1. 

The questions referred by the Hof Van Beroep te Antwerpen (Court of Appeal, Antwerp) in this reference for a preliminary ruling appear to be limited in scope but, in fact, raise delicate legal problems. Although, in principle, the questions are concerned solely with the compatibility with EU law of national (in this case, Belgian) rules concerning the reimbursement by the unsuccessful party of certain costs related to legal proceedings, they give rise to broader considerations regarding the effect of EU legislation on the civil procedure laws of the Member States.

2. 

The referring court’s uncertainties have arisen in relation to the application of the Belgian system (law and case-law of the Court of Cassation) to costs in respect of lawyers’ fees and to experts’ fees in the context of judicial proceedings for the protection of intellectual property rights. Given that there is a specific provision governing legal costs in Directive 2004/48/CE, ( 2 ) the procedural rules of each Member State must, in principle, comply with that provision. The difficulty is how — if possible — to bring the civil procedure code and the case-law of the Belgian Court of Cassation, which are both applicable to all types of proceedings in general, into line with a ‘sectoral’ provision of EU law relating specifically to intellectual property disputes.

3. 

In some directives — including the Directive, which is the act legitimising the jurisdiction of the Court of Justice over a matter which would otherwise fall exclusively within the competence of the Member States — the aim of harmonising certain procedural rules of the Member States is clearly discernible. The scope of those directives is, logically, limited to one or more specific sectors (for example, intellectual property, the protection of competition, the environment, consumer protection, among others). The increase in ‘sectoral’ procedural rules — which are not always consistent with one another — requiring transposition into national legal systems can lead to the unintended consequence of the fragmentation of procedural law in those countries which, after many years and commendable efforts in relation to codification, have succeeded in enacting general procedural laws precisely to replace the many previous procedures and reduce these to one common procedure.

4. 

The main proceedings are aimed at establishing, first, the sums which the unsuccessful party in a lawsuit must be required to pay in respect of the successful party’s lawyers’ fees, in the light of the Belgian legislation which provides for an upper limit in that regard. Second, as concerns experts’ fees, the difficulty relates not to the quantification of those fees but to the incurrence of liability to pay, in the light of the case-law of the Belgian Court of Cassation in that area. The question is whether the setting of that limit and the rule derived from case-law are compatible with Article 14 of the Directive.

5. 

The reference for a preliminary ruling will make it possible to ascertain whether the Member States have a margin of legislative discretion such that they may establish a system for reimbursement of legal costs by the unsuccessful party which either restricts those costs to a ceiling or upper limit or prohibits their recovery, when, in both situations, the disputes concerned fall within the scope of the Directive.

6.

According to recitals 4, 5, 10 and 26:

…

…

7.

Article 1 provides:

‘This Directive concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights. For the purposes of this Directive, the term “intellectual property rights” includes industrial property rights.’

8.

As regards the ‘general obligation’ of Member States in relation to the ‘measures, procedures and remedies’ governed by Chapter II, Article 3 provides:

‘1.   Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

2.   Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

9.

Section 6 of Chapter II, which covers ‘damages’ and ‘legal costs’, includes Articles 13 and 14 which are worded as follows:

‘Article 13

…

1.   Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.

When the judicial authorities set the damages:

2.   Where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.

Article 14

…

Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this.’

10.

Pursuant to Article 827(1) of the Belgian Judicial Code of 10 October 1967 (Gerechtelijk Wetboek), any discontinuance of an action entails an obligation to pay the legal costs incurred, which is imposed on the discontinuing party.

11.

According to Article 1017 of the Judicial Code, a final judgment is to include an order that the unsuccessful party must pay the costs, unless special laws provide otherwise and without prejudice to any agreement between the parties, on which, where appropriate, a decision will be given in the judgment.

12.

Article 1018(4) and (6) of the Judicial Code provides that costs are to include:

13.

In accordance with Article 1022 of the Judicial Code, the procedural cost indemnity consists of a flat-rate amount of the costs and fees of the successful party’s lawyer.

The maximum and minimum amounts of the procedural cost indemnity are to be established by decree adopted within the Council of Ministers, inter alia in the light of the nature and significance of the dispute.

On application by one of the parties and by means of a decision stating special reasons, the court may either reduce or increase the indemnity, but it may not be more than the maximum or less than the minimum amounts laid down in the decree. When adopting its decision, the court must take account of:

No party may be required to pay an indemnity for the involvement of the lawyer of another party which exceeds the amount of the procedural cost indemnity.

14.

The scale for calculating the minimum and maximum amounts of the procedural cost indemnities provided for in Article 1022 of the Judicial Code was established by the Royal Decree of 26 October 2007 (‘the Royal Decree’). According to Article 2 of the Royal Decree, with the exception of the matters referred to in Article 4 thereof, the procedural cost indemnity for actions involving claims to which a monetary value can be assigned is as follows:

According to Article 3 of the Royal Decree, in relation to actions concerning matters to which no monetary value can be assigned, the reference sum for the setting of the procedural cost indemnity is EUR 1200, while the minimum amount is EUR 75 and the maximum amount EUR 10000.

Article 8 of the Royal Decree lays down the system for updating the above amounts.

15.

United Video Properties, Inc. (‘UVP’) was the holder of European patent No EP 1327209, granted on 27 March 2008, for providing storage of data on servers in an on-demand media delivery system. Since it took the view that Telenet NV (‘Telenet’) had infringed its rights in relation to that patent, UVP brought an action against Telenet on 7 June 2011. By its action, UVP sought, essentially, a declaration that Telenet had infringed its rights in relation to the patent and an injunction requiring Telenet to cease direct and indirect infringements of the patent. UVP also requested that Telenet be ordered to pay the costs.

16.

By decision of 3 April 2012 of the acting president of the Rechtbank van Koophandel te Antwerpen (Commercial Court, Antwerp), following a counterclaim by Telenet, the Belgian part of European patent No EP 1327209 was revoked for failure to meet the condition of novelty, and UVP was ordered to pay the costs of the proceedings in the total amount of EUR 11000. UVP lodged an appeal against that decision on 27 August 2012 before the Hof Van Beroep te Antwerpen (Court of Appeal, Antwerp).

17.

UVP had brought parallel proceedings against Virgin Media (not a party to the main proceedings) in relation to the United Kingdom part of the same patent. On 14 July 2014, the High Court of Justice, London, ruled that the patent was invalid on the ground that there was no inventive step. In view of the decisions of the High Court of Justice, London, and the president of the Rechtbank van Koophandel te Antwerpen (Commercial Court, Antwerp), UVP decided to discontinue its appeal by letter of 14 August 2014, which was confirmed by a further letter of 24 October 2014.

18.

In the light of UVP’s discontinuance of its appeal, Telenet requested the Hof Van Beroep te Antwerpen (Court of Appeal, Antwerp) to agree and declare that:

19.

According to Telenet’s submissions on the legal costs payable to it — the only matter still in contention in the main proceedings — the rule in Belgian law is that the unsuccessful party is responsible for payment. However, for the purposes of specifically fixing the lawyers’ fees which may be recovered from the unsuccessful party in the proceedings, the Royal Decree stipulates maximum amounts which cannot be exceeded, from which it follows — in Telenet’s view — that there is a conflict with Article 14 of the Directive.

20.

Further, in relation to the costs of assistance by a technical expert, which do not fall within the scope of the Law of 21 April 2007 and the Royal Decree, Telenet submits that, according to the case-law of the Hof van Cassatie (Court of Cassation), those costs can by recovered only where there is found to be fault on the part of the unsuccessful party, which is also incompatible with Article 14 of the Directive.

21.

In those circumstances, by order of 26 January 2015, the Hof Van Beroep te Antwerpen (Court of Appeal, Antwerp) referred the following questions for a preliminary ruling:

22.

UVP does not adopt a position on the reference for a preliminary ruling, having stated that it concerns a dispute between the Commission and the Belgian Government relating to the correct transposition of the Directive.

23.

Telenet contends that, since it is the successful party in an action brought within the scope of the Directive, Article 14 of the Directive is applicable which means that it is entitled to reimbursement of the reasonable and proportionate legal costs incurred in the main proceedings, which have to be paid in full by the unsuccessful party.

24.

Telenet submits that ‘reasonable and proportionate legal costs’ and ‘equity’ are autonomous concepts of EU law and must be interpreted uniformly throughout the territory of the Union. A contrary view would conflict with the objective of the Directive, as stated in the case-law laid down in Realchemie Nederland. ( 3 )

25.

Telenet argues that the fundamental aim of the Directive is not achieved if holders of intellectual property rights are not sufficiently protected by jurisdictions, like the Belgian jurisdiction, where the successful party in an action cannot recover from the unsuccessful party more than a small proportion of the legal fees.

