KGaA v Merck Sharp & Dohme Corp & Ors

KGaA v Merck Sharp & Dohme Corp & Ors

The court held that Merck Global’s trade mark specifications must be limited to the sub-categories of pharmaceutical products for which there was proven use, as determined by reference to the British National Formulary categories and the perception of the average consumer. The court found that Merck US’s use of 'Merck' in the UK, including on websites, social media, and other materials, constituted trade mark infringement and breach of contract, was not de minimis, and warranted declaratory and injunctive relief, subject to specific carve-outs and compliance mechanisms.

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
20 May 2020
Procedural Posture
Intellectual Property/contractual Dispute / Post Trial Judgment on Remitted Issues
Outcome
Declaratory and injunctive relief granted to Merck Global; partial revocation of trade marks ordered; counterclaim addressed as per original order with amendments.
Legal Topics
Trade Mark Infringement, Partial Revocation, Breach of Contract, Remedies, Jurisdiction
Intellectual Property Contract Law Trade Mark Infringement Partial Revocation Breach of Contract Remedies Jurisdiction

Case Brief

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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/contractual Dispute / Post Trial Judgment on Remitted Issues

Legal Issues

  1. 1 Scope of partial revocation of Merck Global’s registered trade marks
  2. 2 Whether Merck US’s activities constituted use in the UK in the course of trade in relation to relevant goods or services
  3. 3 Whether any such uses were de minimis

Ratio Decidendi

The court held that Merck Global’s trade mark specifications must be limited to the sub-categories of pharmaceutical products for which there was proven use, as determined by reference to the British National Formulary categories and the perception of the average consumer. The court found that Merck US’s use of 'Merck' in the UK, including on websites, social media, and other materials, constituted trade mark infringement and breach of contract, was not de minimis, and warranted declaratory and injunctive relief, subject to specific carve-outs and compliance mechanisms.

Court Disposition

Declaratory and injunctive relief granted to Merck Global; partial revocation of trade marks ordered; counterclaim addressed as per original order with amendments.

Orders

  • Declaration that Merck US breached clause 7 of the 1970 Agreement by using 'Merck' as a trade mark and as a business name in the UK.
  • Declaration that the Defendants infringed Merck Global’s UK and International trade marks by use of 'Merck' as a trade mark in the UK.