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January 15, 2016

Legal Wrangle Pits Merck vs. Merck

  • Nearly a century after they were split up during World War I, Merck & Co. and Merck KGaA are engaged in a legal wrangle over which company can use the name “Merck.”

    Merck & Co. today filed a federal lawsuit accusing Merck KGaA of infringing on its trademark through actions that include increased use of “Merck KGaA” and “MERCK” in its U.S. branding and on social media.

    Merck & Co. is also accusing Merck KGaA of federal trademark dilution, unfair competition, false advertising, deceptive trade practices, breach of contract, and cybersquatting—with the company citing New Jersey state law and common law as well as federal laws.

    “At least one U.S. researcher believed she was communicating with Merck regarding an oncology research grant when she was actually communicating with KGaA,” Merck & Co. said. The company also cited use of “Merck” by KGaA employees at a sales conference last year.

    Merck & Co. also asked the federal court to stop Merck KGaA from using “Merck” on its products or its marketing materials. The U.S.-based company is also seeking “all monetary gains, profits, and advantages” made by the German-based company, as well as triple damages and additional punitive damages, all unspecified.

    “KGaA’s unauthorized uses are likely to cause confusion or mistake with the MERCK Marks and Trade Names, or to deceive as to source, affiliation, connection, association, or sponsorship of Defendant with Merck,” Merck & Co. said in its suit, filed in U.S. District Court for the District of New Jersey, where Merck & Co. is headquartered.

    Neetha Mahadevan, a Merck KGaA spokesperson, told GEN: “We are aware of Merck & Co’s U.S. lawsuit, but it is too early to comment anything on the issue right now. We are looking into the matter.”

    Earlier today, Merck KGaA trumpeted a legal victory in the U.K. A British court found that Merck & Co. entity Merck Sharp & Dohme (MSD) breached an agreement with Merck KGaA by using "Merck" alone in the U.K. either as a trade mark or a name, online or offline.

    The British court concluded that the actions breached an agreement signed by the companies in 1955 and amended in 1970. Merck KGaA said the agreement gave it rights to the “Merck” name worldwide except in the U.S. and Canada.

    “We are disappointed with the ruling of the High Court of Justice, London,” Merck & Co. said in a statement. “This decision reflects one step in a litigation process taking place in a number of countries, and will be appealed.”

    In addition to the U.K., Merck KGaA has sued Merck & Co. in France and Germany. Suits in all three countries were filed in 2013.

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