Bank secrecy in case of trade mark infringement?

If the name of a seller who is selling counterfeit products is unknown, it can sometimes prove difficult for the trade mark proprietor to pursue the infringement. The Federal Court of Justice (BGH) had to address the question of whether a bank must provide information about a customer's name and address in the event of an obvious infringement committed by an account holder, or whether it may refuse to do so.

In 2011, a seller offered the perfume 'Davidoff Hot Water' on an internet platform. The perfume offered was a counterfeit product.

The name provided for the responsible seller was false. In order to find out who was actually behind the sale, the trade mark proprietor requested information from the bank about the account holder of the account to which payment was to be made.

The bank refused to provide the information by invoking a right of refusal to testify that was available to it.

As reported: the BGH initially referred the matter to the Court of Justice of the European Union (EuGH) because it involved the interpretation of European law. The Court of Justice of the European Union (EuGH) addressed this with judgment of 16 July 2015 – Az. C-580/13 On the basis of this decision, the BGH now had to rule.

Court's decision

By judgment of 21 October 2015 – Az. I ZR 51/12 the BGH decided that a banking institution must not refuse to provide information about the name and address of an account holder by invoking bank secrecy if the payment of the purchase price for a counterfeit trade mark product was handled via that account. The decision was justified on the basis of the fundamental rights of the trade mark proprietor to protection of intellectual property and to effective legal protection. The fundamental right of the account holder to protection of personal data and the bank's right to freedom of profession had to take a back seat to these rights.

Conclusion

In the fight against product counterfeiting, the rights of trade mark proprietors are accorded high importance and thereby enable effective prosecution of trade mark infringements.