Merck KGaA v Merck Sharp & Dohme LLC & Ors [2024] EWHC 820 (Ch)

“2. The First Defendant shall not in the United Kingdom (whether acting by its directors, officers, employees, agents, or otherwise howsoever) breach clause 7 of the 1970 Agreement by the use within the United Kingdom of (a) the trade mark "Merck" and/or (b) the word "Merck" as a contraction of its corporate name or as a trade or business name (either alone or in combination with other words in formulations not permitted by or without the distinguishing signifiers required by the Agreement) when furthering or promoting its business to third parties. 3. At The Defendants and each of them shall not (whether acting by their directors, officers, employees, agents or otherwise howsoever) infringe UK trade marks Nos. 1123545 and 1558154, and International registered marks (UK) Nos. 770 038 and 770 116 by using the sign MERCK as a trade mark in the course of trade in the United Kingdom.”

“b. For the Defendants to establish and maintain any “MSD branded”

“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.”

“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 owed 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 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. Industries 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”. 10.) Cuba and the Philippines. Merck & Co. and E. Merck each recognize the concurrent right of the other to the unrestricted use of Merck as a tradename and as a trademark in Cuba and the Philippines; each will take appropriate steps to distinguish its goods from those of the other and avoid confusion. 11.) Merck & Co. and E. Merck will cooperate 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. 12.) It is understood that Merck & Co. had submitted the original agreement of September 12, 1955 – which is herewith replaced by this new agreement – to the United States Department of Justice for review and with the concurrence of the Department obtained an appropriate court order that Merck & Co. is authorized to execute and carry out the original agreement. This new agreement, which provides for formalistic amendments caused by a change of the company name of the German party, has been submitted to the United States Department of Justice for review. The Department has agreed that since the changes are formal only, they do not require approval by the Court.”

“5. In relation to any website under any domain name (“the site”) the content of which includes uses of the mark “Merck”: it shall be sufficient compliance with the injunctions set out at paragraphs 2 and 3 above if the site adopts compliant geo-blocking of visitors from the UK in accordance with Schedule [2] to this Order. 6. In relation to social media platforms which enable country restrictions, it shall be sufficient compliance with the injunctions set out at paragraphs 2 and 3 above for such country restrictions as are offered to be used to the fullest extent to prevent access by visitors from the United Kingdom. In relation to social media platforms which do not offer country restrictions, it shall not be a breach of the injunctions at paragraphs 2 and 3 above for the word 'Merck' to appear on such social media pages if (a) it is made clear that those pages are intended for residents of the Permitted Territories and (b) alternative social media pages are maintained which use a designation which is not prohibited by the forgoing injunctions (such as, without limitation, "MSD") instead of "Merck".”

“7. The provisions at paragraphs 2 to 6 of this Order shall take effect 31 days after the date of this Order, save with respect to the use by the Defendants of any “@merck.com” email address for which the effective date of the provisions at paragraphs 2 and 3 of this Order is three months after the date of this Order.”

“22. The parties have permission to apply for further directions and generally with regard to the implementation and operation of the provisions of this Order.”

“3. There has been concern expressed, I have no doubt in good faith, by US Merck that this application is an application for a finding of contempt dressed up as something else. Whether that was right or wrong, I am satisfied, for reasons that were explored during the course of argument, that that is not the way that it is going to be taken forward and that this is an application to determine where the boundary lies as a result of Sir Alastair Norris's order. It is certainly not for punishment for contempt for the past. It is simply so that Merck Global and indeed Merck US can know where the line is for the future in the light of the disputes about it that are identified in the pleadings in this application.”

“6. Before considering that issue, however, a prior question has been raised on behalf of the Defendants: and that is whether the Court should entertain and seek to determine the application at all, in circumstances where (a) the usual recourse for alleged breach of a freezing order is an application for committal based on contempt of court; but (b) the Claimants have disavowed any intention, present or future, to apply on these grounds for committal; and (c) the rigorous procedural requirements for such an application have accordingly not been fulfilled.”

“7. Taking (c) first, it is well known and of fundamental importance that on an application for committal, which potentially concerns a person’s liberty, the procedural requirements laid down by CPR 81 must be scrupulously fulfilled. In particular, proper service must be effected on proper notice, and the grounds on which the application is made must identify, separately and numerically, each alleged act of contempt, including (if known) its date: CPR 81.10. 8. When the Claimants’ application came before the court on 20 December 2013 the Defendants strenuously argued that these requirements had not been fulfilled, and that in such circumstances they should not have to answer what amounts to an application for committal, even if not so-called. The Claimants accepted that they had not fulfilled all the procedural requirements applicable to such an application; but they made the obvious point that they were not seeking to establish contempt nor seeking committal. 9. Nevertheless, to ensure a fair process, I adjourned the application over from December and I required the Claimants to set out in full the detail of the alleged breach. With those safeguards, and subject to my continuing concern that the Claimants do not proceed by incremental steps towards a committal application which they have disavowed (what I termed “a game of grandmother’s footsteps”), I do not think the application should be refused on grounds of unfairness or procedural failure. 10. However, and as to (a) in paragraph 6 above, Mr Stroilov (acting with my permission as the McKenzie friend of the Defendants, with, in very unusual circumstances, a speaking role) also relied on Elliot v Klinger and Others [1967] 1 WLR 1165. In that case, Stamp J (as he then was) declined to grant an injunction against a third party who was alleged to have aided and abetted a breach of an undertaking given by a party to the action, and held that the proper remedy was by way of motion for committal or sequestration. Mr Stroilov submitted that the Claimants should, by parity of reasoning, not be permitted to seek declaratory relief in respect of a breach of the Freezing Order without applying for committal and affording the Defendants all the protections required in any such application (both procedural and substantive, since the criminal standard of proof is required). 11. I do not consider that Elliot v Klinger is really in point. In that case the injunction was sought against a non-party; there is usually no jurisdiction to grant such an injunction; the applicant sought to surmount this impediment by invoking the jurisdiction of the court to prevent or punish the breach of its orders in proceedings for contempt, but without seeking committal. The application failed. But that is a long way from this case. There is plainly jurisdiction in the Court to grant declaratory relief against an existing party to the proceedings, whether or not any other remedy is claimed; and see as to the latter CPR 40.20.”

“12. That said, however, the making of a declaration is always discretionary, and when considering whether to grant a declaration or not, the Court takes into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose, and whether there are any other special reasons why or why not the court should grant such relief: see Nokia Corp v InterDigital Technology Corp [2006] EWCA Civ 1618. 13. In this case, I can see no real utility in making a declaration, even if the alleged breaches could be established; and I can see possible injustice to the Defendants if there is any possibility (as I am concerned there would be) of the grant of such a declaration being treated as if it were a finding of contempt. It was and remains open to the Claimants to establish contempt and seek committal: I see no reason for or utility in the half-way house they propose. To that extent, the Claimants’ application fails and must be dismissed.”

“19. It is common ground that the Court has jurisdiction to determine both applications. The Court has inherent jurisdiction to grant a declaration where there is a “real commercial reason” for seeking such relief: see Nokia Corp v InterDigital Corp [2006] EWCA Civ 1618, [2007] FSR 23. It is common ground that both sides have a real commercial reason for ascertaining whether the Injunction does or does not prohibit certain acts. Given that the purpose of the applications is to obtain declarations as to the effect of the Injunction, the applications are properly made in the existing proceedings.”

“14. I would add that, in the event of a material change of circumstances, it will be open to Amazon to apply to vary or discharge the injunction. Furthermore, if there is a dispute as to whether Amazon have complied with the injunction, the parties will be able to seek the court’s resolution of the dispute by means of an application for declaratory relief (rather than a contempt application): see Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] FSR 34.”

“I reject this argument which, in my judgment, involves the repetition of the first of the very same arguments which were rejected by the Court of Appeal. The question does not, in my view, depend upon the doctrine of res judicata but upon the true construction of the injunction, which ought to be given the same effect whether made at the trial of the action or made at the interlocutory stage or by consent, when the doctrine of res judicata has no application.”

“Mr John Rourke, the defendant, is a bookkeeper, who appears to have started an unauthorised deposit business in a small way in 1994; the business become more extensive by about 1998. Pursuant to its powers under section 42, the FSA interviewed Mr Rourke on 14th and 15th March 2001. The FSA decided that he had borrowed and lent money in the way of business, and therefore that he had contravened section 3. The FSA also formed the view that he had breached section 35. Accordingly, on 2nd April the FSA issued proceedings for quite wide-ranging relief. Two days earlier, before proceedings had been served the FSA applied, without notice, to Pumfrey J for an order against the defendant. The order, which was duly granted by the judge, restrained the defendant from accepting any fresh deposits, repaying any existing deposits or interest, or incurring any further liability or meeting any existing liability, save as permitted by the terms of the order. The order also included a freezing and disclosure order against the defendant in substantially the same form. The order was renewed inter partes and was served on 4th April together with the proceedings. The FSA now applies for: (1) an order that the freezing and disclosure orders granted by Pumfrey J be continued; (2) for summary judgment for injunctive relief; (3) summary judgment for declaratory relief; (4) the committal of the defendant for contempt, arising from breaches of Pumfrey J's order. The relief claimed under (1) and (2) is no longer contested by the defendant. The relief sought under (3) is challenged on two separate grounds, one of some general significance. The relief claimed under (4) is not challenged, but the question of the appropriate sanction for contempt is in dispute.”