26.

To explain why it is unlawful to set a financial limit where the Directive does not do so, Telenet seeks support, by analogy, in the case-law of the Court, relying on the judgment in McDonagh. ( 4 ) Telenet submits that it is impossible for a fixed ceiling of EUR 11000 to satisfy the concepts — which are, by their nature, relative — of reasonableness, proportionality and equity. Accordingly, Article 14 of the Directive precludes the amount recoverable by the successful party from being subject to a ceiling.

27.

In support of the contention that the case-law of the Court precludes national laws drafted in absolute terms, or terms of principle, which do not allow account to be taken of the circumstances of the case, where there is no such rigidity in directives, Telenet cites the judgments in Marshall and VTB-VAB and Galatea. ( 5 )

28.

According to the Commission, Article 14 of the Directive is worded in very general terms. Not only is the provision itself lacking in detail but it lays down a rule which is open to exceptions based on criteria of equity, which means that the Member States have a broad discretion for the purposes of transposing it into their national law.

29.

The Commission submits that Article 14 must be examined in the light of the general purpose of the Directive (recital 10) and the judgment in Realchemie Nederland, ( 6 ) the aim being to ensure the effective protection of intellectual property. ( 7 ) In addition, the following points should be taken into account:

30.

The Commission submits that Article 14 of the Directive does not preclude a system, like the Belgian system, of fixing lawyers’ fees at a flat rate. The discretion afforded to the Member States makes it possible to adopt such a system, since there is nothing to indicate that Article 14, or any other article of the Directive, precludes that right. The Commission argues that that system has advantages for the proper administration of justice and, in particular, legal certainty and foreseeability. Uncertainty regarding the costs to be paid, or recovered, in an action can be an obstacle to bringing legal proceedings. The deterrent effect might also affect holders of intellectual property rights. If the rule were that costs could be recovered in full, the parties might find themselves at risk of very onerous financial consequences if they are unsuccessful. That possibility could equally deter them from commencing proceedings.

31.

After setting out the objectives of the Directive according to recitals 10 and 11 thereof, the Belgian Government states that the essential purpose of the Directive is to enable more straightforward access to justice in order to ensure better enforcement of intellectual property law. That is also the aim pursued by the Law of 21 April 2007 on the recovery of fees and costs of legal representation, ( 10 ) according to the preamble thereto. The right of access to justice is, moreover, derived directly from Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms.

32.

The Belgian Government observes that the combined system adopted by the Belgian legislature has the benefit of ensuring a degree of predictability regarding the financial risks in the event of losing an action, which not only favours access to justice but also protects a party when the opposing party has incurred costs which are not reasonable or proportionate. Further, the Belgian Government contends that the national legislation concerned was adopted following consultation with, and the favourable opinion of, the Belgian bar associations, which are best placed to have information about the average fees in contentious proceedings, including proceedings relating to intellectual property.

33.

The Netherlands Government, relying on the fact that the Commission’s original proposal ( 11 ) referred expressly to lawyers’ fees while the final version did not, submits that the Directive grants the Member States freedom to decide whether lawyers’ fees should be included in the costs recoverable from the unsuccessful party to an action. In support of that contention, the Netherlands Government also refers to Article 45(2) of the TRIPS Agreement, on which the Directive is based. ( 12 )

34.

The Netherlands Government refers to the freedom to choose the method for determining which legal costs may be reimbursed and to the fact that, in accordance with settled case-law, in the absence of any stipulation, the Member States have a broad discretion to choose the means of securing the full effect of a provision.

35.

The Netherlands Government also points out that that broad discretion is not accidental and was deliberately granted by the Directive. That assertion is supported, first, by the general, flexible wording of Article 14 and, second, by the difference between the terms used in the proposal for a directive ( 13 ) and the final wording, in particular the addition of the term ‘as a general rule’ and the deletion of the express reference to ‘lawyer’s fees’. Those amendments, the Netherlands Government’s argument continues, were made in the light of the major divergences between the different national rules, and with regard to the fact that, in principle, the Member States have autonomy in the area of procedural law.

36.

Therefore, according to the Netherlands Government, the Member States are free to determine what is reasonable and proportionate in relation to lawyers’ fees and their reimbursement, either by fixing flat-rate amounts or by other means, provided they ensure that full effect is given to Article 14 of the Directive.

37.

