[A2k] Life Sciences Intellectual Property Review: ‘Merck’ domain use violates 1970 agreement, English court rules

Thiru Balasubramaniam thiru at keionline.org
Mon Jan 18 09:05:32 PST 2016


‘Merck’ domain use violates 1970 agreement, English court rules

The English High Court has ruled that the US branch of pharmaceutical
company Merck Sharp & Dohme’s (MSD) use of the ‘Merck’ trademark violated a
previous agreement with its German rival.

Today, January 15, Mr Justice Norris handed down his ruling in favour of
German pharma company Merck KGaA.

Merck has its foundations in Germany, where it was established in 1668, but
in 1891 a US branch called Merck & Co was formed.

Shortly after the First World War, in 1918, the US arm of the pharma
company became independent.

In 1955 both parties entered into an agreement restricting the US company’s
use of the ‘Merck’ name. Under the deal, the US company could use the name
as long as an indicator of its geographic origin appeared prominently next
to it. The deal was updated in 1970.

The present dispute concerned the US company’s use of five domains:
merck.com; merckformothers.com; mercknewsroom.com; merckresponsibility.com;
and merckmanuals.com.

The German company complained that the domains were an infringement of the
agreement, but the US company countered that the websites were only
directed to a US audience.

Norris, however, rejected the US company’s argument, stating that the
websites were accessible by UK users and a violation of the Germany-based
company’s trademarks.

“In my judgment ... the 1970 agreement governs the use of the word ‘Merck’
as all or part of a trade name or trademark on the internet.”

Peter Brownlow, partner at law firm Bird & Bird and representing the German
company, said: “We are very pleased that the high court agreed with us that
the trademark co-existence agreement still applies in today’s online
world—even though the internet was not envisaged in 1955 when the agreement
was negotiated.

“The issues raised here around online use of trademarks and whether global
websites infringe intellectual property rights in particular countries is
of importance today when so much of a company’s brand collateral lies in
its online presence and digital assets,” he added.

A spokesperson for MSD said: "This decision reflects one step in a
litigation process taking place in a number of countries, and will be
appealed against."

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