“In Messier-Dowty v Sabena [2001] 1 All ER 275 the issue was whether a negative injunction should be granted. Lord Woolf said this: “The deployment of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose. However, where a negative declaration would help to ensure that the aims of justice are achieved, the courts should not be reluctant to grant such declarations. They can and do assist in achieving justice. … So in my judgment the development of the use of declaratory relief in relation to commercial disputes should not be constrained by artificial limits wrongly related to jurisdiction. It should instead be kept within proper bounds by the exercise of the courts' discretion.”

“That case is therefore authority for the propositions that the court has a very wide power to grant declaration, confirming therefore the conclusion I reached, and that, in circumstances such as those in that case, it would be inappropriate to grant a declaration. In my view, the present case is plainly distinguishable from that case. First, there are no criminal proceedings under way in the present case, and although the FSA may decide to bring criminal proceedings, there is no suggestion that they are about to do so. Secondly, what is sought is not a declaration concerned with criminal activity as such, as in that case (was the scheme a lottery contrary to the criminal law), merely a declaration as to events which have taken place, which events are properly under consideration by the High Court. The Banking Act has [t]he rather unusual, if understandable, twin tracking with the same sections being able to be revised before the criminal court and before the High Court. Thirdly, the declaration, if granted in the present case, would not in any way inhibit any criminal proceedings. It seems to me that the declarations would not even be admissible in criminal proceedings. This is a case where the civil court has to decide on the balance of probabilities whether or not the facts embodied in the prepared declarations have been established. Of course, when considering that question on the balance of probabilities, because dishonesty is involved, the court has to be particularly strongly persuaded of the truth of those facts, before it is satisfied. Nonetheless it judges the question on the “balance of probabilities”

“The point is not without force, but I reject it. It seems to me that, if the declarations are granted and the FSA then decide to bring criminal proceedings, it is at that point that the defendant can raise the issue that he cannot have a fair criminal trial. I cannot sensibly decide now, before the declarations have even been granted, let alone before they have been publicised, whether the publicising of the declaration would result in it being impossible for the defendant to have a fair criminal trial. It would be a far easier thing for that to be decided once the facts are known and the matter can be judged, not on the basis of what may happen, but on the basis of what actually has happened. Further, it seems to me that it is much more sensible for a criminal court, which would be trying the case, to decide whether or not the defendant could have a fair criminal trial at the time that the trial is about to take place, rather than for a civil court to decide that issue, when it does not even know if the criminal trial is to take place, when it is to take place, where it is to take place and what the charges would be. I can see considerable force in the point made by Mr Vineall that the nature of the publication will be such that the publicity would be local, and that even if the fairness of criminal proceedings in the locality in which Mr Rourke lives was tainted, that would not prevent the trial taking place elsewhere. In my judgment, therefore, the correct conclusion on this issue is that it is for the FSA to take the risk, if I think it otherwise right to grant the declarations. … The FSA will be well aware that, if they decide to implement criminal proceedings against the defendant, they may find themselves faced with a contention that he cannot have a fair trial. In my view, therefore, this is not a reason for rejecting the grant of declarations.”

“INCITEMENT Mr. Kentridge in this court but not before the trial judge, submitted that Amstrad's advertisements and promotional literature provided evidence that they were inciting purchasers of their machines to commit offences contrary to section 21(3) of the 1956 Act. Anyone who uses one of Amstrad's high speed machines to copy a pre-recorded cassette which he has bought from a shop or he knows is a commercial product, probably will commit an offence contrary to section 21(3). His use of a commercially produced pre-recorded cassette, stamped as they all are with a reference to copyright, will be evidence that he knew he was using it to make an infringing copy and the cassette will be a matrix and therefore a plate. As I commented earlier in this judgment, nearly all potential purchasers would understand the advertisements and promotional literature to mean that the machines could be used for copying pre-recorded cassettes. Does putting out advertising material of the kinds I have specified amount to an incitement to commit a crime? It could do: see Invicta Plastics Ltd. and another v. Clare (1976) R.P.R. 251 where the Divisional Court held that a company which advertised a device that could detect police radar traps was properly convicted of the common law offence of inciting people who read the advertisements to use unlicensed apparatus for wireless telegraphy in contravention of section 1(1) of the Wireless Telegraphy Act 1949. I do not find it either necessary or proper to adjudge whether, on the evidence before the court, Amstrad have incited anyone to commit an offence contrary to section 21(3) of the 1956 Act. In the event of anyone instituting criminal proceedings in respect of Amstrad's advertising activities, a finding by this court would prejudice the trial. In these circumstances, in my judgment, it would not be right, in the exercise of the court's discretion, to grant the declaration requested.”

“21 In response to these points, Mr Penny made the following submissions. He said the bank was not seeking to bypass the law of contempt. He said a determination based on the civil standard of proof could not possibly prejudice Joan in relation to any potential contempt proceedings, particularly if it was incorporated only in a recital as proposed. He further said that there was no abuse. All that the bank wanted to do was to clarify what exactly was meant by the undertaking. This, he submitted, was squarely within the court’s ancillary jurisdiction and it was unattractive to argue that the bank had not been entitled to bring the matter back to court when this was precisely what Mr Malek KC had contemplated should happen. Inevitably things change, he said, and it cannot have been intended that the bank should be precluded from returning to seek clarity. 22 On this point, I am quite clear that it would not be appropriate for me to make any determination one way or the other as to whether Joan does or does not presently have other means to pay, still less any determination which purports to be final. I say that for the following reasons. First, it seems to me that I am in precisely the same position as Mr Malek KC was in January. The evidence before me is substantially identical to the evidence that was before him. There has been no disclosure and no cross-examinations. For the reasons he gave, it would be wholly inappropriate in these circumstances to attempt to make any finding. 23 Secondly, this would be exactly the sort of halfway house deprecated by Hildyard J in the St Petersburg case, which is capable of causing prejudice to Joan. Even if I only made a determination on a civil standard of proof, I would effectively be making a finding on untested evidence in circumstances where the primary sanction for breach of a voluntary undertaking is an application to commit with all the concomitant safeguards that that entails. In my judgment, it would be wrong in principle to do that without giving both sides an opportunity to test the evidence by cross-examination in the light of disclosure. 24 Thirdly, in any event, such a determination would be of no practical utility whatsoever. The bank has said that it would undertake not to apply to commit for past contempt, but in that case, what is the purpose of the proposed determination? Any determination I made could only apply to the situation as it exists today. That might change tomorrow or next week. It might change back again thereafter. The prospect of precious Commercial Court time and resources being taken up with serial applications to determine the position every time Joan wished to spend money is not one which can be countenanced consistently with the overriding objective of allocating court resources fairly and dealing with cases at proportionate cost; a view I note was also articulated by David Richards J in HMRC v Begum [2010] EWHC 2186 (Ch).”

“198. I can deal with this issue relatively shortly because it is not necessary at this stage to consider whether the uses of which complaint is made constituted uses in the UK of the word “Merck” as a trade mark rather than as a corporate, business or trade name. All these uses of the word “Merck” alone are precluded by clause 7.”

“277. So that leaves Mr Hobbs’ third and fourth submissions. Here I must confess to having considerable sympathy for the judge. He was left with a large schedule prepared by Merck Global of alleged infringements and another prepared by Merck US (in a rather different way), a considerable volume of material and very little assistance by way of oral submissions. In a case such as this it would have been far better had the parties cooperated together (and if necessary sought directions) before the trial to identify sample allegations by which the claim for infringement could have been tried effectively.”