Article 14 seeks to ensure that the parties are not deterred from exercising their rights. Lawyers’ fees are the most significant and least predictable item of costs and, in that respect, may impede access to justice. The flat-rate system contributes to the predictability and transparency of the financial risk, thereby removing an important impediment to access to justice. That system also satisfies the general requirement, laid down in Article 3 of the Directive, that measures, procedures and remedies for the protection of intellectual property must not be unnecessarily complicated or costly. A flat-rate scale of costs makes it possible to express in concrete terms the maximum level above which costs do not satisfy those characteristics.

38.

Lastly, citing recital 17 of the Directive, the Netherlands Government maintains that the examination of reasonableness and proportionality must be carried out in the light of the specific circumstances of each case. Provided that the scale of charges may be used to calculate reasonable and proportionate legal costs, Article 14 of the Directive does not preclude the mandatory limitation of lawyers’ fees up to a maximum amount.

39.

In summary, the Netherlands Government submits that Article 14 of the Directive does not preclude a system of flat-rate charges, fixed by law or in any other manner, according to which the amount of reimbursable lawyers’ fees is calculated, if those charges reflect costs that are reasonable and proportionate in the light of the characteristics of the case.

40.

The Polish Government submits that Article 14 of the Directive does not require the unsuccessful party to cover all the successful party’s legal costs, only those which are reasonable and proportionate. The setting of flat-rate charges actually means that an order for payment of costs may be regarded as reasonable.

41.

According to the Polish Government, the Belgian system enables the unsuccessful party to be required to bear the other party’s costs under acceptable socio-economic conditions. Furthermore, that system prevents the successful party from including spurious or unjustified costs, either by using financial means which are out of all proportion to the financial resources of the other party, or acting in bad faith, in order to impute to the unsuccessful party not only the negative consequences of the dismissal of his claims but also spurious costs.

42.

The Polish Government maintains that the aim of Article 14 of the Directive is to ensure that the injured party is not deterred from bringing legal proceedings to protect his intellectual property rights. Under the Belgian system, that party is able to calculate in advance the costs which will be reimbursed to him or which he will have to pay. The scale of charges therefore makes the costs predictable and contributes to ensuring that the parties have the power to choose when it comes to protecting their rights.

43.

Neither UVP nor the Polish Government submitted observations on the second question.

44.

Telenet argues that the rule laid down in the Belgian case-law (pursuant to which there must be fault in order to recover an expert’s costs from the unsuccessful party) is contrary to Article 14 of the Directive. That provision does not refer to the criterion of fault, while the reference to equity is simply a corrective mechanism for the general rule that all reasonable and proportionate costs must be reimbursed, not the starting point for that rule.

45.

The Commission submits that the costs of assistance by a technical expert come within the concept of legal costs in Article 14 and may be reimbursed. The requirement of fault as a prerequisite for reimbursement is not compatible with that article for the following reasons:

46.

According to the Belgian Government, costs corresponding to experts’ fees do not fall within the scope of the Law of 21 April 2007. The Belgian Hof van Cassatie (Court of Cassation) has recognised the principle of recoverability of those costs under certain conditions: it is necessary to establish the existence of fault which led to the damage consisting of payment of experts’ expenses and fees; in addition, there must be a causal link between those expenses and fees and the fault and the need for technical advice.

47.

In the Belgian Government’s submission, that case-law allows for the full recovery of experts’ costs in so far as these are part of the damage for which the unsuccessful party has to pay compensation on the basis of contractual or extra-contractual fault. The system is, therefore, compatible with Article 14 of the Directive.

48.

The Netherlands Government contends that, where experts’ costs are reasonable and proportionate, those costs must be reimbursed by the unsuccessful party. Article 14 affords no latitude for a strict interpretation whereby experts’ costs are recoverable only in the event of fault on the part of the unsuccessful party.

49.

Article 14 of the Directive uses two legal concepts (‘legal costs’ and ‘other expenses incurred by the successful party’) which it will not be necessary to analyse in detail for the purpose of answering the first question referred for a preliminary ruling, since lawyers’ fees fit without difficulty into the concept of legal costs. Lawyers’ fees are, by definition, included in ‘legal costs’ ( 15 ) and that occurs in the Belgian legislation, ( 16 ) other legal systems and the Rules of Procedure of the Court of Justice. ( 17 )

50.

