Merck has won a legal battle over Merck, which in return says it will file a lawsuit against Merck. It sounds confusing, but confusion is the essence of the legal battle between Germany's Merck KGaA and U.S.-based Merck & Co. ($MRK), known as MSD outside the U.S. The companies are engaged in a multicountry legal fight over the misunderstandings that come from sharing the same name for 125 years.
The eruption comes over the use of the shared moniker by Merck & Co., in online and social media, a communication form not easily contained within a geographical area.
Merck KGaA said today that the English High Court had ruled that MSD had violated a 60-year-old agreement by using "Merck alone" on websites and social media that were directed at the U.K. It said that the judged determined the Darmstadt, Germany-based Merck KGaA "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."
"Our objective has been to protect the status quo established in the existing agreement," Friederike Rotsch, General Counsel at Merck KGaA, said in a statement. The company pointed to the fact that it launched a rebranding last year that centers around the Merck name.
The Kenilworth, NJ-based Merck today pointed out that the U.K. ruling is part of a "litigation process taking place in a number of countries," and said it will be appealed. Further it declared it will file its own lawsuit in federal court in New Jersey to protect its name in the U.S. against Merck KGaA, which operates as EMD Group in the United States and Canada.
"Our company brand and what it stands for is crucial to our identity and reputation and we will vigorously defend it. We are proud of our unique contributions to patients and society," the U.S. company said.Merck KGaA's new logo outside of its modular innovation center--Courtesy of Merck KGaA
The companies recognized the potential for problems more than 60 years ago, and in 1955 first entered into an agreement over whom would be called what and where. The agreement, which was updated in 1970, gives Merck KGaA the right to the Merck name everywhere but Canada and in the U.S., the world's largest single market, but a market where the German company's share is relatively small.
An illustration of how confusing the names are to the outside world came in 2014 when a group showed up outside of the German company's headquarters to protest Big Pharma's lobbying against new generic drug rules in South Africa, designed to get cheap drugs to more patients. But German Merck was not involved in that effort. It was the U.S. company that had supported it.
But it has gotten trickier to keep the two companies separate as they vie for the Merck name in social media. A couple of years ago, Facebook got the companies confused and posted Merck & Co.'s new Facebook page at the same "Merck" location that had been used for Merck KGaA's Facebook page. Eventually it was sorted out and now German Merck can be found at Facebook.com/Merck while Merck & Co. now sits at Facebook.com/MerckBeWell.
Some observers say the only sensible solution in a world rife with social media references is for one of them to give up the Merck name and take on something similar but distinctive, like Abbott ($ABT) and AbbVie ($ABBV). But the legal action announced today suggests neither appears ready to concede.
- here's the Merck KGaA release
- here's the Merck & Co. statement