“34 Mr Fenwick cited a number of cases to show that there are only limited circumstances in which a court can dismiss evidence given by affidavit or witness statement without the witness being cross-examined. The authorities to which he referred included In re Lo-Line Electric Motors Ltd [1988] Ch 477, 487, In re Keypak Homecare Ltd (No 2) [1990] BCLC 440, 446, In re A Company (No 6685 of 1996) [1997] 1 BCLC 639, 648, In re Hopes (Heathrow) Ltd [2001] 1 BCLC 575, 582, Long v Farrer & Co [2004] BPIR 1218 at para 57, Shierson v Vlieland-Boddy [2005] 1 WLR 3966 at para 56, Coyne v DRC Distribution Ltd [2008] BPIR 1247 at para 58, and In re Burnden Group Ltd [2017] BPIR 554 at para 2.14. To my mind, however, it suffices to quote from Coyne v DRC Distribution Ltd, where Rimer LJ accepted in para 58: “it is well-settled practice that if a court finds itself faced with conflicting statements on affidavit evidence, it is usually in no position to resolve them, and to make findings as to the disputed facts, without first having the benefit of the cross-examination of the witnesses. Nor will it ordinarily attempt to do so. The basic principle is that, until there has been such cross-examination, it is ordinarily not possible for the court to disbelieve the word of the witness in his affidavit and it will not do so. This is not an inflexible principle: it may in certain circumstances be open to the court to reject an untested piece of such evidence on the basis that it is manifestly incredible, either because it is inherently so or because it is shown to be so by other facts that are admitted or by reliable documents . . . [Counsel] said that these principles apply equally to the case in which the evidence is given by witness statement rather than by affidavit, and I agree. I said as much in my summary of the principles in Long v Farrer & Co [2004] BPIR 1218, at paras 57—61.” “it is well-settled practice that if a court finds itself faced with conflicting statements on affidavit evidence, it is usually in no position to resolve them, and to make findings as to the disputed facts, without first having the benefit of the cross-examination of the witnesses. Nor will it ordinarily attempt to do so. The basic principle is that, until there has been such cross-examination, it is ordinarily not possible for the court to disbelieve the word of the witness in his affidavit and it will not do so. This is not an inflexible principle: it may in certain circumstances be open to the court to reject an untested piece of such evidence on the basis that it is manifestly incredible, either because it is inherently so or because it is shown to be so by other facts that are admitted or by reliable documents . . . [Counsel] said that these principles apply equally to the case in which the evidence is given by witness statement rather than by affidavit, and I agree. I said as much in my summary of the principles in Long v Farrer & Co [2004] BPIR 1218, at paras 57—61.”

“It shall not be a breach of paragraph 2 or 3 of this Order:”

“So the argument that I am making is that the word “inadvertence” does not have the narrow connotation of being the antithesis to “deliberate” that my learned friend would wish it to bear. That is the antithesis I understand him to be setting up. I am saying that the volitional act can be deliberate and still be an error and still be one which is committed inadvertently.”

“MR. JUSTICE EDWIN JOHNSON: So you are saying it needs to be a mistake of commission or omission within the carrying out of a particular task, so the task would be intended but not the relevant commission or omission. MR. SPECK: If I understand the way you have put it to me, I think that is right, yes. MR. JUSTICE EDWIN JOHNSON: Or perhaps as you would say a genuine accident. MR. SPECK: I think the best way of actually describing it is something I have said to my Lord a couple of times, at the level we are talking about, say the inclusion of the word Merck or whatever it may be, was that a desired act? Did they want to do that? Was it desired or was it something that was accidental, in the sense of it slipped through and actually they intended something else? The distinction I draw is on that on the one side and deliberately doing something and just saying, "Well, I just thought I was okay because the order allowed me to". It has different consequences.”

“210. Thirdly, it is in my view relevant that the judge found that the alleged breaches were not the result of inadvertence but instead arose against a background of conscious and deliberate (though honest) policy choices made by Merck US as to how it would organise its activities. That is a finding with which I would not interfere.”

“88. In relation to the contractual claim I have held that the breaches of the agreements were not de minimis. A different assessment (by reference to infringements not breaches of contract and according to English law) is called for here. But a number of factors carry over. First, I retain the impression that the instances of infringement relied on at trial were not the only instances that had occurred): and this is certainly the case in relation to the selected samples. Second, it remains the case that my view is that the occurrences were not (save for a couple explained in the evidence) accidental but were rather the consequence of the way Merck US decided to organise its affairs. Third, the argument based on an analysis of website traffic has no more weight in this context than it has in the contractual context.”

“105. It has been my practice over the years when granting such injunctions to endeavour to indicate (in relation to actions which it is intended should continue or which are in contemplation) what would in those particular circumstances constitute compliance with the general injunction (“It shall not be a breach of this injunction if….”). My original form of order sought to adopt that structure. It is important to understand that such a form of order does not require the covenantor to do anything: it simply indicates that, faced with a prohibitory injunction based on his promise, if he makes an honest endeavour to follow the guidelines he will not be in breach of that injunction (or if in technical breach will have strong mitigation). There may be many ways other than the use of such a “gateway” by which the covenantor might achieve his commercial objective without breaching his covenant and the injunction that enforces it, and he is entirely free to adopt them.”

“104. In the instant case the form of relief generally granted seems to me to provide an appropriate template. Merck US knows what its core obligations are, and it encapsulated their legal effect and practical application in guidance contained in a “Brand & Identity Guide” and in an online manual. There will of course be factual scenarios in which the precise scope of the mutual obligations contained in clause 7 of the 1970 Agreement is open to reasonable disagreement. A covenantor who is proposing to undertake an action which falls within such a penumbral area and who is acting honestly and reasonably will (a) canvass the issue with the covenantee in advance or (b) (more usually) if complaint is made by the covenantee then enter into discussion with the covenantee to seek to resolve the difference; or (c) seek the view of the Court if he wishes to “sail close to the wind”.”

“44 The internet is global. Users in the UK and the EU can, in the absence of geo-restriction, access websites hosted, and content posted on such websites, from anywhere in the world. Intellectual property rights, however, are territorial. At least in the case of copyright (and similar rights) and trade marks, the CJEU has held that mere accessibility of a website from a Member State of the EU is not sufficient to give rise to an infringement of rights conferred by the law of that State or of the EU, and that the relevant act must be “directed” or “targeted” at that State or at the EU: see L’Oréal SA v eBay International AG (C-324/09) EU:C:2011:474 (trade marks), Criminal proceedings against Donner (C-5/11) EU:C:2012:370; [2015] E.C.D.R. 22 (copyright) and Football Dataco Ltd v Sportradar GmbH (C-173/11) EU:C:2012:642; [2013] 1 C.M.L.R. 29; [2013] F.S.R. 4 (database right).”

“153. Merck Global has never asserted that Merck US has sold or supplied goods or services in the UK under or by reference to the sign “Merck”

“167.First, in determining whether an advertisement of goods bearing a trade mark on the website of a foreign trader constitutes use of the trade mark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in the course of trade in the UK. 168. Secondly, the mere fact that a website is accessible from the UK is not a sufficient basis for concluding that an advertisement displayed there is targeted at consumers in the UK. 169. Thirdly, the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Conversely, however, evidence that a trader does in fact intend to target consumers in the UK may be relevant in assessing whether its advertisement has that effect. 170. Fourthly, the court must carry out an evaluation of all the relevant circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, in the case of a website promoting trade-marked products, including the UK in a list or map of the geographic areas to which the trader is willing to dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence. The court may decide that an advertisement is directed at the UK in light of some of the non-exhaustive list of matters referred to by the Court of Justice in Pammer at paragraph [93]. Obviously the appearance and content of the website will be of particular significance, including whether it is possible to buy goods or services from it. However, the relevant circumstances may extend beyond the website itself and include, for example, the nature and size of the trader’s business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.”

“48. Targeting is not an independent doctrine of trade mark law. It is, in essence, a jurisdictional requirement. Because trade marks are territorial in effect, those who are doing business exclusively outside the United Kingdom should not have their dealings subjected to the trade mark law of the United Kingdom. Failure to recognise this principle is a failure to give effect to the territoriality of the underlying rights. Moreover the fact that a website is accessible from anywhere in the world, and therefore may attract occasional interest from consumers there when this is not intended, should not give rise to any form of liability. Thus, in order to make good its claim of trade mark infringement, it was necessary for AUL to establish that ASI was using the sign ARGOS in the course of trade in relation to goods or services in the United Kingdom.”

“51. These passages make it clear that evidence of subjective intention is a relevant, and possibly (where the objective position is unclear or finely balanced) a determinative consideration in deciding whether the trader’s activities, viewed objectively from the perspective of the average consumer, are targeted at the UK. Subjective intention cannot, however, make a website or page (or part of a page) which is plainly, when objectively considered, not intended for the UK, into a page which is so intended. 52. It is important to note that the summary of principles in Merck relates to the example of an advertisement for goods, where the role of the average consumer will be to determine whether the advertisement is targeted at him or her. In each case it will be necessary to look at the acts which are asserted to be use of the trade mark, and to focus on whether those acts are targeted at the United Kingdom. The scope of the enquiry will vary from case to case, as will the factors which are relevant to its determination. To that extent, I am prepared to accept that the role of the average consumer on the issue of targeting may differ from case to case.”

