By Max Wenger and Kai Tumbraegel

On 17 October the German Federal High Court (“BGH”) has submitted a request for a preliminary ruling to the European Court of Justice (“ECJ”) to clarify whether a bank may refuse to reveal the name and the address of a bank account holder with reference to the bank secrecy, if the payment for a purchase of counterfeiting goods has been settled via the respective bank account (BGH I ZR 51/12).

The BGH signified that it would see the trademark holder’s rights prevail the bank’s interest in keeping the identity of the account holder a secret. Nonetheless, it has submitted the decision to the ECJ as the answer to its questions depends on the interpretation on the Directive 2004/48/EC.

The facts of the case were as follows: The plaintiff is a licensee with regard to the production and distribution of Davidoff perfumes. In 2011 a seller offered on eBay a counterfeiting perfume under the designation “Davidoff Hot Water”. The bank account of this person was indicated on eBay. The plaintiff purchased the perfume by eBay auction and transferred the money to the said bank account. It was however not able to find out the name and the address of the seller of the counterfeiting perfume. It therefore asked the bank for the respective information. The bank (defendant) refused to provide the information making reference to the bank secrecy. When the plaintiff brought the claim for information before the courts, the district court granted the claim and the court of appeal denied it, arguing that the bank was entitled to refuse the request based on the bank secrecy. The BGH decided to stay the proceedings and refer the crucial questions to the ECJ for a preliminary ruling.

The ECJ must now decide on the interpretation of Article 8 of the Directive 2004/48/EC (” the Directive”). Article 8 (1) lit. c) of the Directive has been implemented into the German Trademark Act. It grants the trademark right holder a right of information against any other person, “who was found to be providing on a commercial scale services used in infringing activities”. In general this definition also covers the bank services at issue. However, in the present case the bank referred to a provision in the German Code of Civil Procedure which allows inter alia banks to refuse to testify against its customers. The ECJ has now to decide whether this defence is also valid under the Directive. It might be found valid since Article 8 (3) lit. e) of the Directive states that the provisions granting the right of 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 consequence and according to the BGH the question must be answered, whether bank account data fall within the scope of this exception and if so, whether nonetheless the trademark holder might be entitled to the respective information in order to guarantee the effectiveness of law enforcement.

The expected answer from the ECJ will clarify the hierarchy of trademark rights and bank secrecy in Germany and Europe. It might provide trademark owners with a valuable source of information to fight counterfeit. However, the price to pay would be the relaxing of the bank secrecy and the loss of privacy of bank customers.

Please note that so far only a press release of the BGH has been published. We may update this article after the full reasoning of the court is released.