01.22.16
Merck announced it secured a favorable ruling in the English Court following almost three years of litigation with US-based Merck Sharp & Dohme Corp (MSD) regarding the use of the term “Merck.”
In its judgment, the English High Court stated that MSD had breached an agreement with the company by using “Merck” alone in the UK either as a trademark or a name, online or offline. Merck and MSD had entered the agreement in 1955 and amended it in 1970. According to this agreement, Merck is entitled to use the name everywhere in the world, except the US and Canada.
“Our objective has been to protect the status quo established in the existing agreement,” said Friederike Rotsch, general counsel at Merck.
The judge said Merck 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 trademark “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’s trade mark rights in the UK.
In its judgment, the English High Court stated that MSD had breached an agreement with the company by using “Merck” alone in the UK either as a trademark or a name, online or offline. Merck and MSD had entered the agreement in 1955 and amended it in 1970. According to this agreement, Merck is entitled to use the name everywhere in the world, except the US and Canada.
“Our objective has been to protect the status quo established in the existing agreement,” said Friederike Rotsch, general counsel at Merck.
The judge said Merck 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 trademark “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’s trade mark rights in the UK.
