“It was understood that as to E. Merck’s names and Merck & Co’s names we were speaking of use as a corporate name and firm name and not as a trademark.”
“United States and Canada. 2.) a) Merck & Co. will not object to the use in the United States and Canada by E. Merck of “Emanuel Merck offene Handelsgesellschaft" or “E. Merck A. G.” as all or part of a firm-name or corporate name provided such names are geographically identified with Germany as follows: “Emanuel Merck offene Handelsgesellschaft, Darmstadt, Germany" and “E. Merck A. G., Darmstadt, Germany” all words being given equal prominence. b) E. Merck recognizes the exclusive right of Merck & Co. to the use of the trade-mark Merck in the United States and Canada and in such countries will not use or attempt to acquire rights in any trade mark containing Merck. Germany 3.) a) E. Merck will not object to the use in Germany by Merck & Co. of (i) Merck & Co. Inc. or Merck & Co. Limited as all or part of a firm name or corporate name provided such names are geographically identified with the United States or Canada as follows: “Merck & Co. Inc., Rahway, N. J., U.S.A.", and “Merck & Co. Limited, Montreal, Canada”, all words being given equal prominence. (ii) “Merck-Sharp & Dohme" as all or part of a firm name, corporate name or name of a corporate subdivision, provided such names are geographically identified with a country other than Germany, all words being given equal prominence. b) Merck & Co. recognizes the exclusive right of E. Merck to the use of the trade-mark Merck in Germany and in such country will not use or attempt to acquire rights in any trade mark containing Merck. All other countries. 4.) In all other countries E. Merck recognizes that “Merck-Sharp & Dohme” as a trade-mark or name is not confusingly similar to any of the trade marks or names used or owned by E. Merck and E. Merck will not object to Merck & Co.’s use and registration of Merck-Sharp & Dohme as all or part of a trade-mark, trade name or corporate name. When requested E.Merck shall so state in writing. The embellishments of design of such trade marks shall not imitate marks owned by E. Merck. 5.) In all other countries E. Merck will not object to the use by Merck & Co. as all or part of a firm-name or corporate name of “Merck & Co. Inc.” used in association with words such as “Rahway, N.J., U.S.A.” which identify it geographically with the United States or “Merck & Co. Limited” used in association with words such as “Montreal Canada” which identify it with Canada, all words being given equal prominence. 6.) In all other countries Merck & Co. recognize that E. Merck is entitled to use the word Merck or combinations such as E. Merck as a trade-mark or name provided that any such marks or names adopted in the future shall not be confusingly similar to marks or names adopted or used by Merck & Co. under Paragraphs 4 and 5 above. When requested Merck & Co. shall so state in writing. 7.) In all other countries Merck & Co. shall promptly and in any event no later than three years after the effective date of this agreement cancel all existing registrations, withdraw all applications and discontinue all use of the trademarks Merck, Merck Cross and MerckMerckMerck. 8.) In all other countries Merck & Co. shall promptly and in any event no later than three years of the effective date of this agreement discontinue all use of the following corporate names: Merck (Pan America) Inc., Industrias Farmacéuticas Merck (Norte Americana) S.A. Merck & Co. (Great Britain) Ltd. 9.) … b) It is understood that the requirements of paragraphs 8 … hereof will be fulfilled whereever the words “Merck-Sharp & Dohme” are substituted for the word “Merck”. … 11.) Merck & Co. and E. Merck will cooperate in the prompt termination of all litigation now pending between them involving trade-marks or trade names containing Merck. Each party will defray all expenses previously incurred to include such expenses as have already been paid or are still to be paid in compliance with a court decree already issued.”
“We [Merck US] emphasise that we wish to make clear that the agreement should not be interpreted to imply any restrictions not expressly stated as to what names or marks we could use. We suggested some provision for this purpose in the agreement. Dr Vogt [of Merck Global] felt that there was no ground for implication in the agreement that we would use only Merck & Co Inc and Merck-Sharp & Dohme; that the provision we desired was superfluous. It was finally agreed to make no reference in the agreement to marks and names which might be adopted in the future. Names or marks, other than those specifically referred to in the agreement, which Merck & Co Inc may adopt in the future will stand on their own feet and be considered in the light of the facts existing at the time. There is no obligation on Merck & Co Inc’s part to refrain from adopting or using such names; there is no obligation on the part of E. Merck to consent to their use.”
