The Court of Justice of the European Union (CJEU) in Coty Germany GmbH v Stadtsparkasse Magdeburg (C-580/13) has held that national legislation allowing, in an unlimited and unconditional manner, a
The Court of Justice of the European Union (CJEU) in Coty Germany GmbH v Stadtsparkasse Magdeburg (C-580/13) has held that national legislation allowing, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide information on the name and address of an account holder implicated in IP infringement, is not compatible with the provisions of Directive 2004/48/EC on the enforcement of intellectual property rights (the IP Enforcement Directive).
Background
Coty Germany GmbH (Coty) was the exclusive licensee for the trade mark DAVIDOFF HOT WATER for perfumes. Coty bought a bottle of counterfeit DAVIDOFF HOT WATER perfume on an internet auction platform, making payment to the seller's bank account with Stadtsparkasse Magdeburg (Stadtsparkasse). Coty obtained the seller's name from the auction platform. However, the seller denied she had sold the product and refused to give any further information. Coty therefore asked Stadtsparkasse for the name and address of the bank account holder but Stadtsparkasse refused, invoking German banking secrecy law. Accordingly, Coty sought a court order compelling Stadtsparkasse to hand over the information.
Eventually, the matter reached the German Bundesgerichtshof (Federal Court of Justice), which referred the matter to the CJEU. More specifically, the CJEU was asked whether Article 8(3)(e) of the IP Enforcement Directive precludes national legislation, which would allow a banking institution to refuse to provide the name and address of an account holder, by invoking banking secrecy. Article 8(1) of the IP Enforcement Directive requires Member States to ensure that information on the origin and distribution networks of infringing goods or services can be obtained and Article 8(3)(c) specifically states that this right should be without prejudice to other statutory provisions that protect confidentiality of information sources or the processing of personal data (such as those invoking banking secrecy).
Ruling
The CJEU acknowledged that the right to effective exercise of intellectual property and the right to protection of personal data were both fundamental rights so member states must take care to strike a fair balance between such rights in their national law. However, the Court held that the IP Enforcement Directive did preclude national legislations which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that Directive, information concerning the name and address of an account holder.
The CJEU was not in a position to determine whether the provision under question did allow refusal to provide the relevant information in an unlimited and unconditional manner. It therefore referred the case back to the Bundesgerichtshof to determine whether there were "any other means or other remedies which would allow the competent judicial authorities to order that the necessary information concerning the identity of persons who are covered by article 8(1) of the [IP Enforcement Directive] be provided, in view of the specific circumstances of each case".
Conclusion
The CJEU decision is positive for rights owners in that it confirms banking secrecy laws do not automatically trump their rights to disclosure of information under the IP Enforcement Directive. It is of particular assistance to those enforcing their rights against online infringers whose identities are notoriously difficult to ascertain. However, it must be noted that the decision also acknowledges the importance of data privacy and also allows for national courts to determine where the correct balance between these sometimes competing rights should lie. Whilst this appears sensible, it could lead to individual member states balancing these rights differently, which may make life difficult for businesses operating across the whole EU.
Background
Coty Germany GmbH (Coty) was the exclusive licensee for the trade mark DAVIDOFF HOT WATER for perfumes. Coty bought a bottle of counterfeit DAVIDOFF HOT WATER perfume on an internet auction platform, making payment to the seller's bank account with Stadtsparkasse Magdeburg (Stadtsparkasse). Coty obtained the seller's name from the auction platform. However, the seller denied she had sold the product and refused to give any further information. Coty therefore asked Stadtsparkasse for the name and address of the bank account holder but Stadtsparkasse refused, invoking German banking secrecy law. Accordingly, Coty sought a court order compelling Stadtsparkasse to hand over the information.
Eventually, the matter reached the German Bundesgerichtshof (Federal Court of Justice), which referred the matter to the CJEU. More specifically, the CJEU was asked whether Article 8(3)(e) of the IP Enforcement Directive precludes national legislation, which would allow a banking institution to refuse to provide the name and address of an account holder, by invoking banking secrecy. Article 8(1) of the IP Enforcement Directive requires Member States to ensure that information on the origin and distribution networks of infringing goods or services can be obtained and Article 8(3)(c) specifically states that this right should be without prejudice to other statutory provisions that protect confidentiality of information sources or the processing of personal data (such as those invoking banking secrecy).
Ruling
The CJEU acknowledged that the right to effective exercise of intellectual property and the right to protection of personal data were both fundamental rights so member states must take care to strike a fair balance between such rights in their national law. However, the Court held that the IP Enforcement Directive did preclude national legislations which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that Directive, information concerning the name and address of an account holder.
The CJEU was not in a position to determine whether the provision under question did allow refusal to provide the relevant information in an unlimited and unconditional manner. It therefore referred the case back to the Bundesgerichtshof to determine whether there were "any other means or other remedies which would allow the competent judicial authorities to order that the necessary information concerning the identity of persons who are covered by article 8(1) of the [IP Enforcement Directive] be provided, in view of the specific circumstances of each case".
Conclusion
The CJEU decision is positive for rights owners in that it confirms banking secrecy laws do not automatically trump their rights to disclosure of information under the IP Enforcement Directive. It is of particular assistance to those enforcing their rights against online infringers whose identities are notoriously difficult to ascertain. However, it must be noted that the decision also acknowledges the importance of data privacy and also allows for national courts to determine where the correct balance between these sometimes competing rights should lie. Whilst this appears sensible, it could lead to individual member states balancing these rights differently, which may make life difficult for businesses operating across the whole EU.