Merck KGaA v Merck Sharp & Dohme Corp & Ors [2017] EWCA Civ 1834 (24 November 2017)

Merck KGaA v Merck Sharp & Dohme Corp & Ors [2017] EWCA Civ 1834 (24 November 2017)

The Court of Appeal held that Merck US's use of 'Merck' in the UK, including on websites and in business/trade mark contexts, breached the 1970 Agreement and infringed Merck Global's UK trademarks. The injunctive relief was largely upheld, but the scope of the injunction and the specifications of the trademarks were...

Source-derived case information.

Citation
[2017] EWCA Civ 1834
Parties
Claimant/appellant/respondent: Merck KGaA; Defendant/respondent/appellant: Merck Sharp & Dohme Corp; Defendant/respondent/appellant: Merck & Co., Inc.; Defendant/respondent/appellant: Merck Sharp & Dohme Ltd; Defendant/respondent/appellant: Intervet UK Ltd; Defendant/respondent/appellant: Intervet International BV
Jurisdiction
England and Wales
Judgment Date
24 November 2017
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division, Patents Court)
Outcome
Appeal and cross-appeal allowed in part and dismissed in part; High Court's findings largely affirmed with clarifications.
Legal Topics
Trademark Infringement, Breach of Contract, Territorial Trademark Rights, Concurrent Use, Internet and Domain Name Use, Injunctions, Revocation for Non Use
Intellectual Property Contract Trademark Trademark Infringement Breach of Contract Territorial Trademark Rights Concurrent Use Internet and Domain Name Use +2 more

Source-derived case record

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 4 Party arguments 2
Sign in to unlock

Parties

Merck KGaA

Claimant/appellant/respondent

Merck Sharp & Dohme Corp

Defendant/respondent/appellant

Merck & Co., Inc.

Defendant/respondent/appellant

Merck Sharp & Dohme Ltd

Defendant/respondent/appellant

Intervet UK Ltd

Defendant/respondent/appellant

Intervet International BV

Defendant/respondent/appellant

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division, Patents Court)

Legal Issues

  1. 1 Whether Merck US breached the 1970 Agreement and 1975 Protocol by using 'Merck' in the UK as a business name and trademark
  2. 2 Whether Merck US infringed Merck Global's UK registered trademarks
  3. 3 Whether the High Court's injunctive relief and orders were correct in scope and law

Ratio Decidendi

The Court of Appeal held that Merck US's use of 'Merck' in the UK, including on websites and in business/trade mark contexts, breached the 1970 Agreement and infringed Merck Global's UK trademarks. The injunctive relief was largely upheld, but the scope of the injunction and the specifications of the trademarks were subject to clarification and adjustment. The 'own name' defence and arguments based on honest concurrent use and equilibrium were rejected on the facts. The appeal and cross-appeal were allowed in part and dismissed in part, with the High Court's findings substantially affirmed.

Court Disposition

Appeal and cross-appeal allowed in part and dismissed in part; High Court's findings largely affirmed with clarifications.

Orders

  • Injunction against Merck US restraining use of 'Merck' in the UK except as permitted by the agreements
  • Partial revocation of Merck Global's trademarks for non-use in respect of certain goods/services