Third-party liability for information claims in trade mark infringement cases

Author: Anthonia Ghalamkarizadeh (Hogan Lovells)

Davidoff Hot Water”, Bundesgerichtshof (German Federal Supreme Court), I ZR 51/12, 17 October 2013

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt228, first published online: December 23, 2013

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

Legal context

Directive 2004/48 on the enforcement of intellectual property rights (‘the Enforcement Directive’) provides in Article 8(1) that Member States in their national legislation shall ensure that right owners can enforce information claims not only against the alleged infringer but also against certain third parties with commercial connections to the infringement. This includes persons who were found to have provided on a commercial scale services used in the infringing activities. In Germany, the corresponding right to request information from third parties has been implemented by Article 19(2)(1) No 3 of the German Trade Mark Act (MarkenG).

Article 8(3) of the Enforcement Directive regulates the relationship between the provisions of the Enforcement Directive and other statutory provisions dealing with information claims. Paragraph 3(e) provides that the entitlements under Article 8 ‘shall apply without prejudice to other statutory provisions which govern the protection of confidentiality of information sources or the processing of personal data’. Paragraph 383 of the German Court of Civil Procedure (ZPO) is such a statutory provision. It allows witnesses to refuse testimony for various reasons of a personal or professional nature. Witnesses such as medics, lawyers and bankers may rely on this exemption if, in exercising their profession, they have been entrusted with information that is confidential by nature or by law.

The German Federal Supreme Court had to decide on the order of precedence among the right to information and the right to refuse testimony for professional reasons.


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.


The German Supreme Court considered the sale of the product ‘Davidoff Hot Water’ to constitute an obvious case of trade mark infringement. Under the German rules on third-party liability for information claims, Article 19(2)(1) No 3 MarkenG, the savings bank would generally be liable for revealing the requested personal information about its customer. It had provided a commercial service to the alleged infringer which had been used in the course of the infringing acts. Against this obligation, the defendant savings bank invoked its right to refuse testimony under para 383 ZPO, relying on its confidentiality obligations in banking matters. The German rules on information claims against third parties in trade mark infringement cases are based on the Enforcement Directive and accordingly must be interpreted in the light of European Community law. The German Supreme Court therefore referred the question to the Court of Justice of the European Union (CJEU) whether in the present conflict the interests of the trade mark owner override the confidentiality obligations of the defendant savings bank—which is the preliminary view of the German court.

Practical significance

The CJEU's decision will further define the scope of trade mark owners' rights vis-à-vis third parties which are not otherwise responsible for the trade mark infringement. Should the CJEU concur with the German court that the interests of trade mark owners prevail over banking secrecy, this may be the starting point of further debate. Would other persons who, under the national rules of Member States, are exempt from testifying, such as doctors or lawyers, also be obliged to disclose confidential information? It will be difficult to draw clear boundaries in this intersection of competing interests. The likely outcome is a flexible approach, allowing for an individual balancing of rights and interests in each individual case of infringement and leaving it to national courts to shape the case law.

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