Merck KGaA v Merck Sharp & Dohme LLC & Ors [2025] EWHC 2376 (Ch) (19 September 2025)

Merck KGaA v Merck Sharp & Dohme LLC & Ors [2025] EWHC 2376 (Ch) (19 September 2025)

Licence fee damages are appropriate for the breaches in this case because Merck's trade mark rights and contractual rights are valuable commercial assets for which a licence could reasonably have been negotiated. The comparables approach was rejected due to unreliable evidence; the economic benefits approach, as supported by expert evidence, provides the only reliable basis for quantification. Damages are awarded on that basis.

Citation
[2025] EWHC 2376 (Ch)
Parties
Claimant: MERCK KGaA; Defendant: MERCK SHARP & DOHME LLC; Defendant: MERCK & CO., INC.; Defendant: ORGANON PHARMA (UK) LIMITED; Defendant: MSD ANIMAL HEALTH UK LIMITED; Defendant: INTERVET INTERNATIONAL B. V.
Jurisdiction
England and Wales
Judgment Date
19 September 2025
Procedural Posture
Intellectual Property Damages Inquiry / Judgment on Quantum Following Liability Findings and Order for Inquiry as to Damages
Outcome
Damages awarded to claimant assessed on the economic benefits approach.
Legal Topics
Trade Mark Infringement, Breach of Contract, Damages Assessment, Licence Fee Damages, Negotiating Damages, User Principle, Transfer Pricing, Comparables Analysis
Intellectual Property Contract Trade Mark Infringement Breach of Contract Damages Assessment Licence Fee Damages Negotiating Damages User Principle +2 more

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Parties

MERCK KGaA

Claimant

MERCK SHARP & DOHME LLC

Defendant

MERCK & CO., INC.

Defendant

ORGANON PHARMA (UK) LIMITED

Defendant

MSD ANIMAL HEALTH UK LIMITED

Defendant

INTERVET INTERNATIONAL B. V.

Defendant

Procedural Posture

Intellectual Property Damages Inquiry / Judgment on Quantum Following Liability Findings and Order for Inquiry as to Damages

Legal Issues

  1. 1 Whether damages should be assessed on a notional licence fee basis for trade mark infringement and breach of contract
  2. 2 Whether comparables or economic benefits approach is appropriate for quantification
  3. 3 Whether Merck's intragroup licence rates are a reliable comparator

Ratio Decidendi

Licence fee damages are appropriate for the breaches in this case because Merck's trade mark rights and contractual rights are valuable commercial assets for which a licence could reasonably have been negotiated. The comparables approach was rejected due to unreliable evidence; the economic benefits approach, as supported by expert evidence, provides the only reliable basis for quantification. Damages are awarded on that basis.

Court Disposition

Damages awarded to claimant assessed on the economic benefits approach.

Orders

  • Defendants to pay damages to claimant in the sum determined by the economic benefits approach (precise quantum to be calculated as per expert evidence and parties' post-hearing submissions).
  • Interest to be added as appropriate.