On 21 October 2015, the German Federal Court of Justice ruled that a bank cannot refuse to disclose personal data of a client if that client’s bank account was used to receive payments ‎for the sale of counterfeit trademark goods. In this case, the fundamental right of the trademark holder to protect its intellectual property prevailed over the banks’s right to secrecy.

Plaintiff is Coty Germany GmbH, a licensee for the production and sale of “Davidoff” perfumes. Defendant is the German bank Stadtsparkasse Magdeburg. A seller offered on eBay a knock-off of the “Davidoff Hot Water” perfume while using the wordmark “Davidoff” to advertise its sale‎. Plaintiff made a trap purchase and wired the money to the bank account that the seller had indicated on eBay. However, because the seller used a pseudonym, its identity remained unkown to Plaintiff. Plaintiff thus asked the bank to disclose the name and address of the bank account holder, pursuant to Section 19(2) No. 3 of the German Trade Mark Act (MarkenG) (right to information). The bank refused this request, arguing that because it was obliged to keep this information confidential, it was allowed to refuse disclosure, pursuant to Section 383(1) Nr. 6 of the German Code of Civil Procedure (ZPO) and to Section 19(2) of the German Trade Mark Act (right to refuse disclosure of information)‎.

The Directive 2004/48/EC on the enforcement of intellectual property rights (“the Directive”) contains a provision concerning the right to information (Sections 8(1)(c)). Nevertheless, according to Section 8(3)(e) of the Directive, the right to information is without ‎prejudice of statutory norms for the protection of confidentiality of information or personal data. The Federal Court of Justice sought guidance from the Court of Justice of the European Union (“CJEU”) on how to interpret these provisions (C-580/13). The latter decided that a statutory provision allowing banks to generally and unconditionally refuse requests for disclosure of information would go beyond the content of what is necessary to achieve the purpose underlying Section 8(3)(e) of the Directive. Such a statutory provision would  contradict other basic principles and rights, as it would not leave any room for the analysis of whether in a particular case there was an intentional misuse of a third party’s right. Whether the provisions of national law contain such a right to unconditionally refuse disclosure is to be decided by the national courts on a case-by-case basis.

On this basis, the Federal Court of Justice decided that in the case at hand, given that the bank account had been used specifically for the IP-infringing activity, the bank is not entitled to evoke its confidentiality obligation in order to refuse disclosing the information requested. The right of the bank account holder of having its personal data protected must recede behind the right of the IP right holder of protecting its intellectual property.

Analysis

The provisions of the Directive and of ‎German law establish a priority of confidentiality of information and protection of personal data as opposed to an IP right holder’s right to information. In the case at hand, interestingly, the decision of the Federal Court of Justice went the opposite way and granted priority to the right to information. The rationale behind the decision is that in this particular case, the person whose personal data would have been protected by confidentiality had infringed a third party’s IP right. The infringer’s right to protection of its personal data was thus no longer on an equal footing with the IP right holder’s right to information. In these conditions, the generic legal rang between right to confidentiality and right to information could not be followed by the Federal Court of Justice.

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