“54 The fourth question is the relevance of the perception of the average consumer. In my judgment it is clear that, as with most questions concerning the use of signs in trade mark law, whether there has been use of the sign in the relevant territory must be assessed from the perspective of the average consumer of the relevant goods or services who is deemed to be reasonably well-informed and reasonably observant and circumspect. Thus one excludes from consideration those who are either ignorant or have specialist knowledge and those who are either careless or excessively careful, but otherwise one takes into account the characteristics of the relevant class of consumers. Such consumers are not an undifferentiated mass, but have the spread of relevant characteristics that human beings have. To take a familiar example, some people pronounce certain words in different ways, and therefore one must take the differing pronunciations into account. In the present context, one must take into account the fact that consumers have differing attitudes to purchasing goods from foreign websites: some are averse to the very idea; some positively want to purchase goods from foreign websites e.g. because the goods they desire are not readily available from UK websites; and many others have probably never thought about the question.”

“Put colloquially, a proprietor should be treated as having used a mark in the UK if it has itself ‘pushed’ its business and mark into the UK, not if it has been ‘pulled’ into the UK by (for example) its customers abroad, even though they may be based in the UK. That is the upshot of the case law on ‘direction’ or ‘targeting’ of a website to the UK cited above (see the summary of CJEU case law in the Stichting BDO case [2013] F.S.R. 35). Quite what constitutes enough push of goods, services or advertising for them to the UK is not always easy to determine, especially in cases where a proprietor may be, in effect, a ‘pulled-pusher’ in that, without having taken any active steps to develop the market in the UK, it none the less takes business from consumers based in the UK.”

“(i) We do not consider that the judge was wrong to review the USA website as a whole. It is a necessary part of the appraisal of the targeting issue that the combined effects of a marketing website upon the perceptions of the average consumer are considered in the aggregate. But the judge did fail to focus in sufficient detail, stage by stage, upon the specific elements of the successive pages in the USA website as they would reveal themselves to the average consumer on their journey from landing to a decision to buy, before making his assessment of its overall effect.” “(iii) We do not regard the “taking deliberate aim” phrase as revealing an inappropriate focus on Amazon’s subjective intent. It is a reasonable way of describing the effect of a targeted website on the perception of the average consumer. The consumer is treated as asking: “is this advertisement deliberately aimed at British people, among others?”

“(i) It is certainly true that the Court of Appeal did appear to conduct a sequential but essentially self-contained review of a small number of specific pages in the USA website, with a view to deciding whether each, viewed separately but in context of the website as a whole, amounted to an act of targeting. It did so because, we think, they regarded a targeting conclusion as so obvious in relation to the “Review your Order” page, that the outcome could be concluded against Amazon by reference to that page alone. We do think that in many cases this will be an erroneous approach, not least because it may fail to reveal targeting as the effect of an online website as a whole, merely because no single page is so to be viewed on its own. Putting it shortly, it is an approach which may miss the wood for the trees.” “(iv) There is some force in this criticism about the low threshold applied by the Court of Appeal. It is hard to imagine any online sales website (for delivery of goods to the UK from abroad) having a “Review your Order” page significantly different from that used by Amazon on its USA website. Our conclusion that there was targeting is based not simply upon this page but upon the combined effect of all those aspects of the USA website that show how it is specifically designed to offer goods to a UK consumer, once its antennae pick up the fact that an incoming consumer enquiry is coming from a consumer with an IP address in the UK. To that extent we do consider that the approach of the Court of Appeal was too simplistic, even though it did not, in the event, lead it to the wrong conclusion.”

“72. Even more powerful an indicator of targeting consumers in the UK is the content of the pop-up box itself. That tells the UK consumer that they are about to be shown precisely those goods which are available for delivery to the UK. It says: “We’re showing you items that ship to United Kingdom”

“26. In para [27] the Supreme Court reiterated that the appropriate perspective is that of the average consumer, the characteristics of whom it affirmed were accurately summarised in paras [107] to [130] of the Judgment of the Court of Appeal delivered by Kitchin LJ in Interflora Ltd v Marks and Spencer Plc [2014] EWCA Civ 1403, where it was confirmed at para [125] that: It is only the effect of the advertisements on internet users who are reasonably well-informed and reasonably observant that must be taken into account.”

“7. The Court will notice when reviewing those paragraphs in our written submissions, that they come in the context of the allegation of breach of paragraph 3 of the Order. That is because paragraph 3 is concerned with the injunction against trade mark infringement. It is important to note that Lifestyle Equities is also concerned with the question of targeting in the context of trade mark infringement. However, the breaches to which Merck Global points are not confined to, or even focused on, paragraph 3 of the Order but rather paragraph 2. That paragraph is concerned with the breach of contract by use of a name that Merck US promised not to use. It is necessary to have caution in keeping clear questions that can only arise as a matter of trade mark law from those that arise on breach of paragraph 2. We submit that Merck US has not done so: It is correct that the assessment of trade mark issues is to be done from the view of the notional average consumer. The same is not the case for breach of paragraph 2. Accordingly, the observation at [26] of Merck US’s submissions finds no support in Lifestyle Equities as relates to targeting for breach of paragraph 2 and for paragraph 3 was common ground between the parties prior to the Supreme Court’s judgment and so adds nothing. Beyond that, [20] to [25] serve no purpose beyond reiterating what was already common ground, namely that there must be targeting of the UK.”

“(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because— (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. (3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which— (a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.” (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. (a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

“175.It must also be borne in mind that, as I have explained in the immediately preceding section of this judgment, this is a composite expression. To constitute an infringement, the contents of the website must be targeted at consumers in the UK and constitute use of the impugned sign in the course of trade in relation to the relevant goods in the UK.”

“171. It is convenient to address now two related matters of principle raised by Mr Hobbs concerning infringement of a registered trade mark by the use of a sign by a foreign trader on a website or in advertising or promotional material accessible in the UK. 172. First, the expression “using in the course of trade any sign … in relation to” goods or services in EU trade mark law means use for the purpose of distinguishing those goods or services from those of other suppliers: see, for example, Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] ECR I-905, [1999] 1 CMLR 1099 at paragraph [38]; Case C-245/02 Anheuser-Busch Inc. v. Budĕjovický Budvar NP [2004] ECR I 10989, [2005] ETMR 27 at paragraphs [60] to [64]; and Case C-17/06 Céline SARL v. Céline SA [2007] ECR I-7041, [2007] ETMR 80 at paragraph [20].”

“24. Merck US operated a suite of global websites (some with UK specific content) to support and promote its business. These included “merck.com”, “merckformothers.com”, “merckresponsibility.com”, “merckmanuals.com”, “merckanimal-health.com”, “msd-animal-health.com”, “msd-uk.com” and “msd-animalhealth.co.uk”

“27. It is not in dispute that the only use of which Merck Global can complain by way of trade mark infringement is use by Merck US of the sign “Merck” in the UK in the course of trade in relation to goods or services. Nor (in these proceedings) is it in dispute that Merck US has never sold or supplied goods or services in the UK under or by reference to the sign MERCK. Goods or services are sold or supplied by MSD. The use of which complaint is made is of the use by MSD and by Merck US of MERCK in promotional and informational material and in the course of general commercial activities.”

“30. Merck Global’s core submission was that the use of the sign MERCK on the websites, in social media and in off-line presentations, conferences and advisory board meeting was intended to link the sign MERCK to the goods and services of Merck US (and thereby to imperil its function as a mark denoting in the UK Merck Global as the origin of such goods and services): and as such that use constituted an infringement. In the evidence this concern was encapsulated in a passage in the evidence of Jonas Koelle; “...there is a concern held within [Merck Global] ...that [Merck US’s] activities are diluting [Merck Global’s] identity in territories reserved to it under the 1970 Agreement, including the UK. We have the sense that [Merck Global’s] hold on the MERCK brand in those territories is being weakened by MSD’s activities, especially in the on-line context”.” “...there is a concern held within [Merck Global] ...that [Merck US’s] activities are diluting [Merck Global’s] identity in territories reserved to it under the 1970 Agreement, including the UK. We have the sense that [Merck Global’s] hold on the MERCK brand in those territories is being weakened by MSD’s activities, especially in the on-line context”.”

“39. The question of the existence of a relevant “link” and whether it arises in relation to goods or services in the course of trade must, of course, be assessed by reference to the impression created in the mind of the reasonably informed, reasonably observant and circumspect consumer. Mr Hobbs QC characterised such a consumer as principally a healthcare professional, patient or care giver. I consider this characterisation is broadly correct (provided that “healthcare professional” is not confined to those undertaking the prescribing function but includes regulators and health policymakers). In fact, “Patients and Caregivers” and “Healthcare professionals” are amongst the groups of people directly addressed by the “merck.com” homepage. 40. Such a person would not, I think, consider each phrase and each sentence on a webpage and seek to analyse what role the word “MERCK” played in it on a standalone basis. Rather the unit of consideration is likely to be the page as a whole (or a material section of the page), and the process of consideration is likely to include such matters as all uses of the word “Merck” in that context (including the route to the page).”

