Merck KGaA v Merck Sharp & Dohme LLC: Court of Appeal upholds breach of ‘Merck’ name order
Merck KGaAvMerck Sharp & Dohme
- Court
- Court of Appeal
- Judgment
- 28 March 2025
- Citation
- [2025] EWCA Civ 343
Online content aimed at UK users can count as UK trademark use, even on a site built mainly for a different country.
Two giant pharmaceutical groups, both tracing their roots to one company that originally used the Merck name, fought over who can use the name 'Merck' in the UK. Merck KGaA won, with the Court of Appeal confirming that Merck Sharp & Dohme LLC's online content breached an existing court order.
What happened
A 1970 agreement split the world between two companies that both grew out of the original Merck business. Merck KGaA kept exclusive rights to the name 'Merck' almost everywhere, including the UK. Merck Sharp & Dohme LLC, part of the Merck & Co. group, could only use 'Merck' in a smaller set of territories, trading as MSD elsewhere. After earlier litigation, a 2020 court order banned Merck Sharp & Dohme from using 'Merck' in the UK in breach of that agreement or Merck KGaA's trademarks. Merck KGaA later asked the court to rule that specific online content, including job adverts, chatbots, safety data sheets, press releases and email addresses, breached that order. The High Court agreed on 17 out of 33 complaints. Merck Sharp & Dohme appealed.
What did the court decide in Merck KGaA v Merck Sharp & Dohme?
The Court of Appeal dismissed the appeal on all four grounds. It held the judge was right to grant declarations confirming breach, rather than treat the application as a contempt of court matter, because Merck KGaA was not asking the court to punish Merck Sharp & Dohme, only to establish that breaches had happened. It upheld the judge's findings on which online content was "targeting" UK users, confirmed those uses counted as trademark use, and agreed with how the judge had read the exemptions in the order covering websites genuinely focused outside the UK, generic email addresses and inadvertent errors.
What we learned from this
- What I'd take from this is that a court order about a name doesn't stop at a country's border if your website, emails or job postings reach UK users; the content itself, not just where the company is based, decides whether there's a breach.
- If you share a name with another business under a coexistence agreement, check how your online content, including job adverts and safety data sheets, might be read as targeting territories you're not supposed to use the name in.
- A business can ask a court to confirm a breach of an order through a straightforward declaration, without needing the heavier contempt of court process, as long as it isn't asking for anyone to be punished.
- Exemptions written into an old order get tested against new technology like chatbots and automated emails, so wording that seemed clear in 2020 can still need careful argument years later.
Things to be aware of
- This case turns on the specific wording of a bespoke 2020 order and a 1970 coexistence agreement between two historically linked Merck businesses, so its reasoning may not transfer directly to ordinary trademark disputes.
- The ruling on using declarations instead of contempt proceedings applies where no sanction or punishment is being sought; different rules may apply if a party wants someone penalised for breaching an order.
- The judgment doesn't rule on whether the underlying 1970 agreement or the trademarks themselves are valid, only on whether specific online content breached an existing order.
The businesses involved
Merck KGaA
A chemicals and pharmaceuticals group based outside the UK. Under a 1970 agreement with Merck Sharp & Dohme's group, it holds exclusive rights to use the 'Merck' name outside the territories reserved for that group, including the UK.
Merck Sharp & Dohme LLC
A pharmaceutical company based outside the UK, part of the Merck & Co. group, known as MSD outside its reserved territories. Under the 1970 agreement it cannot use the 'Merck' name in the UK.
- Note
- Registered outside the UK
What happened next
- Merck & Co. continues to trade as MSD outside its home territories, reflecting the territorial naming split at the heart of the dispute, according to its own press materials.Source: Merck | Home, April 2026
- Wikipedia records that Merck & Co. operates under the Merck Sharp & Dohme name in markets outside its home territories, consistent with the historic territorial division litigated in this case.Source: En
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2025] EWCA Civ 343 on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 26 October 2026. Report an error.
