Merck KGaA v Merck Sharp & Dohme LLC & Ors

Merck KGaA v Merck Sharp & Dohme LLC & Ors

The court held that declaratory relief identifying specific breaches of the 2020 order was appropriate and useful, given the complexity and ongoing disputes between the parties. Applying strict construction to the order and its exceptions, the court found that some uses of 'Merck' by the Defendants (notably generic email addresses, certain online materials, and links to Merck-branded content) constituted breaches of the order, as they were targeted at the UK and not excused by exceptions such as inadvertent error or permitted use by employees outside the UK. Other alleged breaches were not established, either because the use was not targeted at the UK, fell within an exception, or did not...

Parties
Claimant: Merck KGaA; First Defendant: Merck Sharp & Dohme LLC (formerly Merck Sharp & Dohme Corp); Second Defendant: Merck & Co. Inc; Third Defendant: Organon Pharma (UK) Limited (formerly Merck Sharp & Dohme Limited); Fourth Defendant: MSD Animal Health UK Limited (formerly Intervet UK Limited); Fifth Defendant: Intervet International B.V.
Jurisdiction
England and Wales
Judgment Date
27 November 2024
Procedural Posture
Application for Declaratory Relief (post Judgment Enforcement) / Judgment on Application for Declarations of Breach of Order
Outcome
Application succeeded in part; declarations of breach granted in respect of some, but not all, alleged breaches.
Legal Topics
Trade Mark Infringement, Breach of Contract, Declaratory Relief, Construction of Court Orders, Targeting in Online IP Infringement, Burden of Proof in Civil Proceedings
Intellectual Property Contract Civil Procedure Trade Mark Infringement Breach of Contract Declaratory Relief Construction of Court Orders Targeting in Online IP Infringement +1 more

Case Brief

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Parties

Merck KGaA

Claimant

Merck Sharp & Dohme LLC (formerly Merck Sharp & Dohme Corp)

First Defendant

Merck & Co. Inc

Second Defendant

Organon Pharma (UK) Limited (formerly Merck Sharp & Dohme Limited)

Third Defendant

MSD Animal Health UK Limited (formerly Intervet UK Limited)

Fourth Defendant

Intervet International B.V.

Fifth Defendant

Procedural Posture

Application for Declaratory Relief (post Judgment Enforcement) / Judgment on Application for Declarations of Breach of Order

Legal Issues

  1. 1 Whether the First, Second, and Fifth Defendants breached the order of 28 July 2020 by infringing trade marks and/or breaching contract regarding use of 'Merck' in the UK;
  2. 2 Whether declaratory relief should be granted identifying specific breaches;
  3. 3 How exceptions and carve-outs in the order (notably inadvertent error and permitted uses) apply;

Ratio Decidendi

The court held that declaratory relief identifying specific breaches of the 2020 order was appropriate and useful, given the complexity and ongoing disputes between the parties. Applying strict construction to the order and its exceptions, the court found that some uses of 'Merck' by the Defendants (notably generic email addresses, certain online materials, and links to Merck-branded content) constituted breaches of the order, as they were targeted at the UK and not excused by exceptions such as inadvertent error or permitted use by employees outside the UK. Other alleged breaches were not established, either because the use was not targeted at the UK, fell within an exception, or did not...

Court Disposition

Application succeeded in part; declarations of breach granted in respect of some, but not all, alleged breaches.

Orders

  • Declarations that the First Defendant (and, in some cases, the Second Defendant) breached Paragraphs 2 and/or 3 of the 28 July 2020 order in respect of specified uses of 'Merck' as set out in the judgment's summary table.
  • Declarations that other alleged breaches were not established.