“3. On 26 April 2022, I opened the Google Chrome browser and entered the URL www.merckoncologyclinicaltrials.com (the “Merck Oncology Clinical Trials Website”) in the address bar. I pressed the Enter key on my keyboard and was directed to the homepage of the Merck Oncology Clinical Trials Website (see pages 1 to 4 of Exhibit CKB-1). 4. I clicked on the ‘Terms of Use’ link in the footer of the Merck Oncology Clinical Trials Website, shown at page 4 of Exhibit CKB-1. This took me to the ‘Terms of Use’ page at the URL merck.com/terms-of-use/, shown at pages 5 to 9 of Exhibit CKB-1). The second paragraph of the Terms of Use stated that “This website is maintained by Merck Sharp & Dohme Corp…”, the First Defendant.”

“27. The copyright notice in the footer of the Merck Oncology Clinical Trials Website on 15 October 2021 stated “Copyright © 2021 Merck & Co, Inc., Kenilworth, NJ, USA”, indicating that that the Second Defendant is the owner of the copyright in any content that might appear on that website.”

“6 The Second Defendant is listed on the New York Stock Exchange. It is a holding company with no employees. It reported figures at the end of 2021. Exhibit JH1 is a copy of part of the most recent form 10-K filed with the US Securities and Exchange Commission. This report states that worldwide sales were $48.7 billion, an increase of 17% compared with 2020; the sales increase was driven primarily by growth in oncology, vaccines, hospital acute care and animal health; and revenue in 2021 reflects the benefit of sales of molnupiravir, an investigational oral antiviral COVID-19 treatment. At the end of 2021, the Second Defendant reported a total of approximately 68,000 employees worldwide, with approximately 27,000 employed in the US, including Puerto Rico. 7 The First Defendant is a subsidiary of the Second Defendant and carries on commercial activities. The Third Defendant is no longer owned by the Second Defendant, having been part of the spin-off of Organon & Co. in June 2021. The Fourth and Fifth Defendants are wholly-owned indirect subsidiaries of the Second Defendant that carry on animal health business.”

“45 At the bottom of the screenshot in paragraph 24 there is a copyright notice “Copyright © 2022 Merck & Co., Inc., Rahway, New Jersey, USA and its affiliates. All rights reserved.”

“For the avoidance of doubt, the commercial activities of the First Defendant referred to in paragraph 7 of her witness statement include those with respect to which the allegations of breach have been made. Whether such matters give rise to liability for breach of the Final Order by the First, Second or Fifth Defendants will fall to be determined on hearing of the application.”

“All uses of the sign MERCK on the pages are alleged to be uses in the course of trade in relation to goods or services that are identical or highly similar to the following specification of the Claimant’s marks as identified in Paragraph 3 of the Order:”

“All uses of the sign MERCK on the pages are alleged to be uses in the course of trade in relation to goods or services that are similar to the following specification of the Claimant’s marks as identified in Paragraph 3 of the Order:”

“KENILWORTH, N.J., and MIAMI, Oct. 1, 2021 – MSD (NYSE: MRK), known as Merck in the United States and Canada….”

“18 I was not given a copy of the company statement to review or approve before it went live as the contents were confidential and only a select number of people were privy to the information it contained. We started working with the Global Communications Team, who I believe are responsible for posting company statements, in mid-2021. I believe that is when they became aware of the Covid Research websites. I did tell the Global Communications Team that we have both a Merck and an MSD Covid Research website and that they should use the right one depending on the audience. I therefore believe the inclusion of this link was an oversight.”

“15 The First and Second Company Statements on the MSD Website referred to in Rows F and G of Annex 2 to the Claimant’s Application were published prior to molnupiravir receiving U.S. EUA. I prepared these statements by replacing the references to “Merck” in the “Merck”-branded versions of these statements. By mistake I failed to change certain references from “Merck” to “MSD”

“11 The Merck Covid Research website is intended for residents of the US. The MSD Covid Research website is intended for people outside the US. I knew we should not use “Merck” outside the US, so we chose to have an “MSD”

“KENILWORTH, N.J., and MIAMI, Oct. 11, 2021 – MSD (NYSE: MRK), known as Merck in the United States and Canada.”

“55 We have focused on proof-reading. In particular, it is now good practice within the business to have a different colleague double check content before it is posted. I have always asked people in my team to make sure that another person is looking at the content before it is published in order to prevent mistakes.”

“23 The purpose of the Covid-19 antiviral specific Media library page on the MSD Website is to provide contact details relating to COVID-19 investigational antiviral medication molnupiravir. This page is referred to in Row H of Annex 2 to the Claimant’s Application. 24 The purpose of the Media library page on the MSD Website is to provide contact details for general media related enquiries. This page is referred to in Row I of Annex 2 to the Claimant’s Application. 25 Both pages give a general mailbox, mediarelations@msd.com, and the names of individuals Jackie Califano, John Cummins and Melissa Moody. These three were members of the U.S media relations team. Each was based in the U.S. and had an @merck.com email address. 26 My understanding is that U.S. based employees may use their @merck.com email addresses in communications on msd.com. If that use was not permitted then I apologise for those uses. These uses of @merck.com email addresses were taken down from the media page in Row I by 26 October 2021. The email addresses were updated to an @msd.com email address, and the media page in Row H was changed to direct users to the media page in Row I.”

“It shall not be a breach of paragraph 2 or 3 of this Order:….. d. For the Defendants to use, in the ordinary course of business, email addresses ending “@merck.com” for employees based outside the United Kingdom.”

“Third, any injunction I make should be limited by necessity, not desirability. So, there will be a “carve-out” saying that it is not a breach of the injunction to use in the ordinary course of business e-mail addresses ending “@merck.com” for employees based outside the United Kingdom. I have put in the qualifier “in the ordinary course of business” (a familiar expression) because I do not want Merck US’s well-demonstrated tendency to push the boundaries to lead it to relocate UK based operations or functions to (say) the Netherlands so that they can be conducted using “merck.com” e-mail addresses.”

“28 The primary branding of the event was broadcast under the Merck for Mothers branding, rather than MSD for Mothers. In producing the content for the event, we proceeded in error and did not make the appropriate division between material marked “Merck” and “MSD”

“8 Row J of the Claimant’s complaint related to the branding of the Merck for Mothers 10th anniversary live virtual event. We had intended to hold the event as a hybrid event with the in-person element occurring in the US, but we changed to a remote event approximately two months before the event due to the Covid-19 pandemic. As I said in paragraph 28 of my first statement, we inadvertently reverted to an old style of presentation that put “Merck” and “MSD” together and mistakenly relied on the disclaimer that “Merck for Mothers is known as MSD for Mothers outside of the United States and Canada”

“33 Parallel versions of the Article were available on the Merck for Mothers site and the MSD for Mothers site. References to “Merck” in the Merck for Mothers version were amended to “MSD” in the MSD for Mothers version. 34 The Article included a link for expression of interests for people who might wish to participate in the initiative. The link directed the user to a PDF titled “Calls for Expressions of Interest” (the “PDF”). There were Merck and MSD versions of the PDF, and these were linked to from the relevant versions of the Article. 35 In both the Merck and MSD versions of the PDF, an email address with a “@merck.com” domain (“cstmformothers@merck.com”) was included for submitting questions or registering expressions of interest. John Reading, who works in the US, was the sole employee who monitored this email account. 36 On 25 October 2021 I removed the link to the PDF from the Article. On the same date, we replaced the “@merck.com” email address with a new “@msd.com” email address, before the PDF and the corresponding link were reinstated in the Article on the MSD site.”

“39 Rabin Martin, one of our US-based third-party agencies, assisted with the development of the Article and included the wrong link to the MOM Article, meaning the MSD version of the Article linked to the MOM Article hosted on the Merck for Mothers site at merckformothers.com. As a result, the MOM Article included the word “Merck” in the body of the text, in the footer and in an email address. 40 The link in the Article on the MSD for Mothers site to the “Merck” branded version of the MOM Article was an error. As explained in Paragraph 16 of this witness statement, the Communications Manual states “Content on MSDforMothers.com should avoid linking to MerckforMothers.com, or materials that reference Merck for Mothers”. 41 On 25 October 2021 I removed the link to the Merck version of the MOM Article from the MSD version of the Article. 42 The MSD branded version of the MOM Article included the email address “cstmformothers@merck.com”

“17 As I have said, the 2018/2019 ESG Progress Report is a historic report, and it did not go through the review process described above. On 25 October 2021, we changed that address to an @msd.com email address. If that use of a Merck email address was a mistake, then I apologise for that.”

“11 Once approved, the Grant Request was included on the website www.msduk.com to invite applicants to apply for the grant program. I understand that the Grant Request was posted to www.msd-uk.com in 2020. 12 The Grant Request included the email address oncopolicy02@merck.com. This was used to manage the applications, and the responses were monitored by Thomas Braga as the individual responsible for the program in 2020. The email address allowed us to use the same address each year, rather than changing it to the individual involved in that year. The Grant Request says that the team is “US-based”. 13 The use of this inbox also gave consistency in passing on information to the next post-holder that would take Thomas’ role the following year. Thomas’ successor was another US-based member of the Global Oncology team.”

