‘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."