German trademark law: Right to information to identify the infringing party towards a bank
In the case of the infringement of a trademark, the right to information to identify the infringing party causes fewer problems; in particular, such a comprehensive conflict with data protection law or the guaranteed banking confidentiality. A current ruling of the German Federal Court of Justice (BGH) deals with the question if the German Trademark Act (MarkenG, § 19) grants a right to information to identify the infringing party towards a bank. In the case to be decided a trademark owner made a market observation and detected a trade mark infringement in sales through eBay. The trademark owner bought the brand plagiarism but could not establish and verify the identity of the seller. In connection with the purchase of the brand plagiarism the trademark owner became aware of the bank account number and bank details of the seller and requested information from the responsible bank concerning the account holder. The bank refused the request in view of data protection and banking confidentiality. Therefore the trademark owner filed a lawsuit against the bank to compel the bank to disclose the account holder. The BGH now referred a question to the Court of Justice of the European Communities on the compatibility of the German rules regarding the right to refuse to testify with the principles of the DIRECTIVE 2004/48/EC on the enforcement of intellectual property rights. Art. 8 of the Directive ensures that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who was found to be providing on a commercial scale services used in infringing activities.
As the bank in general was found to be providing on a commercial scale services used in infringing activities (usual banking services) the BGH takes the view that the bank might have an obligation of disclosure, which comes into conflict with the right to refuse to testify in the Code of Civil Procedure. At the moment there is legal uncertainty on this point; some courts consider that there is such a right to information other courts the majority of courts refuse such a right. It remains exciting to wait and see what the European court will do at the final hearing. We will keep you informed.
Dr. Robert Kazemi