“14 Thomas was not aware that it might not be acceptable for an “@merck.com” email address to be included in materials if the employee was based outside of the UK. 15 I understand from Michelle Koleosho that email addresses for UK personnel were moving from “@merck.com” addresses to “@msd.com” addresses around the time of the UK review, and it appears that the UK review of the Grant Request did not identify the “@merck.com” email address coming from the US as an issue. 16 I understand that the document was removed from www.msd-uk.com on 26 October 2021, and it was not replaced as the grant application period had passed. 17 I have changed the way grants are applied for so that forms are uploaded to a portal on the website msdgrants.com. The email address “oncopolicy02@merck.com” is now only used internally. 18 I am aware of the Brand Guidelines and have completed training on them. If the use complained of was not permitted then we apologise for that.”

“47 At the time, I had meetings on a weekly or twice weekly basis with MMC, our third-party agency which supports the MSD social media channels. The MMC team would show me proposed posts on screen and I would review, correct and approve the tweets live. The “Merck” references on the MSD for Mothers Twitter account were a result of an error made by MMC. The tweets were contrary to pre-approved posts which included “MSD” rather than “Merck”

“13 Rows M & CC relate to errors made by MMC in relation to tweets on the MSD for Mothers twitter page that included the word “Merck”

“8 I oversee the internal and external communications for the initiative. All communication requests and correspondence go through, or copy, me. We work in collaboration with five external communications agencies, and principally with Marina Maher Communications (“MMC”) and SPI Group (“SPI”) on merckformothers.com and msdformothers.com.” “52 The MSD for Mothers site included a link to the US-targeted privacy website (“www.msdprivacy.com/us/en”). This MSD privacy website included a logo containing the word “Merck” as well as another reference to “Merck” in the context of a Coupon Program. 53 The US-targeted privacy website had accidentally been linked to by SPI. We meet them virtually every two weeks and I assume that this error must have followed a call. 54 On 28 October 2021 I asked SPI to update the link. On the same date, they updated the link on the MSD for Mothers website so that it linked to a general MSD privacy website. This general page presents users with the option to select the applicable country in which they are located, and it will then display the correct policy with appropriate branding for that country.”

“E19.Please explain fully the nature of the alleged “error”. 40 Please see paragraph 14. E20. Please explain the basis for the assumption you make in paragraph 53 that the error “followed a call”. 41 We met with SPI virtually usually every two weeks, and we would often give them instructions during these calls. I do not have a written record of these instructions. I assume I gave the instructions on one of those regular calls.”

“11 Once a job is advertised it will be automatically listed on jobs.merck.com or jobs.msd.com. There is a logic built into a website design so that a job in a single country will appear on the jobs.msd.com site if the location of the job is outside the US or Canada, and a job will appear on the jobs.merck.com site if the location of the job is within the US or Canada. 12 We also have jobs that can be carried out from more than one location. We call these “cross-posted” jobs. For these jobs there is a primary location, which is where the candidate would preferably be located, and also one or more locations from which it could also be performed. The job is posted to the jobs website of the primary location, as set out at paragraph 11, and also automatically cross-posted to the jobs website of the secondary location. 13 A cross-posted job on jobs.merck.com will either have a primary location in the US and Canada with a secondary location outside of the US and Canada, or a secondary location in the US and Canada with a primary location outside of the US. The former is intended for US users who may have an interest in working overseas. The latter is intended for US users who are interested in jobs located in the US and Canada. 14 In common with major international employers, the business recruits for various locations. A job will usually be filled in the primary location.”

“15 There are several statements on jobs.merck.com site that state the site is only for residents of the United States and Canada. For example, there are disclaimer paragraphs, which are located at the top and/or bottom of the landing page and every sub-page. These were introduced before October 2021, but I do not know exactly when.” 16 The disclaimer at the top of a sub-page reads: “This site is for Residents of the United States, Canada & Puerto Rico. Residents of other markets, please click here.”

“This careers website is intended for Residents of the United States, Canada & Puerto Rico. Residents in other markets, please visit our MSD Careers page.”

“By continuing, you will be directed to a site intended only for residents of the United States and Canada. We are called MSD everywhere, except in the United States and Canada where we are known as Merck & Co., Inc., Rahway, NJ, USA.”

“16 The Claimant has complained about material on jobs.merck.com. It appears that the Claimant advertises for jobs available in the US and Canada in a similar manner about which it complains in this application. I am informed by Vera Ho, a Trainee Solicitor at Linklaters LLP, that on 8 November 2022, she accessed the careers page of MerckGroup.com from a computer in the UK. Under the “Location” filter, she selected “United States” which displayed 366 postings for jobs in the US. A screenshot of the first page showing 10 of these results is found at pages 1-3 of Exhibit JH6.”

“24 The chatbot on the jobs.merck.com site would identify cross-posted jobs that are available in both the US and the UK. However, it would not identify jobs that were only posted in the UK.” “26 On 10 February 2022, we placed a header on the chatbot on the jobs.merck.com site to say that the chatbot is intended for US and Canada visitors only. The header reads as follows, and contains a hyperlink that, when clicked, takes the visitor to the jobs.msd.com site. “This site is for Residents of the United States, Canada & Puerto Rico. Residents of other markets, please click here.”

“11 While we had in the past made the information available, we had not had a central external resource. I reviewed what a number of other pharmaceutical companies did in this space and concluded that they were collecting such information and providing it externally in one place. In 2017 we started to put US SDSs onto the merck.com website. In 2018 we started to add SDSs for other countries.”

“12 My group in the US was responsible for drafting all the SDSs for all countries, as needed. We reviewed local rules to determine the content. We branded them following the Brand Guidelines. We have an SDS for our bulk formulation of every product in each country in which we do business. 13 We decided to create SDSs for those countries where the business had a manufacturing or laboratory presence, rather than trying to limit the SDS information to only those countries which featured in the supply chain of each particular product (i.e. which would have required us to look at exactly at what product was made in or transported to which country). 14 We created an SDS for each product that may have a bulk form. If, for example, an adult and a pediatric form have a different composition then each will have an SDS. For example there are multiple SDSs for the various forms of Isentress (raltegravir). 15 I am informed by Michelle Koleosho, Counsel in our UK business, that the UK research arm of MSD (based in Kings Cross, London) uses SDSs to transport research compounds that are made in-house between subsidiary companies. They may also provide an SDS as an email attachment to an order with World Courier to transport compounds to US sites. They do not provide internet links to our SDS page to third parties. So far as she is aware, the business does not otherwise use SDSs in the UK. 16 I have undertaken the brand training. I considered the materials on merck.com to be a resource for US users. I did not consider that the UK SDS was aimed at users in the UK. 17 I apologise if the posting of MSD UK SDSs on merck.com was not permitted. This was unintentional.”

“Under paragraph 11 - Of “In 2017 we started to put US SDSs onto the Merck.com website”

“10 The collection of SDS is now live on MSD.com. The sheets on MSD.com are in the form required by each country. The UK SDS are branded “MSD” and the US SDS are branded “Merck”

“Background: Merck & Co., Inc (known as MSD outside the United States and Canada) and its subsidiaries (“Merck”) are concerned that proceeds from the mining, trade and sale of conflict minerals (tin, tantalum, tungsten and gold) are being used to directly or indirectly finance armed conflict and violence in the Democratic Republic of Congo and several adjoining countries (the “DRC region”).”

“8 The US Dodd-Frank Wall Street Reform and Consumer Protection Act 2010 directs the US Securities and Exchange Commission (“SEC”) to issue rules relating to the disclosure by companies of their use of conflicting minerals. 9 In August 2012 the SEC issued a rule requiring SEC registrants who manufacture or contract to manufacture commercial products containing certain products to determine their origin and status. The Second Defendant is SEC listed and is required to issue conflict mineral reports. The disclosure is posted on www.merck.com, under the transparency and disclosures section, together with the annual Conflict Minerals Report (“CMR”) which are required to be posted by 31 May of each year. 10 In early May 2021 I asked Tim Woodall (Director of Environmental, Social and Governance Strategy and Engagement at the First Defendant) to upload a copy of our Conflict Minerals Policy statement (referenced in the CMR) onto our websites www.merck.com and www.msd.com. The request to post to MSD.com was in error because to comply with SEC requirements it only needed to be posted to Merck.com. 11 The document contains uses of the word “Merck” alone which should not appear on msd.com. This was a mistake for which I apologise. I am aware of the Branding Guidelines and have taken training on them. The error was in posting to the wrong site. 12 The error was corrected by 25 October 2021 by removing the Conflict Minerals Policy statement from msd.com. A corrected version of the statement which did not contain “Merck” alone was put back on msd.com as part of a collection of Environmental, Social, Governance (ESG) resources, but it has recently been removed at my request as it is not required on msd.com.”

