The German Federal Court (Bundesgerictshof) asked the European Court of Justice (CJEU) if a bank could withhold a customer’s information under banking confidentiality rules, where that customer had infringed trade mark law. See Beschluss des I. Zivilsenats vom 17.10.2013 – I ZR 51/12 Ruling.

The “Davidoff Hot Water” trade mark licence holder tried to track down an eBay seller offering fake Davidoff perfume by buying the fake perfume through the online auctioning website. But the identity of the seller eluded them and Davidoff was left only with the infringer’s bank account details. On application to the bank, it refused to reveal the crucial information because of its obligation of professional trust and secrecy under Section 383 of the German Civil Procedure Rules (Zivilprozessordnung). Not satisfied with this, Davidoff applied to the German courts to order the bank to reveal the name and address of the infringing seller under equivalent German legislation for Article 8(1)(c) of the Enforcement Directive. Under Article 8(1)(c), courts can order the release of information about the origin of goods or services which infringe IP rights from a person providing commercial services used in the infringing activities (Directive 2004/48/EC). But it is not that straightforward: Article 8(3)(e) states that Article 8(1) is without prejudice to other legal rules that protect confidential information or personal data. This means that the local rule may still apply. Although the German Federal Court’s view is that the prosecution of IP infringement should take precedence over the bank’s obligation of secrecy, they have referred the question to the CJEU. So the question is: can Article 8(3)(e) allow a bank to refuse disclosure of information on the basis of a national rule of confidentiality despite its obligations in Article 8(1)(c)? Comment: A positive response from the CJEU would clearly help tackle counterfeiters that are rampant on auction sites, particularly in circumstances in which there is no other way of capturing them. Sources: Beschluss des I. Zivilsenats vom 17.10.2013 – I ZR 51/12; Bundesgerichtshof Press Release; European Commisson, EJN, Taking of evidence and mode of proof, Germany

This article was prepared by Hazel Sharp and Seiko Hidaka (seiko.hidaka@nortonrosefulbright.com / +44 20 7444 2432) of Norton Rose Fulbright United Kingdom’s Intellectual property disputes group.