The Merck-y waters of online Coexistence - Merck v Merck

The Merck-y waters of online Coexistence - Merck v Merck

Skys trade marks cut down, but SkyKick infringes anyway

A recent English High Court decision[i] involving pharmaceutical giants Merck KGaA and Merck Sharp and Dohme Corp highlights that promotional material on websites and on social media may result in trade mark infringement in the UK even if the infringer does not actually sell or offer the goods for sale here.

The case also illustrates one of the hazards of building an internet presence where brands are split geographically.

Coexistence

The issue came up in connection with a dispute between German company Merck KGaA (Merck Global) and the US company Merck Sharp & Dohme Corp and others (Merck US). As a result of coexistence arrangements agreed between them, Merck Global used the name Merck outside the US and Canada while Merck US used the name Merck within the US and Canada. For sales outside the US and Canada, Merck US used the name Merck Sharp and Dohme (MSD). 

A suite of global websites

As part of its promotional activities, however, Merck US ran a “suite of global websites” using the name Merck. These included merckformothers.com, merckresponsibility.com, merckmanuals.com, and msd-animal-health.co.uk. It also engaged in social media activities, some of which included UK specific content. Merck US used the word Merck constantly on these global websites and on social media. An example cited in the decision was that through a page on merck.com dealing with the development of biomedical innovations, the UK user could access lists of products sold by MSD in the UK and would be confronted with the logo “MERCK Be Well”. The user would also be able to access information about “Merck Oncology Clinical Trials” among other Merck-branded projects. Merck US deliberately did not employ geo-blocking, which could have restricted access from the UK.

A deliberate policy

The Court concluded that Merck US was pursuing a policy of marketing the name Merck in the UK in relation to the products of Merck US at every opportunity with the result that Merck Global’s exclusivity in its UK trade mark for the word MERCK was being diluted. This, the judge emphasised, constituted trade mark infringement even though Merck US did not actually sell any goods or offer any goods for sale in the UK through these websites.

Hazards of coexistence

The case highlights the difficulties of coexisting in a global digital context. Modern marketing inevitably includes the building of a compelling internet presence. Where brands are divided, whether as a result of coexistence agreements or as a result of split trade mark ownership, it is advisable, where possible, to agree rules about how each party may use the mark in order to reduce the risk of expensive litigation arising. This is not just a big brand problem – trade mark applicants are often confronted with the choice between giving up their chosen name or agreeing coexistence with a potentially conflicting mark owned by a third party. It is, of course, always ideal to choose a unique mark, but if you opt for coexistence it is important to consider how this will play out on the internet and in terms of domain names.

 

[i] Merck KGaA v Merck Sharp & Dohme Corp and others 20 May 2020

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