ORDER OF THE COURT (Eighth Chamber)

14 November 2013 ( *1 )

‛(Taxation of costs’

In Case C‑582/11 P‑DEP,

APPLICATION for taxation of recoverable costs on the basis of Article 145 of the Rules of Procedure, brought on 7 June 2013,

Schwaaner Fischwaren GmbH , established in Schwaan (Germany), represented by A. Jaeger-Lenz, Rechtsanwältin,

applicant,

v

Rügen Fisch AG , established in Sassnitz (Germany), represented by M. Geitz, Rechtsanwalt,

defendant,

THE COURT (Eighth Chamber),

composed of C.G. Fernlund, President of the Chamber, A. Ó Caoimh and C. Toader (Rapporteur), Judges,

Advocate General: Y. Bot,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1The subject-matter of this action is the taxation of the costs incurred by Schwaaner Fischwaren GmbH (‘Schwaaner Fischwaren’) in Case C‑582/11 P Rügen Fisch v OHIM .

The appeal

2By an appeal, lodged on 22 November 2011 under Article 56 of the Statute of the Court of Justice of the European Union, Rügen Fisch AG (‘Rügen Fisch’) sought to have set aside the judgment of the General Court of the European Union of 21 September 2011 in Case T‑201/09 Rügen Fisch v OHIM – Schwaaner Fischwaren (SCOMBER MIX) (‘the judgment under appeal’), by which the General Court had, first, dismissed its action for annulment of the decision of 20 March 2009 of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in Case R 230/2007-4 (‘the contested decision’) upholding an application for a declaration of partial invalidity of the Community trade mark SCOMBER MIX and, secondly, ordered it to pay the costs.

3By order of 10 July 2012 in Case C‑582/11 P Rügen Fisch v OHIM , the Court dismissed the appeal as being in part clearly inadmissible and in part clearly unfounded. Furthermore, the Court ordered Rügen Fisch to pay the costs incurred by OHIM and by Schwaaner Fischwaren.

4Since no agreement has been reached between Schwaaner Fischwaren and Rügen Fisch on the amount of the recoverable costs relating to those appeal proceedings, Schwaaner Fischwaren has made the present application.

Arguments of the parties

5Schwaaner Fischwaren requests the Court to fix the amount of the costs to be recovered at EUR 18 875.85. This sum is broken down as follows:

—

EUR 14 040 corresponding to lawyers’ fees;

—

EUR 2 801.10 corresponding to value added tax (‘VAT’);

—

EUR 1 339.84 for travel costs;

—

EUR 367.24 representing miscellaneous costs and corresponding, in particular, to copying costs and postal and telecommunications costs.

6In that regard, Schwaaner Fischwaren claims that those costs were necessarily incurred and are not excessive in the light, in particular, of the considerable economic significance of the case for its business. The freedom to use descriptive words in the fishing industry is of essential importance for the production, distribution and advertising carried out by that company.

7Schwaaner Fischwaren also requests the Court to grant it EUR 300 in respect of the costs of the present taxation of costs proceedings.

8Rügen Fisch contends, principally, that Schwaaner Fischwaren must bear its own costs in accordance with Article 140(3) of the Rules of Procedure. In that regard, it contends that the intervention of Schwaaner Fischwaren, in support of OHIM, before the General Court was not necessary, and neither was its intervention as another party to the appeal proceedings, since, in particular, that undertaking put forward arguments which were, to a very large extent, similar to those of OHIM.

9In the alternative, Rügen Fisch contends that the costs for which taxation is sought are not recoverable. In particular, it maintains that some of the invoices, annexed by Schwaaner Fischwaren to its application, predate the date when the appeal giving rise to the order in Rügen Fisch v OHIM was brought. Therefore, the advisers’ fees referred to in those invoices correspond in reality to fees in connection with the invalidity proceedings before OHIM and the Board of Appeal of OHIM.

10Rügen Fisch contests also the possibility of Schwaaner Fischwaren relying on legal representation fees invoiced by two lawyers, given that, since the case is of average complexity, the employment of a single lawyer was sufficient to ensure the representation of Schwaaner Fischwaren.

11Rügen Fisch also contends that the amounts claimed for VAT cannot be covered by the present application, since Schwaaner Fischwaren, as an undertaking which is accountable for VAT, is able to obtain the reimbursement or deduction of that tax from the German tax authorities.

12Rügen Fisch contests moreover the number of hours and the hourly rate invoiced by Schwaaner Fischwaren’s advisers. In the light of the average complexity of the case, the fees claimed in that regard are excessive.

13Finally, Rügen Fisch considers that the sign ‘SCOMBER MIX’, which was the subject of the invalidity proceedings, is not of essential importance, from an economic point of view, to Schwaaner Fischwaren.

Findings of the Court

Admissibility of the application

14Concerning the admissibility of the present application, it should be noted that, contrary to what is contended by Rügen Fisch, the latter was ordered by the Court, in the order in Rügen Fisch v OHIM , to pay the costs relating to the appeal proceedings incurred both by OHIM and by Schwaaner Fischwaren, in accordance with Article 69(2) of the Rules of Procedure of the Court, in the version in force at the date of that order.

The amount of recoverable costs

16Under Article 144(b) of the Rules of Procedure, 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.

