The Merckiest depths of social media

The long running litigation between Merck KGaA ("Merck Global") and Merck Sharp & Dohme Corp & Others ("Merck US") over the disputed mark MERCK and the targeting of websites at the UK and the rest of the world is now likely to continue for the foreseeable future.

The Court of Appeal have remitted the case to the High Court to determine, inter alia, the issue of partial revocation of the mark, whether the activities of Merck US constituted use in the course of trade (in the UK), whether any of those uses were negligible, and the appropriate form of order and final injunctive relief.

Despite a comprehensive judgment in January 2016, Mr Justice Norris (or such other High Court Judge as is appropriate) will now have to explore afresh whether Merck US's social media activities, press releases and bulk emails were targeted at potential or actual consumers or business partners in the UK. Lord Justice Kitchin (with whom Lord Justices Floyd and Patten agreed) specifically criticised Mr Justice Norris's lack of in-depth exploration of the social media issue. He went on to criticise the lack of reasons for both declining to hear Merck US's arguments on injunctive relief and for subsequently rejecting their submissions without explanation.

The judgment of Mr Justice Norris can be found here, and the judgment of Lord Justices Kitchin, Floyd and Patten can be found here.

This costly litigation was commenced in 2013, and unless a miraculous settlement can be reached, will continue until at least 2021. Neither of these historically unified companies is showing any sign of backing down, and so we can look forward to round three in the coming years.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.