Thursday, April 14, 2016

Merck Vs. Merck Global Name Battles: The Germans' US Answer

This multi-forum, multi-country series of battles now counts one win for US Merck (described at paragraph 15, on page 5 of the link to US Merck's original US complaint), and one win for German Merck -- in two different courts and countries (in France, and England, respectively) in this seemingly endless battle over the rights to that five letter name. [Our April Fools prank on all of this, here.]

This morning, the German Merck took the nearly-unprecedented step (for multi-national public pharma at least) of making a press kit out of its answer-at-law, just filed overnight in the federal District Court in New Jersey. Here is a bit of that, but do understand, the German Merck has engaged in its share of overly aggressive actions, as well, in my opinion. As we've long said, the original agreements between the parties did not contemplate the global internet age. And so, the whole thing has become a bit of a mess.

In my view, the shareholders of both Mercks ought to urge the companies' managements to either (i) settle this all by agreement, and stop wasting company funds on lawsuits, or (ii) one or both of them should find ways to more distinctly brand and name themselves.

[Litigation -- particularly in a patchwork of geographies around the post-industrial world -- is highly unlikely to supply a satisfactory comprehensive global answer, in no small part because no one court has global jurisdiction over the matter.] Having said that, I do understand that each company has invested literally tens of billions of dollars and euros in the brand each uses. So onward it goes [and before the pull-quote, here is a link to US Merck's side of this US part of the story].

. . . .Merck KGaA is the original Merck and rightfully uses the name Merck globally except in the U.S. and Canada, where it is known as Merck KGaA, Darmstadt, Germany. It is the oldest pharmaceutical and chemical company in the world, with nearly 350 years of history.

Merck KGaA and MSD share a common heritage, starting out as a single pharmacy in Darmstadt, Germany, founded in 1668 by the Merck family, which still is the majority owner of Merck KGaA today. Merck KGaA grew to be one of the most reputable pharmaceutical and chemical companies in the world. It started doing business in the U.S. in 1890, more than 200 years after the company’s founding. . . .

[US Merck] has steadfastly refused to take appropriate measures, such as use of geo-targeting technology, to comply with its obligations. Instead, MSD indiscriminately uses the “Merck” name and trademark outside of the United States and Canada, rampantly and intentionally, in willful violation of the parties’ agreement. To protect its rights, Merck KGaA brought actions against MSD in the United Kingdom, France, Germany, Switzerland and Mexico. The English High Court has held MSD to be in breach of the parties’ coexistence agreement and liable for trademark infringement, and the French District Court has held MSD to be liable for trademark infringement. MSD’s request for relief against Merck KGaA, which has taken extensive steps to comply with the parties’ coexistence agreement, should be considered in this broader context given MSD’s willful, unclean hands. . . .

For MSD to suddenly complain that Merck KGaA’s use of “Merck KGaA, Darmstadt, Germany,” which MSD has accepted for nearly twenty years, is now unlawful, and for it to sue for federal false advertising over truthful statements about the company’s history, reveals that MSD is using this case as nothing more than a means to try to divert attention from its own misconduct and from its continued refusal to comply with its obligations under the parties’ coexistence agreement and under trademark law in the many countries around the world where Merck KGaA is the exclusive owner of the MERCK trademark. . . .

And so, even though the so-called Facebook Flap between them has long been settled, this battle rages on, consuming management time and lots of money, across countries and continents, in the post-industrial world. Do have a zen day, one and all. We will keep you smoothly in our thoughts. . . . smiling, as ever.

No comments: