Orders nº T-601/17 DEP of Tribunal General de la Unión Europea, February 24, 2021

• Resolution Date: February 24, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-601/17 DEP

(EU trade mark - Procedure - Taxation of costs)

In Case T-601/17 DEP,

Rubik’s Brand Ltd, established in London (United Kingdom), represented by K. Szamosi and M. Borbás, lawyers,

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

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

APPLICATION for taxation of costs further to the judgment of 24 October 2019, Rubik’s Brand v EUIPO - Simba Toys (Shape of a cube with surfaces having a grid structure) (T-601/17, not published, EU:T:2019:765),

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins (Rapporteur), President, V. Kreuschitz and Z. Csehi, Judges,

Registrar: E. Coulon,

makes the following

Order

Facts, procedure and forms of order sought

1 On 1 April 1996, Seven Towns Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 The mark in respect of which registration was sought is the three-dimensional sign reproduced below:

3 The goods in respect of which registration was sought are in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Three-dimensional puzzles’.

4 On 6 April 1999, the contested mark was registered as an EU trade mark under number 162784. It was renewed on 10 November 2006 and 14 February 2016. On 12 February 2014, the transfer of the contested mark to the applicant, Rubik’s Brand Ltd, was entered in the EUIPO register.

5 On 15 November 2006, the intervener, Simba Toys GmbH & Co. KG, filed an application for a declaration of invalidity of the contested mark pursuant to Article 51(1)(a) of Regulation No 40/94 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a) to (c) and (e) of Regulation No 40/94 (now Article 7(1)(a) to (c) and (e) of Regulation 2017/1001).

6 By decision of 14 October 2008, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.

7 On 23 October 2008, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 66 to 71 of Regulation 2017/1001), in support of which it alleged infringement of Article 7(1)(a) to (c) and (e) of Regulation No 40/94.

8 By decision of 1 September 2009 (‘the first decision’), delivered in Case R 1526/2008-2, the Second Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the appeal. It found, inter alia, that the registration of the contested mark was not contrary to Article 7(1)(e)(ii) of Regulation No 40/94 (now Article 7(1)(e)(ii) of Regulation 2017/1001).

9 By application lodged at the Registry of the General Court on 6 November 2009, the intervener brought an action for annulment of the first decision. That case was registered as Case T-450/09.

10 In support of the action, the intervener relied on eight pleas in law, the second of which alleged infringement of Article 7(1)(e)(ii) of Regulation No 40/94.

11 By judgment of 25 November 2014, Simba Toys v OHIM - Seven Towns (Shape of a cube with surfaces having a grid structure) (T-450/09, EU:T:2014:983) (‘the original judgment’), the General Court dismissed the action and ordered the intervener to pay the costs.

12 By application lodged at the Court Registry on 26 January 2015, the intervener brought an appeal against the original judgment, in support of which it relied, inter alia, on a first ground of appeal, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94 by the General Court.

13 By judgment of 10 November 2016, Simba Toys v EUIPO (C-30/15 P, ‘the judgment on appeal’, EU:C:2016:849), the Court of Justice, having upheld the first ground of appeal, set aside the original judgment, itself gave final judgment in the matter by annulling the first decision and ordered the applicant and EUIPO to bear their own costs and to pay the costs incurred by the intervener relating both to the proceedings at first instance in Case T-450/09 and to the appeal.

14 Further to the judgment on appeal, by decision of 6 March 2017 the Presidium of the Boards of Appeal of EUIPO referred the case to the First Board of Appeal as Case R 452/2017-1.

15 By decision of 19 June 2017 (‘the contested decision’), the First Board of Appeal of EUIPO, after finding that the contested mark had been registered in breach of Article 7(1)(e)(ii) of Regulation No 40/94, upheld the appeal in Case R 452/2017-1, annulled the decision of the Cancellation Division of 14 October 2008 and declared that mark invalid in respect of the goods for which it had been registered.

