Merck KGaA v Merck Sharp & Dohme Corp & Ors

Merck KGaA v Merck Sharp & Dohme Corp & Ors

The Court held that the 1970 Agreement, interpreted under German law, precluded Merck US from using 'Merck' alone as a business name, trade name, domain name, or email address in the UK, and as a trade mark for goods and services. The acts complained of were targeted at the UK and not de minimis. However, the judge's findings on trade mark infringement were too general and inadequately reasoned, and the final order was made without sufficient reasons or opportunity for representations. The issues of partial revocation, infringement, de minimis, and relief were remitted to the High Court for re-assessment.

Parties
Claimant/respondent/appellant: Merck KGaA; Defendant/appellant/respondent: Merck Sharp & Dohme Corp; Defendant/appellant/respondent: Merck & Co., Inc.; Defendant/appellant/respondent: Merck Sharp & Dohme Ltd; Defendant/appellant/respondent: Intervet UK Ltd; Defendant/appellant/respondent: Intervet International BV
Jurisdiction
England and Wales
Judgment Date
24 November 2017
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal allowed in part; cross-appeal allowed in part; issues of partial revocation, infringement, de minimis, and relief remitted to High Court for re-assessment.
Legal Topics
Trade Marks, Breach of Contract, Co Existence Agreements, Internet Targeting, Injunctions, Partial Revocation of Trade Marks
Intellectual Property Contract Trade Marks Breach of Contract Co Existence Agreements Internet Targeting Injunctions Partial Revocation of Trade Marks

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Parties

Merck KGaA

Claimant/respondent/appellant

Merck Sharp & Dohme Corp

Defendant/appellant/respondent

Merck & Co., Inc.

Defendant/appellant/respondent

Merck Sharp & Dohme Ltd

Defendant/appellant/respondent

Intervet UK Ltd

Defendant/appellant/respondent

Intervet International BV

Defendant/appellant/respondent

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Whether the use of 'Merck' by Merck US in the UK breached the 1970 Agreement and infringed registered trade marks; whether the 1970 Agreement and Protocol preclude use of 'Merck' as a business name, domain name, or email address; whether the acts complained of were targeted at the UK; whether the acts were de minimis; whether the principle of equilibrium/honest concurrent use applied; whether the own name defence applied; whether the judge's relief was appropriate and proportionate.

Ratio Decidendi

The Court held that the 1970 Agreement, interpreted under German law, precluded Merck US from using 'Merck' alone as a business name, trade name, domain name, or email address in the UK, and as a trade mark for goods and services. The acts complained of were targeted at the UK and not de minimis. However, the judge's findings on trade mark infringement were too general and inadequately reasoned, and the final order was made without sufficient reasons or opportunity for representations. The issues of partial revocation, infringement, de minimis, and relief were remitted to the High Court for re-assessment.

Court Disposition

Appeal allowed in part; cross-appeal allowed in part; issues of partial revocation, infringement, de minimis, and relief remitted to High Court for re-assessment.

Orders

  • Declaration of breach of contract by Merck Sharp & Dohme Corp in the UK under the 1970 Agreement and 1975 Protocol.
  • Declaration of infringement of registered trade marks by all defendants in the UK.