- Court says MSD breached an agreement with Merck KGaA, Darmstadt, Germany in the UK by using "Merck" alone either as a trade mark or a name
Darmstadt, Germany, January 15, 2016 – Merck KGaA, Darmstadt, Germany, a leading science and technology company, today announced it secured a win in the UK Court following three years of litigation with US-based Merck Sharp & Dohme Corp (MSD) regarding the use of the term "Merck".
In its judgement the English High Court stated that MSD had breached an agreement with the company by using "Merck" alone in the UK either as a trade mark or a name, online or offline. Merck KGaA, Darmstadt, Germany and MSD had entered the agreement in 1955 and amended it in 1970. According to this agreement, Merck KGaA, Darmstadt, Germany is entitled to use the name everywhere in the world, except the U.S. and Canada.
"Our objective has been to protect the status quo established in the existing agreement”, said Friederike Rotsch, General Counsel at Merck KGaA, Darmstadt, Germany. “Therefore, we are pleased that the English court has upheld our argument that MSD’s use of our name and brand 'MERCK' in our territories is beyond the limits agreed with MSD."
Merck KGaA, Darmstadt, Germany relaunched its brand identity last year to reflect the transformation into a global science and technology company with three strong businesses in Healthcare Life Science and Performance Material and create a distinct identity vis-à-vis its patients, customers and investors across various industries and geographies.
The judge said Merck KGaA, Darmstadt, Germany was entitled to an order to prevent MSD from describing itself in any printed or digital material addressed to the UK as "'Merck" alone, and restraining MSD's use of the trade mark "MERCK" alone. The judge also held that MSD’s use of “Merck” as part of branding on its global websites were directed to the UK and infringed Merck KGaA, Darmstadt, Germany’s trade mark rights in the UK.