Merck Wins Ruling Against Merck

Germany’s Merck KGaA has won a favorable ruling from the English High Court against Merck, Sharp and Dohme (MSD), known in the US as Merck & Co, over the use of the name Merck. Nearly three years ago, the German company brought suit against its US rival and namesake, charging that it used the name Merck – alone – in violation of a 1955 agreement, amended in 1970, that requires it to call itself Merck, Sharp and Dohme outside the US and Canada.

The judge said Merck KGaA was entitled to an order preventing MSD from describing itself in any printed or digital material addressed to the UK –  or to the global market including the UK – as Merck alone and also restrain MSD's use of the trademark "MERCK" .

Both companies have a common origin. The US drugmaker was a subsidiary of the German Merck before it was expropriated by the US government as “enemy property” during the First World War and sold to another owner. Although The German company has rights to the name  in 191 of the 193 countries where it does business, in the US and Canada it must call itself EMD (for E. Merck Deutschland). 

Friederike Rotsch, general counsel at Merck KGaA said “Our objective has been to protect the status quo established in the existing agreement. Therefore, we are pleased that the English court has upheld our argument.”

The English court formally has jurisdiction only in England and Wales, but not in Scotland and Northern Ireland. The German company’s UK headquarters is in England.