Darmstadt, Germany, April 14, 2016 – Merck KGaA, Darmstadt, Germany, a leading science and technology company, today filed its Answer in the U.S. District Court for the District of New Jersey in response to trademark right violation claims made by US-based Merck Sharp & Dohme Corp (MSD).
According to the coexistence agreement signed between Merck KGaA, Darmstadt, Germany, and MSD in 1970, the company was allowed to use in the United States and Canada its trade name, which at the time was “E. Merck”, along with the geographic identifier “Darmstadt, Germany.” When E. Merck changed its name to “Merck KGaA” following a public listing in 1995, MSD agreed to allow the company to use “Merck KGaA, Darmstadt, Germany” in the U.S. and Canada, a practice it is now challenging following more than 20 years of consent.
Merck KGaA, Darmstadt, Germany, has been committed to complying with the terms of the coexistence agreements, implementing tools such as geo-targeting to ensure compliance in the digital age. The English first instance Court found that MSD has breached Merck KGaA, Darmstadt, Germany’s rights by using the term “Merck” (alone) in the U.K. as a trademark or a name, online and offline, and set out the relief it would grant to prevent such use.
“We are committed to protecting our brand and reputation, and to complying with our existing agreement with MSD and MSD’s trademark rights in the United States,” said Friederike Rotsch, Group General Counsel at Merck KGaA, Darmstadt, Germany. “We are therefore well prepared to defend our case in front of the U.S. courts and confident that the courts will rule in our favor, as they also have done in the U.K. and in France.”
For the response as well as further information on the legal proceedings click here.