“United States and Canada: 2.) a) Merck & Co. will not object to the use of the name E. Merck in the United States and Canada by E. Merck as all or part of a firm-name or corporate name provided such names are geographically identified with Germany as follows: “E. Merck, Darmstadt, Germany” all words being given equal prominence. b) E. Merck recognizes the exclusive right of Merck & Co. to the use of the trademark Merck in the United States and Canada and in such countries will not use or attempt to acquire rights in any trade mark containing Merck. Germany: 3.) a) E. Merck will not object to the use in Germany by Merck & Co. of (i) Merck & Co., Inc. or Merck & Co. Limited as all or part of a firm name or corporate name provided such names are geographically identified with the United States or Canada as follows: “Merck & Co., Inc., Rahway, N.J., U.S.A.”, and “Merck & Co. Limited, Montreal, Canada”, all words being given equal prominence. (ii) “Merck Sharp & Dohme” as all or part of a firm name, corporate name or name of a corporate subdivision, provided such names are geographically identified with a country other than Germany, all words being given equal prominence. b) Merck & Co. recognizes the exclusive right of E. Merck to the use of the trademark Merck in Germany and in such country will not use or attempt to acquire rights in any trademark containing Merck. All other countries: 4.) In all other countries E. Merck recognizes that “Merck Sharp & Dohme” as a trademark or name is not confusingly similar to any of the trademarks or names used or owned by E. Merck and E. Merck will not object to Merck & Co.’s use and registration of Merck Sharp & Dohme as all or part of a trademark, tradename or corporate name. When requested E. Merck shall so state in writing. The embellishments of design of such trademarks shall not imitate marks owned by E. Merck. 5.) In all other countries E. Merck will not object to the use by Merck & Co. as all or part of a firm-name or corporate name of “Merck & Co., Inc.” used in association with words such as “Rahway, N.J., U.S.A.” which identify it geographically with the United States or “Merck & Co. Limited” used in association with words such as “Montreal Canada” which identify it with Canada, all words being given equal prominence. 6.) In all other countries Merck & Co. recognizes that E. Merck is entitled to use the word “Merck” or combinations such as “E. Merck” as a trademark or name provided that any such marks or names adopted in the future shall not be confusingly similar to marks or names adopted or used by Merck & Co. under Paragraphs 4 and 5 above. When requested Merck & Co. shall so state in writing. 7.) In all other countries Merck & Co. has undertaken to cancel all existing registrations, withdraw all applications and discontinue all use of the trademarks “Merck”, “Merck Cross” and “MerckMerckMerck”. 8.) In all other countries Merck & Co. has undertaken to discontinue all use of the following corporate names: Merck (Pan America) Inc. Industrias Pharmaceuticas Merck (Norte Americana) S.A. Merck & Co. (Great Britain) Ltd. 9.) It is understood that the requirements of paragraph 8 hereof will be fulfilled whereever the words “Merck Sharp & Dohme” are substituted for the word “Merck”. … 11.) Merck & Co. and E. Merck will co-operate in the prompt termination of all litigation now pending between them involving trademarks or tradenames containing Merck. Each party will defray all expenses previously incurred to include such expenses as have already been paid or are still to be paid in compliance with a court decree already issued.”
“It is our opinion, therefore, that in selling your products in foreign markets, it is desirable that your company use the name “Merck” in the trade-mark sense to the full extent permitted by the trade-marks law of the country in question.”
“I said that we were in agreement with Mr Vogt’s opinion that the ownership by another of a trademark “Merck” could not restrain E. Merck [Merck Global] from using its own firm name if it were not used as a trademark.”
“1. In those countries where Merck & Co., Inc. [Merck US] has existing trade-mark rights with respect to the name “Merck”, those rights will be enforced against all comers, including E. Merck [Merck Global]. 2. In those countries of the world where E. Merck … [has] the trade-mark rights to the name “Merck”, Merck & Co. Inc., will respect the local laws of these countries and will not attempt to use the name “Merck” in a trade-mark sense. It will, however, sell its products under its corporate name unless there is some local law prohibiting the use of the name in that sense. …”
“We [Merck US] are willing in those countries in which you hold prior rights in “MERCK” to add some appropriate designation which will emphasize the distinction between our company and yours, such as “Rahway, New Jersey, U.S.A.”
“We [Merck US] agree to withdraw all applications, cancel all existing registrations and discontinue all use of the trade-marks MERCK, MERCK CROSS and MERCKMERCKMERCK outside of the United States and its possessions, Canada, Cuba and the Philippines. We shall do so promptly but shall have a reasonable period of time within which to discontinue use of the marks in those countries in which they are now in active use. You agree that “MERCK SHARP & DOHME” as a trade-mark is not confusingly similar to any of your “MERCK” trade-marks; that you will make no objection to our use and registration of “MERCK SHARP & DOHME” as a trade-mark and will furnish us with letters of consent to the registration of this trade-mark in any country in which your existing “MERCK” registrations are cited against it. It is understood, of course, that the embellishments of design of any “MERCK SHARP & DOHME” trade-mark shall not imitate marks already in use by you, such as the E. Merck facsimile signature or your coat-of-arms device.”
“We [Merck US] sought to include in the agreement a provision that E. Merck [Merck Global] would not in the future object to other names or marks which were equally as well distinguished from E. Merck’s name and trademarks as “Merck-Sharp & Dohme” or to another corporate name equally as well distinguished as “Merck & Co., Inc., Rahway, N.J., U.S.A.”
“We [Merck US] emphasise that we wish to make clear that the agreement should not be interpreted to imply any restrictions not expressly stated as to what names or marks we could use. We suggested some provision for this purpose in the agreement. Dr Vogt [of Merck Global] felt that there was no ground for implication in the agreement that we would use only Merck & Co., Inc. and Merck-Sharp & Dohme; that the provision we desired was superfluous. It was finally agreed to make no reference in the agreement to marks and names which might be adopted in the future. Names or marks, other than those specifically referred to in the agreement, which Merck & Co., Inc. may adopt in the future will stand on their own feet and be considered in the light of the facts existing at the time. There is no obligation on Merck & Co., Inc.’s part to refrain from adopting or using such names; there is no obligation on the part of E. Merck to consent to their use.”
“E. Merck Electronic Chemicals, Darmstadt, Germany.”
“We are one company, but due to legal and trademark limitations, we use two trade names in different regions in the world: Merck in the United States and Canada, and MSD in the rest of the world. …… Internally, various divisions and functions use the Merck/MSD label to be inclusive when referring to the company as a whole. Employees must remember that Merck/MSD (and any variation of a combined company name such as Merck-MSD or Merck & MSD) should never be used externally, as there is no Merck/MSD brand. Using any name combination other than Merck in the United States and MSD in the rest of the world can lead to legal issues. In internal communications, we encourage replacing the trade names of Merck and MSD with references such as “our company”, “we”, and “us”.” (Emphasis in original).
“Merck. A global healthcare leader working to help the world be well”
“...a tagline that reflects our vision of a healthier world and is inspired by our brand ‘idea’ of our commitment and capacity to lead the world forward in health care.”
