What's in a name? Plenty, if you're in the Merck vs. Merck trademark fight

The Merck vs. Merck trademark spat just heated up with Germany-based Merck KGaA striking back at U.S.-based Merck & Co. with its own infringement allegations.

The German company says Merck & Co., which does business outside the U.S. as Merck Sharp & Dohme, sued over its trademark “to divert attention from MSD’s own unlawful activities.” The U.S.-based company has “indiscriminately” used the Merck trademark outside its home country and Canada, the only markets where it’s supposed to go by that moniker, legal documents claim.

Merck & Co. sued in January, claiming that its German rival is violating “coexistence agreements,” struck in 1955 and 1970, that govern the use of the Merck name in various countries. Merck KGaA is tagged as EMD Group in the U.S.

Sticking to those jurisdictional rules has become increasingly complicated as pharma marketing has moved into the digital realm. The two companies have sparred over Facebook URLs and corporate websites, and Merck & Co. even cites a #Merck Twitter hashtag in its suit.

Adding fuel to the fire--for the U.S.-based Merck, in any case--was a new “rebranding” campaign that the German company launched last year. Merck KGaA rolled out a new logo and branding materials, and the U.S. company takes exception to its online promotion of the new brand--namely a “Merck Brand Relaunched” bit that referred to the German company as “the Original.”

But Merck KGaA has scored some points in court in Europe, as the New Jersey Law Journal reports. An English High Court ruling in January found that Merck & Co. had breached the 1970 coexistence agreement by using the word Merck “on its own” on some websites and in social media directed at that country. The U.S. Merck is appealing that ruling. The Paris Court of First Instance upheld some trademark claims from Merck KGaA but dismissed others.

“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 when the U.K. ruling hit.

When Merck KGaA announced last May that it would be relaunching its brand, the company said doctors and patients are confused by the warring company names. It emphasized its own right to use “Merck” everywhere in the world but the U.S. and Canada.

“The fact is that over many decades we underinvested in our brand,” CEO Karl-Ludwig Kley told the Financial Times. “We need to make people more aware of the fact there are two Mercks.”

Then, in October, the German Merck unveiled a suite of new graphics and dropped divisional names Merck Serono (biopharma) and Merck Millipore (life sciences supplies) in favor of Merck, period.

“We want to be recognizable and remain visible as Merck worldwide so as to strengthen our well-known brand name,” Kley said in a statement at the time. “For this we have deliberately rid ourselves of outdated features and will be focusing on a young and eye-catching image.”

- see the NJ Law Journal coverage (reg. req.)