Back-and-forth between Merck & Co. and Merck KGaA over the Merck name and brand around the word has spanned years. The latest? After years of wrangling, the high court of England recently ruled that Merck & Co. infringed on Merck KGaA’s trademark in that country.
The latest ruling comes two years after a July 2018 hearing. However, the lawsuit goes back even further: The 2018 hearing was an appeal by Merck & Co. of a ruling from 2016 that sided with Germany-based Merck KGaA. The initial complaint was filed by the Germany-based Merck three years before that, in 2013.
Confused? That’s been the issue going back 65 years to 1955 when the two companies first entered into an agreement over who would be called what and where. The deal, updated in 1970, basically gave Merck KGaA the right to the Merck name everywhere except Canada and the U.S., where Merck & Co. holds the rights to the Merck name. Outside the U.S. and Canada, Merck & Co is known as MSD, while Merck KGaA inside the U.S. and Canada goes by EMD Group.
However, the digital age exacerbated the Merck vs. Merck naming problem, as electronic transmissions and social media can’t be hemmed in by simply drawing geographic boundaries.
Key in the most recent decision, for instance, is the use of “merck.com” by U.K. employees in their emails. Merck & Co. said in an email statement to FiercePharma that while the company is considering its legal options, including an appeal, “it is likely that all MSD employees in the U.K. will change their email addresses from @merck.com to @msd.com.”
Merck & Co. also noted that the delay in the ruling has rendered some of the issues moot.
“Many of the matters discussed at the remitted issues hearing were by 2018 already historical, as our digital presence has changed significantly since the initial claim began in 2013. We believe our digital presence in the U.K. is in line with the U.K. court findings,” the statement reads.
Meanwhile, Merck KGaA seemed satisfied with the decision.
“The judgment strengthens our Merck identity in the U.K. The High Court of Justice confirmed our understanding that MSD is breaching our contractual agreement as well as infringes our trademark rights by using Merck as a trademark and as a contraction of its corporate name or as a trade or business name in the U.K.,” Merck KGaA said in an email statement to FiercePharma.
While this latest U.K. round goes to Merck KGaA, a U.S. lawsuit filed in New Jersey by Merck & Co. in January 2016 alleges its own trademark infringements against Merck KGaA and is still pending.