“7 Due to an oversight, the Statement contains four uses of “Merck & Co., Inc.,” to refer to the parent company without the full address. This is a mistake and is not in line with our branding guidelines. I apologise for the error. I assume that as the company name was in full, rather than being a “Merck” to be changed to “MSD”, that I overlooked the need to add the address. 8 I know that we use the MSD brand outside the US and Canada and the importance of correct branding. I took the brand training soon after I re-joined the company, in June 2020, and completed it again most recently in June 2022. 9 I became aware of the error on 25 October 2021, and I revised the document to add “Kenilworth, NJ, USA” after the references to “Merck & Co Inc.”

“13 The email address hqporkphdaward@merck.com was used for applications for the Precision Farming Award contained within the newsroom of www.msd-animal-health.com. The address was embedded so it did not appear on the page, but only in the ‘to’ field if the link was clicked. The page containing the email address and program was developed and designed by the Swine Marketing team. The hqporkphdaward@merck.com email address was provided to the SPI Group by the Swine Marketing team to use in relation to the Precision Farming Award applications. Emails to that address were received by Dominique Mensinck, a former member of the Swine Marketing team. She was based in the US from September 2017 to July 2021 and is now based in the Netherlands, in a new role. Rika Jolie, the leader of the swine marketing team and her organization completes the required branding guidelines training.”

“14 I have seen a PDF article dated 2 December 2020 announcing the winner of the Precision Farming Award contained within the newsroom of the MSD Animal Health website on www.msd-animal-health.com which refers to “Rika Jolie (Head of the Global Swine Unit: Merck Animal Health)”. 15 Ms Jolie is based in Madison, New Jersey, US, and “Head of the Global Swine Unit: Merck Animal Health” is her job title. It was an error by my team not to update Ms Jolie’s title to “MSD Animal Health” in an MSD document as we have done with past Swine Awards (HQPork) in prior years. 16 The error was corrected on 27 October 2021.”

“21 I appreciate that members of my team and the swine marketing organization have been responsible for uses of the “Merck” brand on the MSD website. The www.msd-animal-health.com website was being expanded in September 2020 with many people transitioning into new roles, and it appears that during the course of that, errors were made both by my team, the SPI Group and the swine marketing organization. I apologise for any uses of “Merck” that were not permitted.”

“Merck Animal Health becomes the first company to receive U.S. Department of Agriculture approval for NOBIVAC® Canine Influenza H3N2 Vaccine…” “Publication of the 11th edition of The Merck Veterinary Manual, …”

“17 The pages displaying the use of “Merck Animal Health” and “Merck Veterinary Manual” were reviewed and approved by my team prior to being sent to our service provider, the SPI Group for upload onto the site. The use of “Merck Animal Health” on the history page of the MSD website was a mistake that was overlooked. The business history section spanning over 75 years was updated. The Merck Animal Health version was then edited for use on the MSD Animal Health website. Both the review team and the SPI Group should have caught this error. 18 The use of “Merck Veterinary Manual” came about because the team had mistakenly understood that it was permitted to refer to the name of the book “Merck Manual”. 19 These errors were corrected on 28 October 2021.”

“Merck Animal Health can provide a solution in a very short space of time.”

“20 SEQUIVITY is a U.S. specific product. It is a technology used with Swine Influenza Virus. The use of “Merck Animal Health” in the PDF statement about SEQUIVITY placed on the MSD site was also the error of my team. It was corrected by 27 October 2021. While the product and the technology is approved for the U.S., the text should have been adapted with MSD branding only, and it was an oversight by both my internal team and the SPI Group.”

“7 The Manuals provide a free service in support of our corporate vision to improve health and well-being around the world. They do so in a way that does not support the commercialization of Merck or MSD products or services. This follows an indication from the US Government in the early 1960s that the Merck Manuals and Merck Index were not pharmaceutical labelling, so did not fall to be regulated under that regime. 8 As labelling regulation is complex, we avoid that altogether, and the Manuals do not promote use of Merck or MSD products or services. We work on the basis that there is in practice a firewall between the Manuals and the rest of the business. The Manuals therefore are intended to remain independent of any efforts, even any perception of efforts, to commercialize Merck and MSD products or services.”

“17 Roger Schreck is a US-based specialist in US healthcare financing. In his biography on the Merck Manuals website he had described himself as a contributor to the Merck Manuals. We carried out a review of the MSD Manuals in 2020 and we changed “Merck” to “MSD” across his articles and translations of his biography on the version seen on screen. 18 The text of his biography was sent for translation before we reviewed the sites and made corrections from “Merck” to “MSD”

“57. I would assess the ninth example (which gives news about the publication of the “Merck Manual” in downloadable form) in the same way as [55] above. Here the “MERCK Be Well” is replaced by the sign “MERCK” but it is still plainly used as a trademark (designating origin) as in its fuller form on other pages. The online “Merck Manual” is again using “Merck” as the origin of the Manual. Although it is in itself a “not-for-profit” service, it is used in the course of commercial activity promoting the products that are sold by Merck US /MSD in the UK referred to elsewhere in the suite of websites (although not specifically identified on this page): so, it is used in commerce in relation to goods or services in the UK. That is the way the reasonable user of the page would see matters.”

“20 On the Merck Manuals and MSD Manuals websites we have content provided by more than 16 third party providers. Exhibit MDF3 shows our third-party content providers. I have been informed that these screenshots were taken by Claudia Leong, Trainee Solicitor at Linklaters LLP on 13 July 2022 and the website pages were accessed by her on a computer in the UK. Content is intended to add depth to the material available. One of these services is an RSS feed for health news generated by HealthDay, a third-party news vendor. They are described on the site as follows: “The HealthDay news service, a division of ScoutNews, LLC, provides daily health news for both consumers and medical professionals. HealthDay has been producing its award-winning health news service since 1998 and has grown to become a leading producer and syndicator of evidence-based health news and the largest syndicator of that news to Internet sites. The HealthDay editorial staff have won numerous awards in journalism, including the Pulitzer Prize, the National Headliners Award, and top prizes from Associated Press Managing Editors. The news service is headquartered in Norwalk, Connecticut.” “The HealthDay news service, a division of ScoutNews, LLC, provides daily health news for both consumers and medical professionals. HealthDay has been producing its award-winning health news service since 1998 and has grown to become a leading producer and syndicator of evidence-based health news and the largest syndicator of that news to Internet sites. The HealthDay editorial staff have won numerous awards in journalism, including the Pulitzer Prize, the National Headliners Award, and top prizes from Associated Press Managing Editors. The news service is headquartered in Norwalk, Connecticut.”

“21 The RSS feed will automatically publish news articles generated by HealthDay on both the Merck Manuals and MSD Manuals websites. It updates during the day. Around thirty articles go live every day, and we do not commission or control them. 22 I understand that in October 2021 the Claimant complained about 12 uses of the word “Merck” in articles in the “News and Commentary” pages of the Professional and Consumer versions of the MSD Manuals website (being the RSS feed provided by HealthDay). Each of these has a URL that includes “news/external” showing that it is an external source. 23 My team looked into this and determined that we had already corrected nine of the articles complained of as they had been flagged in our regular scan of the HealthDay news articles. On 26 October 2021 we added “Kenilworth [and when the address changed, this was updated to “Rahway”], NJ, USA (known as MSD outside the US and Canada)” to the remaining three instances or removed the articles completely. There was an influx of news when Merck released molnupiravir and then entered into a voluntary license agreement on the patents to facilitate broad access to molnupiravir in 105 low- and middle-income countries, and we missed the errors in these three articles. 24 Following this incident, we have a new arrangement with HealthDay where we have paid for software for them to use to check their feed to us for both the Merck Manuals and MSD Manuals sites. We also manually double check their feed. This ensures the feed does not include articles with the word “Merck” alone in them. For any previous articles, we manually edited them to use the full Merck company name and address.”

“Dr Katherine Quesenberry, Editorial Board member of the Merck Veterinary Manual 11th Edition and the MSD Veterinary Manual website, discusses professional treatment of exotic pets.”

“25 An article on the MSD Vet Manual site titled “Clinical Techniques in amphibians” linked to a video entitled “Treating Exotic Pets”

“Source Disclosure: This package is provided free of charge for your use. For purposes of source disclosure, we ask that you indicate to your viewers that this news footage has been made available by MSD (known as Merck inside the United States and Canada).”

“18 The video labelled “B-Roll package” uploaded on the MSD Website (“MSD B-Roll”) is referred to in Row DD of Annex 2 [of] the Claimant’s Application. 19 I understand that a B-roll contains video or film images that can be used to supplement a story. It is provided as a resource to third parties wishing to create news stories to provide background shots. 20 My team received links to two separate B-roll videos, one titled as an “MSD” file and one titled as a “Merck” file. The videos were created by the media team. My team did not check these items. Mike Dooley informs me that around December 2021 he uploaded links to the applicable B-roll on the Merck Website and the MSD Website, each on the relevant media library page. He informs me that he understood that the material would have been through a review process and he assumed that it was in line with our branding policies and did not further review it. The B-rolls contained content relating to molnupiravir, a newly developed investigational antiviral authorized by the U.S. Food and Drug Administration for emergency use in treating COVID-19. 21 On 10 February 2022, I reviewed the B-roll uploaded on the MSD Website and saw that it contained incorrect branding. The posting was in error and I immediately arranged for this version to be removed and updated. 22 Since this incident, my team now double checks finalised work we receive from others from a branding perspective before posting on the relevant website.”

