The German Federal Supreme Court has recently referred questions to the Court of Justice of the European Union (CJEU) regarding the scope of information claims a trade mark owner can invoke against third parties in cases of alleged trade mark infringement.

Background of the trade mark infringement case

The claimant had purchased a fragrance called "Davidoff Hot Water" on the online marketplace eBay, transferring the purchase price to an account at a local savings bank. After discovering that the product was a counterfeit, the claimant tried to unveil the identity of the seller. Having exhausted other sources of information, the claimant brought an information claim against the savings bank, seeking to obtain the personal data of the account holder. The court at first instance granted the information order, but at second instance the action was dismissed. The claimant appealed on points of law to the German Federal Supreme Court.

Information claims v banking confidentiality

The Supreme Court considers the sale of the product "Davidoff Hot Water" to constitute an obvious case of trade mark infringement. Hence, under the German rules on third party liability for information claims, the savings bank would generally be liable for revealing the requested personal information. It provided a commercial service to the infringer which was used in the course of the infringing acts. That said, under the German Rules of Civil Procedure a person may refuse to give evidence if the respective information is subject to confidentiality. The defendant savings bank relied on its confidentiality obligations in banking matters. The potential conflict between confidentiality obligations and the effective enforcement of trademark rights is addressed by Art. 8 (3)(e) of the Directive 2004/48 on the enforcement of intellectual property rights (the "Enforcement Directive"). The German rules are based on that Directive and accordingly must be interpreted in the light of European Community law. The Supreme Court therefore referred the question to the CJEU whether in the present conflict the interests of the trade mark owner override the confidentiality obligations of the defendant savings bank – which is the preliminary view of the German court.

The CJEU's  decision will further define the scope of trade mark owners' rights vis-à-vis third parties otherwise not responsible for the trade mark infringement.

The German press statement of the German Federal Supreme Court of 17 October 2013 can be found here

Case reference: BGH, decision of 17 October 2013, file no. I ZR 51/12