When the successful party’s lawyers’ fees are ‘reasonable and proportionate’, Article 14 provides, as a general rule, that those fees must be paid by the unsuccessful party ‘unless equity does not allow this’. The provision lays down a general rule which is open to a number of exceptions, including where the effects of that rule are contrary to equity in a particular action.

51.

The qualifiers ‘reasonable and proportionate’ ( 18 ) are therefore key to the determination of whether a party’s lawyer’s fees must be borne by the party who has been ordered to pay the costs. Both qualifiers must be satisfied in order for the rule in Article 14 to be applicable, a proposition consistent with Article 3 of the Directive, pursuant to which the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights must be ‘fair, equitable and proportionate’.

52.

The determination of whether the fees are ‘reasonable’ must take account, first, of the notion of ‘reasonably payable’ which the German version of Article 14 of the Directive suggests. ( 19 ) National law could, perhaps, regard the reimbursement of lawyers’ fees as unreasonable where, for example, a lawyer’s involvement in a particular action was superfluous, among other situations. The costs whose reimbursement is claimed from the unsuccessful party may, therefore, be restricted to ‘expenses necessarily incurred’ by the successful party. ( 20 )

53.

Second, it is necessary to analyse whether the lawyer’s fees are ‘proportionate’; that is, whether they are in due proportion to a number of variables which, again, it is for national law or the national court to stipulate. Factors such as the subject matter of the proceedings, the sum involved, the complexity of the legal issues arising, the work carried out to represent the client, the financial means of the party against whom the order for costs is made, and other factors of a similar nature may be assessed to determine the appropriateness (proportionality) of the lawyer’s fees which the party who has been awarded costs seeks to obtain from the unsuccessful party in an action concerning the protection of intellectual property rights.

54.

In the instant case, the referring court has not expressed a view on whether the fees of the lawyer representing Telenet are reasonable and proportionate. That assessment falls exclusively within the referring court’s jurisdiction and the Court of Justice cannot take its place in that regard. The reply to the reference for a preliminary ruling must, therefore, not impinge on the national court’s power of assessment to determine whether the sum of EUR 185462.55, sought by Telenet by way of lawyers’ fees, is reasonable and proportionate to the circumstances of the case on which it has adjudicated. If the national court decides that those fees are reasonable and proportionate, it will still need to consider whether reimbursement of that sum satisfies the requirements of equity, which confers on it an undeniable margin of discretion. None of those assessments are in any way conditional on the decision, from the perspective of EU law, concerning the validity of the maximum limit, to which I shall refer below.

55.

Neither the Directive as a whole, nor Article 14 thereof, is open to an interpretation which does not reflect the values and principles underlying the European Union legal order, including the principle of legal certainty and the right to an effective remedy in the context of the right of access to justice.

56.

Although some of the observations — particularly those of the Belgian Government — have invoked the procedural autonomy of the Member States, the interpretation of Article 14 of the Directive cannot disregard the teleological criterion: the objective of the Directive is to approximate the legislation of the Member States so as to ensure a high, equivalent and homogeneous level of protection in the internal market. In line with that aim, the Member States must provide for the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights, but they must do so within the legislative framework defined by the Directive itself.

57.

In the context of that legislative framework, one feature stands out, the importance of which cannot be ignored: the procedures and remedies which the Member States are to provide for in that field must not be ‘unnecessarily complicated or costly’ (Article 3(1) of the Directive). Accordingly, the ‘expenses’ of any associated proceedings cannot involve an excessively onerous burden ( 21 ) for the parties.

58.

From the point of view of its scheme, the Directive includes ‘damages’ and ‘legal costs’ in the same section (Section 6). Even though recital 26 of the Directive, which concerns compensation for the prejudice suffered, does not refer to legal costs, it could be argued that the inclusion of the latter in the same section allows them to be categorised as another element for which the Directive provides with a view to ensuring that holders of intellectual property rights are indemnified. However, it does so by adopting a mere ‘general rule’, which is open to exceptions, and by making its application conditional on factors distinct from those which form the rules for payment of damages.

59.

The Court ruled on the legal costs incurred in proceedings concerning the protection of intellectual property rights in Realchemie Nederland ( 22 ) and Diageo Brands. ( 23 ) A reading of those judgments, particularly paragraph 49 of the judgment in Realchemie Nederland, ( 24 ) leads to the view, outlined above, that Article 14 of the Directive is an additional element aimed at ensuring that full compensation is paid for the harm suffered by a holder of intellectual property rights. The Court also draws attention to the fact that Article 14 of the Directive seeks to strengthen the level of protection of intellectual property, by avoiding the situation in which an injured party is deterred from bringing legal proceedings in order to protect his rights.

