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Friday, 23 October 2015

Coty v Stadtsparkasse: BGH rules in the wake of CJEU decision

On Wednesday, the German Bundesgerichthof ruled that a bank is obliged to disclose the identity of an the holder of an account into which the proceeds of the sale of a counterfeit product were deposited to the owner of the counterfeit trade mark. The dispute had led to a referal to the CJEU, which was decided on 16 July 2015 (Case C-580/13 Coty Germany GmbH v Stadtsparkasse Magdeburg). From the IPKat post on the CJEU's decision:

Coty was the exclusive licensee for the Community trade mark DAVIDOFF HOT WATER for perfumery. In January 2011, Coty bought a bottle of perfume bearing the trade mark DAVIDOFF HOT WATER from an internet auction platform, paying the purchase price into the seller's bank with the Stadtsparkasse. Finding that it had bought a fake from a seller with a false name, Coty asked the auction platform to provide it with the seller's real name. The person in question admitted to being the account holder but said she didn't sell the fake product and, relying on her right not to give evidence, refused to provide any further information.


Coty contacted the Stadtsparkasse to ask it for the name and address of the account holder. No, said the Stadtsparkasse, invoking its duty under German law to maintain banking secrecy. Coty then sought and obtained an order that the Stadtsparkasse provide the information requested. On appeal, the Higher Regional Court, Naumburg, reversed the trial court’s decision, holding that the request to be provided with that information was not legally justified: even though the current account services provided by the Stadtsparkasse had been used to carry out the infringing activity, since it was a bank it was entitled to refuse to give evidence in civil proceedings, whatever Article 8 of the Intellectual Property Enforcement Directive 2004/48 had to say on the subject.

Coty then appealed to the Bundesgerichtshof which, entertaining doubts as the interpretation to be given to Directive 2004/48, decided to stay the proceedings and ask the Court of Justice: 

‘Must Article 8(3)(e) of Directive 2004/48 be interpreted as precluding a national provision which, in a case such as that in the main proceedings, allows a banking institution to refuse, by invoking banking secrecy, to provide information pursuant to Article 8(1)(c) of that directive concerning the name and address of an account holder?’
Taken by itself, if the German banking law allowed an unlimited refusal to supply the information requested, since its wording did not contain any condition or qualification, this would frustrate the right to information recognised in Directive 2004/48 and was therefore such as to infringe the fundamental right to an effective remedy for intellectual property infringement.  However, it was for the referring court to determine whether there were, under German law, any other means or remedies which would allow the competent judicial authorities to order that the necessary information be provided. Accordingly, the Court ruled:
Cat, not enjoying balancing
Article 8(3)(e) of Directive 2004/48 ... must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide ... information concerning the name and address of an account holder.
Unsurprisingly, the BGH now ruled that the bank was obliged to disclose the identity of the account holder, notwithstanding that the licensee could have filed a criminal complaint against the (unkown) account holder. The fundamental right to the protection of personal data according to Art. 8 Charter of Fundamental Rights of the European Union of the account holder and the bank's professional freedom according to Art. 15 Charter had to yield to the trade mark owner's right to protection of its intellectual property (Art. 17(2) Charter) and right to effective remedy (Art. 47 Charter). Muses Merpel, the joys of balancing fundamental rights always provides the result one just needed...

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