After Losing In Trial Court, US Merck Also Loses On Appeal, In The UK...

This was not. . . unexpected. After all, US Merck soundly lost -- at trial -- in England. So Kenilworth will next file an appeal in the Supreme Court of the United Kingdom. Background here. And the US case continues, as well, separately. As does an EU action; and a German case.

Here is the full 87 page PDF decision, if you are curious. It nicely addresses the notion that a US website may reach out to visitors across the globe -- rendering any 1970s (i.e., before the webbed world) agreement on naming and branding. . . antiquated -- if not extinct, entirely. As I have long said, these folks need to work out an entirely revamped agreement -- one that contemplates the intricacies of an electronic world less and less governed by geopolitical lines -- on some paper map. And a bit:

. . . .The Court of Appeal confirmed the High Court's decision of 15 January 2016 that use in the UK by MSD of "Merck" alone either as a trade mark or company name breached a 1970 agreement with Merck KGaA, Darmstadt, Germany.

The dispute centred on Merck KGaA, Darmstadt, Germany's claim that MSD's online use of "Merck" in the UK breached a co-existence agreement between the parties and infringed trade mark rights in the UK. At the heart of the litigation was how an agreement originally negotiated in 1955 applied to use on the internet and social media. . . .

MSD also appealed the finding that the uses on the "Merck" branded websites and social media pages were uses in the UK. They claimed they were directed at US and Canadian citizens, jurisdictions where MSD was permitted to use MERCK alone under the Agreement.

The Court of Appeal took the opportunity to review the law on whether use on websites and social media was targeted at the UK. It summarised the general principles which emerged from CJEU and UK first instance decisions. In particular they noted that the mere fact a website is accessible in the UK is not sufficient basis for concluding that an advertisement is targeted at the UK, and that the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The Judgment goes on to say that the intention of the trader to target consumers in the UK may be relevant as may other circumstances beyond the website itself, for example, the nature and size of the trader's business and the number of visits made to the website by consumers in the UK.

When applying these principles to this case, Lord Justice Kitchin held that MSD conducted its healthcare business in many countries around the world, including the UK and that business was at all material times supported and promoted by the websites in issue. They constituted an integrated group of sites which were accessible by and directed at users in the UK and other countries in which MSD trades. A person seeking information about MSD on a particular topic would be directed or linked to one of the websites from which that information could be derived. This allowed MSD to target inventors and scientists in the UK, to recruit people in the UK, to solicit suppliers, to seek licensing opportunities in the UK and to provide purchase order terms and conditions applicable to the UK. The social media activities of MSD were also directed at persons and businesses in the UK in just the same way as the websites. . . .

Do go read it all. And enjoy your long weekends!

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