Merck & Co. sues Merck KGaA over naming rights in transatlantic tug-of-war

Last October, when Germany's Merck KGaA dropped divisional tags Merck Serono and Merck Millipore to become simply "Merck," it knew it risked increasing confusion between itself and its American rival by the same name. But while the German drugmaker may have been okay with the idea, the New Jersey-based pharma giant wasn't, and now it's lashing out legally to win the moniker for itself.

On Friday, Merck & Co. ($MRK) announced it would sue the Darmstadt-based pharma regarding "improper use" of "Merck." In its complaint, it accuses Merck KGaA--known as EMD within the U.S. and Canada--of trademark infringement, trademark dilution, unfair competition, false advertising and deceptive trade practices.

The U.S. Merck has trademark rights in its home country and Canada, and to its mind, its German rival has been using the similar "Merck KGaA"--and in some cases, "MERCK"--as a "prominent feature of its branding" in the U.S. and on websites targeted at U.S. users.

"Our company brand and what it stands for is crucial to our identity and reputation and we will vigorously defend it," the company said in a statement.

It's not the first time the two companies have gone to court over the matter. Also on Friday, Merck KGaA announced that a U.K. court had ruled in its favor in another name-rights spat, deciding after three years of litigation that U.S.-based Merck--known as MSD outside the U.S. and Canada--had breached its agreement by using "Merck" alone in the U.K.

According to Merck KGaA, the two companies have been separate since 1917, when one-time subsidiary Merck & Co.--established in 1887 with an office in New York--set off on its own. Stateside Merck has grown larger than its erstwhile parent, but its German counterpart has clung to the title it has borne since Friedrich Jacob Merck founded the company in the 17th century.

Merck KGaA's new logo outside of its modular innovation center--Courtesy of Merck KGaA

Recently, German Merck made moves to streamline its branding and emphasize the Merck name further--though it insists asserting ownership "wasn't the purpose of why we did it," company spokesman Gangolf Schrimpf told FiercePharmaMarketing at the time.

But it was no accident, either, the pharma's head of branding and communications strategy, Axel Löber, acknowledged in October. "We are well aware of the question you are raising," he said. "We have to see how that develops."

- read Merck's release
- read the complaint (PDF)
- read Merck KGaA's release (PDF)

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