The costs incurred for the purposes of the proceedings before the General Court

18Concerning the present application, it is necessary to note, as Rügen Fisch in essence contended, that a significant proportion of the invoices submitted by Schwaaner Fischwaren relate to the services of advisers predating the delivery of the judgment under appeal, namely 21 September 2011, including costs connected with the making of written submissions and the representation of Schwaaner Fischwaren as an intervener before the General Court at the hearing of 9 March 2011. Likewise, certain fee notes concern advice provided in the context of the invalidity proceedings brought before the Board of Appeal of OHIM.

19In that regard, Rügen Fisch’s action was dismissed in the judgment under appeal and, in that judgment, the General Court ruled on the costs relating to that action. Furthermore, by the order in Rügen Fisch v OHIM , the Court dismissed the appeal brought by Rügen Fisch against that judgment. Therefore, since the judgment of the General Court, including its ruling on costs, has not been set aside, it is for the General Court to determine the amounts recoverable following the proceedings before it which culminated in the judgment under appeal and in which Schwaaner Fischwaren was given leave to intervene (see, to that effect, order of 11 January 2008 in Joined Cases C‑105/04 P‑DEP and C‑113/04 P‑DEP CEF and CEF Holdings v Nederlandse Federatieve Vereniging voor de Groothandel op Elektrotechnisch Gebied and Technische Unie , paragraph 22).

20It follows that, concerning the costs in connection with that action which Schwaaner Fischwaren would like to have taxed, although they might possibly be the subject of a separate application before the General Court in the circumstances provided for in Articles 87 to 92 of that court’s Rules of Procedure and without prejudice to Article 85 of those rules, such costs cannot however form the subject-matter of the present application.

21Therefore, as regards only the invoices submitted by Schwaaner Fischwaren which correspond to advice provided after the delivery of the judgment under appeal, those invoices are six in number and the total maximum amount involved is EUR 4 052.77.

The costs incurred for the purposes of the proceedings before the Court of Justice

22The Court, in fixing the recoverable costs, takes account of all the circumstances of the case up to the making of the order on taxation of costs, including the expenses necessarily incurred in relation to the taxation of costs proceedings (orders of 20 May 2010 in Joined Cases C‑12/03 P-DEP and C‑13/03 P-DEP Tetra Laval v Commission , paragraph 42 and the case-law cited, and of 12 October 2012 in Case C‑254/09 P-DEP Zafra Marroquineros v Calvin Klein Trademark Trust , paragraph 22).

23In that regard, it should be noted that 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 (orders in Tetra Laval v Commission , paragraph 43 and the case-law cited; and in TDK Kabushiki Kaisha v Aktieselskabet af 21. november 2001 , paragraph 15).

26It is necessary to assess in the light of those criteria the amount of the costs recoverable by Schwaaner Fischwaren which are connected with the appeal procedure which resulted in the order in Rügen Fisch v OHIM .

27Regarding the economic interests at issue, it is not disputed, in the light of the significance of trade marks in business, that Schwaaner Fischwaren clearly had an interest in the judgment under appeal – by which the General Court dismissed the Rügen Fisch’s action against the contested decision – being upheld on appeal. By that decision, the Board of Appeal of OHIM upheld the application, brought by Schwaaner Fischwaren, for a declaration of partial invalidity of the Community trade mark SCOMBER MIX, in that case for goods in Class 29 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, namely ‘tinned fish; preserved fish; preparations of fish, also using spices, spice extracts, salads and vegetables; prepared and semi-prepared fish dishes’.

28As regards the subject-matter 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 of fact. Moreover, before the appeal, the dispute arising from the application brought by Schwaaner Fischwaren for a declaration of invalidity of the trade mark SCOMBER MIX had previously required consideration by, successively, the Invalidity Division of OHIM, the Board of Appeal of OHIM and the General Court.

29With regard to the importance of the dispute from the point of view of European Union law, it is clear that the appeal was based on one ground of appeal and that it raised no new point of law or particular complexity. Furthermore, the Court dismissed that appeal as being in part clearly inadmissible and in part clearly unfounded, by an order made on the basis of Article 119 of the Rules of Procedure, in the version in force at the time.

30With regard to the amount of work supplied, it is apparent, in the light of the above findings, that the production, by Schwaaner Fischwaren, of the response in the appeal resulting in the order in Rügen Fisch v OHIM did not necessitate an analysis of great depth.

31Finally, concerning the amounts claimed in respect of VAT, it should be noted that since Schwaaner Fischwaren is accountable for VAT, it is entitled to recover, from the tax authorities, VAT paid on goods and services purchased by it. VAT thus does not represent an expense as such for that undertaking and, accordingly, it cannot claim, in the present case, reimbursement of VAT paid on the costs (see, to that effect, order in Norma Lebensmittelfilialbetrieb v Yorma’s , paragraph 24).

32In the light of all of the foregoing, the sum of EUR 3 000 must be considered reasonable and objectively necessary to ensuring the defence of Schwaaner Fischwaren’s interests in the appeal resulting in the order in Rügen Fisch v OHIM .

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

The total amount of costs which Rügen Fisch AG must reimburse to Schwaaner Fischwaren GmbH in respect of the appeal resulting in the order of 10 July 2012 in Case C‑582/11 P Rügen Fisch v OHIM is fixed at EUR 3 300.

[Signatures]

( *1 ) Language of the case: German.