“You are now leaving this website. By continuing, you will be directed to a site intended only for residents of the United States and Canada. We are called MSD everywhere, except in the United States and Canada where we are known as Merck & Co Inc, Kenilworth NJ USA”

“By continuing, you will be directed to a site only for residents of the United States and Canada. We are called MSD everywhere, except in the United States and Canada where we are known as Merck & Co Inc, Kenilworth, NJ USA”

“b. [It shall not be a breach of paragraph 2 or 3 of this Order:] For the Defendants to establish and maintain any “MSD branded”

“17 When the U.S. FDA granted EUA for molnupiravir on 23 December 2021, it also finalized (in other words, approved) the Fact Sheets. At that time, we began including links to the U.S. product labels with new news releases and company statements about molnupiravir issued in the U.S. 18 News releases and company statements about molnupiravir issued after U.S. EUA were placed on the Merck Website. As there was significant interest in COVID-19, we also showed headlines about molnupiravir on the MSD Website.”

“20 The company statements referred to in Row EE of Annex 2 to the Claimant’s Application are dated on or after 23 December 2021. In each case, the title of the company statement was published on the MSD Website. There was a link if the user was interested to read the full material on the Merck Website. A user who clicked on each link would receive a pop-up notifying that the user is entering a website intended for audiences in the U.S and Canada only, as described in the previous paragraph.”

“187. Fourthly, Merck US accepted that some measures had to be taken to comply with its contractual obligations and relied for that purpose upon the terms of use of the sites and pop up notices informing users that they were being redirected from “MSD” to “merck.com” websites. But the judge considered that these measures seemed only to emphasise that users from around the world should have unrestricted access and be drawn to its “Merck” or “Merck/MSD” branded sites. As for the terms of use, they provided no redemption. The statement they contained that each site was “intended for use by residents of the US and its territories” was a fig leaf and was contradicted by the content of the site, the ready access to the site that users from around the globe were afforded and the fact that users might never access the terms and read them. 188. Fifthly, the targeting of the global audience was a conscious policy. Some social media sites, such as Facebook, had means to restrict access by users from particular territories, and for other sites a technique called geo-targeting (which could be used to similar effect) was available and was used for that purpose by Merck Global. But Merck US had chosen not to arrange matters in that way and had instead taken a policy decision to treat the internet as an “open space” and not to restrict user choice.”

“By continuing, you will be directed to a site only for residents of the United States and Canada. We are called MSD everywhere, except in the United States and Canada where we are known as Merck & Co Inc, Kenilworth, NJ USA”

“25 When the enrolment period for the study ended in October 2021, the GTO team decided to link to a press release about the results of the study. We linked to a Merck-branded news release from the MSD Covid Research website which took you to www.merck.com, through a pop-up informing the user that the site is intended for residents of the US. I should have directed StudyKIK to link to the company statement on www.msd.com instead. 26 In order to avoid mistakes in future, I will review content with an internal team, MRL Global Communications Liaisons, before making any changes live on the websites.”

“8 The two Covid Research websites [the MSD Covid Research Website and the Merck Covid Research Website] were developed to provide information to relatives of hospitalised patients who consented to take part in the MK4482 investigational antiviral drug trial (the drug has been given the generic name molnupiravir). More information about the trial can be found at the website: <https://clinicaltrials.gov/ct2/show/NCT04575584>. The first study started in October 2020 when, due to worldwide Covid-19 restrictions, relatives were not allowed to visit patients in hospitals. The websites were created so that staff could refer family members, who would not be with their relatives, to information about the study. The study was international; so we built a US facing website and an ex-US website.”

“The Second Defendant: - The first sentence of the press releases dated 26 November 2021, 22 December 2021, and 18 January 2022 state: “Merck (NYSE:MRK [‘ticker’ for Merck & Co Inc])” (Paras. 194.4, 190.4, and 186.5, respectively; pages 90 to 98 of Exhibit MCJD-12).”

“7 Exhibit JA1 is a guide to the steps taken to post an article on Business Wire. At step 3 (pages 5-8 of Exhibit JA1) the user selects a geographic distribution area. The rate charged depends on the distribution area as well as the length of the release. 8 Postings in the United States only are shown as ‘National’ in the Distribution Cart shown on page 10 of Exhibit JA1. They include distribution to The Associated Press and United Press International; Bloomberg, Dow Jones and Refinitiv terminals; Standard & Poor's and Moody's Investor Service; The New York Times, The Wall Street Journal, Investor's Business Daily and other major US national print publications; and relevant US business and trade publications. 9 Once a news release is distributed on our service, it can be syndicated (i.e., shared without changes) by anyone, anywhere in the world. It can also be shared with comments or changes – we call this ‘earned media’. Many of the news services outlined in paragraph 8 will syndicate content posted on Business Wire. 10 Once an article has been posted nationally, we cannot control if and where it is shared by third-party news outlets. 11 As Counsel, I have an overview of all of the Second Defendant’s activity on Business Wire. In the last 12 months the Second Defendant has only posted nationally in the US and has not made any international posts. 12 I understand that the Claimant has said that it was able to review the Second Defendant’s releases on the businesswire.com website from the UK. That is normal. The website businesswire.com is a US-based site that makes all our content available to anyone who wishes to visit. If a UK based user clicks on ‘UK/Ireland’ on our home screen they will be taken to the US site. There is no site specifically for the UK and Ireland. The same is true if a user selects, for example, ‘France’. The user would be directed to a French language version of the US site based in the US.”

“11 I develop and take news releases and company statements through the relevant approval process for distribution on the Merck Website and, when appropriate, the MSD Website. News releases are distributed through Business Wire and are automatically posted in the newsroom: https://www.merck.com/media/. Company statements are not distributed through Business Wire. The MSD Website only hosts company statements. 12 For news releases and company statements targeted to U.S. audiences, I develop the draft and have this approved by the relevant subject matter experts (e.g. clinical, regulatory, commercial and legal), senior leader and the business’ Corporate team. News releases targeted to U.S. audiences are first uploaded to Business Wire via its website portal, where we select the ‘US National’ distribution option for upload. The U.S. news release will then be automatically posted to the newsroom on the Merck Website. 13 For molnupiravir company statements on the MSD Website, there were different processes before and after U.S. EUA on 23 December 2021, as I describe below. In all cases I would start with the approved U.S. material. Once the process to finalise the ex-U.S. company statement (as described below) was complete, I would share this with a colleague to post on the MSD Website simultaneous to the uploading on Business Wire for U.S. distribution.”

“12 News releases are distributed through Business Wire’s US national list and automatically posted in the newsroom on our website at https://www.merck.com/media/. All “Merck” news releases on the merck.com website will have a reference to Business Wire at the top of the release. When such release is saved from the Merck website, the downloaded document will also contain a link to the full release on Business Wire. Exhibited at pages 1 to 6 of Exhibit CMR1 is a saved copy of a Merck news release posted on 1 October 2021. 13 Each market may have its own rules and regulations that are not the same as for the US. We also do not issue Merck news releases outside the US as it might lead to local regulatory issues outside of the US. Instead, we post company statements to MSD.com, which, while a US site, is accessible by ex-US audiences. 14 Company statements are not distributed through Business Wire and will not contain any reference to Business Wire on them. US-targeted company statements are published on the Company Statements section on the merck.com website (with Merck branding). 15 I understand that Business Wire makes the information posted in the US available to US-based services such as UPI and Bloomberg and to certain US newspapers. That does not mean that it will be distributed outside the US. The service or newspaper must make a decision that the news is worth reporting. In reporting on the company, in my experience these organisations use the company’s US name “Merck” and the news services usually use an indication that it is listed with the ticker MRK on the New York Stock Exchange. A report may draw on a news release but will usually re-work it and add in elements such as the market response to the release, share price movement and items on other relevant companies (e.g. those with similar or competing products).”

“16 In my experience posting a release to Business Wire does not mean that the posted information will be reported upon by media outlets. These outlets make their own editorial judgements about what news to report. 17 If a company statement or news release is significant and relates to our ex-US/Canada business or products, we will generally also produce an MSD version of the content using our MSD-branded template. MSD versions of company statements are uploaded to the Company Statements section on MSD.com. However, MSD versions of a Merck news release would only be uploaded as a company statement on MSD.com as we do not post news releases on MSD.com (as explained above). MSD versions of Merck company statements are similarly uploaded to the Company Statements section on MSD.com.”