60.

However, in Realchemie Nederland, the Court did not rule on the issue of the reasonableness and proportionality of the legal costs, since that was not necessary for the purposes of that reference for a preliminary ruling. ( 25 ) There has, therefore, not yet been a dispute concerning the interpretation and scope of Article 14, but that is precisely what is at issue in the present reference for a preliminary ruling.

61.

The principle of legal certainty, consistently confirmed by the case-law, is linked to the principle of the foreseeability of the judicial response. The Court has repeatedly held that ‘… Community legislation must be certain and its application foreseeable by those subject to it. That requirement of legal certainty must be observed all the more strictly in the case of rules liable to entail financial consequences, in order that those concerned may know precisely the extent of the obligations which they impose on them’. ( 26 )

62.

A corollary of that principle, which may usefully serve in the proper interpretation of Article 14 of the Directive, is that the Member States must promote mechanisms which facilitate the foreseeability or predictability of legal costs. In the judgment in Commission v United Kingdom, ( 27 ) the Court, upon analysing English law relating to ‘protective costs orders’, held that it was necessary to ensure reasonable predictability both in relation to the obligation to pay the costs of the judicial proceedings and as regards their amount.

63.

It is therefore no surprise that some of the parties which have submitted written observations have drawn attention to the counterpoint of predictability and legal certainty, as key elements for the quantification of legal costs. One of the decisive factors when faced with proceedings is their financial cost and the foreseeable financial effort which those concerned have to make.

64.

Seen in that light, I cannot agree with an interpretation of Article 14 of the Directive which leads to all the lawyers’ fees incurred by the successful party being necessarily included in the legal costs. I propose, by contrast, that: (a) the recoverable costs in that regard are only those which are reasonable and proportionate in each case and (b) Member States may, owing specifically to requirements of predictability, determine ‘objectively’ and in general terms the maximum amount recoverable, within a scale of the kind in the disputed Belgian legislation.

65.

The lawyer-client relationship should not be confused with the relationship which gives rise to the obligation to reimburse legal costs. The first is a contractual relationship relating to services, in which both parties freely fix the financial consideration paid by the client to his lawyer. The second is a procedural-law relationship which is intended to compensate the successful party, at the expense of the unsuccessful party, for the costs of bringing proceedings.

66.

The different nature of the two relationships is fundamental because in the former (the contractual relationship), subjective considerations have a decisive role and acceptance of the lawyer’s financial terms depends entirely on the choice of his client, who may simply seek another lawyer to represent him. In the procedural relationship, that freedom of choice does not exist and, therefore, it is logical that objective criteria should apply, ( 28 ) which are aimed at specifying and possibly reducing the amount of fees which may be recovered from someone who had no involvement in selecting the opposing party’s lawyer.

67.

The objective criteria may be adjusted on the basis of standard costs of legal assistance: that also helps to promote the equality of the parties to the proceedings and avoids one party — the one in the best financial position — from imposing the weight of his choice on the opposing party. If it were possible to recover the full amount of a lawyer’s fee note from the opposing party, an applicant with greater available financial resources could exercise his choice in a quasi-coercive way. Faced with the risk of having to pay the very high legal fees of the opposing party, the person concerned might decide that it is not worth fighting and that it is safer to waive his right to litigate. The principle of the equality of litigants and the right of access to justice, with which this whole dispute is inextricably interlinked, ( 29 ) could be undermined.

68.

According to Article 3(2) of the Directive, the procedures and remedies in the field concerned must be ‘effective, proportionate and dissuasive’. Dissuasion may, however, operate in two respects: (i) that of excess, in that a person may be discouraged from bringing proceedings because, if he loses, he will be faced with very high costs; and (ii) that of a shortfall, because if he wins, he will recover only a small proportion of the costs incurred. In my view, the ‘dissuasive’ effect of this kind of procedure is achieved, as far as legal costs are concerned, if those costs are calculated by reference to predictable guidelines which are set in advance and in objectively reasonable and proportionate terms. The amount of lawyers’ fees recoverable from the unsuccessful party could entail a significant impediment to access to justice (that is, a factor that is excessively ‘dissuasive’, to the point of being ‘costly’, which is prohibited by Article 3 of the Directive) if specification of the amount of such fees were entrusted exclusively to the party entitled to recover them, without any external review of the amount.

