Limits of
Information for
Trademarks.
Limits of
Information for
Trademarks.
from
How far do information claims go in trademark law? A recent ruling by the Federal Court of Justice draws clear lines as to when and to what extent information about supply chains must be disclosed.
Starting point
A well-known vehicle manufacturer is the owner of globally recognized trademarksfor land vehicles. It discovered that a customer of an automotive parts trading company was selling a counterfeit air filter bearing its trademarks via an online platform. Following a warning, the customer stated that he had purchased the product from the automotive parts retailer.
The trading company then undertook to refrain from selling such products. The vehicle manufacturer also demanded comprehensive information on the origin and distribution channels of the allegedly counterfeit air filters, including the names and addresses of manufacturers, suppliers, previous owners and commercial customers, as well as the quantities and prices of the goods in question.
Although the automotive parts trading company provided information, it stated that it was impossible to assign individual counterfeit filters to specific suppliers or customers due to the internal warehouse organization – the air filters were stored together by different suppliers. An inquiry with the potential suppliers did not provide any clarity.
Dispute over the scope of the duty to provide information in trademark law
The Regional Court initially imposed a small penalty payment, as the information was only considered to be partially fulfilled. It took the view that the retail company did not have to name all suppliers for whom there was no concrete knowledge of the supply of counterfeits.
The Higher Regional Court annulled the penalty payment and stated that the obligation to provide information must either be fulfilled in full or that it was simply impossible to provide the requested information. It dismissed the vehicle manufacturer’s appeal.
Federal Court of Justice on the scope of the duty to provide information in trademark law
The Federal Court of Justice (Decision of 07.11.2024 – Ref. I ZB 31/24 ) confirmed the decision of the Higher Regional Court and dismissed the vehicle manufacturer’s appeal on points of law. The Federal Court of Justice clarified that the enforcement of a claim for information must be carried out strictly in accordance with the wording of the judgment issued.
If the interpretation of the enforcement order concerning the provision of information on the basis of trademark law results in an obligation on the part of the debtor to name to the creditor those third parties who have delivered trademark-infringing goods to him or who have received trademark-infringing goods from him, the debtor does not have to name all possible suppliers and customers for whom this is merely possibly the case.
The Federal Court of Justice emphasized that the vehicle manufacturer’s titled claim for information related exclusively to those suppliers and customers who had actually supplied or purchased trademark-infringing goods. The Federal Court of Justice rejected any further obligation to name all potentially relevant third parties if a concrete allocation is impossible.
The Federal Court of Justice also took a critical look at the view that assumes an obligation to name all possible suppliers if it is impossible to make a specific allocation (as has been argued in some case law). He clarified that such an interpretation of the enforceable title is out of the question. Both German trademark law and the underlying EU Directive limit the obligation to provide information to those who were actually involved in the infringement.
In addition, Federal Court of Justice confirmed the Higher Regional Court’s finding that it was objectively impossible for the automotive parts retailer to fulfill its obligation to provide information, as it was no longer possible to assign the counterfeit filters to specific suppliers or customers due to internal warehousing.
Effects on practice
Limits of the right to information
It strengthens the position of companies that are confronted with claims for information. The decision makes it clear that an enforceable right to information is limited to third parties who can be specifically proven to be involved and cannot be extended to a “fishing expedition” through the entire list of suppliers and customers.
Protection of the debtor from unreasonable obligations
If a company can prove that it is objectively impossible for it to identify the specific origin or exact distribution channel of infringing goods (e.g. due to mixed stocks), it cannot be forced to disclose all potential parties involved. This protects trade secrets and prevents disproportionate burdens.
Difficulties for trademark owners
However, this poses a challenge for trademark owners, as the fight against counterfeiting can become more complex if it is difficult to prove the specific involvement of each individual link in the chain. The ruling places the burden of proof for the “impossibility” of providing information on the debtor.
Conclusion
In summary, it can be said that with this decision, the Federal Court of Justice clarifies the requirements for information claims in enforcement and rebalances the relationship between the trademark owner’s interest in information and the company’s protection against excessive disclosure obligations.
The decision poses a challenge for trademark owners. Retailers who knowingly or unknowingly do not (or no longer) know from whom or to whom they have sold infringing goods no longer owe any information according to Federal Court of Justice.
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