Merck KGaA v Merck Sharp & Dohme Corp & Ors
2014
CHANCERY DIVISION
United Kingdom
CORAM
- MR. JUSTICE NUGEE
Areas of Law
- Contract Law
- Civil Procedure
2014
CHANCERY DIVISION
United Kingdom
CORAM
AI Generated Summary
The court addressed a dispute between German Merck and US Merck regarding the use of the 'Merck' trademark outside the US and Canada. The key issue was identifying the governing law of their 1970 Agreement. The defendants requested this issue to be tried preliminarily. The court assessed the pros and cons, including potential delay and cost savings, referring to multiple cases and procedural rules. Ultimately, the court decided to order a preliminary issue to determine the governing law, allowing smoother preparation for the eventual trial.
Judgment
Mr Justice Nugee :
Introduction
This is the hearing of a preliminary issue ordered by me on 27 February 2014 to determine, in the context of a trade mark dispute, the governing law of a contract entered into between the parties.
The Claimant, Merck KGaA, is a German company with its registered office in Darmstadt, Germany. It is the owner of UK and international registered trade marks which have effect in the UK for the word mark or device mark MERCK for pharmaceuticals among other goods. It complains in these proceedings of the use by the Defendants of the sign ‘Merck’ without its consent.
The 2 nd Defendant, now called Merck & Co, Inc, is a US company, incorporated in New Jersey. It is the ultimate parent of all the other Defendants. For present purposes the relevant Defendant is the 1 st Defendant, now called Merck Sharp & Dohme Corp, also incorporated in New Jersey.
The German and US businesses have a common heritage and there is a history of dealings between them. One of the matters relied on by the Claimant in these proceedings is an agreement dated 1 January 1970 made between the German and US businesses regulating the parties’ use of their respective trade marks throughout the world ( “the 1970 Agreement” ), together with a letter dated 24 November 1975 which augments and clarifies the 1970 Agreement ( “the 1975 Letter” ). The 1970 Agreement was itself a restatement of an agreement dated 12 September 1955 which was to similar effect ( “the 1955 Agreement” ).
The US entity which entered into the 1955 and 1970 Agreements and the 1975 Letter was “Merck & Co., Inc.” It is agreed that this was the 1 st Defendant, which had this name until 2009 when it was re-named Merck Sharp & Dohme Corp (and the 2 nd Defendant was re-named Merck & Co, Inc). I will refer to it as “Merck & Co” .
The German entity which entered into the 1955 Agreement was “Emanuel Merck offene Handelsgesellschaft” (open partnership). The 1970 Agreement was prompted by the change of this body’s name back to “E. Merck”, E. Merck being its original name. I will refer to it as “E. Merck” . It is not admitted on the pleadings whether the Claimant, which currently runs the German business and owns the trade marks, is technically the same entity as E. Merck, or a successor to it, but nothing turns on that for present purposes.
There is a dispute between the parties on the pleadings whether the 1970 Agreement and 1975 Letter are governed by German law or the law of New Jersey,