69.

Does a system like the Belgian system, which sets an upper limit for the lawyers’ fees recoverable from the party ordered to bear the costs, satisfy those criteria? None of the participants in these preliminary-ruling proceedings (including Telenet) have argued that, in the abstract, absolute limits constitute, per se, an infringement of Article 14 of the Directive, ( 30 ) and I agree with that stance. ( 31 ) The Commission expressly acknowledges that that provision does not preclude flat-rate systems, which are possible because of the discretion of the Member States. The same view is set out in the observations of the Netherlands: the terms ‘reasonable and proportionate’ and the reference to ‘equity’ in Article 14 of the Directive are broad enough to confer that freedom of choice on the Member States.

70.

The Kingdom of Belgium submits that the principle of the procedural autonomy of the Member States is applicable. However, as I stated above, my view is that, given the presence of a specific provision in the Directive aimed at ‘homogenising’ the treatment of costs in a particular category of proceedings (those relating to intellectual property), the rules governing procedural instruments are, undoubtedly, the responsibility of the Member States, but within the margins of the Directive. ( 32 )

71.

The Belgian system of taxation of legal fees, based on the rule that the successful party may recover his costs (the unsuccessful party to the proceedings pays the lawyers’ fees of the successful party), sets maximum and minimum limits on the right to claim costs based on the sum involved in the dispute. ( 33 ) It is for the court seised of the case to specify the exact amount which may be recovered and it will do so in the light of the circumstances of the case and within those limits.

72.

In the main proceedings, the court quantified the costs in respect of lawyers’ fees at first instance as EUR 11000, the maximum amount for claims involving an unspecified sum, pursuant to Article 3 of the Royal Decree. The amount granted is, therefore, much lower than that claimed by the successful party in respect of costs (more than EUR 185000). Despite appearances, that fact is not particularly significant because, first, it is not for the Court of Justice but the referring court to decide whether those fees are reasonable and proportionate, and, second, the information provided does not make it possible to determine what a suitable balance would be.

73.

To my mind, the answer must involve an assessment of the Belgian system as a whole, taking account of the usual standards governing lawyers’ fees which are applicable in that country. While Article 14 of the Directive was intended to homogenise the legal systems relating to the costs applicable to intellectual property proceedings in all the Member States, it was not aimed at creating parity or narrowing the gap between the lawyers’ fees of the Member States, which are markedly different from one other. The Royal Decree was adopted specifically in the light of the favourable opinion of the Belgian professional organisations (bar associations) and therefore, in principle, it must be assumed that the maximum figures laid down therein are consonant with the average standards applicable in Belgium. Those organisations are well placed to suggest the standards of ‘objective reasonableness’ above which, in Belgium, no one should be required to pay the opposing party’s lawyer’s fees.

74.

Also in support of the system created by the Belgian legislature is the fact that it ensures that the amount of legal costs which the parties are at risk of having to pay is predictable from the very start of the proceedings. As I pointed out above, the protection of legal certainty requires the availability of definite (fixed or percentage-based) data which can be used to calculate the financial risk of litigating, whether as an applicant or a defendant.

75.

Based on those criteria, I am of the view that Article 14 of the Directive does not provide a basis for the Court to ‘correct’ the will of the Belgian legislature, embodied in the two national provisions referred to above, concerning the maximum limit of fees above which the party against whom an order for costs is made is not obliged to reimburse the fees payable to the other party’s lawyer. I believe that the Belgian authorities have — as is clear from the procedure followed in the drafting of those provisions — the information required to create a system of maximum lawyers’ fees (to be paid by the unsuccessful party in a legal action) in accordance with its own standards of costs, in the light of the specific situation applicable to legal representation in that country, amongst other factors. ( 34 )

76.

The fact that, within that system, the ceilings were fixed in such a way that, in actions involving a specific sum, the fees recoverable cannot exceed EUR 30000 at each instance, and, in actions involving an unspecified sum, those fees cannot exceed EUR 11000 at each instance, may be criticised to varying degrees from other points of view but not so far as the system’s compliance with Article 14 of the Directive is concerned. There is no doubt that that system could be improved (for example, by allowing specific derogations in exceptional circumstances) but it does not, in the form it takes, breach Article 14, the wording of which, as I have reiterated, lays down a ‘general rule’ which is open to exceptions, by reference to criteria of reasonableness and proportionality which afford the Member States a broad legislative discretion. The national legislature may, in my opinion, determine for itself, taking account of the legal culture and situation regarding legal representation in Belgium, among other factors, the ceiling above which the lawyers’ fees recoverable from the unsuccessful party cease to be reasonable.

