The ECJ has now ruled (Case C-531/20, Judg. v. 28 April 2022, NovaText GmbH v. Ruprecht-Karls-Universität Heidelberg) that this regulation is not compatible with the Enforcement Directive 2004/48. In making this assessment, the ECJ relies in particular on the provision in Art. 14 of the Directive, according to which the costs of proceedings shall as a rule be borne by the unsuccessful party, provided that they are reasonable and appropriate and provided that there are no grounds of equity to the contrary.
Since Sec. 140 (3) Trademark Act provides for reimbursement in any case (irrebuttable presumption) and does not contain a weighing decision on reasonableness, appropriateness and equity, the unconditional granting of reimbursement also of patent attorney fees is contrary to European law.
The ECJ emphasised that, as a rule, the defendant of an IP right infringement has to bear the costs of the injured party in full. However, the granting of reimbursement of patent attorney costs (like all other costs) would be subject to reasonableness and appropriateness as well as a final review on the basis of equitable grounds.
German practice must therefore say goodbye to the relatively unproblematic and automatic reimbursement of patent attorney costs, as well as attorney’s fees. The ECJ states that all costs are subject to the condition that they are reasonable and appropriate and do not conflict with reasons of equity.
Also noteworthy is the ECJ’s indication that the requirement of reasonableness does not require that the unsuccessful party must necessarily reimburse all the costs of the successful party, but it does require that the successful party be entitled to reimbursement of at least a substantial and reasonable part of the reasonable costs actually incurred by it, referring to the judgment of 28 July 2016, United Video Properties, C-57/15, EU:C:2016:611, para. 29.
Thus, overall, significant changes in the law on reimbursement of costs are foreshadowed. On the one hand, there is no longer automatic reimbursement of patent attorney fees, as it is always subject to reasonableness, appropriateness and equity.
On the other hand, the regulation of the ZPO and the RVG, according to which only the statutory fees under the RVG are to be reimbursed by the unsuccessful infringer, is probably also contrary to European law. In today’s normal case, the party enters into a fee agreement with its lawyer/patent attorney, which leads to a significantly higher amount of legal fees beyond the RVG. These legal fees must also be reimbursed (beyond the limits of the RVG) by the losing party to a substantial and reasonable extent, considering equity. Only to the extent that the attorneys’ fees paid under the fee agreement are unreasonable and unreasonable, their refundability is ruled out. This means, therefore, that the amounts of the RVG are no longer the upper limit for the reimbursability of actual legal costs of the plaintiff.
Of course, this means that the entire flat-rate costs reimbursement law in intellectual property is subject to a fundamental reservation, which the legislator should take up and regulate as soon as possible in order to prevent discussions about reimbursable costs from getting out of hand.
Individual courts have already applied the ECJ’s decision in cost determination proceedings. For example, in a decision of 13.07.2022 (I-15 W 15/22) in a competition law dispute, which was, however, based on a patent case, the OLG Düsseldorf rejected the costs of the patent attorney who had been involved, because his involvement had not been necessary. The lawyer could and should also have assessed the patent questions. Thus, the OLG states the following:
“The reasonableness of the costs incurred is assessed on the basis of the principles developed for § 91 ZPO. Accordingly, the decisive factor is whether a reasonable and economically sensible party could consider the cost-triggering measure to be relevant at the time (ex ante) (on section 91 ZPO: BGH NJW 2018, 1693; BGH GRUR 2017, 854 – Anwaltskosten im Gestattungsverfahren; BGH GRUR 2005, 271 – Unterbevollmächtigter III; BGH NJW-RR 2005, 725 mwN). This is the case if the measure was necessary or required for the appropriate prosecution or defence.”
However, this view does not seem to be covered by the case law of the ECJ and throws the baby out with the bathwater.
In principle, Section 140 (3) Trademark Act and Section 143 (3) Patent Act, which is identical in content, provide that patent attorney fees must be reimbursed. This provision remains in force. However, it is to be interpreted in conformity with European law to the effect that it is subject to the provison that the costs to be reimbursed are reasonable and appropriate for the unsuccessful infringer as a whole and that equity reasons must not stand in the way of this.
An examination of the necessity of the patent attorney’s cooperation has not been prescribed by the ECJ and such a provision is also not found in the Enforcement Directive. Rather, all costs actually incurred by the IP right holder must be borne by the unsuccessful infringer if they are reasonable and appropriate and do not conflict with reasons of equity.
The examination of the necessity of the patent attorney’s cooperation provided for by the OLG Düsseldorf therefore does not exist when interpreting Section 143 (3) Patent Act in conformity with the Directive.
Rather, the principle from the ECJ decision of 28 July 2016, United Video Properties, C-57/15, EU:C:2016:611, para. 29, applies, according to which the infringed IP right holder may claim reimbursement of at least a substantial and reasonable part of the reasonable costs actually incurred by him.
It is therefore foreseeable that the cost fixing proceedings in IP protection will be much more complex and costly than has been the case so far. Basically, the question also arises as to whether the Rechtspfleger is still able to conduct the cost fixing proceedings at all and whether this should not be a genuine task of the deciding panel, i.e. the judicially staffed infringement court chamber. The transfer of the cost fixing procedure to the Rechtspfleger had its correct basis in the fact that a formalised procedure is to be carried out here, the essential cornerstones of which (quotation of costs by the court and lump sums according to the RVG) have already been established. This can no longer be said of today’s situation.
