Germany again Wins Merck & Merck Lawsuit
In the latest round of the trademark battle between Merck & Co of the US (known outside North America as MSD) and Germany’s Merck KGaA (which trades in North America as EMD), the High Court of England has upheld its 2018 ruling in favor of the German company.
The 2018 decision dealt with US Merck’s appeal of a 2016 verdict in favor of its German namesake. The initial suit was filed by Merck KGaA in 2013 and charged that the US pharma infringed its rival’s trademark in the UK.
All of the English High Court’s decisions apply only in England and Wales. It does not have jurisdiction in Scotland and Northern Ireland.
Under a 1955 agreement between the two Mercks, updated in 1970, the companies regulated the name question; however, the digital age has created usage problems, as internet search engines and social media don’t always recognize geographical boundaries.
What Merck KGaA was especially unhappy about in 2013 was the use of the email address merck.com in communications from UK employees of Merck & Co. instead of the legally acceptable msd.com.
The US side in the interim has acknowledged that some of the problems, of necessity, have had to be resolved as digitalization proceeds. It suggested that the UK subsidiary would change email addresses to msd.com.
This move may not alleviate all the confusion, as the web addresses are similar, with Merck & Co. using www.merck.com and the German company www.merckgroup.com.
Merck KGaA apparently feels vindicated by the judgment, telling a US pharma journal that it strengthens the company’s identity in the UK. Nevertheless, the companies have not yet resolved a 2016 US lawsuit brought by Merck & Co. that claims Merck KGaA has infringed its trademark there.
Merck and Merck were founded by the same family in the late 17th and early 19th centuries respectively. The US branch, like a number of other offshoots of German firms, was expropriated by the US government during World War I as enemy property and sold to a new owner.
