Merck KGaA v Merck Sharp & Dohme Corp: old coexistence deal breached, but remedy sent back
Merck KGaAvMerck Sharp & Dohme
- Court
- Court of Appeal
- Judgment
- 24 November 2017
- Citation
- [2017] EWCA Civ 1834
Even a well drafted coexistence agreement needs revisiting as a business moves online and crosses old territorial lines.
Two unrelated pharmaceutical companies, both called Merck, fought over a decades old agreement on who can use that name where. The Court of Appeal agreed there had been a breach but sent the infringement findings and the injunction back to the High Court.
What happened
Merck KGaA and Merck Sharp & Dohme Corp both trace back to a single business that split apart in the early 20th century. A 1932 treaty, a 1945 consent decree and coexistence agreements from 1955 and 1970 set out who could use the name Merck, and where. Under those agreements, Merck Sharp & Dohme's group trades as Merck in its home territory but as MSD elsewhere. Merck KGaA sued, saying that extensive use of "Merck" alone, without any geographic identifier, on websites and social media aimed at the UK breached clause 7 of the 1970 agreement and infringed its UK and international trademarks. Merck Sharp & Dohme counterclaimed for revocation of some of those trademarks for non use.
What did the court decide in Merck KGaA v Merck Sharp & Dohme?
The Court of Appeal held the trial judge was entitled to find, applying established principles to the 1970 agreement, that clause 7 stopped Merck Sharp & Dohme from using "Merck" alone, whether as a trademark or simply as a company or trading name, in the UK. That use was targeted at the UK and wasn't minor enough to be ignored, nor excused by any settled "equilibrium" between the two businesses. However, the court found the judge's trademark infringement findings too general and in places inconsistent, and ruled that Merck Sharp & Dohme hadn't been given a fair chance to be heard on the detailed wording of the injunction before it was made, without proper reasons given. The judge's approach to the revocation counterclaim also called for a more detailed breakdown of goods. Those points were sent back to the High Court for a fresh hearing.
What we learned from this
- What I'd take from this is that a coexistence agreement written for the age of print and physical territories can still bind a business decades later online, even if the wording only mentions trademarks and not company names.
- If your coexistence or licensing agreement predates the internet, it's worth checking whether its wording still makes sense for websites and social media that don't respect borders.
- Winning the argument on breach doesn't guarantee you get the injunction you wanted. Courts expect the other side to have a fair say on the exact wording of any order before it's made final.
- Before counterclaiming for revocation of a trademark for non use, it's worth thinking about whether the goods or services need breaking down in detail rather than arguing in broad categories.
Things to be aware of
- This is a Court of Appeal decision on process and reasoning, not a final answer. The actual scope of infringement and the shape of any injunction were sent back to the High Court to decide afresh.
- The ruling turned heavily on established legal principles applied to a 1970 agreement; businesses with coexistence deals governed by other laws won't necessarily see the same reasoning apply.
- The case shows how fact specific this area is. What counts as targeting the UK, or as de minimis use, depends closely on the particular websites and social media content involved.
The businesses involved
Merck KGaA
Pharmaceutical and chemical company, the original Merck business; retains rights to use the Merck name outside its counterpart's home territory under historic coexistence agreements.
Merck Sharp & Dohme Corp
Pharmaceutical company, part of Merck & Co., Inc., which trades as Merck in its home territory and as MSD elsewhere under the coexistence agreements.
- Note
- Registered outside the UK
What happened next
- Merck & Co., the parent of Merck Sharp & Dohme, continues to operate under the name Merck in its home territory and as MSD elsewhere, reflecting the territorial naming split at the heart of 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: [2017] EWCA Civ 1834 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.
