Merck and Merck & Co: dispute over digital global perception

Merck is not just one global pharmaceutical company – but two. The German Merck KGaA and its US counterpart Merck & Co have equal-ranking naming rights and a co-existence agreement – and and have been in an international trademark dispute over it for years. The reason: global perception of MERCK on the internet.

Merck was founded in Germany as a pharmaceutical-chemical company for more than 200 years. At the end of the 19th century, it also founded a subsidiary in the U. S. A., which in 1908 was transformed into the stock company Merck & Co. Inc. in 1908. However, in the course of World War I, the U.S. confiscated this U.S. subsidiary of Merck; in 1919, George W. Merck, who had become a U.S. citizen in the meantime, bought back the shares from the U.S. government. Since then, Merck KGaA and Merck & Co have been two completely separate, independent companies – with equal rights to the name.

In the 1950s, both Merck companies entered into a coexistence agreement, which was updated again in the 1970s. According to this, each party could only trade in the other’s territory if it used its full company name. U.S. Merck & Co. was allowed to use MERCK in the U.S. and Canada, while Merck Germany (called Merck Global) was allowed to use this brand everywhere else and was only known as EMD in the U.S. and Canada. U.S. Merck & Co. in turn is known as Merck Sharp & Dohme outside the U.S. and Canada (MSD).

Coexistence MERCK ran – until the internet came along

Basically, this coexistence of the MERCK brand went very well for 50 years. But then came the internet. And as we all know, any digital representation and especially brand naming in social media is detached from geographical borders.

U.S Merck reacted quickly to the digital age and secured the domain www.merck.com and also many other domain names around the term Merck, to which the merck.com page is naturally linked. Likewise, U.S. Merck also uses the name MERCK in meta tags for search engines. And, of course, U.S. Merck employees use email addresses like xyz @merck.com.

Anyway, the social media did not get along at all with the double name rights of the two Merck opponents. Facebook initially confused the two companies and posted the new Merck & Co. Facebook page under the same “Merck” location that had been used for the German Merck KGaA’s Facebook page. This has been fixed; now the German Merck company can be found at Facebook.com/Merck, while the U.S. Merck & Co. can be found at Facebook.com/MerckBeWell.

The German Merck KGaA (on the Internet www.merckgroup.com) in turn holds many trademark rights to the name MERCK: as a German trademark, as a UK trademark and also as a European trademark as well as an international IR trademark. The term “E. Merck” has also been protected by it as an IR trademark since 1954.

Merck vs. Merck: dispute over digital global perception

Hence the long-running Merck v. Merck trademark dispute. For years, Merck KGaA (Merck Global) has been pursuing lawsuits against U.S. Merck & Co. and MSD for breach of the coexistence agreement and infringement of trademark rights by Merck & Co. and MSD using the term “MERCK” on various websites, email addresses and social media platforms, including outside the U.S. and Canada. This accusation was made simultaneously in several countries, including Germany, the UK, France and Switzerland.

In Germany, the German Merck KGaA has so far failed with its action seeking an injunction. The LG Hamburg ruled in November 2018 (327 O 140/13) that a company that is allowed to use a trademark outside the EU does not commit trademark infringement because its web offer can also be accessed within the EU. The decisive factor is whether an economic relevance of the offer for the territory of the EU can be assumed – but this was not the case in the present case, according to LG Hamburg. The court ruled that the trademark could also be used for advertising on the internet directed at a non-European audience – even as a metatag. However, this case is pending before the Higher Regional Court of Hamburg (3 U 198/18), so it remains to be seen what will happen next.

UK and France, on the other hand, ruled differently and found in favour of the German Merck KGaA. In 2016, the High Court in the UK saw a violation of the Coexistence Agreement by U.S. Merck by by using “Merck” alone in the UK either as a trade mark or a name, online or offline (Merck KGaA v Merck Sharp & Dohme Corp & Ors [2016] EWHC 49 (Pat)). The High Court 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 2017, the Paris Court of Appeal (16/07065) ruled that Merck & Co. and MSD’s use of the Merck mark as a meta-tag in the source code of a website constituted infringing use of Merck’s trademarks. Although the Paris court did not consider the use of the email identifier xyz @merck.com to be a trademark infringement, it did consider it to be unfair competition for France, as one could be misled about the affiliation of the employees with this email identifier.

The Swiss Federal Supreme Court, which ruled on the case in April 2020 (4A 335/2019), also attached great importance to email identifiers. Users would see in them an indication that they belonged to an international organisational unit. However, only Merck KGaA (Merck Global) was entitled to use this in Switzerland, not U.S. Merck, which used this email. As the Swiss Federal Supreme Court also considered it indisputable that U.S. Merck was operating in the pharmaceutical sector in Switzerland, it partially upheld Merck KGaA’s appeal and referred the case back to the court of first instance for new assessment.

Merck: Counterclaim in the USA

Merck & Co. in turn counterclaimed in the USA in 2016 against Merck KGaA (MERCK & CO., INC. v. MERCK KGAA (2:16-cv-00266)) in the District Court, D. New Jersey, alleging that Merck KGaA was using the Merck name “improperly” in the US. The case is still pending, most recently stayed since April 2021 at the request of both parties. Conferences are now scheduled again in October, which could lead to a settlement.

Special view on the UK ruling from 2020

The UK trademark MERCK in particular claimed broad protection as a pharmaceutical trademark under the British National Formulary (BNF) for many specifications. All the more attention was drawn to the judgment of the UK High Court of 20 May 2020 (Merck KGaA v Merck Sharp & Dohme ([2020] EWHC 1273 (Ch)), which concerned a counterclaim by U.S. Merck seeking cancellation of numerous registered trademarks of Merck KGaA – due to non-use, the Merck trademarks were to be partially revoked.

Both parties referred to the BNF subcategories and specifications of the challenged Merck trademarks in this matter. In vain, Merck Global argued that most people would use a relatively broad term such as “pharmaceuticals” when thinking of Merck products, rather than subclasses of the BNF. In response, the High Court found in its decision that Merck Global had used its mark for nine of the 15 sub-categories of the BNF – but not for many others. The court found that Merck Global’s trade mark specifications should be limited to “pharmaceutical substances for the treatment of …” and also for indications or disease groups for which there had been use. This includes, for example, “pharmaceutical substances for the treatment of cancer and multiple sclerosis”.

However, use had not been established for the broader category of “pharmaceutical substances for the treatment of malignant diseases and immunosuppression”, nor for the entire category of “pharmaceutical substances” originally claimed by the marks. The High Court declared partial revocation of the Merck pharmaceutical trade mark for the UK for these areas, among others.

UK Merck ruling: difficult times for pharmaceutical brands

This is a judgement with importance for pharmaceutical trademarks. Many trademarks have so far been successfully registered for “pharmaceutical substances and preparations” and could now be vulnerable to partial revocation. In worst case, pharma trademarks could be exposed to allegations of bad faith – also according to the ECJ decision Sky/SkyKick (C-371/18) – if applications are filed for “pharmaceutical substances” although they are only intended to be used for the treatment of a narrow range of disease groups.

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