KGaA v Merck Sharp & Dohme Corp & Ors [2020] EWHC 1273 (Ch) (20 May 2020)

KGaA v Merck Sharp & Dohme Corp & Ors [2020] EWHC 1273 (Ch) (20 May 2020)

Merck Global's trade mark specifications are to be restricted to categories where proven use exists, as exemplified by nine British National Formulary (BNF) categories, excluding significant areas where no use was shown. Merck US's use of 'Merck' on targeted websites, social media, and related materials constitutes trade mark infringement where such use creates a link in the mind of the average consumer between the sign and goods/services marketed in the UK, affecting the essential function of the mark. Mere entity or corporate use is not infringing; use in relation to goods/services or promotional activities is infringing. Use in relation to vaccines is not protected under s.10(1) but...

Citation
[2020] EWHC 1273 (Ch)
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 / Post Remittal Judgment Following Court of Appeal Remittal
Outcome
Partial revocation of Merck Global's trade marks ordered; infringement found in respect of specified uses by Merck US; relief to be granted for breach of contract and infringement; interest issues arising from interim payments addressed.
Legal Topics
Trade Mark Revocation, Trade Mark Infringement, Partial Revocation, Use in Course of Trade, Breach of Contract, Specification of Goods, Likelihood of Confusion
Intellectual Property Contract Trade Mark Revocation Trade Mark Infringement Partial Revocation Use in Course of Trade Breach of Contract Specification of Goods +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 / Post Remittal Judgment Following Court of Appeal Remittal

Legal Issues

  1. 1 Extent 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
  3. 3 Whether such uses are de minimis

Ratio Decidendi

Merck Global's trade mark specifications are to be restricted to categories where proven use exists, as exemplified by nine British National Formulary (BNF) categories, excluding significant areas where no use was shown. Merck US's use of 'Merck' on targeted websites, social media, and related materials constitutes trade mark infringement where such use creates a link in the mind of the average consumer between the sign and goods/services marketed in the UK, affecting the essential function of the mark. Mere entity or corporate use is not infringing; use in relation to goods/services or promotional activities is infringing. Use in relation to vaccines is not protected under s.10(1) but...

Court Disposition

Partial revocation of Merck Global's trade marks ordered; infringement found in respect of specified uses by Merck US; relief to be granted for breach of contract and infringement; interest issues arising from interim payments addressed.

Orders

  • Trade mark specifications restricted to nine BNF categories as detailed in judgment.
  • Infringing uses by Merck US on websites, social media, and related materials prohibited.