“Merck’s scientific scouts are stationed around the globe and easily within reach to discuss new opportunities…our scientific scouts work with you to determine if your discovery aligns with our areas of interests…We encourage you to click on the scientific scouts in your region to begin a conversation, by e-mail, about how we might work together”
“Merck is active in dealmaking worldwide”
“41. … At some such conferences attendees are provided with leaflets which direct them to the “Careers” tab on the merck.com website. An example is a lecture given by Mr Golestani (an employee of Merck US who was described in the promotional material as “Merck EVP and CIO”) at Imperial College London: the lecture contained numerous references to “Merck” (without any geographic designation) and concluded with a handout inviting attendees to visit the “merck.com” website. 42. Sometimes such lectures are accompanied by slide presentations. One example given in evidence (and not disputed) was a lecture given by Mike Rowley (the head of the Discovery Chemistry group at MSD Research GmbH Switzerland) at the Oxford Global 12th Annual Pharmaceutical Congress in September 2014. His lecture made frequent reference to “Merck” (not to “MSD” or to “Merck & Co Inc” plus geographical identifier) and was illustrated by slides making liberal use of the Merck mark. This was not an accident or oversight. Mr Rowley said that when referring to MSD in a scientific context he would routinely refer to “Merck” because it was more recognisable as a scientific organisation.”
“Search by location” which stated “Search for jobs at Merck in the location that appeals to you”
“48. The uses of the sign Merck in the United Kingdom as detailed in paragraphs 11 to 37 above [all the acts complained of] are breaches of clause 7 of the Agreement.”
“5. In the circumstances this is a claim for breach of contract (specifically breach of clause 7 of the 1970 Agreement) by the First Defendant, and infringement of registered trade marks, in respect of the use by the Defendants of the sign MERCK in the United Kingdom. … Whilst, in the Claimant’s submission, both causes of action lead to the same result (i.e. breach and infringement) and there are overlapping issues, they are entirely distinct jurisprudentially and each needs to be considered in its own right.”
“77. The intention of the parties as explained in these documents is then reflected in the 1955 and 1970 Agreements. Those agreements do not make any distinction on the basis of different types of products/fields of use, as is common in many co-existence agreements. Rather, the division of rights is solely geographic. Outside the US and Canada, Cuba and the Philippines, Merck & Co. [was] not given any right to use the word MERCK on its own. Such permission as it had was confined to the limitations of clauses 4 and 5 as then reflected in clauses 6 to 11. Had the parties been asked whether Merck & Co., Inc was entitled to use the sign MERCK on its own in “all other countries” outside the US, Canada, Cuba and the Philippines, the answer would have been ‘plainly not’.”
“85. First, it is important to note that the Defendants do not claim, and cannot claim, that the uses complained of fall within clause 5 of the 1970 Agreement, which expressly addresses permissible company name use by Merck & Co. … The parties have turned their mind to the types of trade names and corporate names that the Defendants are entitled to use outside the US and Canada. The uses complained of are completely different to the uses that the parties considered acceptable. It is not just that they do not fall specifically within the permissible uses in the 1970 Agreement, they also fail to meet the principle according to which clause 5 has been drafted. They are uses of MERCK alone without any indication of incorporation or any geographical indicator (much less a geographical indicator that is given equal prominence). 86. Second, and approaching the matter more generally, the issue of trade mark use by the Defendants (which is the premise of the breaches of clause 7) has to be judged as at the date of the alleged breaches and hence is to be decided under the Trade Marks Directive. The uses complained of in the present case are uses in relation to goods and services, as that requirement has been interpreted by the CJEU.”
“154. DE Merck alleges that US Merck has breached Clause 7 of the 1970 Agreement which provides that [the clause is then quoted]. 155. The claim is for breach in the UK upon the basis of the acts which are relied upon in support of DE Merck’s claim of infringement of its Trade Marks, the self-same acts being relied upon in support of its claim for breach of the Agreements: see paragraph 48 of the Re-Amended particulars of Claim …”
“91. This latter sentence was, with respect, misunderstood by the Defendants during their oral opening. The issue is not one of implied terms, a concept of English law, but rather a question of the intention of the parties, objectively assessed. That is highly relevant under German law.”
“92. … a. The Defendants’ submission confuses the question of the mark being used with the particular use made of it. Clause 7 of the 1970 Agreement extends to all underlying uses of the mark MERCK. Therefore, use of the mark MERCK as a domain name is covered absent some express exclusion, which does not exist. b. Mr Matutaikis was perfectly clear that the parties had treated the Agreement as extending to domain names. Indeed, the Defendants had transferred or cancelled domain names when they were complained about as breaches of the 1970 Agreement. … c. The context of this discussion was in circumstances where Merck & Co., Inc. had sought to expand the 1970 Agreement to cover other company names that they might choose in the future but failed to achieve this. The parties’ subsequent conduct showed that when considering uses of names and/or marks that were developed after the 1970 Agreement, they closely followed the principles of the agreement. In particular, no name could be adopted in the opposite party’s territory that did not include a combination of words in addition to MERCK and that did not have a clear geographical indication. …”
“103. The problem with the Defendants’ submission is that it assumes the premise that it seeks to prove. As pointed out by Professor Bornkamm in his second report … all signs under German law have the same function of indicating origin and there was no clear line between the use of a trade mark and use of a company name in 1955. Furthermore, as explained in his First Report… the German Court would consider relevant what the fields of conflict were in the time preceding the agreement and other relevant factors that would indicate the parties’ intentions.”
“MR JUSTICE NORRIS: Exactly. It is just easier for me to think in English law terms to put the points to you. If the question is purely one of interpretation of the 1970 Agreement, then one has to reach the conclusion that, for example, the use of merck.com as an address is trade mark use. Is that right? MR CARR: Yes.”
