Coty Germany GmbH v Stadtsparkasse Magdeburg.

• Jurisdiction: European Union
• Court: Court of Justice (European Union)
• ECLI: ECLI:EU:C:2015:243
• Date: 16 April 2015
• Docket Number: C-580/13
• Procedure Type: Reference for a preliminary ruling

OPINION OF ADVOCATE GENERAL

CRUZ VILLALÓN

delivered on 16 April 2015 ( 1 )

Case C‑580/13

Coty Germany GmbH

v

Stadtsparkasse Magdeburg

(Request for a preliminary ruling from the Bundesgerichtshof (Germany))

‛Intellectual property — Sale of counterfeit goods — Directive 2004/48/EC — Article 8(1) and (3)(e) — Right to information in the context of proceedings for infringement of an intellectual property right — Legislation of a Member State which allows banking institutions to refuse a request for information relating to a bank account (banking secrecy) — Charter of Fundamental Rights of the European Union — Articles 8, 17(2), 47 and 52(1) — Proportionality of the limitation of a fundamental right’

1. The question referred by the Bundesgerichtshof gives the Court of Justice the opportunity to develop in more detail its case-law in relation to Article 8 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights ( 2 ) in an area which has not been examined until now. To date, the Court has dealt in particular with disputes between, on the one hand, holders of intellectual property rights and, on the other, internet users who download or share content protected by copyright, whose details are sought from internet service providers so that action can be taken against them once they have been identified. ( 3 ) On this occasion, however, it is a banking institution which, relying on banking secrecy, refuses to furnish the information needed to bring civil proceedings against a person using the technical possibilities offered by the internet to trade in counterfeit goods.

2. In short, the issue which arises in the present case is whether a third party who did not participate in an alleged infringement of the intellectual property right concerned but who ‘was found to be providing on a commercial scale services used in infringing activities’ (Article 8(1)(c) of Directive 2004/48) — in this particular case, a banking institution — may, under that directive and relying on banking secrecy, refuse to provide the information (specifically, the name and address of the holder of a bank account) requested from it by the holder of the intellectual property right or the person entitled to defend that right. ( 4 )

I – Legislative framework

A – EU law

3. According to recital 10 in the preamble to Directive 2004/48, the objective of the directive is to approximate the legislation of the Member States in relation to protection of intellectual property rights so as to ensure a high, equivalent and homogeneous level of protection of such rights in the internal market. Recital 8 states that ‘[t]he disparities between the systems of the Member States as regards the means of enforcing intellectual property rights are prejudicial to the proper functioning of the Internal Market and make it impossible to ensure that intellectual property rights enjoy an equivalent level of protection throughout the Community. This situation does not promote free movement within the Internal Market or create an environment conducive to healthy competition’. Recital 9 in the preamble to the directive observes that ‘… [i]ncreasing use of the internet enables pirated products to be distributed instantly around the globe’.

4. Article 2(3) of Directive 2004/48 stipulates: ‘This directive shall not affect: (a) … Directive 95/46/EC [of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data]’, a fact which is also referred to in recital 15 in the preamble to the directive.

5. Article 3 of Directive 2004/48 provides that: ‘1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. 2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

6. Article 8 of Directive 2004/48, entitled ‘Right of information’, stipulates as follows: ‘1. Member States shall ensure 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: … (c) was found to be providing on a commercial scale services used in infringing activities, … 2. The information referred to in paragraph 1 shall, as appropriate, comprise: (a) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers; … 3. Paragraphs 1 and 2 shall apply without prejudice to other statutory provisions which: … (e) govern the protection of confidentiality of information sources or the processing of personal data.’

B – National law

7. Paragraph 19 of the German Law on trade marks of 25 October 1994, as subsequently amended (Markengesetz; ‘Law on trade marks’), is entitled ‘Right to information’ and transposes into German law the right laid down in Article 8 of Directive 2004/48. Paragraph 19(2) is worded as follows: ‘In the case of an obvious infringement or in cases where the proprietor of a trade mark or a trade name has brought an action against the infringer, the right also stands (notwithstanding subparagraph 1) against a person who, on a commercial scale, 1. was in possession of the infringing goods; 2. used the infringing services; 3. provided services used in the infringing activities, or 4. was indicated by a person referred to in points 1, 2 or 3 as being involved in the production, manufacture or distribution of those goods or in the provision of those services, unless that person is permitted to refuse to give evidence in proceedings against the infringer under Paragraphs 383 to 385 of the Civil Procedure Code ...’

8. Paragraph 383(1)(6) of the German Civil Procedure Code (Zivilprozessordnung, in the version of 5 December 2005, as subsequently amended; ‘ZPO’) grants persons who, as a result of their office, position or trade, have been entrusted with facts which, owing to their nature or in accordance with a legal provision, must be kept secret, the right to refuse to give evidence concerning facts to which the obligation of secrecy relates.

II – The dispute in the main proceedings and the question referred for a preliminary ruling

9. The request for a preliminary ruling has arisen in the context of a dispute between the German company Coty Germany GmbH (‘Coty Germany’), exclusive licensee of the Community trade mark ‘Davidoff Hot Water’, and Stadtsparkasse Magdeburg (‘the Sparkasse’).

10. In January 2011, Coty Germany purchased a bottle of perfume bearing the trade mark ‘Davidoff Hot Water’ on an online auction platform. It paid the price of the product into the Sparkasse bank account supplied by the seller. After Coty Germany discovered that it had purchased a counterfeit product, it asked the auction platform to provide it with the real name of the holder of the user account from which the perfume was sold to it (the sale had been made under an alias). The person named admitted to being the holder of the user account on the online auction platform but denied being the seller of the product and, relying on her right not to give evidence, refused to provide further information. Coty Germany then contacted the Sparkasse under Paragraph 19(2) of the Law on trade marks, asking it for the name and address of the holder of the bank account into which it had been required to pay the price of the counterfeit goods purchased. The Sparkasse invoked banking secrecy and refused to provide Coty Germany with that information. Coty Germany then brought an action before the Landgericht Magdeburg (Magdeburg Regional Court), which ordered the Sparkasse to provide the information requested. The Sparkasse lodged an appeal with the Oberlandesgericht Naumburg (Naumburg Higher Regional Court), relying on Paragraph 383(1)(6) of the ZPO (to which Paragraph 19(2) of the Law on trade marks refers), which protects, inter alia, the right of banking institutions not to give evidence in civil proceedings by invoking banking secrecy. The appeal court found in favour of the Sparkasse. Coty Germany then appealed in cassation to the Bundesgerichtshof (Federal Court of Justice), claiming again that the banking institution should be ordered to provide it with the information requested.

11. In those circumstances, the Bundesgerichtshof decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling: ‘Must Article 8(3)(e) of Directive 2004/48/EC 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?’

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