On 21 October 2015, the First Civil Senate of the Federal Court of Justice, which is responsible, inter alia, for trade mark law, ruled that a banking institution may not refuse to provide information on the name and address of an account holder with reference to banking secrecy if the payment of the purchase price for a counterfeit trade mark product has been made via the account.
The plaintiff is a licensee for the production and distribution of Davidoff perfumes. In January 2011, a seller offered a perfume under the brand name "Davidoff Hot Water" on the internet platform eBay, which was obviously a counterfeit product. The account to which the payment of the purchase price was to be made was specified on eBay as an account held with the defendant savings bank. The plaintiff bought the perfume by auction and paid the purchase price to the account indicated. According to her account, she could not find out who was the seller of the counterfeit perfume. She therefore claimed information about the name and address of the account holder from the defendant savings bank under Section 19 (2) sentence 1 no. 3 MarkenG.
The Regional Court upheld the action. The Higher Regional Court dismissed the action. It assumed that the defendant savings bank was entitled to refuse to provide information on the basis of banking secrecy pursuant to section 383 (1) no. 6 of the Code of Civil Procedure.
By order of 17 October 2013, the Federal Court of Justice stayed the proceedings and referred the question to the Court of Justice of the European Union as to whether the account data about which the plaintiff is seeking information from the Sparkasse fall within Article 8(3)(e) of Directive 2004/48/EC on the enforcement of intellectual property rights and - if so - whether the defendant must nevertheless provide information about the account data in the interest of the effective prosecution of trade mark infringements.
The Court of Justice of the European Union ruled on this in its judgment of 16 July 2015. According to that judgment, Article 8(3)(e) of Directive 2004/48/EC must be interpreted as precluding a provision of national law, such as that at issue in the main proceedings, which allows a banking institution, without limit or condition, to refuse to provide information under Article 8(1)(c) of that directive on the name and address of an account holder by relying on banking secrecy. (c) of that directive concerning the name and address of an account holder on the ground of banking secrecy. It is for the national court to determine whether the national legislation allows such a refusal unconditionally. It is also for that court to ascertain whether national law contains, where appropriate, other remedies or legal remedies enabling the competent judicial authorities to order, in accordance with Directive 2004/48/EC, the provision of the necessary information concerning the identity of the persons covered by Article 8(1) of the directive, in the light of the specific characteristics of the individual case.
On this basis, the Federal Court of Justice has now ruled that the plaintiff is entitled to information on the name and address of the account holder. The provision of § 19 (2) sentence 1 half-sentence 2 MarkenG is to be interpreted in conformity with EU law to the effect that a banking institution may not, pursuant to § 383 (1) no. 6 ZPO, refuse to provide information on the name and address of an account holder by invoking banking secrecy if the account was used for payment transactions in connection with an apparent trade mark infringement. The fundamental right of the account holder to protection of personal data under Art. 8 EU Charter of Fundamental Rights and the right of the bank to freedom of occupation under Art. 15 EU Charter of Fundamental Rights must take second place to the fundamental rights of the trade mark owner to protection of intellectual property and effective legal protection (Art. 17 and 47 EU Charter of Fundamental Rights). The possibility of initiating criminal proceedings does not preclude a claim for information under Section 19 (2) no. 3 MarkenG against a banking institution.
Judgment of the Federal Supreme Court of 21 October 2015 - I ZR 51/12 - Davidoff Hot Water II
Lower courts:
Magdeburg Regional Court - Judgment of 28.9.2011 - 7 O 545/11
OLG Naumburg - Judgment of 15.3.2012 - 9 U 208/11
Source: Press release of the BGH
Goldberg Attorneys at Law 2015
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: m.ullrich@goldberg.de
