German Merck bests US Merck in UK copyright tussle of Merck v. Merck
Before Merck and Merck, there was only Merck.
A single company was founded as a drugmaker in the pre-Bismarckian days of an industrializing Germany that, in 1891, decided to launch an outpost in New York. It was a successful idea, launching a smallpox vaccine just 7 years later, until World War I, when the US government seized the US branch under the Trading with the Enemy Act, splitting the global corporation in two and setting off a century of intercontinental brand confusion.
Here’s the long-running agreement: The US Merck can use the Merck name in the US and Canada. The German gets the Merck name everywhere else, and when advertising north of the Rio Grande uses the name “EMD Group,” or Merck KGaA. Except that deal, first hammered out in the 1950s, has frayed over time. A decade ago, the companies tussled over their Facebook page, a fight that included a brief social media takeover. Media coverage described a very confused and indignant Merck KGaA: “German pharma company Merck KGaA has lost control of its corporate Facebook page and wants to know how its US namesake Merck & Co came to be in possession of it,” PM Live wrote in 2011. (Facebook would later apologize).
Around the same time, Merck KGaA also objected to the US company’s use of the name in the UK. In 2016, German Merck lost that case. But yesterday, on appeal, the High Court of Justice sided with KGaA, ruling that the US corporation had infringed on the German company’s copyright numerous times.
Reviewing 16 instances brought forth by Merck KGaA, a judge found that the US company has caused a “disturbance” of Merck KGaA’s copyright.
“The disturbance has taken the form of (a) the introduction of a number of specific “Merck” branded websites (in part targeted at the UK); (b) the increased promotion of the “merck.com” domain itself in the UK; (c) the use of “@merck.com” e-mail addresses for employees based outside the Permitted Territories; (d) an unrestrained use of “Merck” in content on social media platforms (YouTube, Twitter and Facebook),” Judge Alastair Norris wrote.
The infringement, he said, did not come from “dishonesty” but was nevertheless willful.
“The impugned acts were part of a conscious policy,” he wrote. “Merck US simply chose to act according to its own untested views of its obligations and insisted on continuing to do so even in the face of obviously reasonable complaint.”
Still, the judge ruled there were places where KGaA’s copyright shouldn’t apply. And this won’t be the end of the battle. A second lawsuit, filed in New Jersey by Merck US against Merck KGaA accusing them of trademark infringement, is after four years still ongoing.