In a long-running dispute between Merck KGaA (Merck Global) and US companies Merck Sharp & Dohme Corporation and Merck & Co (together Merck US), the High Court has decided that various uses of 'Merck' in the UK by Merck US, amount to trade mark infringement. This follows an earlier finding that Merck US had breached a co-existence agreement entered into between the parties.
The case is a paradigm example of the challenges for co-existence arrangements presented by business restructurings and developing global business models, facilitated by the internet, which may destroy the 'equilibrium' between co-existing parties. Merck US has never sold nor supplied goods or services to customers in the UK under or by reference to the 'Merck' sign (goods and services are sold/supplied in the UK by Merck Sharp & Dohme (MSD) – Merck US does business as MSD outside of the US and Canada). Instead, the complaint focused on Merck US' use of 'Merck' in promotional and informational materials, and in the course of general commercial activities, in the UK.
The Court found a policy by Merck US to bring the 'Merck' sign before the UK market, leading to dilution of the impact of Merck Global's exclusive use of its 'Merck' mark in the UK. This included specific Merck branded websites (in part targeted at the UK), increased promotion of the merck.com domain name in the UK, use of @merck.com email addresses by UK employees, and the use of 'Merck' in social media content. However, the Court also identified a number of uses of 'Merck' that did not infringe as they were use of the entity name, rather than as a trade mark.
Merck Global began operations in Germany in 1688. In 1890, a member of the Merck family established a US business which, after the First World War, became an independent company. The parties informally co-existed in relation to the use of the 'Merck' name but entered into a co-existence agreement in 1955 (updated in 1970) which formalised their respective positions in relation to the use of 'Merck'. In particular, Merck US could use 'Merck' as a trade mark in the US and Canada, but outside of those territories would use the name "Merck Sharp & Dohme" as both a name and a mark.
In 2016, the High Court had found in favour of Merck Global in trade mark infringement and breach of contract claims. The Court of Appeal upheld this decision in relation to the breach of contract claim, but sent a number of issues relating to the trade mark infringement claims back to the High Court to determine.
Trade mark infringement
Merck Global complained about a wide range of online and offline uses of 'Merck' by Merck US. These included use of 'Merck' on its suite of global websites (some with UK specific content) and on social media. The Court had previously found that these website and social media activities were 'targeted' at the UK. Merck Global also complained about use in conferences and at Advisory Board meetings of Merck US in the UK, in press releases and agency briefs distributed in the UK, and in emails sent to the UK.
The key assessment for the Court was whether these uses of 'Merck' amounted to 'entity use' (or trade name use), as opposed to 'trade mark use'. Was Merck US merely using its corporate name, or did these uses suggest a link with goods and services such that it amounted to 'use in the course of trade'?
The Court found that many of the website and social media uses of 'Merck' amounted to trade mark infringement, because they would lead the relevant reasonable consumer to consider that the products and activities were linked with 'Merck' as originator. The Court also concluded that use of 'merck' in the email addresses of MSD's UK employees (firstname.lastname@example.org) infringed as it created an impression that there was a material link in the course of trade between the goods/services and the undertaking from which they originated. Merck US' argument that the infringing use was de minimis failed. In addition to not being negligible, they were not (largely) accidental, but more a consequence of the way Merck US had organised its affairs.
However, a number of other uses of 'Merck' did not infringe: this included some of the website uses (e.g. those related to the company's history), use in a confidential presentation, press release and agency brief, and in Merck icons used in YouTube videos. These uses would strike the reasonable consumer looking at the document as a whole as referring principally to an entity, and not to an originator of products or services.
The Court granted Merck Global a declaration and an injunction. However, the injunction was subject to a number of carve-outs. For the merck.com website, this includes deploying geo-blocking and, for links to it from an MSD.com website, pop-ups informing the user they have left an MSD page and entered one maintained by Merck US. Whilst geo-blocking is not available for social media, Merck US should use available techniques to their fullest extent: Facebook, for example, allows companies to restrict access to their pages on a country-by-country basis. The Court also permitted the ongoing use of 'merck' in email addresses of non-UK employees in the ordinary course of business.
Partial revocation of Merck Global's trade marks
Merck Global's trade marks were registered for goods and services including 'pharmaceutical substances and preparations' and 'medical products' in Class 5. To arrive at a fair specification for the mark by way of partial revocation for non-use, the Court assessed Merck Global's use of the mark against the framework of 15 categories of major body systems/diseases in the British National Formulary (BNF), used by UK healthcare professionals. Merck Global had used its general Merck house brand and specific sub-brands for products in nine of the 15 categories. However, there were 'notable gaps' in significant categories, such that the average reasonably informed and circumspect consumer who would use the BNF would see Merck Global as using its marks in relation to identifiable areas, and not across the whole spectrum of pharmaceutical substances and preparations.
The Court narrowed the specification down to cover categories exemplified by the products sold under the trade mark, using the nine categories as a guide to identify the categories that the average consumer would consider were exemplified by the products sold. However, this narrowing of the specification had no impact on the infringement finding.