“MR JUSTICE NORRIS: So you would not be entitled [to] an injunction to stop all use of the merck.com …. MR CARR: No, only in relation to goods and services, pharmaceutical goods and services, chemical goods and services. That is how it is being used of course, but if it was being used in some other way, that might be different. …… MR JUSTICE NORRIS: just before you leave this, I am right that you only complain about a breach of clause 7 of the agreement?
“Now, this is where, as I said to you when I got up before the short adjournment to address your Lordship, we simply do not know any longer, we do not, anyway, know where we are on the practical interpretation, operation and effect of these ancient agreements in the year 2015, especially when you have to take account of conduct and work out intentions and all these things according to fairly flexible German principles. We do not know where we are. Therefore, when I stand up on behalf of my clients and I address your lordship and I am saying no breach and when I am saying there is co-existence built up around and about and under these agreements, I am doing this because my clients really do wish to know where they are on these points.”
“As my Lord has observed, the claim, and the only claim, on the contract is for breach of clause 7. That is the prohibition clause, and they are alleging that there has been a violation in the United Kingdom of the provisions of that clause.”
“A key purpose of the 1970 Agreement was to grant to Merck US those defined permissions: the purpose was not to recognise the existence of a “free-for-all” determined by economic muscle power …”
“65 … It was implicit in the 1970 Agreement (and did not need to be spelt out) (i) that Merck US could seek to trade outside the US and Canada under firm or corporate names other than “Merck Sharp & Dohme” and “Merck & Co Inc” and there to use a mark other than “Merck”, and (ii) that whether it would be permitted to do so would be the subject of discussion as to whether the proposed new uses were equally as well distinguished from Merck Global’s expressly recognised names and marks as those Merck US was granted permission to use in the 1970 Agreement. But this flexibility was not obviously such as to permit Merck US to use the simple word “Merck” as a contraction of its permitted names and as a stand-alone identifier.”
“68 … This implicitly restricted the use of the word “Merck” alone as a contraction of the firm name or corporate name of Merck US since the purpose of the contract was to ensure that when Merck US used a trade name or corporate name including the word “Merck” (but which was not “Merck Sharp & Dohme”) it had to be clear to the reader that the entity so referred to was located in the USA: and Merck US was obliged to desist from anything that might endanger the achievement of the purpose of clauses 6 and 7 of the 1970 Agreement.”
“69 … The German Court is likely to require substantial though not a literal compliance with the requirement to use a geographical identifier of equal prominence when Merck US uses a name including the word “Merck”
“83. … In my judgment according to German law: a) the use in the UK of the word “Merck” alone by Merck US as a contraction of the full trade name and without a geographical identifier is a breach of the 1970 Agreement; b) the use in the UK of the word “Merck” by Merck US as a trade mark is a breach of the 1970 Agreement.” a) the use in the UK of the word “Merck” alone by Merck US as a contraction of the full trade name and without a geographical identifier is a breach of the 1970 Agreement; b) the use in the UK of the word “Merck” by Merck US as a trade mark is a breach of the 1970 Agreement.”
“90. The use of the Merck name alone as a firm or corporate name is not a use that is permitted by the 1955 or the 1970 Agreements. These Agreements addressed in detail the use of the corporate or firm names of Merck US, identifying them and specifying that they could only be used with geographical identifiers of equal prominence. Using the word “Merck” on its own as a contraction of the full name is not such use. 91. By clause 6 of the 1970 Agreement Merck US agreed that Merck Global was entitled to use the word “Merck” as a name in the rest of the world (provided only that it was not used in a way confusingly similar to “Merck Sharp & Dohme” or to “Merck & Co Inc” plus geographical identifier). Having regard to the function of the contract and the obligation upon Merck US to desist from all activity that might endanger the purpose of the contract, the German law reading of the 1970 Agreement compels the conclusion that the contraction of Merck US’s corporate name to “Merck” is not only not permitted, but is also forbidden. 92. No credible argument can be advanced that “Merck” on its own as a trade name is simply a new name for which the 1955 and 1970 Agreements did not provide and which was to be the subject of further discussion. What Merck US sought to preserve at the time of the 1955 and 1970 Agreements was the possibility of “…using other names and marks containing (sic) “Merck”….”: and the provision it sought to include (but which was deliberately omitted, thereby leaving an intentional gap) was the right to use future names or marks that were equally well distinguished from Merck Global’s names and marks as was “Merck Sharp & Dohme” itself. A German Court looking at “the function” of the contract would say that it was directed to governing the use of the critical word “Merck” and that neither party understood that the use of the word “Merck” as a standalone description of Merck US remained “up for grabs”. 93. Nor do I think that any credible argument can be advanced that the use of the word “Merck” as a description of Merck US or as a contraction of its corporate name is permitted if the technique employed in “An ihren Fruchten…” is by analogy applied. The 1970 Agreement (which post-dates that publication) required any mention of the Merck US corporate name to be accompanied by a geographical identifier of equal prominence. The 1975 Protocol clarified that an identical font size was not required, but only a font size in reasonable proportion to (and in close proximity to) the corporate name when used. In its publication “An Ihren Fruchten…”
“72. When I circulated this judgment in draft Merck US objected that my sixth and seventh findings relate to matters that were not in contention in the proceedings and that Merck Global’s pleaded case related only to breaches of clause 7 of the 1970 Agreement. But it is in my judgment necessary to record these findings (a) because the argument at trial ranged wider (presumably to some purpose) and in particular addressed both the significance of Merck US’s 1955 refusal to trade only under the name “Merck Sharp and Dohme” and the “An ihren Fruchten..” point: (b) because Mr Hobbs QC began his closing speech by explaining that his clients did not in 2015 know where they were in relation to the 1970 Agreement or where the interface between contract and infringement was (asking amongst other things: “Can we have a website and web address “merck.com”? Can we use “Merck” and “Merck Sharp & Dohme?”): and (c) because the intended operation of agreement has to be seen as a whole, and understanding the operation of clause 6 in the context of this dispute informs the approach to the operation of clause 7.”
