Case number: C04311409 (SKC-0175/2014)
Court: The Department of Civil Cases of the Supreme Court of the Republic of Latvia
Parties: AS „Kimmels Rīga” v. SIA „Brūveris”
Date: 10 December 2014
IP RIGHT(S) Trade marks
NORMS Arts. 33(3)(1), 44(1)(1) Latvian Civil Procedure Law, Art. 14 D 2004/48/EC.
The Court of Appeal had dismissed the claim of AS „Kimmels Rīga” against SIA „Brūveris” on termination of a trade mark infringement and had awarded to SIA „Brūveris” costs amounting to 1811,84 LVL (2578,02 EUR) to be paid by AS „Kimmels Rīga”. AS „Kimmels Rīga” appealed to the Court of Cassation, where an issue arose whether a court might award costs which the winning party had incurred by paying patent attorney’s (who is not an advocate) fees.
DAMAGES AWARDED -
The case concerns the question whether a court may award to the winning party costs that consist of fees of such patent attorney who is not an advocate. According to Article 33(3)(1) of the Civil Procedure Law, costs related to conducting a case are costs related to assistance of advocates. Article 44(1)(1) lays down the amount of reimbursable advocate’s fees. The Civil Procedure Law does not expressis verbis regulate anything regarding patent attorney’s fees.
Until this judgment of the Court of Cassation the court practice was homogenous, approving the idea that the mission, the examination, the liability and the specific legal assistance provided by a patent attorney to a client allows to equate the status of patent attorney in industrial property cases with the status of advocate – regarding reimbursement of their fees. Courts awarded costs related to assistance of patent attorney as costs related to conducting a case on the grounds of Article 44(1)(1) of the Civil Procedure Law.
The Court of Cassation ruled that the list of costs related to conducting a case, provided for in Article 33 of the Civil Procedure Law, was exhaustive; the Court of Appeal had misinterpreted Article 33(3)(1) of the Civil Procedure Law; and patent attorneys were not to be equated with advocates regarding reimbursement of their fees.
The assistance provided by a patent attorney may not be qualified as the assistance provided by an advocate, because according to the Civil Procedure Law such assistance exists only when provided by an advocate. Advocates are persons belonging to the judicial system, and it is a regulated profession according to Article 30 of the Law on the Regulated Professions and the Recognition of Professional Qualifications. Examination may not be used as a criterion for equation with advocates, because examinations take place for other types of activities, too.
Article 14 of the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights sets a general principle, but does not specify the estimation of reimbursable fees.
On 21 July 2011 the Saeima [the Parliament of Latvia], while deciding on amendments to the Civil Procedure Law (No 15/Lp10), did not support the proposal to reimburse costs related to assistance of all qualified lawyers. Therefore, by turning these amendments down the legislator has unequivocally expressed its will in debate and in vote not to apply the term “advocate” to lawyers who are not advocates.
In this case the Court of Cassation overruled the existing court practice on reimbursement of patent attorney fees, stating that courts may not award to the winning party in litigation costs that consist of fees of a patent attorney who is not an advocate. The Court ruled that only costs consisting of advocate fees may be reimbursed.
One can presume that the change of the court practice was influenced by the legislator’s vote on the abovementioned draft amendments to the Civil Procedure Law and by the Constitutional Court judgment of 7 February 2014 in the case No 2013-04-01, where the Constitutional Court found Article 33(3)(1) of the Civil Procedure Law compatible with the Constitution of the Republic of Latvia.