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20 April 2016Americas

‘Merck’ trademark battle hots up

German pharmaceutical company Merck has hit back at claims that it violated a trademark coexistence agreement with US-based Merck Sharp & Dohme (MSD).

In a response filed at the US District Court for the District of New Jersey, Merck claimed that it had taken appropriate steps to respect MSD’s rights.

The two companies share the same heritage. The original company, called Merck, was founded as a pharmacy in Germany by the Merck family.

Merck & Co was established as a subsidiary of Merck in 1891, but became an independent company in 1917. It is known as MSD outside of North America.

The Darmstadt-based Merck owns the rights to the ‘Merck’ trademark in all countries except the US and Canada, where it is owned by MSD.

As part of an agreement reached in 1970, the German company agreed to use the term ‘E. Merck’ or ‘E. Merck, Darmstadt, Germany’ in the US.

But according to MSD, the German-based company has recently identified itself in the US as ‘Merck’ and ‘Merck KGaA’. It sued Merck in January this year, claiming that it had violated the agreement.

In its response, filed on April 14, German-based Merck said it was “doing everything possible” to comply with the agreement and “sets geo-targeting in order to ensure the territorial limits in the digital age”.

Friederike Rotsch, group general legal counsel of Merck, said: “Merck is committed to protect its brand and reputation, respect the name agreement with MSD and to respect the trademark of MSD in the US.”

He added that the company was well prepared to defend its position in US courts and optimistic that courts will decide in its favour.

In January this year, the English High Court ruled against MSD and said its use of the ‘Merck’ trademark in five domains name violated the 1970 agreement.

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