“13. … I should say something about the proper approach for a judge to adopt when he is proposing to decide a case on the basis of a point which was not argued, or in a way or to an extent which is more favourable to a party than the case which that party advanced in court. 14. The first point to make is that, at least as a matter of principle, a judge is entitled to take such a course. After all, a judge must decide a case according to the facts and the law as he believes them to be. Accordingly, subject to any particular reason to the contrary in the particular case, there is no reason for objecting in principle to a judge taking such a course. 15. Secondly, however, there may be particular reasons why such a course is not open to the judge in a particular case. For instance, the course he wishes to take may not be open on the pleadings, or it may be precluded by virtue of a concession which has not been, or cannot be, withdrawn. Equally, a finding of primary fact, or even a finding of secondary fact or an assessment of a witness or expert evidence, may simply not on analysis be open to the judge on the evidence before him. 16. Thirdly, whether or not the point turns out to be open to the judge, it is clear that, save perhaps in very exceptional circumstances (which I find it very hard to envisage), he must ensure that the parties are given a fair opportunity to deal with the point. If the point is on analysis a bad one, it is fairer to the parties and less embarrassing for the judge that this is established before the judgment is available, rather than the parties either having a hearing at which the judge has to withdraw or amend the judgment or suffering the delay and expense of an appeal. 17. But there is an even more important reason for the requirement that the parties are given a proper opportunity to deal with the judge's point, namely procedural fairness. It is simply unfair on a party if she loses a case because of a point thought up by the judge, which she or her representatives have not properly been able to address. In this case a major factor which (if I may say so, correctly) influenced Mummery LJ when giving the defendant permission to appeal was that her representatives stated that they had not been given a proper opportunity of dealing with the two reasons advanced by the judge for holding that the 1983 Act did not apply. 18. How a judge ensures that parties have an opportunity to deal with a point which he has thought of must depend on the circumstances. If the point occurs to him before or during the hearing, he should obviously raise it in court in clear terms with the parties, ideally ensuring that it is reduced to writing, and give the parties a fair opportunity to deal with it. Sometimes it can be fully disposed of at the hearing; on other occasions it may be only fair to give the parties time, and subsequent written submissions may be the appropriate course. If the point occurs to the judge after the hearing, it would, I think, normally be sufficient if he writes to the parties or their representatives, giving them the opportunity of dealing with the point in written submissions (sometimes with the opportunity for counter-submissions). Occasionally, a further hearing may be appropriate, but it would normally be disproportionate.”
“75. First, both parties are under an obligation to support the purpose of the contract and to desist from all activities which might endanger its achievement. Each party must respect and act in consideration of the other party’s interests. 76. The purpose of the Agreements was to settle disputes arising from the respective use of the parties’ trade marks without resorting to litigation. Both parties are under a duty to make reasonable efforts to reach a solution which allows the parties to trade under the Merck name and trade mark within their respective territories in a commercially reasonable way.”
“81. In my judgment read according to German law the 1970 Agreement does cover use of the word “Merck” in relation to the provision of services. This conclusion seems to follow from the requirements not to construe a word in isolation but in the context of the agreement as a whole, to have regard to what led to the agreement as a whole (namely what was “the function” of the contract), to look at the meaning that would have been conveyed to the addressees of the relevant provisions, and to give weight to subsequent conduct where (as a matter of judicial assessment) that is a reliable guide to the intention of the parties at the time of the contract. 82. The object of the 1955 Agreement and of the 1970 Agreement was to address who was entitled to use the word “Merck” as part of their corporate name or as a trade mark in the US/Canada, Germany, and the rest of the world, and to dispose of litigation then current in India, Hong Kong, Ceylon, Italy, Australia and Thailand. The concept of the “mark” was not anchored in any single system of law, let alone German law. Since the Agreement was forward-looking (as well as settling all those current disputes) it was not anchored to any particular time: if the meaning and content of the word “mark” or “trademark” changed in any particular jurisdiction or across a number of jurisdictions (by being extended to new classes of goods or by being extended to services) the obligation not to use the word “Merck” as a trade mark continued. This is the way the parties treated the 1970 Agreement as operating. They did not launch in one another’s territories campaigns to use the “Merck” mark in areas which fell outside the strict limits of protection as it stood in 1932 or 1955, whether those limits were set by national law or by operative international conventions: nor did they change that approach when the scope of protection altered. In fact, by the time of the 1970 Agreement the scope of protection had been enlarged to incorporate services (by the Paris Convention of 1958): there is simply no ground for thinking that in 1970 the parties intended to confine their agreement only to the scope it would have had in 1955 if the strict limits of protection then in place were observed and not to extend it to the scope it actually had in 1970.”
“92. In view of the foregoing considerations, the answer to be given to the referring court is that, in order to determine whether a trader whose activity is presented on its website or on that of an intermediary can be considered to be ‘directing’ its activity to the Member State of the consumer’s domicile, within the meaning of Article 15(1)(c) of Regulation No 44/2001, it should be ascertained whether, before the conclusion of any contract with the consumer, it is apparent from those websites and the trader’s overall activity that the trader was envisaging doing business with consumers domiciled in one or more Member States, including the Member State of that consumer’s domicile, in the sense that it was minded to conclude a contract with them.”
“93. The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists. 94. On the other hand, the mere accessibility of the trader’s or the intermediary’s website in the Member State in which the consumer is domiciled is insufficient. The same is true of mention of an email address and of other contact details, or of use of a language or a currency which are the language and/or currency generally used in the Member State in which the trader is established.”
