The German Federal Supreme Court clarified in its decision of 21 October 2015 that a bank cannot refuse to provide information on the owner of an account used for trademark infringing activities based on the banking secrecy (Judgment in Case I ZR 51/12 – Davidoff Hot Water II).
Prior to this decision, German Courts rejected in quite a few cases claims for information against banks on address and names of holders of accounts evidently used for trademark infringing activities. The rejection was always based on the banking secrecy and the corresponding right of the bank to withhold information.
This also happened to Coty Germany, licensee for the production and distribution of perfumes bearing the trademark „Davidoff”. Coty Germany had become aware of counterfeit perfumes being offered via eBay and made a test purchase. After the test purchase it was not possible to identify the seller, but Coty Germany was in hold of the account details of the seller. It approached the bank which kept the account and requested information on name and address of the account owner. As the bank refused to provide the requested information, Coty Germany took the matter to Court. Coty Germany was successful in first instance, but the Higher District Court rejected the claim. The Court held that the bank could refuse to provide the information, as the third party information request in the German Trademark Act was limited by professional rights to refuse to give evidence, such as the one resulting from banking secrecy. The Court also considered this limitation to be in line with the Directive 2004/48/EC (“Enforcement Directive”).
Coty Germany appealed to the Federal Supreme Court. The Federal Supreme Court referred the case to the European Court of Justice (“ECJ”) for a preliminary ruling and asked whether the Article 8(3)(e) of the Enforcement Directive must be interpreted as precluding a national provision which, in a case such as that in the main proceedings, allows a banking institution to refuse, by invoking banking secrecy, to provide information concerning the name and address of an account holder.
Article 8 (3)(e) of the Enforcement Directive provides that the request for information shall apply without prejudice to other statutory provisions which govern the protection of confidentiality of information sources or the processing of personal data.
In its preliminary ruling of 16 July 2015 in Case C‑580/13 the ECJ must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that directive, information concerning the name and address of an account holder.
After these clear words from the ECJ, the Federal Court now decided that Coty Germany had a right to request name and address of the account owner from the bank. In particular, the bank could also not refer the trademark owner to the possibility of initiating criminal proceedings.
This decision improves the situation for trademark owners in Germany that are left only with account details of trademark infringers significantly.