at EUR 800.

32      As regards, second, representation costs, Rule 94(2), (3) and (7) of Regulation No 2868/95 provides:

‘2.      Apportionment of costs pursuant to Article 81(3) and (4) of the Regulation shall be dealt with in a decision on costs by the Opposition Division, the Cancellation Division or the Board of Appeal.

3.      … Where the amount of the costs is fixed pursuant to Article 81(6), first sentence, of the Regulation, representation costs shall be awarded at the level laid down in paragraph 7(d) of this Rule and irrespective of whether they have been actually incurred.

7.      Subject to paragraph 3 of this Rule, costs essential to the proceedings and actually incurred by the successful party shall be borne by the losing party in accordance with Article 81(1) of [Regulation No 40/94] on the basis of the following maximum rates:

(d)      cost of representation …

(v)      of the appellant in appeal proceedings: EUR 550;

(g)      the losing party shall not be obliged to reimburse the successful party for any costs, expenses and fees other than those referred to in [subparagraphs] (a) to (f).’

33      In the present case, the costs must be fixed in accordance with Article 81(6), first sentence, of Regulation No 40/94, since they are limited to the fees paid to OHIM and the representation costs. Consequently, in accordance with Rule 94(3), final sentence, of Regulation No 2868/95, representation costs must be awarded at the level laid down in paragraph 7(d) of that rule, that is to say, EUR 550.

34      It follows that the recoverable costs in respect of the proceedings before the Board of Appeal of OHIM must be fixed at a total amount of EUR 1 350.

 Costs of the proceedings before the General Court

35      As regards, in the first place, the representation costs which may be recovered, 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 to be recovered from the party ordered to pay the costs. When ruling on an application for taxation of costs, the General Court is not obliged to take account of any national scale of lawyers’ fees or any agreement in that regard between the party concerned and his agents or advisers (see the order in Airtours v Commission, cited in paragraph 15 above, paragraph 17 and the case-law cited).

36      It has also consistently been held that, in the absence of applicable European Union provisions 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 European Union 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 interests which the parties had in the proceedings (see, to that effect, the order in Airtours v Commission, cited in paragraph 15 above, paragraph 18 and the case-law cited).

37      It is on the basis of those factors that the amount of the recoverable costs in this case should be determined.

38      As regards the purpose and nature of the proceedings, their significance from the point of view of European Union law and the difficulties presented by the case, it is apparent both from the contested decision and from the procedural documents exchanged by the parties before the General Court that the present case concerned the intervener’s opposition to the registration of the mark applied for by the applicant, and that the ground relied on in support of the opposition was the likelihood of confusion envisaged by Article 8(4) of Regulation No 40/94. The present case raised the question, inter alia, as to whether and under what conditions an opposing party may in the context of that provision rely on a business name before it is even registered in the companies register of the Member State concerned.

39      The proceedings therefore had a certain significance from the point of view of European Union law, without, however, being particularly or unusually complex.

40      As regards the financial interests involved in the present case, the Court finds that, although the case clearly held a certain financial interest for the intervener, it cannot be regarded as being of unusual importance in the absence of concrete evidence adduced in support of this by the intervener (see, to that effect, the order of 7 January 2008 in Case T‑206/04 DEP Rodrigues Carvalhais v OHIM – Profilpas (PERFIX), not published in the ECR, paragraph 13).

41      As regards the amount of work generated by the proceedings for the intervener’s adviser, it is for the Courts of the European Union to take into consideration the work which is objectively necessary for all the legal proceedings (see the order in Airtours v Commission, cited in paragraph 15 above, paragraph 30 and the case-law cited).

42      In that connection, it is noteworthy, first, that the Board of Appeal devoted no less than 17 pages to dealing with the questions of law and of fact raised in the present case, and that the responses of OHIM and the intervener were 14 and 18 pages long respectively.