“61. Whilst recognising those principles, eBay submits that the proprietor of a trade mark registered in a Member State or of a Community trade mark cannot properly rely on the exclusive right conferred by that trade mark as long as the goods bearing it and offered for sale on an online marketplace are located in a third State and will not necessarily be forwarded to the territory covered by the trade mark in question. L’Oréal, the United Kingdom Government, the Italian, Polish and Portuguese Governments, and the European Commission contend, however, that the rules of Directive 89/104 and Regulation No 40/94 apply as soon as it is clear that the offer for sale of a trade-marked product located in a third State is targeted at consumers in the territory covered by the trade mark. 62. The latter contention must be accepted. If it were otherwise, operators which use electronic commerce by offering for sale, on an online market place targeted at consumers within the EU, trade-marked goods located in a third State, which it is possible to view on the screen and to order via that marketplace, would, so far as offers for sale of that type are concerned, have no obligation to comply with the EU intellectual property rules. Such a situation would have an impact on the effectiveness (effet utile) of those rules. 63. It is sufficient to state in that regard that, under Article 5(3)(b) and (d) of Directive 89/104 and Article 9(2)(b) and (d) of Regulation No 40/94, the use by third parties of signs identical with or similar to trade marks which proprietors of those marks may prevent includes the use of such signs in offers for sale and advertising. As the Advocate General observed at point 127 of his Opinion and as the Commission pointed out in its written observations, the effectiveness of those rules would be undermined if they were not to apply to the use, in an internet offer for sale or advertisement targeted at consumers within the EU, of a sign identical with or similar to a trade mark registered in the EU merely because the third party behind that offer or advertisement is established in a third State, because the server of the internet site used by the third party is located in such a State or because the product that is the subject of the offer or the advertisement is located in a third State. 64. It must, however, be made clear that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (see, by analogy, Joined Cases C-585/08 and C-144/09 Pammer and Hotel Alpenhof[2010] ECR I-0000 , paragraph 69). Indeed, if the fact that an online marketplace is accessible from that territory were sufficient for the advertisements displayed there to be within the scope of Directive 89/104 and Regulation No 40/94, websites and advertisements which, although obviously targeted solely at consumers in third States, are nevertheless technically accessible from EU territory would wrongly be subject to EU law. 65. It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory. When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance in the said assessment.”
“36. Consequently, the mere fact that the website containing the data in question is accessible in a particular national territory is not a sufficient basis for concluding that the operator of the website is performing an act of re-utilisation caught by the national law applicable in that territory concerning protection by the sui generis right (see, by analogy, Pammer [2012] All E.R. (EC) 34 at [69], and L’Oréal SA v eBay International AG (C-324/09) [2011] E.T.M.R. 52; [2011] R.P.C. 27 at [64]). … 39. The localisation of an act of re-utilisation in the territory of the Member State to which the data in question is sent depends on there being evidence from which it may be concluded that the act discloses an intention on the part of its performer to target persons in that territory (see, by analogy, Pammer [2012] All E.R. (EC) 34 at [75], [76], [80] and [92]; L’Oréal [2011] R.P.C. 27 at [65]; and Donner [2012] E.C.D.R. 18 at [27]–[29]). 40. In the dispute in the main proceedings, the circumstance that the data on Sportradar’s server includes data relating to English football league matches, which is such as to show that the acts of sending at issue in the main proceedings proceed from an intention on the part of Sportradar to attract the interest of the public in the United Kingdom, may constitute such evidence. 41. The fact that Sportradar granted, by contract, the right of access to its server to companies offering betting services to that public may also be evidence of its intention to target them, if—which will be for the referring court to ascertain—Sportradar was aware, or must have been aware, of that specific destination (see, by analogy, Pammer [2012] All E.R. (EC) 34 at [89], and Donner [2012] E.C.D.R. 18 at [27] and [28]). It could be relevant in this respect if it were the case that the remuneration fixed by Sportradar as consideration for the grant of that right of access took account of the extent of the activities of those companies in the UK market and the prospects of its website betradar.com subsequently being consulted by internet users in the United Kingdom. 42. Finally, the circumstance that the data placed online by Sportradar is accessible to the UK internet users who are customers of those companies in their own language, which is not the same as those commonly used in the Member States from which Sportradar pursues its activities, might, if that were the case, be supporting evidence for the existence of an approach targeting in particular the public in the United Kingdom (see, by analogy, Pammer [2012] All E.R. (EC) 34 at [84], and Donner [2012] E.C.D.R. 18 at [29]).”
“16. … I think there must be an inquiry as to what the purpose and effect of the advertisement in question is. In the present case, for example, the advertisement tells a reader, who knows nothing more, that there is an enterprise called “Crate & Barrel” in Dublin dealing with the goods mentioned. It is probably a shop, for these are not the sort of goods one would order only by mail. Normally, of course, an advertisement placed in a United Kingdom magazine is intended to drum up United Kingdom business and will do so. This is so whether the advertisement is for goods or for a service or shop. But this is not a normal case. This is an advertisement for an Irish shop in a magazine which has an Irish and United Kingdom circulation. … 18. … The Directive is addressed to Member States. It is to tell them to bring their national laws into force to comply with it (Article 16). It is a Directive about what national trade mark laws are to be. So one would expect the required legislation to be dealing with what can and cannot be done by way of trade mark use within each of the Member States. One would not expect it to be requiring Member States to enact laws which effectively prevent what can be done in other Member States. It is Article 5 which sets out the obligatory and optional provisions as to what constitutes infringement. It is Article 5 which uses the expression “using in the course of trade … in relation to goods or services” from which section 10 of the United Kingdom Act is derived. 19. The phrase is a composite. The right question, I think, is to ask whether a reasonable trader would regard the use concerned as “in the course of trade in relation to goods” within the Member State concerned. Thus if a trader from state X is trying to sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be “in the course of trade” there. But if the trader is merely carrying on business in X, and an advertisement of his slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the advertisement were for a local business such as a shop or a local service rather than for goods. I think this conclusion follows from the fact that the Directive is concerned with what national law is to be, that it is a law governing what traders cannot do, and that it is unlikely that the Directive would set out to create conflict within the internal market. So I think Mr Miller is right. One needs to ask whether the defendant has any trade here, customers buying goods or services for consumption here. It was that sort of concept I had in mind in 800 FLOWERS Trade Mark.”