16 By application lodged at the Registry of the General Court on 31 August 2017, the applicant brought an action for annulment of the contested decision. That case was registered as Case T-601/17 (‘the main proceedings’).

17 The intervener intervened in support of the form of order sought by EUIPO in the main proceedings and claimed that the General Court should dismiss the action and order the applicant to pay the costs.

18 EUIPO and the intervener submitted their responses on 20 and 14 November 2017 respectively.

19 By orders of 30 May 2018, Simba Toys v EUIPO and Seven Towns (C-30/15 P-DEP, not published, EU:C:2018:353) and Simba Toys v EUIPO and Seven Towns (C-30/15 P-DEP2, not published, EU:C:2018:354), the Court of Justice ruled on the amount of recoverable costs relating to the appeal proceedings in Case C-30/15 P and the proceedings at first instance in Case T-450/09, respectively.

20 The hearing in the main proceedings was held on 23 January 2019. It began at 9:35 a.m. and ended at 10:52 a.m.

21 By judgment of 24 October 2019, Rubik’s Brand v EUIPO - Simba Toys (Shape of a cube with surfaces having a grid structure) (T-601/17, not published, EU:T:2019:765), the General Court (Eighth Chamber) dismissed the action and ordered the applicant to pay the costs.

22 By letter of 27 December 2019, the intervener’s representative asked the applicant’s representative to pay the recoverable costs, for a sum of EUR 29 931.28, broken down into an amount of EUR 29 440 for lawyer’s fees and an amount of EUR 491.28 for travel and subsistence costs.

23 By email of 9 January 2020, the applicant’s representative replied that the applicant had lodged an appeal against the judgment of 24 October 2019, Rubik’s Brand v EUIPO - Simba Toys (Shape of a cube with surfaces having a grid structure) (T-601/17, not published, EU:T:2019:765), which was therefore not yet final.

24 By order of 23 April 2020, Rubik’s Brand v EUIPO (C-936/19 P, not published, EU:C:2020:286), the Court of Justice did not allow that appeal.

25 By email of 19 May 2020, the applicant’s representative rejected the request of the intervener’s representative and offered to pay a sum of EUR 15 000.

26 By email of 26 May 2020, the intervener’s representative rejected the proposal of the applicant’s representative and repeated its request for reimbursement of 27 December 2019.

27 By email of 4 June 2020, the applicant’s representative again rejected that request.

28 In the absence of agreement between the parties as regards the amount of recoverable costs, the intervener, by document lodged at the Registry of the General Court on 24 June 2020, brought the present application for taxation of costs, pursuant to Article 170(1) of the Rules of Procedure of the General Court, by which it requests the Court to fix the amount of recoverable costs at EUR 30 831.28. That amount can be broken down, first, into an amount of EUR 29 440 in respect of lawyers’ fees, second, an amount of EUR 491.28 in respect of travel and subsistence costs incurred, and, third, an amount of EUR 900 in respect of costs relating to the present taxation of costs proceedings.

29 By document lodged at the Registry of the General Court on 28 August 2020, the applicant submitted its observations. It requests the General Court to fix the total amount of recoverable costs at EUR 15 000.

30 The composition of the Chambers of the General Court having been changed, pursuant to Article 27(5) of the Rules of Procedure, the Judge-Rapporteur was assigned to the Third Chamber, to which the present case was accordingly allocated.

Law

31 Under Article 170(1) to (3) of the Rules of Procedure, where there is a dispute concerning the costs to be recovered, the Court is, on application by the party concerned, to give its decision by way of an order from which no appeal is to lie, after giving the party concerned an opportunity to submit its observations.

32 According to Article 140(b) of the Rules of Procedure, expenses necessarily incurred by the parties for the purposes 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, first, to those incurred for the purpose of the proceedings before the Court and, second, to those which were necessary for that purpose (see order of 25 January 2007, Royal County of Berkshire Polo Club v OHIM - Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB), T-214/04 DEP, EU:T:2007:16, paragraph 13 and the case-law cited).

33 The amount of the costs recoverable in the present case...