KGaA v Merck Sharp & Dohme Corp & Ors [2016] EWHC 49 (Pat) (15 January 2016)

KGaA v Merck Sharp & Dohme Corp & Ors [2016] EWHC 49 (Pat) (15 January 2016)

The 1970 Agreement, governed by German law, applies to Internet use and prohibits Merck US from using 'Merck' alone as a trade mark or name in the UK and other territories outside the US/Canada, including on websites accessible in the UK. Merck US's activities, including use of 'Merck' on websites, social media, and in UK-directed materials, constitute breaches of the 1970 Agreement and infringe Merck Global's UK trade marks. The Agreement covers both goods and services. The principle of 'honest concurrent use' does not apply to override the contractual restrictions. Merck Global has not lost its right to complain of breach. Merck US's Internet activity is directed at the UK and...

Citation
[2016] EWHC 49 (Pat)
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 Dispute / High Court Trial Judgment
Outcome
Claimant succeeds in establishing breach of contract and trade mark infringement.
Legal Topics
Trade Marks, Coexistence Agreements, Internet Use of Trade Marks, Breach of Contract, Supplementary Interpretation Under German Law
Intellectual Property Contract Law Trade Marks Coexistence Agreements Internet Use of Trade Marks Breach of Contract Supplementary Interpretation Under German Law

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/contract Dispute / High Court Trial Judgment

Legal Issues

  1. 1 Scope and meaning of the 1970 Agreement under German law
  2. 2 Applicability of the 1970 Agreement to Internet use
  3. 3 Whether Merck US's activities breach the 1970 Agreement

Ratio Decidendi

The 1970 Agreement, governed by German law, applies to Internet use and prohibits Merck US from using 'Merck' alone as a trade mark or name in the UK and other territories outside the US/Canada, including on websites accessible in the UK. Merck US's activities, including use of 'Merck' on websites, social media, and in UK-directed materials, constitute breaches of the 1970 Agreement and infringe Merck Global's UK trade marks. The Agreement covers both goods and services. The principle of 'honest concurrent use' does not apply to override the contractual restrictions. Merck Global has not lost its right to complain of breach. Merck US's Internet activity is directed at the UK and...

Court Disposition

Claimant succeeds in establishing breach of contract and trade mark infringement.

Orders

  • Declaration that Merck US breached the 1970 Agreement by using 'Merck' alone in the UK and on UK-accessible websites.
  • Injunction restraining Merck US from such use in the UK, including on the Internet and social media.