Davidoff: Trade Mark Infringers Beware…

Unfortunately for successful trade mark owners, counterfeiters regularly attempt to gain commercial  advantage, by selling imitation or fake goods bearing the successful mark. The issuing of trade mark infringement proceedings is the usual response by the registered trade mark owners in order to gain some form of legal redress. The German Federal Court of Justice (GFCJ) has recently referred an interesting case based on trade mark infringement to the Court of Justice in the European Union (CJEU).

The facts

Davidoff is the owner of the popular trade mark that has been used on a variety of goods, in particular fragrances. Davidoff discovered an infringer was selling imitation Davidoff fragrances on Ebay. In an attempt to discover the identity of the infringer Davidoff purchased the fake fragrances but was only able to uncover the infringer’s bank details.

Davidoff then attempted to obtain the details of the infringer direct from the bank, the bank refused to supply the details, in response Davidoff decided to sue the bank itself in attempt to force it to reveal the identity of the infringer (based on European trade mark legislation, in particular Article 8(1) Enforcement Directive) but were unsuccessful.

However this case has led to a referral to the CJEU for guidance on the correct interpretation on the legislation (Article 8(3)(e) Enforcement Directive on the ‘Right of Information’) in cases of trade mark infringement, in particular:

  1. Is it lawful for the bank to refuse to provide details of an account holder (engaged in unlawful activity) based on the rules of confidentiality?
  2. Should the rights of registered trade mark owners to fully enforce their rights prevail?

It sounds bizarre that an infringer engaged in illegal activity should be given immunity in relation to his confidentially in the above circumstances? We shall have to await the decision of the CJEU to see whose rights prevail.

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