English Court of Appeal uphold decision declaring that MSD had used “Merck” in breach of Court Order

Today the Court of Appeal of England & Wales delivered what may be one of its quickest Judgments in Merck KGaA v Merck Sharp & Dohme & Othrs [2025] EWCA Civ 343. The reserved judgment was handed down within seven working days of the two-day appeal hearing. In the lead Judgment, by Lord Justice Arnold, the CA upheld the lower Court’s findings that MSD had used “Merck” in the UK in a way that was prohibited by injunctions.

The decision is part of a long running global dispute between Merck KGaA, Darmstadt, Germany, and companies within the Merck Sharp & Dohme group (“MSD”) relating to the use of “Merck.”

Proceedings in the UK were brought by Merck KGaA against MSD for breach of contract and trade mark infringement. This resulted in a Court Order of 28 July 2020 which included injunctions that MSD should not use “Merck” in the UK as either a trade mark or a contraction of a company name when furthering or promoting its business. 

In the latest round of the dispute, Merck KGaA complained that despite the injunctions MSD were continuing to use “Merck” in the UK. This included use in relation to jobs based in the UK being advertised on MSD’s www.merck.com site, and links from MSD websites targeted at the UK to news releases on www.merck.com. MSD argued, amongst other things, that www.merck.com was targeted at US and Canadian consumers only so there was no use in the UK.

At first instance, Mr Justice Edwin Johnson gave what the Court of Appeal described as: 

“a meticulously reasoned judgment running to 514 paragraphs in which he considered each of Merck Global’s allegations in turn. The upshot was that he found breaches established in respect of 17 rows [i.e. individual uses of “Merck”] …”

MSD had appealed the first instance decision on four grounds including that the Judge had incorrectly applied the targeting test set out in the UK Supreme Court decision Lifestyle Equities v Amazon, and that it was impermissible to seek a declaration that an injunction had been breached rather than applying for Contempt of Court. Each of the four grounds of appeal were dismissed by the Court of Appeal in today’s decision.

Today’s decision is of interest to practitioners as the Court of Appeal approved a procedure (previously used in the Hotel Cipriani [2013] EWHC 70 (Ch) and approved of in passing in Lifestyle Equities [2022] EWCA Civ 634) of seeking a declaration that an injunction had been breached, rather than having to make an application for Contempt. This was held to be a useful procedure particularly where the meaning of the Order was contested. The Court of Appeal agreed with the Judge that this procedure provided the Court an opportunity to reduce the scope for future dispute between the parties. Although as this was an alternative to a Contempt of Court action, there needed to be appropriate safeguards for the Defendants.

Merck KGaA, Darmstadt, Germany was represented by the London office of international law firm, Bird & Bird LLP (Peter Brownlow, Mark Day, and Alex Grigg) and barristers Adrian Speck KC and Benet Brandreth KC. 

Merck Sharp & Dohme group (“MSD”) were represented by Linklaters LLP (Ian Karet) and barristers Geoffrey Hobbs KC and Guy Hollingworth