“20. It is clear from the scheme of Article 5 of the directive that the use of a sign in relation to goods or services within the meaning of Article 5(1) and (2) is use for the purpose of distinguishing the goods or services in question, whereas Article 5(5) is directed at ‘the use which is made of a sign for purposes other than distinguishing the goods or services’ (Case C-63/97 BMW[1999] ECR I-905 , paragraph 38). 21. The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services (see, to that effect,Case C-23/01 Robelco[2002] ECR I-10913 , paragraph 34, and Anheuser-Busch, paragraph 64). The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive. 22. Conversely, there is use ‘in relation to goods’ within the meaning of Article 5(1) of the directive where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that effect, Arsenal Football Club, paragraph 41, and Adam Opel, paragraph 20). 23. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party. 24. In the main proceedings, it is for the national court to determine whether the use by Céline SARL of the Céline sign constitutes use in relation to those goods for the purposes of Article 5(1) of the directive. 25. Lastly, Céline SARL claims that there could be no confusion on the part of the public as to the origin of the goods in question. 26. As was noted at paragraph 16 of this judgment, the unauthorised use by a third party of a sign which is identical to a registered mark in relation to goods or services which are identical to those for which that mark is registered cannot be prevented under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of the mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services. 27. That is the situation where the sign is used by the third party in relation to his goods or services in such a way that consumers are liable to interpret it as designating the origin of the goods or services in question. In such a case, the use of the sign is liable to imperil the essential function of the mark, since, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see, to that effect, Arsenal Football Club, paragraph 48 and the case-law cited, and paragraphs 56 to 59).”
“160. I am satisfied that the Merck US websites are so directed at commercial activity in the UK. They are undoubtedly global websites (that is the way they described themselves until shortly before the trial began) with UK specific content directed at UK based job-applicants, suppliers, scientists, innovators and developers, seekers after information about corporate responsibility and enquirers about MSD products generally and specifically. Those who seek information about MSD and its products are simply redirected to the Merck US website and receive the information under the “Merck” (not the “MSD”) branding and logos. The Merck US witnesses acknowledged that this was so. This in my judgment is sufficient.”
“162. … The essential question to be answered is whether the mark has been used in the course of a commercial activity with a view to gain. Plainly the “MERCK” mark was being so used by Merck US on its websites and those websites specifically solicited users in the UK to interact in a commercial context with Merck US in the course of its commercial activities.”
“121. … The principle would not be applied so as to modify the contract originally entered into: that seems to me to be a wholly different matter. But in deciding whether to grant relief and if so what, the German court is likely to take into account how the parties have in fact adjusted their respective rights and claims under the contract over the years.”
“126. As regards “merck.com” and “@merck.com” in relation to which an equilibrium exists deriving from use since 1993, which equilibrium has been disturbed by more extensive use, doing everything possible that can be reasonably expected to counteract an increase in the likelihood of confusion will involve either desisting from use on YouTube, Twitter and Facebook or the acceptance of geo-targeting (or its equivalent): and in relation to the enlarged use of the established “merck.com” domain and associated e-mail address the adoption of localised national e-mail addresses for non-US based staff where that does not occasion unreasonable expense or disruption. So strict compliance with the 1970 Agreement as to co-existence has in this limited regard been replaced by an obligation to comply with such orders as the Court might make designed to avoid any increase in confusion arising from the e-mail addresses and domain names beyond that established under the earlier equilibrium.”
“134. I therefore find and hold that Merck Sharp & Dohme Corp (which is the contractual counterparty) is in breach of the 1970 Agreement as indicated above. I will (as sought in paragraph 4 of the prayer for relief) declare that Merck US has breached its contractual obligations contained in the 1970 Agreement and the 1975 Protocol. The precise form of injunctive relief must be considered after this judgment is handed down. I hope it is clear that I consider Merck Global to be entitled to an order restraining Merck US from describing itself in any printed or digital material addressed to the UK as “Merck”, but only as “MSD” or as “Merck Sharp & Dohme” or as “Merck & Co Inc” accompanied by a geographical identifier of equal prominence in accordance with the 1975 Protocol (though I would look for substantial not literal compliance with that obligation). I think Merck Global is also entitled to an injunction to restrain the use by Merck US in any such material of the mark “MERCK”
“In my judgment the question is (as Mr Hobbs QC submitted) one of definition of the relevant sub-categories. The purpose and intended use of a pharmaceutical preparation (as expressed in its therapeutic indications) is a strong factor in the definition, provided that one can be confident that the therapeutic indications definitively list the treatment uses of the drug. But the application of the principle cannot produce an “unfair” result, and in particular must be reconciled with the legitimate interest of Merck Global in being able in the future to extend its range of goods, within the confines of the terms describing the goods for which the trade mark was registered. The Court is not concerned to define the sub-categories in the narrowest way possible having regard to actual use. The Court is concerned to identify what uses the average consumer would consider belonged to the same group or category as those for which actual use had been proved and which were not substantially different from those proven uses. That would produce the same result as if a narrower specification had been originally adopted (“polish”) but only use of part within that category (“magic cotton”) proved. For a major pharmaceutical company with a large product line and an established reputation (including for research) the sub-categories cannot be confined to the precise therapeutic indications for the treatment of which a specific drug is used in the relevant period. My view is that (for example) the specification might fairly be “preparations for neuro-degenerative diseases” rather than “multiple sclerosis” or for “preparations for respiratory diseases and conditions” rather than for “asthma”
“191. Merck Global is therefore entitled to an injunction as against Merck & Co Inc Merck Sharp & Dohme Ltd Intervet UK Ltd and Intervet International BV to restrain infringement of its “MERCK” mark through its use in any logo or branding (including where “Merck” is directly linked to the supply of products or services). The terms of the injunction will need to be settled when this judgment is handed down.”