77.

The reply to the second question must be approached by reference to the terms which the national court uses to describe national law. Its proposition is that ‘[Belgian] case-law … states that the costs of a technical adviser are recoverable only in the event of fault (contractual or extra-contractual)’. There is unanimous agreement that reimbursement of experts’ expenses (including those of technical experts or advisers) are not subject to the rules applicable to the recovery of lawyers’ fees.

78.

The referring court questions whether the Belgian case-law on the reimbursement of such costs is compatible with Article 14 of the Directive. The written observations lodged by the participants in the proceedings which have expressed a view on the subject, with the exception of the Belgian Government, all argue that it is not compatible.

79.

Before I give my opinion on the answer, I must make two points. The first is that the concept of costs payable for the work of technical experts or advisers may cover different situations, some of which do not necessarily come within the category of ‘legal costs’. That term does not include any expense to a greater or lesser extent ‘related’ to the bringing of the action or paid ‘on account’ of it but rather costs which arise immediately and directly from the action itself. A natural or legal person may take preliminary steps, including having prior consultations with certain advisers or experts, without the associated cost having to be part of the ‘legal costs’. According to recital 26 of the Directive, the ‘costs of identification and research’ carried out in the sphere of protection of intellectual property come under the heading of damages (Article 13) rather than legal costs (Article 14).

80.

The second point is the fact that the Belgian Judicial Code (Article 1018(4)) includes within the legal costs which the unsuccessful party must pay — that is, under the general rule that the successful party is awarded costs — the costs of ‘witnesses and experts’ who have been involved in the proceedings as a result of the adoption of the ‘measures of inquiry’ decided upon. So far as those experts’ costs are concerned, the (subjective) criterion of fault to which the referring court refers does not seem to be applicable but rather the (objective) rule that the successful party is awarded costs.

81.

It is therefore necessary to clarify which experts’ costs the Belgian case-law is referring to when it links their reimbursement to the requirement that the damage giving rise to the duty of reimbursement must be the result of fault. ( 35 ) There may be two types of expenditure incurred in respect of evidence of a technical nature: (a) expenditure incurred as a result of the involvement of experts in the proceedings, provided for in Article 1018(4) of the Judicial Code, and (b) expenditure incurred outside the proceedings, as support for the claim or defence. The case-law referred to by the referring court and by the Belgian Government itself is concerned only with the latter.

82.

Subject to all those reservations, there are two sides to the reply I propose for the second question. In my view, the national case-law mentioned by the referring court does not conflict with Article 14 of the Directive where the costs claimed in respect of technical assistance cannot be included in the concept of ‘legal costs’ as a result of their specific features, for example, the fact that they are merely preliminary in nature or other factors, some of which I have dealt with above. In that situation, recovery of those costs may be feasible in the light of Article 13 of the Directive, a provision which allows account to be taken of facts linked to the notion of fault (‘… the infringer who knowingly or with reasonable grounds to know, engaged in an infringing activity’ must be ordered to pay damages).

83.

However, on the other side of that proposition, expenses incurred as a result of the involvement of an expert in proceedings for the protection of intellectual property rights, which are directly and immediately connected to the pursuit of the action, must be reimbursed to the successful party pursuant to Article 14 of the Directive (that is, if they are reasonable, proportionate and not contrary to equity), without an additional condition, such as the existence of fault, being required.

84.

If I am proposing for the second question a reply which differs from the one suggested for the first question, that is because the national rule (derived from case-law), which supposedly applies to experts’ costs, may preclude the total or partial recovery of such costs in disputes relating to intellectual property, specifically as a result of the concept of fault, which does not occur in the case of lawyers’ fees. The general exclusion of those ‘legal costs’ (where they may actually be characterised as such), which could arise as a result of the national case-law applicable to that type of action, would not even permit an assessment in an individual case of whether the costs are proportionate and reasonable, which, to my mind, is not compatible with the wording or the purpose of Article 14 of the Directive.

85.

In the light of the foregoing considerations, I propose that the Court should reply as follows to the questions referred for a preliminary ruling: