The German Federal Court of Justice has referred questions to the European Court of Justice (CJEU) regarding the scope of information claims a trademark owner can invoke against third parties in cases of alleged trademark infringement.

Third party liability for information claims in trademark infringement cases

In October 2013 the German Federal Supreme Court referred questions to the CJEU regarding the scope of information claims a trademark owner can invoke against third parties in cases of alleged trademark infringement.

Background of the trademark infringement case

The claimant had purchased a fragrance called "Davidoff Hot Water" on the online marketplace eBay, transferring the purchase price to an account at a local savings bank. After discovering that the product was a counterfeit, the claimant tried to unveil the identity of the seller. Having exhausted other sources of information, the claimant brought an information claim against the savings bank, seeking to obtain the personal data of the account holder. The court at first instance granted the information order, but at second instance the action was dismissed. The claimant appealed on points of law to the German Federal Supreme Court.

Information claims vs. banking confidentiality

The Supreme Court considers the sale of the product "Davidoff Hot Water" to constitute an obvious case of trademark infringement. Hence, under the German rules on third party liability for information claims, the savings bank would generally be liable for revealing the requested personal information. It provided a commercial service to the infringer which was used in the course of the infringing acts. That said, under the German Rules of Civil Procedure a person may refuse to give evidence if the respective information is subject to confidentiality. The defendant savings bank relied on its confidentiality obligations in banking matters. The potential conflict between confidentiality obligations and the effective enforcement of trademark rights is addressed by Art. 8 para 3 lit e) of the Directive 2004/48/EC on the enforcement of intellectual property rights (the "Enforcement Directive"). The German rules are based on said Directive and accordingly must be interpreted in the light of European Union law. The Supreme Court therefore referred the question to the CJEU whether in the present conflict the interests of the trademark owner override the confidentiality obligations of the defendant savings bank – which is the  preliminary view of the German court.

The CJEU's decision will further define the scope of trademark owners' rights vis-à-vis third parties otherwise not responsible for the trademark infringement.

The German press statement of the German Federal Supreme Court of 17 October 2013 can be found here.