Federal Supreme Court considers banking secrecy following ECJ's Coty ruling

On October 21 2015 the German Federal Supreme Court finally issued its decision in Davidoff Hot Water II (Docket No I ZR 51/12). Although the full reasons for this decision are not yet available, the press release makes it clear that the Federal Supreme Court decided that a bank must give information concerning the name and address of an account holder to a trademark owner under specific conditions, and cannot invoke banking secrecy in order to avoid providing such information.

In the case at hand, Coty Germany GmbH became aware of a counterfeit 'Davidoff Hot Water' perfume which was offered for sale on eBay under the pseudonym 'sandyundbert2009'. According to Coty, the full name and address of the seller were not available on the platform and eBay did not know the real name of the seller. Coty therefore made a test purchase of this counterfeit product and paid the purchase price into a bank account at Stadtsparkasse Magdeburg. Subsequently, Coty contacted Stadtsparkasse Magdeburg and asked for information about the real name and address of the owner of the bank account. Stadtsparkasse Magdeburg refused to give this information and referred to the well-established banking secrecy rules in Germany.

Based on the German Trademark Act, which allows a trademark owner whose trademark is being infringed to ask third parties for information to find the source of the infringement, Coty sued Stadtsparkasse Magdeburg to obtain this information. The lower civil court upheld the complaint, but the court of appeal ruled in favour of Stadtsparkasse Magdeburg, holding that the latter was entitled to rely on banking secrecy.

When the case first came before the Federal Supreme Court, it suspended the proceedings and referred the case to the Court of Justice of the European Union (ECJ) for a preliminary ruling. The ECJ held on July 16 2015 (Case C-580/13) that Article 8(3)(e) of the IP Rights Enforcement Directive (2004/48/EC) must be interpreted as precluding a national provision allowing, in an unlimited and unconditional manner, banking institutions to invoke banking secrecy rules in order to refuse to give the requested information. It was for the national court to determine whether there were other practical ways to obtain such information.

The Federal Supreme Court then took the matter up again. It apparently relied on Coty's statement that it had no chance of getting such information either from the details regarding the seller on the online platform or from eBay itself, and that asking the bank was the only way to obtain this information and to pursue this clear-cut trademark infringement case.

Under these circumstances, the Federal Supreme Court held on October 21 2015 that Coty was entitled to obtain this information from Stadtsparkasse Magdeburg, and that the banking secrecy rules were outweighed by the rights of the trademark owner to pursue an obvious trademark infringement case and to get the necessary information about the infringer. The court held that the right of the account holder to have his/her personal data protected and the rights of the bank to protect the personal data of its customers were outweighed by the justified interest of a trademark owner to protect its IP rights and to take effective steps against counterfeiters.

Further, the Federal Supreme Court apparently considered that Coty could have filed a criminal complaint with the police authorities, which could then have raided the bank to get the information and Coty could have inspected the files of the prosecuting attorney at a later date. The court was of the opinion that this was an unpractical approach and that Coty could not be referred to this theoretical option; Coty should have a direct claim against the bank to get the name and address of the infringer under these specific conditions.

This decision is a step forward for trademark owners seeking to effectively pursue serious trademark infringements. However, it is not a revolution, as trademark owners must apparently use all other practical means (with the exception of a criminal complaint) to obtain the name and address of the infringer. Only if this is not possible will the bank be unable to refuse to give this information, and such result must be anticipated from the outset (based on the clear-cut infringement of DAVIDOFF HOT WATER in the present case).

Arguably, in view of the obvious trademark infringement, the Stadtsparkasse Magdeburg could have given the information voluntarily and could have saved its fight for banking secrecy for less straightforward cases - it could not expect that the judges would allow an obvious trademark infringer with substantial criminal potential to hide behind banking secrecy laws.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg