January 15, 2016 / 5:16 PM / 4 years ago

Fight over Merck name sees German firm win in British court

FRANKFURT (Reuters) - Germany’s Merck KGaA said it won a British court’s backing in its quest to keep U.S. namesake drugmaker Merck & Co Inc from doing business under the Merck name outside North America, part of an increasingly bitter legal feud.

Merck KGaA of Germany, maker of multiple sclerosis drug Rebif and liquid crystals for display screens, and Merck & Co, which is about 2.5 times as big by sales, share historic roots but have been under separate ownership since World War One.

The companies struck an agreement in 1955 and amended it in 1970, giving Merck & Co. the rights to the Merck name in the United States and Canada and handing the rights everywhere else in the world to Merck KGaA.

Under the deal, Merck & Co agreed to call itself MSD, or Merck Sharp & Dohme, outside North America, with Merck KGaA operating as EMD, short for Emanuel Merck, Darmstadt, in North America.

“In its judgment the English High Court stated that MSD had breached an agreement with the company by using ‘Merck’ alone in the UK either as a trade mark or a name, online or offline,” the German group said in a statement on Friday.

The emergence of the Internet and global electronic media that can be viewed across continents has exposed gaping holes in the decades-old agreement.

In the British lawsuit, Germany’s Merck objected to Merck & Co’s use of domaine names such as merckresponsibility.com merckformothers.com in Britain and to Merck & Co’s Britain-based staff using a merck.com email address, among other practices.

A Merck & Co spokeswoman said in an emailed statement the company disagreed with the ruling: “This decision reflects one step in a litigation process taking place in a number of countries, and will be appealed.”

She said a French court recently ruled that the U.S. group’s use of Merck in employee email addresses and the title Merck Manual did not infringe Merck KGaA’s rights, whereas certain uses of Merck on French websites were found to be an infringement.

Merck & Co, in turn, would fight Merck KGaA in a U.S. court “regarding their improper use of the name ‘Merck’ in the United States,” the email continued.

In a sign of defiance and growing frustration over what it sees as unfair use of the Merck name outside North America, the family-controlled German group, which traces its roots to a 17th century pharmacy, has started using the claim “Merck – The Original”.

($1 = 0.9123 euros)

Reporting by Ludwig Burger; Editing by Elaine Hardcastle

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