KGaA v Merck Sharp & Dohme Corp & Ors

KGaA v Merck Sharp & Dohme Corp & Ors

The court determined the appropriate form of declaratory and injunctive relief to enforce clause 7 of the 1970 Agreement, reflecting actual breaches and providing clear guidance for future conduct. The court apportioned costs of the counterclaim, awarding Merck US 50% of its costs due to partial success but reduced for conduct and lack of success on some issues. Permission to appeal was refused as no error of law was identified.

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
29 July 2020
Procedural Posture
Intellectual Property/contract / Post Trial Judgment on Form of Order and Costs
Outcome
Declaratory and injunctive relief granted; costs apportioned; permission to appeal refused.
Legal Topics
Trade Marks, Breach of Contract, Injunctions, Costs, Revocation of Trade Marks
Intellectual Property Contract Trade Marks Breach of Contract Injunctions Costs Revocation of Trade Marks

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 2 Authorities cited 3 Party arguments 2 Amounts and remedies 3
Sign in to unlock

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 / Post Trial Judgment on Form of Order and Costs

Legal Issues

  1. 1 Proper form of declaratory relief for breach of contract governed by German law
  2. 2 Appropriate terms of injunction restraining breach of clause 7 of the 1970 Agreement
  3. 3 Scope of carve-outs for website and disclosure obligations

Ratio Decidendi

The court determined the appropriate form of declaratory and injunctive relief to enforce clause 7 of the 1970 Agreement, reflecting actual breaches and providing clear guidance for future conduct. The court apportioned costs of the counterclaim, awarding Merck US 50% of its costs due to partial success but reduced for conduct and lack of success on some issues. Permission to appeal was refused as no error of law was identified.

Court Disposition

Declaratory and injunctive relief granted; costs apportioned; permission to appeal refused.

Orders

  • Declaration as to breaches of clause 7 of the 1970 Agreement in specified terms.
  • Injunction restraining the First Defendant from breaching clause 7 by use of 'Merck' in the UK as specified.