43      However, the parties did not have to submit either a reply or a rejoinder and no hearing was arranged.

44      Second, as regards the amount of work which the proceedings generated for the intervener’s adviser, it must be remembered that the ability of the Courts of the European Union to assess the value of work carried out is dependent on the accuracy of the information provided (see the order in Airtours v Commission, cited in paragraph 15 above, paragraph 30 and the case-law cited).

45      Clearly, in the present case, although the hourly rate is specified, the statement of costs is not broken down in detail according to the work carried out. In addition, the intervener has failed to produce any invoice, supporting document or fee note enabling the Court to establish that the fees claimed by it are justified.

46      The lack of more detailed information makes it especially difficult to verify the costs incurred for the purpose of the proceedings before the Court and those which were necessary for that purpose, and requires the Court to apply a strict test when assessing the fees recoverable in this case (see the order of 13 July 2010 in Case T‑27/09 DEP Stella Kunststofftechnik v OHIM – Stella Pack (Stella), not published in the ECR, paragraph 20 and the case-law cited).

47      In that connection, while the hourly rate of EUR 265 – which, moreover, the applicant has not challenged – does not appear disproportionate, the time purportedly spent on the proceedings before the Court, namely 10 hours, seems excessive in so far as, with only minor adjustments, the pleadings and supporting material in the present case were also submitted to the Court by the intervener in Case T‑430/08, which raised similar questions of law and fact.

48      Such a similarity between the cases necessarily resulted in an economy of scale (see, to that effect, the order of 27 April 2009 in Case T-263/03 DEP Mülhens v OHIM – Conceria Toska (TOSKA), not published in the ECR, paragraph 17 and the case-law cited).

49      In addition, it should be pointed out that the intervener’s lawyer had extensive knowledge of the two cases as he had represented the intervener also during the proceedings before OHIM. That factor in any event facilitated his work and reduced the time which had to be devoted to preparation of the procedural documents (see the orders of 15 December 2004 in Case T-129/01 DEP José Alejandro v OHIM – Anheuser-Busch (BUDMEN), not published in the ECR, paragraph 31; in Joined Cases T‑226/00 DEP and T‑227/00 DEP Nan Ya Plastics v Council [2003] ECR II-685, paragraph 42; and in Airtours v Commission, cited in paragraph 15 above, paragraph 29).

50      Taking into account the work required to lodge a pleading in a similar case, the Court considers that the working time spent on the present case by the intervener’s lawyer will be fairly assessed by reducing by 30% the time which the intervener alleges was spent, resulting in a total working time of seven hours (see, to that effect, the order of 19 March 2009 in Joined Cases T‑333/04 DEP and T‑334/04 DEP House of Donuts v OHIM – Panrico (House of donuts), not published in the ECR, paragraph 21).

51      Accordingly, the amount of representation costs before the General Court which are recoverable must be fixed at EUR 1 855.

52      As regards, in the second place, postage, photocopying and facsimile costs, estimated at EUR 358 by the intervener, the Court finds that that amount is not excessive, having regard, in particular, to Article 43(1) of the Rules of Procedure, which states that the original of every pleading, accompanied by all annexes referred to therein, is to be lodged together with five copies for the General Court and a copy for every other party to the proceedings. The intervener’s response including the annexes contains 57 pages and the proceedings in question involved two parties other than the intervener.

53      In the light of all the foregoing considerations, the Court considers that all the costs recoverable by the intervener will be fairly assessed by fixing their amount at EUR 3 563, which takes account of all the circumstances of the case up to the date of this order. Therefore, there is no need to rule separately on the expenses incurred for the purpose of the present proceedings (see, to that effect, the order in Case C-104/89 DEP Mulder and Others v Council and Commission [2004] ECR I‑1, paragraph 87).

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby orders:

The total amount of the costs payable by Grain Millers, Inc. to Grain Millers GmbH & Co. KG is fixed at EUR 3 563.

Luxembourg, 9 February 2011.

E. Coulon

       N.J. Forwood
Registrar

President