No costs
for the
patent attorney.
No costs
for the
patent attorney.
from
Patent attorneys are consulted time and again in trademark disputes. But when can the costs of a patent attorney be claimed?
Patent attorney in trademark disputes
In the past, patent attorney fees were always reimbursable in trademark disputes. This legal situation has changed, not least since a ruling by the ECJ. At that time, the ECJ clarified that the costs of the patent attorney are only reimbursable if it was necessary to consult him.
In the case before the Higher Regional Court of Stuttgart, the parties disputed the question of whether or not patent attorney fees should be reimbursed in court proceedings. Originally, a lawsuit had been filed. A “cooperating patent attorney” was named in the lawsuit.
The involvement of the patent attorney was necessary because he had already filed the plaintiff’s oppositions against the trademarks in dispute with the DPMA in advance of the cease and desist letter and has been accompanying these proceedings alone since then. In addition, the patent attorney had extensive background knowledge of the trademark portfolio and the plaintiff’s company, which was also of particular value in the court proceedings.
OLG Stuttgart denies reimbursement of costs for the patent attorney
The OLG Stuttgart (Decision of 25.09.2023 – Ref. ) did not share the plaintiff’s view. There was no entitlement to reimbursement of costs for a patent attorney.
The unsuccessful party only has to reimburse those costs that are necessary for the appropriate prosecution or legal defense. This provision is not superseded by provisions of national trademark law, as these are to be interpreted in conformity with the EU Directive to the effect that only the costs of a patent attorney’s cooperation necessary for the appropriate prosecution are reimbursable.
It therefore depends on whether a reasonable, economically sensible party could consider the measure triggering the costs to be appropriate at the time. In contrast to patent disputes, trademark disputes regularly involve the purely legal assessment of a non-technical matter, which can equally be carried out by attorneys, especially if the latter is a specialist lawyer.
The mere fact that the matter is complex or significant is not sufficient to demonstrate the need for the additional appointment of a patent attorney.
The necessity of commissioning the patent attorney in addition to the specialist lawyer as the plaintiff’s legal representative could not be established. The proceedings did not require the patent attorney to have any special technical expertise.
If, in addition to an attorney, a patent attorney has also assisted out of court in a trademark case, reimbursement of the costs incurred as a result of the patent attorney’s involvement can only be claimed if the claimant demonstrates and proves that the patent attorney’s involvement was necessary in the specific case.
In addition, the activities of the patent attorney had already been performed prior to the proceedings and were the subject of the out-of-court assignment of the patent attorney. The involvement of the patent attorney was therefore not necessary for the court proceedings.
The Stuttgart higher regional court judges also rejected the plaintiff’s other arguments. The necessity of engaging a patent attorney could not be generally affirmed by way of a standardized approach for complex or significant matters. Rather, the plaintiff must demonstrate and prove that the involvement of a patent attorney was necessary for the reimbursement of costs for a patent attorney in the specific case.
Conclusion
It remains the case that the costs of a patent attorney in trademark matters will only be reimbursed if it was necessary to consult him.
This is only likely to be the case if the special technical expertise of a patent attorney is required, which will rarely be the case in trademark matters.
We are happy
to advise you on
this topic!
