Merck KGaA is a German pharmaceuticals company ("German Company") owning the rights in the Merck brand name in over one hundred countries. American company Merck & Co. Inc., whilst originally a subsidiary of Merck KGaA, has now long been established as an independent pharmaceuticals company based in the United States. The two are party to an agreement allowing Merck & Co. Inc. to use the Merck name in the US and Canada.
In a recent case before the Chancery Division of the High Court of England and Wales, the German Company succeeded in a claim of trade mark infringement relating to use of the Merck mark in the UK. The Court found that the American company's use of the mark in the UK – online or offline – constituted a breach of a historical (dating back to 1955) and complex co-existence agreement between the two companies.
The decision comes after many years of litigation between the two companies, a key issue in the dispute being how the co-existence agreement was originally negotiated and how it applies to the internet and social media which clearly was not a consideration in 1955. The Judge ruled that use of the name Merck on the American company's website constituted UK trade mark infringement of the German companies rights, on the basis that the website was global and so directed to the UK.
The companies have a complex history and a long history of disputes, evidenced by a number of settlement agreements and amendments governing the divide of the use of the Merck name in different jurisdictions and the point at which use in a jurisdiction is deemed to occur. For example, an agreement in 1975 addressed the issue of use of the word "MERCK" in advertisements in scientific journals that were published in Germany but distributed in the United States.
Given the antagonistic history between the companies it is likely that the decision will be appealed and is one of a number of ongoing trade mark disputes between the parties.
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