Merck v Merck - Trade mark battle

Many EU trade mark owners own parallel national trade marks in key jurisdictions in order to strengthen their trade mark portfolios.  A recent Court of Justice (CJEU) decision (19 October 2017) considered the situation where infringement proceedings are commenced in two different EU Member States, one under the national mark and the other under the EUTM. The decision will be welcomed by trade mark owners for providing a degree of flexibility in relation to trade mark litigation strategy, allowing the area covered by the national trade mark to be carved out of the EUTM infringement proceedings in certain circumstances.

The applicant (Merck KGaA) and two of the defendants (Merck & Co Inc. and Merck Sharp & Dohme Corp.) were initially part of the same group, but they have been completely separate since 1919. Merck KGaA owns both the UK national trade marks for MERCK and the identical EU word mark for MERCK. The two ‘Merck’ groups have entered into agreements in relation to the use of the MERCK mark in Europe.  However, a dispute arose concerning use of the mark by the defendants in internet domain names accessible from Germany and other Member States and in other forms of online visibility on social media platforms.

First, Merck KGaA brought infringement proceedings under its UK national mark in the English High Court in respect of alleged UK infringement. Shortly following this, it also brought infringement proceedings in the Hamburg Regional Court based on its EUTM in respect of alleged infringement throughout the EU. This resulted in a situation where parallel proceedings were on foot in England and Germany in relation to the ‘overlap’ between the EUTM and the UK mark – i.e. in relation to UK infringement.

The issue that arose before the CJEU was whether, under the EUTM Regulation, the German court (as the second court seised) was obliged to decline jurisdiction in order to avoid duplication of proceedings and the danger of inconsistent decisions in relation to UK infringement. A further question was whether, if so, it would be obliged to decline jurisdiction under the EUTM in respect of the whole of the EU or only in respect of the UK.

The outcome of the court’s decision was that in such a situation the second court seised (in this case the German court) must decline jurisdiction only in relation to infringement in the territory of the national trade mark (in this case the UK). Proceedings under the EUTM can continue in respect of other Member States. The EUTM owner may also choose to withdraw its action under the EUTM in respect of the overlapping territory (in this case the UK) in which case there will be no need for the second court seised to decline jurisdiction.

It should be noted that the decision applies only where the national trade mark and the EUTM are identical and to the extent that the goods and services for which they are registered are identical and the parties are the same.

Case: C-231/16 Merck KGaA v Merck & Co Inc., Merck Sharp & Dohme Corp., MSD Sharp & Dohme GmbH

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Charlotte Tillett, Astrid Arnold

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