“97. The branding is plainly deployed to link the Merck brand to the products and services provided by Merck US. It can serve no other purpose. It is linked on the merck.com website to research, product development, business development and the provision of pharmaceutical services. It is linked to a considerable number of specific products. As Ms Ambrose explained in respect of the informational web pages: “You want to connect the perception of a life saving vaccine to Merck.” …” “You want to connect the perception of a life saving vaccine to Merck.” …”
“ … the evidence establishes use of the MERCK mark by Merck US on its websites (and in relation specifically to the UK) in relation to research and product development, licensing and business development, and in relation to healthcare and pharmaceuticals (where there is a clear desire to link use of the “MERCK” mark to Merck US’s various vaccines and drugs for diabetes, cardiovascular conditions and cancer which are otherwise available in the UK under the same product name but with MSD branding).”
“170. The identical goods and services in relation to which the “MERCK” mark is used by Merck US are (1) in respect of UK trade mark registration Nos. 1 123 545 and 1 558 154: (a) chemical products included for use in industry, science, manufacturing and in film processing; (b) pharmaceutical substances and preparations; (2) in respect of International trade mark registration Nos. 770 038 and 770 116: (a) chemicals used in industry, science and photography; (b) pharmaceutical preparations; (c) medical products; (d) medical care; (e) scientific research; (f) providing information and counselling in healthcare; (g) drawing up of medical and pharmaceutical expert reports, documents and information; (h) planning, performing and evaluating medical and pharmaceutical studies; (i) counselling and services with regard to ensuring drug safety; (j) services rendered in the medical and pharmaceutical areas.” (1) in respect of UK trade mark registration Nos. 1 123 545 and 1 558 154: (a) chemical products included for use in industry, science, manufacturing and in film processing; (b) pharmaceutical substances and preparations; (2) in respect of International trade mark registration Nos. 770 038 and 770 116: (a) chemicals used in industry, science and photography; (b) pharmaceutical preparations; (c) medical products; (d) medical care; (e) scientific research; (f) providing information and counselling in healthcare; (g) drawing up of medical and pharmaceutical expert reports, documents and information; (h) planning, performing and evaluating medical and pharmaceutical studies; (i) counselling and services with regard to ensuring drug safety; (j) services rendered in the medical and pharmaceutical areas.”
“171. The infringements consist of use by Merck US of the “MERCK” mark on web pages (a) listing prescription medicines and vaccines; (b) addressing research, development and the sale and supply of such medicines and vaccines; (c) dealing with research and development in the field of maternal health; (d) detailing services rendered in the medical and pharmaceutical areas; (e) providing information and advice about drug safety and other healthcare issues.” (a) listing prescription medicines and vaccines; (b) addressing research, development and the sale and supply of such medicines and vaccines; (c) dealing with research and development in the field of maternal health; (d) detailing services rendered in the medical and pharmaceutical areas; (e) providing information and advice about drug safety and other healthcare issues.”
“174. I heed the warning in Reed Executive plc v Reed Business Information[2004] EWCA Civ 159 at [14] to [15]. But for present purposes (a consideration of whether Merck Sharp & Dohme Corp is a tortfeasor as well as a contract breaker) I can succinctly state I consider the vast majority of the infringements to have been proved on the basis of the material in Bundle 1E and 1A(2)[27]. I was not persuaded by the material in Bundle 1A(1) [5], [24] or [25] or 1A(2)[28] (where the references were not to Merck as a mark but to Merck as an entity).”
“The name by which Merck US is known or called by its customers in the UK is “MSD” or “Merck Sharp & Dohme”
“In relation to any web-site under any domain name (“the site”) the content of which includes uses of the Claimant’s mark “Merck” it shall be sufficient compliance with the injunctions set out at paragraphs 2 and 3 above if the site achieves geo-blocking of visitors from the UK in accordance with Schedule 3 to this Order. In relation to the like content on YouTube, Twitter and Facebook it shall likewise be sufficient compliance if the relevant social media platform provides an equivalent or near equivalent functionality to geo-blocking and that technique is employed to its fullest extent in accordance with Schedule 3.”
“19 It follows that, if the appellate process is to work satisfactorily, the judgment must enable the appellate court to understand why the judge reached his decision. This does not mean that every factor which weighed with the judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the judge's conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the judge to identify and record those matters which were critical to his decision….. ”
“35. Here arises the practical difficulty of devising a suitable form of words. An interlocutory injunction, like any other injunction, must be expressed in terms which are clear and certain. The injunction must define precisely what acts are prohibited. The court must ensure that the language of its order makes plain what is permitted and what is prohibited. This is a well established, soundly-based principle. A person should not be put at risk of being in contempt of court by an ambiguous prohibition, or a prohibition the scope of which is obviously open to dispute. An order expressed to restrain publication of "confidential information" or "information whose disclosure risks damaging national security" would be undesirable for this reason.”
“46. This discussion does, of course, underline how important it is for courts to seek to ensure that injunctions are not drawn in wider terms than necessary. This is of particular importance when the terms of the injunction may, in practice, affect the conduct of third parties.”