Trade marks win over secrecy in German banking Magnus Hirsch, SKW Schwarz Rechtsanwälte, Frankfurt continued from page 1 and abides by established, legitimate, substantial, and nonpretextual qualitycontrol measures” for its FreeStyle strips. Abbott convinced the court that the sale of test strips outside of its quality control would diminish the value of Abbott’s trade mark, because, for example, it could not “execute effective targeted recalls, since it will not know in what country the product to be recalled can be found. Instead, it will be forced to recall none or all of a product.” Following this decision on 20 November 2015, Abbott moved to amend its complaint by adding 53 new defendants to the case — primarily US based wholesalers of gray market FreeStyle test strips — and moved for injunctive relief against these parties as well. This case is still pending and the injunction is only preliminary and not permanent, but it offers support for companies seeking to enjoin the sale of gray market pharmaceutical and medical products in the United States. One important takeaway from this case is that even if the domestic and international products are otherwise identical, brand owners have a cause of action under the trade mark laws against materially different pharmaceutical products even where material differences exist only between the packaging and inserts. With its 21 October 2015 decision, the German Federal Supreme Court materially strengthened the trade mark owner’s position facilitating the enforcement against counterfeiters. While until now the trade mark owner was forced to file for criminal action in order to obtain the name and address of a bank account holder, the highest German court now confirmed that banks have to disclose the name and address of the account holder where a bank account has been used to receive monies resulting from sales of counterfeits. In the specific case, the plaintiff, a licensee for manufacturing and distribution of Davidoff perfumes, conducted test purchases through the internet platform of eBay and money was paid to a bank account at the Stadtsparkasse Magdeburg. Yet, the plaintiff was not able to find out who the seller of the counterfeit perfume was. Therefore it turned to the Sparkasse requesting information on the name and address of the bank account, a claim which was refused by the Sparkasse with reference to banking secrecy. The plaintiff took the case to court and in the first instance, the District Court ordered that the bank had to disclose who the account owner was, while the Appellate Court overruled and rejected the claim. Then, the German Federal Supreme Court suspended the proceedings, asking the European Court of Justice whether a provision allowing a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of the Enforcement Directive (2004/48/EC), information concerning the name and address of an account holder complied with the Directive. On 16 July 2015, the European Court of Justice decided that Art. 8 (3) (e) of the Enforcement Directive had to be interpreted in that a national provision which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide information concerning the name and address of an account holder was against the Enforcement Directive. This decision was subject national courts to decide on each of such provisions whether such general, unlimited and unconditional right of refusal was granted. In addition, the national courts would have to evaluate whether there were other means for the trade mark owner to obtain the respective information. Now, everyone was eager to see what this would mean in the specific case and it took only three months for the German Federal Supreme Court to decide that a bank cannot- on the basis of banking secrecy- refuse to disclose the name and address of a bank account holder of an account that was used for selling counterfeit items. Both the right to data protection of the account owners and the constitutional professional freedom of the bank have to stand back against the constitutional right of the trade mark owner for protection of its intellectual property and an effective enforcement of same. What has now been decided for the banking secrecy will likely apply to other rights to refuse to give evidence. Needless to say that this is true not only for perfumes but for pharmaceuticals too. 91st PTMG Conference The Savoy London 14th - 15th March 2016 Registration will open mid January 3