KGaA v Merck Sharp & Dohme Corp & Ors

KGaA v Merck Sharp & Dohme Corp & Ors

Merck US breached the 1970 Agreement by using 'Merck' alone as a name or mark, including on the Internet and in the UK, without a geographical identifier, and by using the 'MERCK' mark in branding and domain names outside the USA and Canada. The 1970 Agreement applies to Internet use and services. Honest concurrent use principles apply only to long-standing domain names and e-mail addresses, not to recent variations. Merck Global's trademarks have reputation in the UK and are infringed by Merck US's activities. Partial revocation is ordered only for specific goods/services where genuine use was not established.

Parties
Claimant: Merck KGaA; Defendant: Merck Sharp & Dohme Corp; Defendant: Merck & Co Inc; Defendant: Merck Sharp & Dohme Limited; Defendant: Intervet UK Limited; Defendant: Intervet International BV
Jurisdiction
England and Wales
Judgment Date
15 January 2016
Procedural Posture
Intellectual Property/contract/trademark / Judgment After Trial
Outcome
Claim allowed in part; counterclaim for partial revocation allowed in part
Legal Topics
Coexistence Agreements, Trademark Infringement, Domain Names, Internet Use of Trademarks, Honest Concurrent Use, Partial Revocation for Non Use
Intellectual Property Contract Law Trademark Law Coexistence Agreements Trademark Infringement Domain Names Internet Use of Trademarks Honest Concurrent Use +1 more

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Parties

Merck KGaA

Claimant

Merck Sharp & Dohme Corp

Defendant

Merck & Co Inc

Defendant

Merck Sharp & Dohme Limited

Defendant

Intervet UK Limited

Defendant

Intervet International BV

Defendant

Procedural Posture

Intellectual Property/contract/trademark / Judgment After Trial

Legal Issues

  1. 1 Interpretation and scope of the 1970 Agreement between Merck Global and Merck US
  2. 2 Application of the 1970 Agreement to Internet use and services
  3. 3 Whether Merck US's activities breach the 1970 Agreement

Ratio Decidendi

Merck US breached the 1970 Agreement by using 'Merck' alone as a name or mark, including on the Internet and in the UK, without a geographical identifier, and by using the 'MERCK' mark in branding and domain names outside the USA and Canada. The 1970 Agreement applies to Internet use and services. Honest concurrent use principles apply only to long-standing domain names and e-mail addresses, not to recent variations. Merck Global's trademarks have reputation in the UK and are infringed by Merck US's activities. Partial revocation is ordered only for specific goods/services where genuine use was not established.

Court Disposition

Claim allowed in part; counterclaim for partial revocation allowed in part

Orders

  • Declaration that Merck US breached the 1970 Agreement and 1975 Protocol
  • Injunction restraining Merck US from using 'Merck' alone as a name or mark in the UK, except as 'MSD', 'Merck Sharp & Dohme', or 'Merck & Co Inc' with a geographical identifier of equal prominence