I. The first civil senate of the Federal Court of Justice has referred the question to the Court of Justice of the European Union as to whether a banking institution may 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 branded product has been made through 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 a counterfeit product. The account to be used for payment of the purchase price on eBay was 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 the plaintiff's account, she was unable to find out who was the seller of the counterfeit perfume. She therefore claimed information about the name and address of the owner of the account from the defendant savings bank under Section 19 (2) sentence 1 no. 3 MarkenG.
The Magdeburg Regional Court upheld the action. The court of appeal dismissed the action. It assumed that the defendant savings bank was entitled to refuse to provide information on the basis of banking secrecy.
The Federal Supreme Court has suspended the proceedings and referred them to the Court of Justice of the European Union. According to the Federal Supreme Court, the distribution of the counterfeit perfume constitutes a manifest infringement of the law. By maintaining the current account through which the seller made payment transactions, the defendant savings bank also provided a service used for the infringing activity on a commercial scale. Thus, the requirements of § 19 (2) sentence 1 no. 3 MarkenG are met per se. However, the defendant savings bank does not have to provide the requested information if it is entitled to refuse to testify during the proceedings pursuant to § 383 (1) no. 6 ZPO. Since § 19 para. 2 sentence 1 no. 3 MarkenG complies with Art. 8 para. 3 lit. c of Directive 2004/48/EC on the enforcement of intellectual property rights, the right to refuse information must be covered by the Directive. In this respect, Article 8(3)(e) of the Directive, which deals with the protection of the confidentiality of information sources and the processing of personal data, comes into consideration. In the case at issue, the question arises whether the account data about which the plaintiff demands information from the savings bank are covered by Article 8(3)(e) of the Directive and - if this should be the case - whether the defendant must nevertheless provide information about the account data in the interest of the effective prosecution of trade mark infringements. Since the question concerns the interpretation of Union law, the Federal Court of Justice referred it to the Court of Justice of the European Union for a preliminary ruling. In the order for reference, the Federal Court of Justice indicated that, in its view, the interest in effectively prosecuting a trade mark infringement should take precedence over the bank's interest in keeping the identity of the account holder secret.
Decision of the BGH of 17 October 2013 - I ZR 51/12
Lower courts:
LG Magdeburg, judgement of 28 September 2011 - 7 O 545/11,
ZD 2012, 39
OLG Naumburg, judgement of 15 March 2012 - 9 U 208/11,
GRUR-RR 2012, 388
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
