AG OPINION IN CASE C-573/25: NO SHORTCUT FOR EUIPO LEGAL COSTS AND FEES VIA NATIONAL IP INTERIM PROCEEDINGS?

Cybex and Suzhou, both manufacturers of pushchairs marketed in the EU, became involved in a dispute after Suzhou exhibited its "S63" model at a trade fair in Cologne in September 2022. Considering its design rights infringed, Cybex issued a warning notice, which triggered two separate sets of proceedings: interim relief proceedings before the German courts, and invalidity proceedings against Cybex's registered Community designs before the EUIPO.

The Landgericht Düsseldorf granted Cybex's application for provisional measures in September 2022, lifted it on appeal in December 2022, and after Cybex withdrew its further appeal, the Oberlandesgericht Düsseldorf ordered Cybex to pay the costs of the interim proceedings in October 2023.

In parallel, Suzhou had filed invalidity applications against Cybex's designs before the EUIPO in November 2022 - proceedings that remain pending.

When Suzhou sought taxation of its costs and fees in the German interim proceedings, it tried to fold in the EUR 100,966.77 of lawyers' fees incurred in the still-pending EUIPO invalidity proceedings, arguing that defending against the interim measure necessarily extended to challenging Cybex's designs before the EUIPO, and that those fees amounted to damage caused by the (ultimately unsuccessful) interim measures.

This prompted the German court to refer twelve questions to the Court of Justice of the European Union, three of which (the AG was directed to address only the seventh, eighth and ninth) ask whether the costs regime under the Community Designs Regulations and the costs/damages regime under the IP Enforcement Directive can be combined so that EUIPO-related lawyers' fees are recoverable, as "other expenses", in the national interim proceedings.

1.1 Inadmissibility: the reference is premature

The AG's primary conclusion is that the seventh to ninth questions are inadmissible. The costs regime under Regulation 6/2002 of 12 December 2001 on Community designs (Regulation 6/2002) and Regulation 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (Regulation 2245/2002) presupposes a losing party in the EUIPO invalidity proceedings. Since those proceedings are still ongoing, there is, as yet, no losing party and no basis to even consider who should bear those costs, any ruling on the point would be premature.

The AG also stresses that the EUIPO invalidity proceedings and the German interim proceedings are entirely separate, and that allowing national courts to pre-empt the EUIPO's own costs allocation, before that body has even ruled, would undermine the autonomous costs system that Regulations 6/2002 and 2245/2002 establish. 

1.2 In the alternative: the two regimes are mutually exclusive 

Should the Court find the three questions admissible, the AG identifies the underlying issue as whether the EUIPO costs system is exclusive and exhaustive, and if not, whether EUIPO invalidity costs can be carried over into national interim proceedings as "other expenses", subject to the statutory caps.

The AG finds that the Community design costs rules constitute a lex specialis: an exhaustive regime under which the successful party before the EUIPO cannot recover more in lawyers' fees than the capped amounts set out in those regulations, with costs taxed by the EUIPO itself rather than national authorities.

As a result, reimbursement of lawyers' fees incurred in EUIPO invalidity proceedings is governed exclusively by Regulation 6/2002 and Regulation 2245/2002, not by Article 9(7) or Article 14 of IP Enforcement Directive. The two systems, in the AG's words, are "mutually exclusive" and each remains intact notwithstanding the later adoption of the IP Enforcement Directive.

He also dismisses Suzhou's argument that the Community design costs rules, predating the IP Enforcement Directive, should give way to it - finding that the IP Enforcement Directive left that cost-recovery system, with its distinct substantive and procedural features, entirely untouched.

1.3 Lawyers' fees are "legal costs", not recoverable "other expenses" or damages

Even assuming that the IP Enforcement Directive would apply, the AG confirms - quoting his own opinion and the Court's judgment in United Video Properties (case C‑57/15) - that lawyers' fees fall within the concept of "legal costs" under Article 14 of the IP Enforcement Directive, and cannot simultaneously be treated as "damages" without blurring the distinction the IP Enforcement Directive itself draws.

The AG distinguishes the Court's ruling in Koch Media (case C‑559/20), where out-of-court warning-notice costs qualified as "other expenses". Here, the Commission's position - which the AG endorses - is that the EUIPO invalidity proceedings are separate and independent from the interim proceedings, so their costs and fees cannot be requalified as "other expenses" of the German case.

Notably, the AG observes that Suzhou could have raised invalidity as a plea within the interim proceedings themselves (as permitted under Article 90(2) of Regulation 6/2002), rather than initiating separate EUIPO proceedings, a choice the referring court itself acknowledged. That voluntary procedural choice, made as part of Suzhou's own litigation strategy, reinforces why its EUIPO costs and fees cannot be shifted onto Cybex via the interim case.

Finally, the AG rejects the argument that the statutory caps on EUIPO representation costs and fees are too low to reflect real market fees. Those caps serve the legitimate goal of keeping the EUIPO procedure accessible and cost-predictable, and their validity was not challenged in the proceedings.

1.4 AG Conclusion 

The AG proposes that the Court of Justice declare the seventh, eighth and ninth questions inadmissible. In the alternative, he proposes that Articles 70(1) and (6) of Regulation 6/2002 and Article 79(7)(f) of Regulation 2245/2002 be interpreted as laying down exhaustive rules on the imposition, apportionment and determination of costs in EUIPO invalidity proceedings, and that reimbursement of lawyers' fees in that context is not governed by Article 14 of the IP Enforcement Directive.

The written observations stage closed with submissions from Suzhou and the European Commission.

The Court of Justice's judgment is now awaited; we will issue a follow-up once it is handed down.

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