ORDER OF THE COURT (First Chamber)

12 June 2008 (*)

(Taxation of costs)

In Case C-206/04 P-DEP,

APPLICATION for taxation of recoverable costs on the basis of Article 74 of the Rules of Procedure, brought on 30 January 2008,

Zirh International Corp., established in New York (United States of America), represented by L. Kouker, Rechtsanwalt,

applicant,

v

Mülhens GmbH & Co. KG, established in Cologne (Germany), represented by T. Schulte-Beckhausen, Rechtsanwalt,

defendant,

THE COURT (First Chamber),

composed of P. Jann, President of the Chamber, J.N. Cunha Rodrigues and M. Ilešič (Rapporteur), Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1        The subject-matter of this action is the taxation of the costs incurred by Zirh International Corp. (‘Zirh’) in the appeal in Case C-206/04 P.

2        On 21 September 1999, Zirh applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration as a Community trade mark of the word sign ‘ZIRH’ for various goods and services in Classes 3, 5 and 42 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.

3        Mülhens GmbH & Co. KG (‘Mülhens’) filed a notice of opposition to the registration of the trade mark in question for all the goods and services covered by that application, on account of the existence of an earlier Community trade mark. The opposition was rejected by the Opposition Division and thereafter the Second Board of Appeal of OHIM.

4        By its judgment in Case T-355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-791, the Court of First Instance of the European Communities upheld the decision of the Second Board of Appeal of OHIM.

5        By application lodged at the Registry of the Court of Justice on 6 May 2004, Mülhens brought an appeal under Article 56 of the Statute of the Court of Justice against that judgment.

6        By its judgment in Case C-206/04 P Mülhens v OHIM [2006] ECR I‑2717, the Court dismissed the appeal as being in part inadmissible and in part unfounded. It ordered Mülhens to pay the costs.

7        No agreement having been reached between Mülhens and Zirh on the amount of recoverable costs, Zirh brought the present action under Article 74 of the Rules of Procedure.

 Arguments of the parties

8        Zirh requests the Court to fix the recoverable costs at EUR 15 626.95. That sum is broken down as follows:

–        costs of representation before the Opposition Division of OHIM: EUR 250;

–        costs of representation before the Second Board of Appeal of OHIM: EUR 350;

–        postage, fax and correspondence costs: EUR 651.58;

–        fees for preparation for and attendance at the hearing before the Court of 6 October 2005: EUR 13 000 (32.5 hours multiplied by 400 euros), and

–        travel and accommodation expenses, including a flat-rate sum of EUR 142.50 applicable pursuant to the German Law on lawyers’ fees (Rechtsanwaltsvergütungsgesetz, BGBl. 2004 I, p. 718, 788) in relation to the hearing of 6 October 2005: EUR 1 375.37.

9        Zirh claims that the Court, by its judgment in Mülhens v OHIM, ordered Mülhens to reimburse the costs which it incurred.

10      While Mülhens objects to the inclusion among the recoverable costs of the sum of EUR 13 000 charged by Zirh for the preparation for and attendance at the hearing of 6 October 2005, it does not by contrast object to the other costs incurred by Zirh, amounting to EUR 2 626.95.

 Findings of the Court

11      Under Article 73(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 recoverable costs.

12      As Community law does not contain any provisions laying down a scale of fees, the Court must consider all the facts of the case, taking into account the purpose and nature of the proceedings, their significance from the point of view of Community law, as well as the difficulties presented by the case, the amount of work generated by the dispute for the agents and advisers involved and the financial interest which the parties had in the proceedings (see, inter alia, order in Case C-294/90 DEP British Aerospace v Commission [1994] ECR I-5423, paragraph 13, and order of 17 February 2004 in Case C-321/99 P-DEP DAI v ARAP and Others, not published in the ECR, paragraph 16).

13      The amount of the recoverable costs must be assessed in the light of those criteria.

14      It should be pointed out at the outset, first, that Mülhens does not object to the reimbursement to Zirh of costs of EUR 2 626.95 corresponding to the expenses other than those related to the preparation for and attendance at the hearing of 6 October 2005.

15      Second, the sum of EUR 13 000 claimed by Zirh for preparation for and attendance at that hearing includes Zirh’s lawyer’s fees but excludes the travel and subsistence expenses related to that hearing, which are part of the abovementioned sum of EUR 2 626.95.

16      It follows that it is necessary to determine, in the present case, whether the reimbursement of the abovementioned sum of EUR 13 000 claimed by Zirh complies with the criteria for the assessment of recoverable costs stated in paragraph 12 of this order.

17      First, with regard to the purpose and the nature of the proceedings, it must be recalled that the action before the court was an appeal. Such proceedings are, by their very nature, limited to points of law.

18      In that regard, it should be noted that, in the present case, the pleas in law relied on by Mülhens in support of its appeal were dismissed as inadmissible or unfounded, on the grounds that they concerned the assessment of the facts by the Court of First Instance or that the Court of First Instance had not misconstrued the effect of Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).

19      Second, it follows from the above considerations that the action was of limited significance from the point of view of Community law.

20      With regard to the amount of work carried out by Zirh’s lawyer, it must be placed in the context of the fact that Zirh was an intervener in Mülhens v OHIM. In general, the intervener’s part in the proceedings is made substantially easier by the work done by the party in support of which it has intervened (see order of 11 January 2008 in Cases C-105/04 P-DEP and C-113/04 P-DEP CEF City Electrical Factors and CEF Holdings v Nederlandse Federatieve Vereniging voor de Groothandel op Elektrotechnisch and Technische Unie, not published in the ECR, paragraph 33).

21      In addition, since it intervened at the hearing of 6 October 2005 in support of the form of order sought by OHIM, Zirh waived its right to lodge a response or a rejoinder in those proceedings, while OHIM, in support of which it intervened at the hearing, did lodge such documents. Moreover, Zirh’s intervention at the hearing of 6 October 2005 was brief, as it limited itself to supporting OHIM’s oral submissions.

22      It follows that the preparation for and attendance at the hearing did not require from Zirh either a profound analysis or a substantial amount of work, particularly because the dispute had already been the subject of scrutiny by it before the Court of First Instance and before the OHIM bodies.

23      Third, while it is true that the action was of clear economic interest to Zirh, because the possible setting aside of the judgment of the Court of First Instance in Mülhens v OHIM – Zirh International (ZIRH) could lead to the annulment of the decision of the Opposition Division and of the decision of the Second Board of Appeal of OHIM and, as a consequence, to the refusal to register the word sign ‘ZIRH’ as a Community trade mark, Zirh did not submit to the Court any evidence which would indicate that that economic interest was of an unusual nature.

24      In the light of all the above considerations, it must be held that the lawyer’s fees of EUR 13 000 claimed by Zirh for the preparation for and attendance at the hearing of 6 October 2005 significantly exceed the sums objectively necessary for the defence of that company’s interests at the hearing. Furthermore, that amount does not include the travel and subsistence expenses linked to that hearing, which are included in the sum of EUR 2 626.95 to the reimbursement of which Mülhens does not object.

25      In those circumstances, and having regard to the criteria stated in paragraph 12 above, the recoverable fees linked to the preparation for and attendance at the hearing of 6 October 2005 must be fixed at EUR 2 500.

26      Taking into account the fact that Mülhens does not object to the reimbursement of the sum of EUR 2 626.95, the total costs to be reimbursed by Mülhens to Zirh are fixed at EUR 5 126.95.

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

The total costs to be reimbursed by Mülhens GmbH & Co. KG to Zirh International Corp. are fixed at EUR 5 126.95.

[Signatures]

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* Language of the case: English.